Trimble Products Incorporated v. WT Grant Company

• Decision Date: 21 March 1968
• Docket Number: No. 64 Civ. 637.,64 Civ. 637.
• Citation: 283 F. Supp. 707
• Parties: TRIMBLE PRODUCTS INCORPORATED, Plaintiff, v. W. T. GRANT COMPANY and Sears Roebuck & Co., Defendants.
• Court: U.S. District Court — Southern District of New York

283 F. Supp. 707

TRIMBLE PRODUCTS INCORPORATED, Plaintiff, v. W. T. GRANT COMPANY and Sears Roebuck & Co., Defendants.

No. 64 Civ. 637.

United States District Court S. D. New York.

March 21, 1968.

Morgan, Finnegan, Durham & Pine, New York City, for plaintiff.

Bader & Bader, New York City, for defendant.

OPINION

MOTLEY, District Judge.

This patent infringement action was instituted by plaintiff, Trimble Products Incorporated, the owner of two United States Letters Patent relating to playpens for babies. Jurisdiction is predicated on 28 U.S.C. § 1338(a). The relief sought is the usual request for injunction and damages.

The first patent, # 2,908,021, the utility patent, describes the structure of the playpen.¹ It contains 13 claims. Plaintiff alleges that the playpen sold by defendant W. T. Grant Company infringes claims 1, 3, 4, 6, 10, 11 and 13 of the utility patent. Plaintiff alleges that the playpen sold by defendant Sears Roebuck & Company infringes claims 1, 3, 6, 10, 11 and 13 of the utility patent.² The utility patent was applied for on December 26, 1957, and issued October 13, 1959. The second patent, #186,358, is a design patent applied for on January 16, 1958, and issued on October 20, 1959. It contains one claim, i. e., "the ornamental design for a baby's playyard substantially as shown."³ Plaintiff alleges the design patent has been infringed by the accused playpens. Both patents were issued on the application of James F. Fulton, the inventor, which he later assigned to plaintiff's predecessor.

The structure of the playpen in the utility patent is succinctly described by plaintiff as follows:

A divided hingedly interconnected floor section at the base of the playyard enclosure; a divided hingedly interconnected upper rectangular frame forming the top edges of the enclosure; a flexible skirt extending between the floor section and the upper frame forming the walls of the playyard enclosure; a pair of aligned parallel, collapsible "A" frames on opposite sides of the above structure for supporting the same and rendering it easily foldable.

A pair of aligned legs on opposite sides of the enclosure, each pair of aligned legs pivotally connected to the upper frame and diverging downward therefrom to form an inverted "V" and a brace extending between each leg and its associated frame member supporting the upper frame of the playyard when unfolded.

The hinged and pivotal connections are arranged so that once the braces are broken, the legs, frame, floor, and body of the playyard are all folded into a flat, collapsed condition in a single simple motion.⁴

Plaintiff's expert witness described the design patent as follows:

(a) All of the vertical supporting structure is centrally located on only two opposed sides of the playyard, the structure on each side including only two legs and two braces, each set of legs and braces lying in a substantially single vertical plane. The legs and braces do not extend upwardly beyond the level of the top frame and the floor section extends laterally well beyond the legs at the point where it is mounted thereto.

(b) When unfolded and viewed from one end, there is a completely unobstructed expanse of the open mesh net enclosure, sweeping from the top to the bottom of the playyard.

(c) When viewed from the side, the sharply defined angles between the legs and braces create a pronounced geometric pattern of an inverted V and a W against the meshed background of the netted enclosure. Also, the low setting of the floor and its considerable width across the legs, creates an impression of stability.

(d) When viewed from the top, the bold, completely unencumbered rectangular outline of the playyard is impressive.

(e) When unfolded, but with one end dropped down, the top frame and crumpled mesh of the dropped end contrast sharply with the opposite end which remains upright and taut, creating a striking impression on the aesthetic sense of the observer.⁵

Plaintiff claims:

1) Fulton's inventions produced the first major advance in the playpen art and obsoleted prior art structures;

2) His radical departure from prior art techniques solved a long felt need and produced new, unexpected, and surprising results;

3) Fulton's inventions were immediately recognized throughout the industry and have been a striking commercial success;

4) Fulton's inventions were recognized by Tigrett Industries, Inc., of Jackson, Tennessee, the manufacturer of the playpens sold by defendants, through its slavish copies of the inventions, and

5) The patents in suit have been infringed by the Tigrett slavish copies.

Defendants, W. T. Grant Company and Sears Roebuck and Company, admit selling a playpen manufactured by Tigrett. Tigrett is supplying the defense of this suit although not named as a party in this action.⁶ Defendants plead two major defenses which by a pretrial order became the issues tried: 1) the invalidity of the patents in suit, and 2) lack of infringement. Defendants' chief claim with respect to the invalidity of the patents in suit is that they lack invention over the prior art. More specifically, defendants assert: 1) each of the elements contained in the utility patent is found in one of the several prior art references on which defendants rely; 2) the utility patent is a combination of these prior art references and was directly anticipated by the Werner patent, and 3) the result of the combination in the Fulton patents fails to meet the test of non-obviousness. Title 35 U.S.C. §§ 101-103. The same claim is made by defendants with respect to the design patent. 35 U.S.C. § 171. In addition, defendants claim that the design patent is invalid because non-ornamental and dictated solely by mechanical and functional requirements of the utility patent.

Assuming, arguendo, the validity of the patents in suit, defendants deny infringement on the ground that as to each accused structure there is a departure from the Fulton playpen.

These differences with respect to the utility patent are:

1) The Grant structure does not have a pair of supporting members hingedly connected together at their inner ends;

2) The Sears structure does not have the supporting members hingedly connected since they are connected by a link.

The differences with respect to the design patent are:

1) The Grant structure has no truss member supporting the floor sections. The mesh in the netting of the Grant structure is hexagonal as opposed to square in the Fulton structure;

2) The Sears structure has a floor which is divided into equal halves whereas the Fulton structure has its floor section in unequal units. There are also no truss members supporting the floor sections of the Sears playpen. The mesh in the netting of the Sears model is also hexagonal.

Invalidity of Patents

Plaintiff admits that upon the trial defendants were able to demonstrate through the testimony of an expert witness that the individual elements of the Fulton invention were known at the time the invention was made. Plaintiff properly asserts, however, that the fact that an invention is a combination of old elements is not determinative of the issue of patentability. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); United States v. Adams, 383 U.S. 39, 50, 51, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268 (2d Cir. 1967). In order to dispose of the combination as non-patentable on the ground that it is not new, it must be proved that the combination and its result were known or disclosed in one of the ways defined in 35 U.S.C. § 102. Graham v. John Deere Co., supra. This burden defendants failed to meet as set forth below. 35 U.S.C. § 282; Rich Products Corporation v. Mitchell Foods, Inc., 357 F.2d 176, 181 (2d Cir. 1966).

The fact that the invention consists of a result from a combination of old elements which has not before been achieved likewise does not dispose of the issue of patentability. There remains, as urged by defendants, the crucial test of non-obviousness. Graham v. John Deere Co., supra. Plaintiff denies that the differences between the prior art and the subject matter as a whole of the claimed inventions would have been obvious to a hypothetical mechanic chargeable with knowledge of the prior art at the time of the Fulton inventions. Plaintiff relies heavily upon the statutory presumption of validity. 35 U.S.C. § 282.

After a trial and review of the evidence, particularly the prior art references relied upon by defendants which include some not cited by the Patent Office, thus weakening the statutory presumption, Formal Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536, 538 (2d Cir. 1966), the court finds and concludes that each of the patents in suit is invalid for lack of invention over the prior art in that they fail to meet the test of non-obviousness. Graham v. John Deere Co., supra. The result of the combination of old elements here does not rise to the level of invention. The result is the work of a skilled mechanic. The Fulton playpen, consequently, must join the growing list of patents which, since the Supreme Court's decision in the Graham case, have failed the test of non-obviousness.⁷

Plaintiff's claims of striking financial success, satisfaction of long felt need in the industry, and of rendering the prior playpen art obsolete cannot tip the scales of patentability in its favor in view of the foregoing conclusion. Graham v. John Deere Co., supra.

In reaching the stated conclusion, the court applied the basic applicable criteria of patentability i. e., novelty, utility and non-obviousness, 35 U.S.C. §§ 101, 102, 103 and, training its attention with greatest intensity on the requirement of non-obviousness, found the patents in suit invalid. Graham v. John Deere, Co., supra.

Novelty and Utility

Defendants claimed that the patents in suit were not new because they had been directly anticipated by the Werner patent....