Scovill Manufacturing Co. v. Roto Broil Corp. of America

• Decision Date: 26 February 1969
• Docket Number: No. 65-C-637.,65-C-637.
• Citation: 304 F. Supp. 834,162 USPQ 341
• Parties: SCOVILL MANUFACTURING COMPANY, Plaintiff, v. ROTO BROIL CORP. OF AMERICA, Defendant.
• Court: U.S. District Court — Eastern District of New York

304 F. Supp. 834

162 USPQ 341

SCOVILL MANUFACTURING COMPANY, Plaintiff, v. ROTO BROIL CORP. OF AMERICA, Defendant.

No. 65-C-637.

United States District Court E. D. New York.

February 26, 1969.

Sandoe, Hopgood & Calimafde, New York City, for plaintiff; by Nichol M. Sandoe, New York City, of counsel.

Lackenbach & Siegel, New York City, for defendant; by Armand E. Lackenbach, New York City, of counsel.

RAYFIEL, District Judge.

This action was brought by Scovill Manufacturing Company, assignee of the design patent in suit, against Roto-Broil Corporation of America (Roto-Broil) for (count 1) the alleged infringement of United States Design Patent 200,905, issued April 20, 1965, for a power-operated knife, application for which had been made on June 29, 1964, and (count 2) for unfair competition arising from the alleged unauthorized use by the defendant of the phrase "the knife with the hole in the handle", adopted by the plaintiff in its advertising to identify and promote the sale of the product in suit, commonly referred to as an electric knife. Jurisdiction is based on Section 1338(a) of Title 28, U.S.C. and the Patent Laws of the United States. The relief sought is for an injunction, an accounting of loss of profits, an assessment of treble damages, and costs and reasonable attorneys' fees. Both plaintiff and defendant are engaged in the manufacture and sale of electrical household appliances, including electric-powered knives.

The defendant contends that the aforesaid patent is invalid, denies that its design is unique or distinctive, or that the Patentees were the original inventors thereof. It claims further that substantial parts thereof have been described and published in many patents granted prior to its issuance to the Patentees, and has incorporated a list thereof in its answer. It contends further (1) that the purported invention referred to in said Letters Patent had been in public use for more than one year prior to the date of the filing of the application therefor; (2) that the said Letters Patent were issued without due, proper and adequate investigation, and that the relevant prior art embodied in the patents cited in the defendant's answer were overlooked by the Commissioner of Patents; and (3) that it has not infringed said patent or been in unfair competition with plaintiff in connection with the sale of its electric knife.

The defendant also asserts a counterclaim for a declaratory judgment decreeing that the plaintiff's patent is invalid and void; for an injunction restraining the plaintiff from claiming that defendant has infringed thereon; and for an accounting of damages arising from plaintiff's aforementioned wrongful acts resulting in a loss of defendant's customers and business.

The issues to be decided are: (1) whether the patent in suit is valid; (2) whether it has been infringed by the defendant; (3) whether the design of the defendant's accused power-operated knife has caused or is likely to cause prospective purchasers of plaintiff's product to be confused as to the source or origin thereof, thereby permitting the defendant to compete unfairly with the plaintiff; and (4) whether the defendant has caused its customers to use the phrase "knife with the hole in the handle" for the purpose of palming off its electric knife as the plaintiff's.

Prior to the trial the parties entered into the following stipulation:

"IT IS HEREBY STIPULATED AND AGREED by and between the parties to the above entitled action that the following facts are uncontested:

1. That United States Letters Patent for a design entitled Power Operated Knife, No. Des. 200,905 were issued to plaintiff Scovill Manufacturing Company on April 20, 1965.

2. That the entire right, title and interest in and to the design invention covered by the said Letters Patent No. Des. 200,905 was assigned to plaintiff Scovill Manufacturing Company by the co-inventors thereof Dave Chapman and Robert C. Le Sueur by an instrument in writing dated June 22, 1964, duly recorded in the United States Patent Office on August 27, 1964 in Reel 1433, Frame 496.

3. That plaintiff has been at all times since April 20, 1965, and is now the owner of the said Letters Patent.

4. That defendant has been, since April 1965, and is now making, using and selling power-operated knives exemplified by the specimen marked for identification plaintiff's Exhibit 1 which is asserted by plaintiff to infringe the design patent in suit.

5. That the said knife, Exhibit 1, is designated by defendant as its Model W-2, and that the design embodied in the said Model W-2 is also embodied in power-operated knives made and sold by defendant which are designated as its Model W-10 and its Model W-25, which are also asserted by plaintiff to infringe the design patent in suit.

6. That Jay-Kay Metal Specialties Corp., a New York corporation, and Peerless Broil-Quick Corp., a New York corporation, are wholly-owned subsidiaries of Roto-Broil Corporation of America, the defendant in this action, and that for purposes of this action, any and all acts of the said Jay-Kay Metal Specialties Corp. and Peerless Broil-Quick Corp. and their respective officers and employees having to do with the manufacture, use or sale of the power-operated knives alleged by plaintiff to infringe the design patent in suit No. D-200,905 shall be deemed to be acts of the defendant Roto-Broil Corporation of America.

7. That since issuance of the patent in suit, electric carving knives have been advertised by

Riviera Appliance Corporation Shetland of Salem Toastmaster Division of McGraw-Edison Co. Sunbeam Corporation

having handles as illustrated by defendant's Exhibits Q, R, S and U respectively.

8. Plaintiff has, since the institution of this suit, used in some of its advertising the expression `The original knife with the hole in the handle'.

9. Plaintiff has advertised that its electric knife with the hole in the handle `puts the weight of the knife under the hand to make carving easier to guide and to control'.

10. Defendant has never used the expression `Knife with the hole in the handle' in its own advertising but has used the expressions `easy-to-grip handle' and `open, sword-grip handle'.

11. Plaintiff, in its line of electric appliances, has sold, prior to the application for the patent in suit and more than one year prior thereto, portable mixers, stationary mixers and steam irons with handles as illustrated in defendant's Exhibit M."

The applicable statutes, contained in Title 35 U.S.Code, so far as they are here pertinent, follow:

Sec. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless —

(b) the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. (Emphasis supplied)

Sec. 103 Conditions for patentability; non-obvious subject matter.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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)

Sec. 171 Patents for designs.

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided. (Emphasis supplied)

Sec. 282 Presumption of validity; defenses.

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

On the basis of the testimony and exhibits received in evidence, the Court finds as follows:

In 1962 General Electric Company entered into the production of an electric-powered carving knife the industrial design patent on which was subsequently issued to it. It was marketed with considerable success. It was powered by an electric motor contained or housed in its handle, which also had a control thereon for releasing the power so that the protruding blades could function as a knife. (Plaintiff's Exhibit 38) (Defendant's Exhibit A)

In the summer of 1963, the plaintiff contracted with Sears, Roebuck & Co., to manufacture for it a similar electric-powered knife, to be sold solely by Sears, and, probably due to the latter's great success in marketing the same, the plaintiff decided to manufacture and sell a similar product as its own. Thereupon, in June, 1963, one Dave Chapman, who had previously designed some of plaintiff's products, was engaged to prepare an appropriate design therefor. After many meetings with a Mr. Wolf, of plaintiff's engineering department, Chapman and a Mr. Le Sueur, one of his employees, produced an acceptable design "in the rough" on August 25, 1963. (Plaintiff's Exhibit 29)

Several models were thereafter made, conforming generally to said design, until January, 1964, when one was finally approved for production. Detailed drawings, specifications for tooling, dies and jibs were prepared for large scale production of the knife by plaintiff's engineering and manufacturing departments in cooperation with Chapman and his staff.

In July, 1964, plaintiff publicly introduced its finished product (Model 270, Plaintiff's Exhibit 7) for exhibition and sale at the Housewares Show in Chicago, Illinois, making its first sale thereof at said show on July 10, 1964 to distributors, and going into large volume production thereof early in the fall of 1964.

In April, 1964, in preparation for the public...