Ropat Corp. v. McGraw-Edison Co., GRAW-EDISON
| Decision Date | 04 June 1976 |
| Docket Number | 75-1572,GRAW-EDISON,Nos. 75-1571,s. 75-1571 |
| Parties | ROPAT CORPORATION, Plaintiff-Appellant, v. McCOMPANY, and Marshall Field & Company, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Richard R. Trexler and Caliste J. Alster, Chicago, Ill., for plaintiff-appellant.
Bruce B. Krost, Cleveland, Ohio, Dallett Hoopes, Waterbury, Conn., Clarence J. Fleming, James Van Santen, Chicago, Ill., for defendants-appellees.
Before CASTLE, Senior Circuit Judge, and CUMMINGS and SPRECHER, Circuit Judges.
The sole question presented in these appeals is whether utility patent No. 3,611,910, assigned to plaintiff-appellant Ropat Corporation and relating to a "pop-flip-serve" corn popper is invalid due to double patenting over the prior issued design patent No. 206,674, also assigned to Ropat and relating to a corn popper.
The design patent was issued on January 10, 1967 and claims "The ornamental design for a corn popper substantially as shown" and includes the following diagrams:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
It was granted for a term of 14 years.
The utility patent was subsequently issued nearly five years later, on October 12, 1971, for a term of 17 years. 1 Its claims describe a corn popper primarily composed of a base and cover. 2 The base contains a shallow cooking vessel or pan and a heating element. The dome cover is described as possessing a volume substantially greater than that of the pan so that the corn rises and fills the dome as it is popped. The dome has a flat top so that the popper may be inverted, the base removed, and the popped corn served from the dome. The utility patent includes the following diagrams:
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Ropat brought suit against various defendants, including appellees McGraw-Edison Company and Marshall Field & Company, for infringement of the utility patent. Appellees raised the defense of double patenting in their motion for summary judgment, arguing that the utility patent was invalid because both it and Ropat's earlier issued design patent claimed the "same invention." Appellees maintained that the utility patent unlawfully extended by an additional eight years Ropat's monopoly which it received by the issuance of the design patent. The district court granted summary judgment in favor of appellees, finding that "the utility patent invention is inherent in the design patent" and hence "the two inventions (claimed in the two patents) are identical." 3 393 F.Supp. 1108, 1110 (N.D.Ill.1975). Ropat appeals. We affirm.
The judicially-created rule against double patenting, emanating from the early Supreme Court decision in Miller v. Eagle Manufacturing Company,151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121 (1894), is "based upon the idea that the power to create a monopoly is exhausted by the first patent, and that a new and later patent for the same invention would operate to extend or prolong the monopoly beyond the period allowed by law." J. R. Clark Company v. Jones & Laughlin Steel Corporation, 288 F.2d 279, 281 (7th Cir. 1961); see also Application of Thorington, 418 F.2d 528, 536, 57 C.C.P.A. (1969). The patent laws, of course, provide that a design patent and a utility patent may well be issued on the same construction. See 35 U.S.C. §§ 101 (utility), 171 (design). 4 However, each such patent must claim a separate, distinct patentable invention. In re Barber, 81 F.2d 231 (Cust. & Pat.App. 1936).
In order to determine whether the "same invention" is claimed in two patents, their claims must be compared to determine whether they define the same subject matter. Application of Vogel, 422 F.2d 438, 441, 57 C.C.P.A. 920 (1970). And when the double patenting situation involves a design patent and a utility patent, we recognize that it is "not easy to compare utility word claims with design picture claims in determining if the 'same invention' is being claimed." Application of Swett, 451 F.2d 631, 635, 59 C.C.P.A. 726 (1971). In comparing their claims, the mere use of the same design claimed in the design patent as the vehicle for describing the utility claimed in the utility patent is not dispositive. Anchor Hocking Corp. v. Eyelet Specialty Company, 377 F.Supp. 98, 101 (D.Del.1974); Appel v. Lilling, 60 F.Supp. 749 (S.D.N.Y.1945).
The law of double patenting in the precise situation where a design patent and a utility patent are involved is plagued by a dearth of case law. A review of the cases which do exist reveals various "tests" for determining whether a design patent and a utility patent claim the "same invention." We believe the best formulation of the applicable standard in this situation is that set forth in such decisions as In re Hargraves, 53 F.2d 900 (Cust. & Pat.App. 1931), and Application of DuBois, 262 F.2d 88, 46 C.C.P.A. 744 (1958). Those cases state that double patenting exists if the feature in which the novel esthetic effect resides is the identical feature which produces the novel function so that a structure embodying the mechanical invention would of necessity embody the design, and vice versa. 5 See also In re Barber, supra, 81 F.2d at 232; In re Phelan, 205 F.2d 183, 184, 40 C.C.P.A. 1023 (1953).
In the instant case, it is readily apparent that the features in which the novel esthetic effect reside are the identical features which produce the novel function claimed in the utility patent. The novel feature constituting the design claimed in the design patent is the large flat-top dome cover, the volume of which is greater than that of the cooking pan in the base. This novel design feature clearly produces the novel "pop-flip-serve" function which forms the essence of the utility patent claims.
Ropat insists, however, that its design is directed to the ornamental appearance of the structure shown in the design patent; namely, the precise shape of the dome and base as well as the shape and placement of the handles and legs. Ropat points out that these aspects are nowhere described or claimed in the utility patent. Thus, Ropat argues that double patenting has not occurred in the instant situation since the invention claimed in the utility patent can be constructed without "copying" the precise shape of the dome, base, handles, or legs claimed in the design patent. These contentions, however, are irrelevant. Double patenting in the design-utility situation cannot turn on niceties of precise ornamentation (see, e.g., Application of DuBois, supra; Appel v. Lilling, supra ), but rather must turn on the presence or absence of design features which produce the novel function claimed in the utility patent. If narrow, non-functional decorative variations which contribute in no way to the novel function were allowed to enter the inquiry, it would become virtually impossible ever to find double patenting in the design-utility situation. The narrow concept of "design" present in 35 U.S.C. § 171 cannot be used to preclude double patenting in such circumstances. It is immaterial that the design patent is "replete" with ornamental features which are neither described nor claimed in the utility patent. A design patent and a utility patent need not claim every incidental feature of the other in order for both to claim the "same invention."
Ropat contends, however, that the district court improperly "read into" the design patent a feature not claimed or described which was crucial to its double patenting finding; namely, the shallow cooking pan in the base. Ropat maintains that the novel "pop-flip-serve" function claimed in the utility patent cannot be produced by the design claimed in the design patent since neither the cooking vessel nor the volume of the cooking vessel are claimed in the design patent. If the volume of the cooking pan is not described by the illustrations of the design patent, Ropat argues, then one does not know from the design patent whether the volume of the dome is greater than the cooking vessel. We disagree.
A design patent is granted pursuant to 35 U.S.C. § 171 on an article of manufacture as well as for a distinctive design. Being a corn popper, the article of manufacture present in the design patent here must necessarily possess a cooking vessel and heating element in its base. Compare Application of Thorington, supra, 418 F.2d at 533. Regardless of the exact volume of the cooking pan in the popper claimed in the design patent, it readily appears from the design patent that its volume necessarily would be less than that of the dome.
Ropat next contends that a person following its design patent would not necessarily come within its utility patent. We again disagree. A popper of such design would clearly infringe Ropat's utility...
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