Transmatic, Inc. v. Gulton Industries, Inc., 78-1113

• Decision Date: 19 June 1979
• Docket Number: No. 78-1113,78-1113
• Citation: 202 USPQ 559,601 F.2d 904
• Parties: TRANSMATIC, INC., Plaintiff-Appellee, v. GULTON INDUSTRIES, INC., and Patent License Corp., Defendants-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 904

601 F.2d 904

202 U.S.P.Q. 559

TRANSMATIC, INC., Plaintiff-Appellee, v. GULTON INDUSTRIES, INC., and Patent License Corp. Defendants-Appellants.

No. 78-1113.

United States Court of Appeals Sixth Circuit.

Argued April 11, 1979.

Decided June 19, 1979.

Robert G. Mentag, Detroit, Mich., Morris Relson, New York City, for defendants-appellants.

Ernie L. Brooks, Reising, Ethington, Barnard, Perry & Brooks, Southfield, Mich., for plaintiff-appellee.

Before CELEBREZZE and ENGEL, Circuit Judges, and PECK, Senior Circuit Judge.

CELEBREZZE, Circuit Judge.

A utility patent, sometimes referred to as a mechanical patent, may be obtained by an inventor for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." ¹ A design patent may be procured for "any new, original and ornamental design for an article of manufacture." ² It is also a general rule of patent law that one may obtain only one patent per invention double patenting is not allowed and results in all but the first-issued patent on the invention being declared invalid. The instant case, one of first impression in this circuit, requires this court to analyze the inter-relationship of these principles.

Plaintiff-appellee, Transmatic, Inc., brought this action seeking a declaration that a utility patent held by defendants-appellants, Gulton Industries, Inc. and Patent License Corp., was invalid. The grounds asserted for such invalidity included that the utility patent constituted double patenting of a previously issued design patent held by Gulton and Patent License. The district court agreed that double patenting had occurred and granted summary judgment in Transmatic's favor. 442 F.Supp. 911, 196 U.S.P.Q. 788 (E.D.Mich.1977). We reverse.

I.

The patents involved in this lawsuit are both for interior lighting fixtures which are employed along the ceilings of buses, subway cars, and other mass transit coaches. Their general use is depicted in the following figure:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The utility patent, No. 3,210,875 (hereinafter " '875 patent" or "utility patent"), was applied for on February 5, 1963, and issued on October 12, 1965, for a term of seventeen years. The named inventor was Norbert Schwenkler. The patent was assigned to Patent License, which is a wholly owned subsidiary of Gulton, the exclusive licensee. The lighting fixture is shown in the following cross-sectional figure:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The four claims of the '875 patent are:

1. A cornice type lighting fixture comprising a light source housing, a light transmitting panel, and a light source in said housing, said panel including a pair of lens sections disposed in approximately right angular and spaced relation for controlled multiple directional concentrated light transmission, one of said lens sections being at least generally remote from said source, a translucent display section intermediate said lens sections for illumination of a display forming a part thereof, said display section being of an area which is substantially greater than the area of either of said lens sections, and means on said display section for detachably mounting a display thereover, said housing including light reflective inner surface portions arranged to direct light from said source at least to said display section and remote lens section.

2. The fixture of claim 1 wherein said display section is of arcuate configuration with said display mounting means arranged along opposite margins thereof for retention of a display against the outer surface of said display section in arcuately conforming relation.

3. The fixture of claim 1 wherein said panel is of generally U-shape longitudinally thereof and projects from said housing, said lens sections being provided with means attaching said panel to said housing.

4. The fixture of claim 1 wherein said housing includes a specular inner surface portion and a light diffusing inner surface portion, said specular surface portion being arranged for the reflection of light toward said remote lens section and said diffusing surface portion being arranged for the reflection of light toward said display section.

Appendix, at 31; Claims of Utility Patent.

The design patent, Des. No. 201,380 (hereinafter " '380 patent" or "design patent"), was applied for on February 14, 1963, after the utility patent application, and issued on June 15, 1965, before issuance of the utility patent, for a term of fourteen years. Again, the named inventor was Norbert Schwenkler and Patent License was the assignee and Gulton the exclusive licensee. The fixture is shown in the following figures:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The sole claim of the '380 patent is:

The ornamental design for a lighting fixture, as shown and described.

Appendix, at 32; Claim of Design Patent.

In the mid-1970's Transmatic began to manufacture a lighting fixture similar to those covered by these patents. Gulton learned of this development and sought to persuade potential Transmatic customers that Transmatic's fixtures would infringe upon Gulton's patents. This led to Transmatic's filing of this lawsuit seeking a declaration that the '875 patent was invalid and not infringed by Transmatic's lighting fixtures. ³

After considerable discovery, Transmatic moved the district court to enter summary judgment in its favor declaring the '875 patent invalid. Transmatic argued that the '875 constituted double patenting of the later filed but earlier issued '380 patent. ⁴ The district court agreed, entered summary judgment in Transmatic's favor and entered an order declaring the '875 patent invalid. The significance of invalidating the '875 patent stems from its longer term, as a utility patent, of seventeen years, which extends to October 1982. ⁵ The term of the earlier issued and unchallenged '380 patent, as a design patent, is only fourteen years, which extends only to June 1979. ⁶ Gulton and Patent License appeal, arguing that the '875 patent is not invalid for double patenting. ⁷

II.

We initially address appellants' argument that the rule against double patenting has no application when comparing utility and design patents. Noting the separate statutory authorizations for the two types of patents (35 U.S.C. §§ 101 & 171), they argue that applying double patenting principles in this context would run afoul of the rule of statutory construction that separate statutory enactments should be given their full effect. They further note that Congress has created four devices to protect intellectual and industrial property copyright, trademark, design patent and utility patent. They argue that just as copyright registration of an ornamental design has been held not to bar a design patent on the identical design, Application of Yardley, 493 F.2d 1389, 1393-94 (Cust. & Pat.App.1974), ⁸ and a design patent on the configuration of a bottle has been held not to bar trademark registration of the same bottle, Application of Mogen David Wine Corp., 328 F.2d 925, 51 CCPA 1260 (1964), so should a design patent be held not to bar a utility patent on the identical invention. ⁹ In sum, they contend the four Congressionally created protections are mutually exclusive so that double patenting would apply only when comparing two utility patents or two design patents.

This argument is not insubstantial. There is some support for this position in Gross v. Norris, 18 F.2d 418, 420 (D.Md.1927), Aff'd in part, rev'd in part, on other grounds, 26 F.2d 898 (4th Cir. 1928). The argument has been expressly rejected, however, by the Court of Customs and Patent Appeals. Application of Thorington, 418 F.2d 528, 535-37, 57 CCPA 759 (1969), Cert. den. 397 U.S. 1038, 90 S.Ct. 1356, 25 L.Ed.2d 649 (1970), Citing cases. ¹⁰ We elect to follow the CCPA.

The CCPA conceded in Thorington that there is no statutory basis for applying double patenting principles in the design vs. utility context, as there is when comparing utility patents or design patents. ¹¹ Rather, the rule in this context is based upon a judicially recognized doctrine that a holder of a patent may not extend the term of his patent beyond that permitted by law. We accept this reasoning and hold that the rule against double patenting applies in the utility vs. design context. ¹²

III.

Having decided that double patenting applies to this case, its application is no easy task. The judicially created rule against double patenting is of long standing. See Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed.2d 121 (1894), Citing cases. But the issue almost always arises in cases involving either two utility patents or, less frequently, two designs patents. ¹³ One recent case involving utility and design patents is Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir. 1976), wherein the court stated:

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). However, each such patent must claim a separate, distinct patentable invention. In re Barber, 81 F.2d 231 (23 CCPA 834) (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...