Rains v. Cascade Industries, Inc.
| Citation | 402 F.2d 241 |
| Decision Date | 14 October 1968 |
| Docket Number | No. 16957.,16957. |
| Parties | John K. RAINS, Appellant, v. CASCADE INDUSTRIES, INC. |
| Court | United States Courts of Appeals. United States Court of Appeals (3rd Circuit) |
COPYRIGHT MATERIAL OMITTED
Leon J. Greenspan, Greenspan & Aurnou, White Plains, N. Y., for appellant.
Frederick A. Zoda, Sperry & Zoda, Trenton, N. J., for appellee.
Before McLAUGHLIN, FORMAN and FREEDMAN, Circuit Judges.
This appeal involves the validity of a design patent for an on-the-ground swimming pool.1
Plaintiff, the holder of the patent, alleged infringement by defendant and sought damages and an injunction. Defendant counterclaimed for a declaratory judgment of invalidity or of noninfringement and sought damages and injunctive relief. The district court granted defendant's motion for summary judgment, declared the patent invalid and entered judgment for the defendant. 269 F. Supp. 688 (D.C.N.J.1967).2
Although the district court did not dispose of defendant's counterclaim for damages and injunctive relief and made no certification of appealability under Rule 54(b) of the Federal Rules of Civil Procedure, its judgment of invalidity denied plaintiff the injunctive relief which he sought and is therefore appealable under 28 U.S.C. § 1292(a) (1) as an order refusing an injunction.3
Plaintiff's patent consists simply of various views of an on-the-ground pool. The basic design depicts a rectangular tank with vertical sides. A base extending slightly outward surrounds entirely the bottom of the tank. The top of the tank is surrounded on all four sides by a horizontal deck which is enclosed by a vertical crisscross fence. A ladder at the middle of one of the long sides of the pool provides access to the deck. Struts placed at regular intervals around the entire pool extend diagonally from the base of the tank to a point slightly short of the outer edge of the bottom of the deck. At the same intervals studs are attached to the side of the tank for support. The struts, studs and deck form an open triangle which is covered by gussets which fill the open triangle except for a small space at its top and bottom.
A variation in the patent design depicts a wider deck at one end of the pool and vertical supporting posts reaching to the ground. Another variation is a larger version of the first design, with additional struts, studs and gussets.
In moving for summary judgment the defendant relied on a number of exhibits containing prior art. It is necessary only to review that portion of the prior art which is closest to plaintiff's design. A drawing for French Patent No. 768,506, a mechanical patent, issued in May, 1934, was submitted without verbal description of the patent itself. The drawing discloses an on-the-ground pool with what appears to be a rectangular tank, a deck extending horizontally from the long sides of the top of the tank, with struts similar to plaintiff's, but with no gussets. A vertical fence which is not, however, crisscross in type, encloses the two decks. A ladder extends from the end of the deck to the ground.4
A design patent issued to Donald Pruess in 19615 shows a square on-the-ground tank with a deck similar to plaintiff's which surrounds the pool. The fence, however, is not crisscross and is inclined outward from the deck, supported by struts extending from the top of the fence diagonally down to the base of the tank. There are no gussets. The pool has a modernistic flair and is marketed as the "Futura" by International Swimming Pool Corp.
Other previously patented on-the-ground pools have decks supported by vertical posts rather than diagonal struts. Defendant also presented a number of mechanical patents for window scaffolds and brackets, designed to provide strength and having the general triangular shape of the strut-gusset arrangement. Pictures of a crisscross fence like plaintiff's in Popular Mechanics were also presented.
On the basis of the prior art the district judge granted summary judgment for the defendant. Such a judgment is appropriate, under Rule 56 of the Federal Rules of Civil Procedure,6 in patent cases as in other civil actions where there is no genuine issue of material fact. In such cases, however, we begin with the statutory presumption of the validity of a patent and the consequent requirement that the burden of establishing its invalidity rests on the party who asserts it.7
In seeking to sustain the summary judgment in its favor defendant argues that it was proper because each party had filed a cross-motion for summary judgment. Although plaintiff filed no such motion the opinion of the district judge assumed from remarks in plaintiff's brief that he, too, sought summary judgment. But even if these remarks could be deemed the equivalent of a cross-motion by plaintiff for summary judgment,8 it would not serve to avoid a consideration of the correctness of the entry of summary judgment. Cross-motions are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute an agreement that if one is rejected the other is necessarily justified or that the losing party waives judicial consideration and determination whether genuine issues of material fact exist. If any such issue exists it must be disposed of by a plenary trial and not on summary judgment. F.A.R. Liquidating Corp. v. Brownell, 209 F.2d 375, 380 (3 Cir. 1954).
We turn then to the merits.
The district judge granted summary judgment for the defendant on two grounds: (1) Plaintiff's design was obvious in the light of the prior art because what he had done disclosed at best the talent of an adaptor, but not the art of an inventor. "The design as a whole", said the district judge, "would be obvious to a carpenter of ordinary skill familiar with the prior art." (2) The design was not ornamental and was not the product of aesthetic skill and artistic conception and had "no particularly aesthetic appeal in line, form, color or otherwise."
Section 171 of the Patent Act of 1952 provides:
We have held that in order to be patentable a design must be new, original, ornamental and non-obvious to a person of ordinary skill in the art. R. M. Palmer Co. v. Ludens, Inc., 236 F.2d 496, 500 (3 Cir. 1956).9
The standard of non-obviousness under § 103, which the district judge held that plaintiff did not meet, includes the previously developed standard of invention,10 often used synonymously with originality.11 In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed. 2d 545 (1966), the Supreme Court said:
The prior art shows that plaintiff's design at least differed from it in utilizing the gussets and combining them with the separate vertical fence and surrounding the entire pool with the deck and fence to create the effect of a large rectangle over a smaller rectangle. This design is not identical with the prior art and indeed defendant does not seriously contend otherwise.
On the standard of skill in the art, defendant offered no evidence, expert or otherwise. Plaintiff, however, in opposition to the motion for summary judgment offered affidavits and depositions on this subject. An affidavit of Henry S. Fischler, whose application for a patent was held by the Patent Office to constitute an interference with plaintiff's patent application, averred that at the time he made his patent application, International Swimming Pool Corp., his employer, was the dominant corporation in the on-the-ground swimming pool industry and that when International first learned of plaintiff's design it recognized that it was new, original, attractively ornamental and non-obvious not only to persons of ordinary skill in this field, but even to those possessing very considerable skill in the art. Fischler attested to his agreement with this judgment. He averred that because of its high opinion of plaintiff's design International directed him to prepare an application as close to it as possible. Fischler had had eleven years of continuous experience in the on-the-ground swimming pool industry and had worked for a number of manufacturers of such pools. The designs marketed by plaintiff and those who have substantially copied his design account, according to Fischler's affidavit, for approximately ninety per cent of the on-the-ground swimming pool sales in the United States. Plaintiff's company is now dominant in sales and popularity in the industry, which Fischler described as highly competitive. This success he said was not due to superior advertising or marketing, since plaintiff's competitors have also done this, but without the same success. Nor was it due, according to Fischler, to a generally expanding market. Plaintiff's design, Fischler averred, had been copied or imitated innumerable times by competitors, and defendant itself, a former supplier for plaintiff's pool, deliberately copied it.12
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