Thomas America Corp. v. Fitzgerald
| Decision Date | 01 December 1994 |
| Docket Number | No. 94 Civ. 0262 (CBM).,94 Civ. 0262 (CBM). |
| Parties | THOMAS AMERICA CORPORATION, a Corporation, Plaintiff, v. Robert M. FITZGERALD, an Individual, Defendant. |
| Court | U.S. District Court — Southern District of New York |
John N. Bain, Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart & Olstein, Roseland, NJ, for plaintiff.
Robert M. Fitzgerald, pro se.
The instant case has a protracted and muddied history. The Defendant, Robert M. Fitzgerald, is the owner of United States Design Letters Patents No. Des. 297,532 (the "`532 patent") and No. Des. 297,533 (the "`533 patent") and of United States Trademark Registrations No. 1,479,454 ("The Country Store Telephone") and No. 1,479,453 ("The County Line Telephone"). On two prior occasions, Fitzgerald has sued the Plaintiff herein, Thomas America, alleging patent and/or trademark infringement in connection with the latter's sale of its model PP9 telephone. Thomas America filed the instant action principally to seek declaratory relief as to Fitzgerald's patents and trademarks. Plaintiff additionally asserts pendant state law claims of unfair competition and breach of settlement agreement.
The court's jurisdiction over the federal law claims is invoked under both the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201-02 (1993), and the laws of the United States regarding actions related to parents and trademarks, 28 U.S.C. §§ 1331, 1338(a) (1988). The court's jurisdiction over the state law claims is invoked under 28 U.S.C. §§ 1332(a) and (c), 1338(b), and 1367(a) (1988).
Plaintiff has filed two separate motions for partial summary judgment. The first goes to the issue of patent invalidity, unenforceability and noninfringement; and the second goes to the issue of trademark abandonment. The court heard oral argument on both motions on November 18, 1994. For the reasons discussed below, the court grants plaintiff's first motion and denies its second.
Defendant is allegedly the owner of two design patents that cover wood simulated, wall mounted telephones that are purposefully reminiscent of public domain telephones in existence in the early part of this Century. The ornamental characteristics of the design covered by the '533 patent include the following:
The '532 patent also covers a wood simulated, wall mounted telephone which was purposefully designed to be reminiscent of public domain telephones in existence in the 1920's. The telephone design which is the subject matter of this patent contains the identical features of the '533 patent, except that the rectangular backplate is larger than that shown in the '533 patent, thus accommodating the mounting of a simulated wood writing desk below the box-like body.
On March 29, 1992, Thomas America began selling an antique looking, country style, wooden wall telephone — Thomas America's model PP9 — that, like Fitzgerald's phones is reminiscent of telephones in use in the 1920's. Prior to Thomas America's introduction of this phone, then-counsel for Fitzgerald sent Thomas America a letter, dated March 13, 1992, threatening to sue Thomas America for infringement of the '532 and '533 patents should Thomas America manufacture and sell its model PP9. For over two and one-half years since then, the parties have been in and out of federal courts across the country doing battle over these patents. In its first motion for partial summary judgment, Plaintiff seeks to end this dispute by having the '532 and '533 patents declared invalid. For the reasons discussed below, the court will grant that relief.
Pursuant to Rule 56 of the Federal Rules of Civil Procedure, summary judgment should be granted when the court concludes from the record before it that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509, 91 L.Ed.2d 202 (1986).
The mere existence of disputed facts will not preclude entry of summary judgment. See, e.g., Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 11-12 (2d Cir.1986), cert. denied, 480 U.S. 932, 107 S.Ct. 1570, 94 L.Ed.2d 762 (1987); Cubby, Inc. v. CompuServe Inc., 776 F.Supp. 135, 138 (S.D.N.Y.1991); United Bank of Kuwait PLC v. Enventure Energy Enhanced Oil Recovery Assoc., 755 F.Supp. 1195, 1199 (S.D.N.Y.1989). Rather, "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510; see also Herbert Constr. Co. v. Continental Ins. Co., 931 F.2d 989, 993 (2d Cir.1991).
Once the moving party meets its burden by "pointing out the absence of evidence to support the nonmovant's claims," Citizens Bank of Clearwater v. Hunt, 927 F.2d 707, 710 (2d Cir.1991) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553-54, 91 L.Ed.2d 265 (1986)), the burden shifts to the nonmoving party to establish that a genuine issue of fact exists for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. at 250, 106 S.Ct. at 2511.
The nonmoving party must then produce Anderson v. Liberty Lobby, Inc., 477 U.S. at 249-50, 106 S.Ct. at 2511; see also Matsushita Elec. Indus. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). The nonmoving party may not simply rely upon "speculation, conclusory allegations, and mere denials ... to raise genuine issues of material fact." National Westminster Bank v. Ross, 676 F.Supp. 48, 51 (S.D.N.Y.1987); see also Delaware & Hudson Ry. Co. v. Conrail, 902 F.2d 174, 178 (2d Cir.1990), cert. denied, 500 U.S. 928, 111 S.Ct. 2041, 114 L.Ed.2d 125 (1991). Rather, the nonmoving party "must provide `concrete particulars' showing that a trial is needed, and `it is not sufficient merely to assert a conclusion without supplying supporting argument or facts.'" R.G. Group, Inc. v. Horn & Hardart Co., 751 F.2d 69, 77 (2d Cir.1984) (citation omitted); see also Resource Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 139 (2d Cir.1991).
Thomas America argues in essence that the '532 and '533 patents are invalid because the designs they cover are obvious in view of the prior art. The requirement of non-obviousness for a patent is provided in 35 U.S.C. § 103 which states in pertinent part that:
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. 35 U.S.C. § 103 (1988).
This section is made applicable to design patents by 35 U.S.C. § 171. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed.Cir.), cert. denied, ___ U.S. ___, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993). In applying this section, the Supreme Court has put forth the following guidelines:
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art are to be resolved. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).
When analyzing a design patent, "obviousness is determined from the vantage of `the designer of ordinary capability who designs articles of the type presented in the application.'" Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564 (Fed. Cir.1988) (quoting In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A.1981).
As evidence of prior art, Thomas America refers to reproduction telephones previously made both by Fitzgerald himself as well as by other manufacturers. Some of these were disclosed to the United States Patent & Trademark Office ("PTO") in connection with Fitzgerald's applications and some were not. Among the examples of Fitzgerald's own prior art cited by the Plaintiff are telephones that appeared in Spiegel catalogs from Spring 1986, Fall 1986, and Spring 1987. (Gleason Decl., Ex. D.) In deposition testimony given in one of the prior actions between the parties to the instant case, Fitzgerald identified six differences between his prior telephones and the telephones at issue:
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