ROPAT CORPORATION v. McGraw-Edison Co., Civ. A. No. 74 C 3459

• Decision Date: 05 May 1975
• Docket Number: 74 C 205.,Civ. A. No. 74 C 3459
• Citation: 393 F. Supp. 1108
• Court: U.S. District Court — Northern District of Illinois
• Parties: ROPAT CORPORATION, Plaintiff, v. McGRAW-EDISON CO., and Marshall Field & Co., Defendants.

393 F. Supp. 1108

ROPAT CORPORATION, Plaintiff, v. McGRAW-EDISON CO., and Marshall Field & Co., Defendants.

Civ. A. Nos. 74 C 3459, 74 C 205.

United States District Court, N. D. Illinois, E. D.

May 5, 1975.

Richard R. Trexler, Olson, Trexler, Wolters, Bushnell & Fosse, Ltd., Chicago, Ill., for plaintiff.

James Van Santen, Hill, Gross, Simpson, Van Santen, Steadman, Chiara & Simpson, Chicago, Ill., for McGraw Edison.

Clarence J. Fleming, McDougall, Hersh & Scott, Chicago, Ill., for Marshall Field.

MEMORANDUM OPINION AND ORDER

McLAREN, District Judge.

This matter is before the Court on the motion of the defendant, Marshall Field & Co., for summary judgment.¹ For the reasons set forth below, the motion will be granted.

This action involves alleged infringement of U.S. Letters Patent No. 3,611,910 ('910), a corn popper. (For a complete discussion of the patent, see this Court's prior opinion, Ropat Corp. v. West Bend Co., 382 F.Supp. 1030 (N. D.Ill. Ropat I 1974). The defendant claims that the utility '910 patent is invalid because of double patenting, created by the prior award of Design Patent No. 206,674 ('674) to the same inventor four years prior to issuance of the '910 patent.² (Both patents are set forth in the appendix.) The '674 patent was issued to the same inventor and was assigned, along with the '910 patent, to the plaintiff.

The first issue is the appropriateness of summary judgment. The Court believes that the standards it set forth in Ropat I, at 1033-34, are applicable here. The devices are simple and there are no real factual disputes. Further, the parties have not challenged the Court's ability to determine the issues at this stage. It is now necessary to briefly discuss the two patents.

The '674 patent shows the design for a corn popper. The '910 patent describes a corn popper which operates in a particular manner. See Ropat I, supra at 1031-33. Figure 1 of both patents describes devices identical in appearance. Figure 3 of both patents shows the exact same view from the top, and Figure 4 shows a side view. See Appendices A and B. The '674 patent was not cited by the examiner in the '910 patent.

Under the judicially-created doctrine of double patenting, a prior design patent can invalidate a later-issued utility patent. See Application of Thorington, 418 F.2d 528 (CCPA 1969). The doctrine was created to prevent the extension, beyond its lawful limits, of the patent monopoly. The doctrine further recognizes that double patenting can be of the "same invention" type or "obviousness" type. Id.

Under the "same invention" test, it is necessary that the features producing the novel aesthetic effect in the design patent are the same which produce the novel structure in the utility. In re Dubois, 262 F.2d 88, 90 (CCPA 1958). The "obviousness" test requires that to sustain the patent, any differences must be patentable, or non-obvious.

In the instant case, it is evident that the same invention is involved. To counter this plaintiff makes several contentions. First, it relies on the presumption of validity. However, since the '674 patent was not cited by the examiner, and plaintiff has provided no evidence from the file wrapper history, the presumption is necessarily weakened. See Mr. Hanger, Inc. v. Cut Rate Plastic Hangers, Inc., 372 F.Supp. 88, 91-92 (E.D.N.Y.1974).

Plaintiff next makes reference to the claims of the utility patent and attempts to prove that certain elements are not present in the design patent. Plaintiff refers to the fact that a pan to hold the corn is not present, or a heating means, or that the volume of the pan is less than that of a full charge of popped corn or the dome. These elements are not significant however, since the design patent deals with a corn popper, which requires a heating means and requires that the popped corn be placed somewhere. From Figure 1 of the '674 patent it is evident that the corn is placed inside the base, since the drawing shows that the dome is removable.

The final major point raised by plaintiff is crucial to the Court's determination. The important element of the invention is that the popper can be inverted, the base removed and the corn served in the dome. Plaintiff asserts that nowhere in the design patent is this disclosed.

However, if one looks at the design patent one finds that this important feature is disclosed. One need only ask: How do you get the popcorn out after it is popped?" to realize that this can only be accomplished by inverting the...