New York Belting & Packing Co. v. New Jersey Car-Spring & Rubber Co.
| Decision Date | 24 December 1891 |
| Citation | 48 F. 556 |
| Parties | NEW YORK BELTING & PACKING CO. v. NEW JERSEY CAR-SPRING & RUBBER CO. |
| Court | U.S. District Court — Southern District of New York |
B. F. & W. H. L. Lee, for complainant.
A. v Briesen, for defendant.
This is an action for the infringement of letters patent, No. 11,208 granted to the complainant, as assignee of George Woffenden May 27, 1879, for a design for a rubber mat. The patent has twice been before the courts. The circuit court held the patent invalid on demurrer. 30 F. 785. The supreme court reversed this decision, in part, holding that the question of novelty should be decided on pleadings and proofs. 137 U.S. 445, 11 S.Ct. 193. A description of the invention will be found in these volumes, and particularly in the report of the supreme court decision, where a diagram of the design appears. The first claim was held void by the supreme court and was afterwards disclaimed by the complainant, but the court said of the second and third claims that they may fairly be regarded as confining the patentee to the specific design described in the specification and drawing. Of these two claims, the third is the narrower. It is as follows: '(3) A design for a rubber mat, consisting of a series of parallel corrugations, depressions or ridges arranged in sections, the general line of direction of the corrugations in one section making angles with or being deflected to meet those of the corrugations in the contiguous or other sections, substantially as described.'
The defenses are lack of patentability, non-infringement, and defective title.
The specification says:
In referring to this feature of the design the supreme court intimates that a new and interesting question is thereby presented. The opinion says:
'It is possible that such a peculiar effect, produced by such a particular design, impressed upon the substance of india-rubber, may constitute a quality of excellence which will give to the design a specific character and value and distinguish it from other similar designs that have not such an effect.'
It is true that the court is careful to express no opinion upon this question, and yet it seems improbable that the suggestion would have been made unless the court was impressed with the novel character of the design in this particular. That the square mat, introduced by the complainant, which is conceded by the defendant to be a correct embodiment of the drawing, possesses the kaleidoscopic effect referred to there can be no doubt. Viewed from one position certain sections of the mat appear grey, some have a bluish tinge, others are almost black, and others still have a variegated appearance, varying from a dark, rich, velvety effect in one part, to a light metallic or silvery effect in another. Let the observer change his position and the transformation of the design is instantaneous. What was light before is dark now, and vice versa. In one position the mat seems to be all of one color in another of several different colors, like mosaic or marquetry flooring. There is nothing at all comparable to this in the prior art. The nearest approaches are the rubber stair-plates and bath brushes introduced by the defendant. These unquestionably have some features of the present design, but they do not possess the peculiar effect before alluded to. All of them together could not be so arranged as to suggest the patented design. It has frequently been held that a design patent cannot be anticipated because the separate features of the design are old. If this were otherwise it would be difficult to conceive of a patentable design, for it is an easy matter in all these classes to show that every line, color and object represented was known before. Proof of this character does not defeat a design patent any more than proof that all the separate elements of a combination are old defeats a combination patent. In one case the combination must be new and produce a new result, in the other the design must be new and produce a new effect. It is the impression produced upon the eye by the design which is the test of patentability. If this is new and pleasing it matters not that the various elements which combine to produce this impression are old. The question is not whether the prior art shows anything which looks like sections of the design, but whether it shows the design as a whole. If not, and the design possesses the other characteristics alluded to it is patentable. Tested by...
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