RM Palmer Company v. Luden's, Inc.

• Decision Date: 07 February 1955
• Docket Number: Civ. A. No. 12846.
• Citation: 128 F. Supp. 672
• Parties: R. M. PALMER COMPANY, Plaintiff, v. LUDEN'S, Inc., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

128 F. Supp. 672

R. M. PALMER COMPANY, Plaintiff, v. LUDEN'S, Inc., Defendant.

Civ. A. No. 12846.

United States District Court, E. D. Pennsylvania.

February 7, 1955.

Paul & Paul, Philadelphia, Pa., for plaintiff.

Howson & Howson, Philadelphia, Pa., for defendant.

FOLLMER, District Judge.

R. M. Palmer Company brings this action against Luden's, Inc., charging infringement of its Design Patents No. 157,621 (chocolate rabbit) dated March 7, 1950, No. 161,521 (chocolate duck) dated January 2, 1951, No. 161,522 (chocolate lamb) dated January 2, 1951, and No. 161,865 (chocolate squirrel) dated February 6, 1951, and in addition thereto, charges defendant with unfair competition. Defendant has denied infringement and has challenged the validity of the patents. Both plaintiff and defendant are Pennsylvania corporations engaged in the manufacture of candy, with the principal places of business in the City of Reading in this district.

In 1948 Richard M. Palmer started in the candy business in Reading, Pennsylvania, on a small scale, with seven or eight employees and with secondhand machinery. In 1950 Palmer secured his first patent on a chocolate rabbit, and in the following year he secured patents on a chocolate duck, a chocolate lamb and a chocolate squirrel. On October 18, 1951 Palmer, by written assignment, assigned all four of the said patents to plaintiff.

Prior to 1948 figure candy products were solely of the standard or conventional type, similar to the German "Reiche" molds. The figures were of a realistic type that had been on the market for many years, the animals being in proportion and in natural postures.

Palmer's figures departed from the realistic or conventional type to that of the caricature and in so doing injected into the practically dormant hollow chocolate confection art an element of romanticism which proved to have tremendous sales appeal — for instance,

Easter of 1949 Easter of 1953 Rabbit 18,233 dozen 138,280 dozen Easter of 1950 Easter of 1953 Duck 13,000 plus dozen 29,000 plus dozen Easter of 1951 Easter of 1953 Lamb 14,000 dozen 36,000 plus dozen Squirrel 35,000 dozen 58,000 plus dozen

We are here concerned with design patents which are specifically covered by statute.¹ Since 1842 the statutory requirements for design patents have been that the design be new and original. In 1871 the Supreme Court² in interpreting the Act of 1842 laid down certain fundamental tests which have since become settled case law and were, in fact, incorporated in the Act of July 19, 1952, at which time the patent statutes were "completely rewritten".³ The Gorham case, supra, added a new requirement as follows, 14 Wall. at page 524:

"The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. * * *" (Emphasis supplied.)

Consequently, since the Gorham case the courts have uniformly held as requirements for patentability of designs, novelty, originality and ornamentation, i. e., that they be new, original and ornamental (decorative). As above indicated, these three tests (1 and 2 statutory and 3 case) were incorporated in the Act of 1952.

The purpose back of the design patent legislation has been well stated in Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 6 Cir., 106 F.2d 554, 559, as follows:

"* * * It was the intent of the Congress in the adoption of the design patent law to encourage ornamentation and beautification in manufactured articles so as to increase their salability and satisfy the aesthetic sense of the purchasers."⁴

In addition to the above, Section 103 of the Act of 1952 provides as follows:

"A patent may not be obtained * * *, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made." (Emphasis supplied.)

The general part of the Committee Report, with reference to Section 103, 35 U.S.C. §§ 1 to 110, Commentary, Page 20, states as follows:

"`Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of the courts and in writing. Section 103 states this requirement in the title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented.

"`That provision paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases.'"

At this point it might be appropriate to call attention to the last sentence of Section 103, supra. In 1941 the Supreme Court in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 41, 86 L.Ed. 58, in the following words, "the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling", injected into the matter of patentability a new subjective test which immediately became known as the "flash of genius test."

This additional requirement met with widespread opposition which was well expressed in Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 7 Cir., 132 F.2d 812, 817, as follows:

"The test of a `flash of genius' should be rejected not only because it is incapable of acceptable definition but because it injects into the statute something not appearing therein. The Federal decisions covering a century contain many to the effect that it is the fact of accomplishment, — novelty appearing, rather than the method of accomplishment with which judicial inquiry is concerned."

It was the intention of Congress in Section 103 to eliminate the rigid subjective "flash of genius" requirement. As stated in the Commentary on The New Patent Act, supra, page 23, "The Revision Note adds in explanation that it is immaterial whether it resulted from long toil and experimentation or from a flash of genius. This sentence in the section further indicates the attitude of Congress in enacting the new patent act and should have a bearing on the interpretation of section 103 as a whole."

The new act also provides, Section 282:

"A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it."

Thus we find in statutory form a confirmation of that which was case law for many years prior thereto.⁵

As related to the chocolate industry, I find nothing in the prior art which anticipates plaintiff's designs. I do not understand that defendant claims any such anticipation. Prior patents (Wolf Design Patent No. 155,254 and Woods Design Patent No. 155,115, both toy animal figure design patents) now relied upon by defendant were considered by the Patent Examiner during the prosecution of Palmer's patent applications. In addition thereto, defendant at the trial offered thirty-five publications showing toys, playthings, dolls, novelties and the like in the form of animals, all of which appear to be made of rubber, plastic, wood, stuffing and a great variety of other materials. None of this art is analogous to the art of designing hollow chocolate animals figures⁶ and none shows animals resembling the Palmer patented designs. As a matter of fact, defendant frankly stated that these references were offered merely to show the state of the art and not to show anticipation.⁷

The fact that defendant seems to belabor at considerable length the idea that by piecing together legs, ears, eyes, bodies, etc., of these prior art animals one might create designs is indicative of defendant's difficulty in finding any prior designs similar to Palmer's.⁸

Defendant's reply brief on this question of validity takes on a Janus-faced appearance. It states (P. 3 R.B.):

"* * * the patentee merely recognized a trend which he admirably describes on pp. 25, 26 of the record. The trend is illustrated in the prior art exhibits introduced by Defendant (Ex. D-10M).

"The principal evidence that Plaintiff relies upon in support of invention is the commercial success achieved. This argument is a very unsafe one since (as the authorities cited in our main brief pp. 31, 32 point out) commercial success may be due to factors other than invention. If such factors are adequate to account for commercial success, the argument loses its force.

"Plaintiff treats this question in a section entitled: `The Record Tells a Story of Invention'. (Plaintiff's main brief p. 10.) We disagree. It is clear from the record that Mr. Palmer entered a static field. * * *" (Emphasis supplied.)

Again on page 36 of defendant's main brief it refers to the hollow chocolate candy art as "an old and stagnant art in which it was inevitable that such figures would make their appearance as they had in other arts, Mr. Palmer or no Mr. Palmer." By the same token it might be said that Mr. Edison or no Mr. Edison it is inevitable that to-day we should be enjoying the incandescent light.

A static trend? Webster's New International Dictionary defines "trend" as "Underlying or prevailing tendency or inclination; general direction taken by something...