McGrady v. Aspenglas Corp., 78 Civ. 3231-KTD.

• Court: United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
• Citation: 487 F. Supp. 859,208 USPQ 242
• Docket Number: No. 78 Civ. 3231-KTD.,78 Civ. 3231-KTD.
• Parties: Corinne McGRADY, Plaintiff, v. ASPENGLAS CORPORATION et al., Defendants.
• Decision Date: 05 February 1980

487 F. Supp. 859
208 USPQ 242

Corinne McGRADY, Plaintiff,
v.
ASPENGLAS CORPORATION et al., Defendants.

No. 78 Civ. 3231-KTD.

United States District Court, S. D. New York.

February 5, 1980.

Curto, Meservey, Armstrong & Waller, Huntington, N. Y., Feldman & Feldman, P. C., New York City, for plaintiff; Stephen E. Feldman, Marvin Feldman, New York City, of counsel.

Davis, Hoxie, Faithfull & Hapgood, New York City, for defendants; Alan D. Gilliland, John B. Pegram, Stephen D. Kahn, New York City, of counsel.

OPINION

KEVIN THOMAS DUFFY, District Judge:

Plaintiff, Corinne McGrady, is the designer and owner of U.S. Design Patent No. 220,911 hereinafter the "911 Patent" on a

487 F. Supp. 860

transparent book stand. The stand, more fully described below, is specifically designed to accommodate cookbooks. It is made with a clear plastic so that an open cook book is visible and yet completely protected from kitchen splatters. Plaintiff instituted the instant infringement actions, which have been consolidated before me, against the Bloomingdale and Abraham & Straus divisions of Federated Department Stores. Aspenglas Corporation, manufacturer of the alleged infringing book stand, has intervened. The defendants move, pursuant to Fed.R.Civ.P. 56(b), for summary judgment on the issue of noninfringement. For reasons which follow, defendants' motion is hereby granted

Defendants advance two arguments in support of their motion for summary judgment. First, they allege that defendants' product differs substantially from the design covered by the 911 Patent and, consequently, is not infringing. Second, it is argued that plaintiff is barred by the doctrine of file wrapper estoppel from asserting her claim against defendants. Before discussing the substance of these claims, a more detailed discussion of the undisputed facts is necessary.

Plaintiff filed her initial patent application on January 15, 1970. This application included three drawings representing her design viewed from different angles, see Appendix A, and the claim "the ornamental design for a Transparent Book Stand substantially as shown." The application was rejected several times by the Patent Office. In each instance, plaintiff was referred to the prior art and told that she had not produced a patentably new design appearance. In its final rejection, the Patent Office suggested that the prior art could be avoided "if a proper characteristic feature clause were added to the specification" and went on to make suggestions as to the details of an acceptable clause. Plaintiff adopted these suggestions by adding the following descriptive clause to her application:

The design is characterized by the fact that it is bent to define three rectangular panels having substantially the same dimensions, the front and intermediate panels lying in parallel relation and being adapted to protect an open book inserted therebetween, the rear panel forming an inverted V with the intermediate panel to support the book at an inclined viewing position, all as shown.

I claim:

The ornamental design for a transparent book stand, substantially as shown and described.

Shortly thereafter, on June 15, 1971, the 911 Patent was granted.

It is undisputed that plaintiff's cook book stand is made up of three panels, each with substantially the same dimensions. Defendants, on the other hand, manufacture and market two different cook book stands each of which has a large front panel and substantially smaller intermediate and rear panels of approximately equal dimensions. See Appendix B.

Before reaching the merits of this motion, I note that the question of patent validity has not been raised by the parties herein. Accordingly, I will not reach that issue and will proceed directly to the question of infringement.

File Wrapper Estoppel

Under the doctrine of file wrapper estoppel, when a patent applicant amends his claim in order to meet objections of the Patent Office over prior art, he abandons claim to any portion of the original application which was narrowed by his required amendment. Cohn v. Coleco...