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same or substantially the same as those secured and employed by Thompson. The Anger device, covered by patent No. 1,031,612 (1912), is unlike the plaintiff's, in that it is primarily built into the car and is not constructed as a separate or a separable part. His entire spring arrangement must be built and put in place at the factorythe axle which is split or separated into two parts being thus specially made in order to admit of the use of his mechanism. No guide is employed to support the spring, nor does the construction admit of the use of a guide, or of a variation even approximating the plaintiff's structure. The remoteness of the other alleged anticipatory patents is such that they need not be mentioned. The Haskins and Anger patents were cited against Thompson when his application was pending in the Patent Office, but were satisfactorily differentiated from his improvement. The Williams and the Haskins inventions were designed for use on horse-drawn vehicles long prior to the conception of the powerful, heavy, swift-moving automobile, and no one attempted to adapt them, or either of them, to vehicles of that kind. The merit and simplicity of the Thompson device were immediately recognized, and it promptly went into extensive use. Salesmen, before seeing it and without the use of any advertising matter, found many ready buyers. The demands of the trade exceeded the ability to supply it. Although its parts are old, they have been so brought together as to produce in a new way a better result than had been attained by anything that preceded it in the art. It is a narrow patent, but it involves invention and is valid.

[2] The defendant company was the plaintiff's exclusive sales agent. Their contract provided that the defendant company would not manufacture or endeavor to manufacture plaintiff's spring and would respect its patent rights then existing or thereafter acquired, and was terminable by mutual agreement. It proved to be highly profitable to both parties, but, a controversy having arisen between them regarding the price of the springs, it was terminated at the defendant company's instance. The above-mentioned prohibitory features perished along with the residue of the contract and the defense of nonpatentability may therefore be properly made. Dueber Watch Case Mfg. Co. v. Robbins, 75 Fed. 17, 26, 21 C. C. A. 198 (C. C. A. 6); Computing Scale Co. v. Stimpson Co., 104 Fed. 893, 895, 44 C. C. A. 241 (C. C. A. 6). Before the termination of the contract, the defendants, to avail themselves of the demand for plaintiff's device, made preparations for manufacturing and marketing a new shock-absorber strikingly like that of plaintiff, and shortly thereafter offered the same for sale. Its guide or stanchion is divided. At the top of the lower portion, which fits into the hole in the Ford axle, is a platform which serves substantially the purpose of the platform on the Thompson guide. An outside cylindrical cover may be used or not, as the manufacturer chooses ; but, if used, it serves no purpose other than to inclose the coiled spring. The efficient casing or hanger which acts on the torsion spring is inside instead of outside of such spring and immediately surrounds the upper end of the upper part of the guide. The lower end of this portion of the guide is affixed to a link which connects it with the leaf

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spring. · Its upper end, to limit the upward movement of the spring, has a projection which fits into a cavity on the bottom of the cup-like formation which the hanger is made to assume. The hanger's cuplike top fits over the top of the coiled spring, and, when a shock is received by the wheels, produces precisely the same action on the spring as does the casing or hanger in the plaintiff's spring. The hangers in the two respective absorbers differ in form, but not in function. The springs in a Ford automobile equipped with defendants' device receive shocks in the same order, operate in the same manner, and produce the same results as those in a Ford car on which the plaintiff's springs are used.

[3] The defendants' product, which has the same general shape and size and bears the same general black enameling and gold label as the plaintiff's was offered to the same trade to which, and under the same name by which, the plaintiff's device had become known. The printed instructions for attaching defendants' shock-absorbers to a car were in the main a verbatim copy of those that had accompanied the plaintiff's device when put on the market. It would be idle to say that the plaintiff, keeping within the strict terms of its patent, could not put upon the market the same device that the defendants have been making. The plaintiff's patent being valid, the unfair competition feature arising out of the infringement, the subject-matter of the suit, can be cared for in the accounting for profits and damages, although the parties are citizens of the same district. Ludwigs v. Payson Mfg. Co., 206 Fed. 60, 65, 124 C. C. A. 194 (C. C. A. 7); U. S. Expansion Bolt Co. v. H. G. Kroncke Hardwood Co., 23+ Fed. 868, 874, 148 C. C. A. 466 (C. C. A. 7); Leschen Rope Co. v. Broderick, 201 U. S. 166, 26 Sup. Ct. 425, 50 L. Ed. 710.

The judgment of the trial court is affirmed. Its further proceedings will be in accordance with the conclusion here reached.

R. E. DIETZ CO. v. BURR & STARKWEATHER CO.
(Circuit Court of Appeals, Second Circuit. May 8, 1917.)

No. 239.
1. PATENTS O 28-DESIGN PATENTS-ESSENTIALS TO VALIDITY.

The rules for interpretation of design patents are not different from those applying to other patents, and to give validity to such a patent there must be originality and the exercise of the inventive faculty, and

the design must also be pleasing and attractive to the eye. 2. PATENTS Om 28-DESIGN PATENTS-ESSENTIALS TO VALIDITY.

It is immaterial that the subject of a design patent may embody a mechanical function, provided the design per se is pleasing, attractive,

novel, useful, and the result of invention. 3. PATENTS 328VALIDITY-DESIGN FOR LANTERN.

The McArthur design patent, No. 42,488, for a design for a lantern, is void, as not showing a design which appeals to the westhetic sense, and

also for lack of invention. 4. PATENTS Om328INVENTION-TUBULAR LANTERNS.

The Bergener patent, No. 962,114, and the Erb patent, No. 962,135, each for a tubular lantern having the tubes stiffened, respectively, by longitudinal and by transverse ribs or corrugations, held void for lack of invention.

Cross-Appeals from the District Court of the United States for the Western District of New York.

Suit in equity by the R. E. Dietz Company against the Burr & Starkweather Company. From the decree, both parties appeal. Modified on defendant's appeal.

For opinion below, see 236 Fed. 763.

The bill alleged infringement of design patent to McArthur, 42,488, and of two mechanical patents, viz. that to Bergener, No. 962,114 (claim 1), and to Erb, No. 962,135 (first and only claim). The claims in suit are as follows:

Bergener: "1. A tubular lantern having tubes which are each composed of two substantially half-round half-tubes, stamped of sheet metal and secured together by seams on the inner and outer sides of the tubes, and each half-tube being formed between said seams with a hollow longitudinal rib thrown out on the half-round surface of the half-tube, substantially as set forth."

Erb: “A tubular lantern having tubes composed of stamped half-tubes of sheet metal which extend in a continuous piece from end to end and are provided between their ends at intervals with hollow transverse stiffening beads, said half-tubes being joined on opposite sides by overlapped seams, substantially as set forth."

The trial court dismissed the bill as to the design patent and sustained both of the mechanical patents. Both parties appealed.

Wilhelm & Parker, of Buffalo, N. Y. (Arthur E. Parsons, of Syracuse, N. Y., and Karl E. Wilhelm, of Buffalo, N. Y., of counsel), for plaintiff.

Frederick F. Church and G. Willard Rich, both of Rochester, N. Y. (L. J. Whittemore, of Detroit, Mich., of counsel), for defendant.

Before WARD, ROGERS, and HOUGH, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above). The patents in suit relate to making lanterns, and especially tubular lan

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

terns. The word "lanthorn,” and the fact that it is obsolete, sufficiently suggests the antiquity of lantern-making; while 26 years ago, in R. E. Dietz Co. v. C. T. Ham (C. C.) 47 Fed. 320, an action relating to improvements for tubular lanterns, it was noted that the “industry is crowded to repletion.” In such an art McArthur's design patent appears, with specification, as follows:

"The accompanying drawing represents a perspective view of a tubular lantern embodying this design. The characteristic feature of this design consists of the upwardly contracted or downwardly flaring shape of the chimney A, which extends from the globe B to the top of the lantern frame. I claim: The ornamental design for a tubular lantern as shown and described."

The drawing is shown below.

This record suggests two questions as to this patent : (1) Is the subject matter patentable as a design? (2) Is invention revealed ?

It is established as matter of fact that the reasons for making lanterns in the shape exhibited by McArthur are not æsthetic, that ornamentation is not a purpose, nor does the style rest on a desire to please the eye. While some of these objects may be incidentally attained, the business or commercial reason for making McArthur's style of lantern is to reduce to a minimum the glass employed in lantern construction.

[1] The construction of design patents has often been considered in this court; always, we think, in consonance with the ruling casesGorham v. White, 14 Wall. 528, 20 L. Ed. 731, and Smith v. Whitman Saddle Co., 149 U. S. 674, 13 Sup. Ct. 768, 37 L. Ed. 606. To entitle an inventor to the benefit of a design patent there must be originality, the inventive faculty must be exercised, mere mechanical skill is not enough. Cary, etc., Co. v. Neal, 98 Fed. 617, 39 C. C. A. 189; Steffens v. Steiner, 232 Fed. 862, 147 C. C. A. 56. The test for invention is the same for design as for mechanical patents. Strause, etc., Co. v. Crane Co., 235 Fed. at 131, 148 C. C. A. 620. All design patents appeal to the eye; they must present something pleasing and attractive (Mygatt v. Schauffer Co., 191 Fed. 836, 112 C. C. A. 350), and relate to appearance and to matters of ornament. The utility of the patent depends on the effect upon the eye, not to any new function; and such appeal is to the æsthetic emotion. Rowe v. Blodgett, etc., Co., 112 Fed. 61, 50 C. C. A. 120. The object of the statute is to encourage the origina

243 F,—38

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his patento llygaand no ad

tion of objects "which give pleasure to the sense of sight.” Mygatt y. Schaffer, 218 Fed. 831, 134 C. C. A.. 515.

Mere change in construction, displaying no originality and no added beauty, cannot be the subject of a design patent. Mygatt v. Schaffer Co., supra. An applicant for a design patent formerly did no more than submit a picture or diagram of his design, but when a specification is filed with the drawing (as is now the practice), it must be construed together with the claim and drawing, as is the established rule in respect of other patents. The rules of interpretation are not different from those regulating other patents, and a design claim may (like any other) be restricted to the specific form shown. New York Belting Co. v. New Jersey, etc., Co., 53 Fed. 812, 4 C. C. A. 21; Ashley v. Tatum Co., 186 Fed. 339, 108 C. C. A. 539.

[2] While design patents are not intended to protect a mechanical function, or to secure to the patentee monopoly in any given mechanism or manufacture as such, it is immaterial that the subject of the design may embody a mechanical function, provided that the design per se is pleasing, attractive, novel, useful and the result of invention. Ashley v. Weeks, etc., Co., 220 Fed. at 901, 136 C. C. A. 465. But it is the design that is patented, not the mechanism dressed in the design.

[3] Applying these rules to the matter in hand, we are of opinion that McArthur's lantern, or any lantern looking like that of the design, does not appeal to the æsthetic sense, and represents nothing more than a convenient shape for an article always purchased and used for what it will do—not for its looks. We further believe, in the light of a long line of tubular lanterns, beginning with that of Irwin (patent 105.083, July 5, 1870), and continuing especially through Betts (patent 340,274, April 20, 1886), that nothing more than the skill of a mechanic was involved in shortening a glass globe and lengthening a metal chimney, and McArthur did no more. For these reasons the lantern shown discloses no invention, which forbids any patent, nor does it make any appeal to the eye, or the æsthetic sense, which forbids a design patent.

14] The two mechanical patents are entitled as relating to “tubular lanterns.” Bergener says his object is “to stiffen the tubular frame and to avoid imperfections in the shape of the tubes." Erb states as his object "to stiffen the tubes of the tubular frame in a simple, inexpensive, and effective manner.” Bergener accomplishes his result by putting a longitudinal rib on each half-tube of the lantern frame, and says:

"These ribs serve not only to strengthen and stiffen the tube, but also to draw or stretch the sheet metal as it is being shaped between the dies, in stamping the half-tube out of a flat blank."

Erb's result is reached by making transverse ribs on each half-tube, and he asserts that:

These “ribs take up the surplus of metal in shaping the half-tubes from flat blanks between dies, and so draw the metal tight . . . and prevent buckling of the metal."

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