Design, Inc. v. Emerson Co.

319 F. Supp. 8, 168 U.S.P.Q. (BNA) 519, 1970 U.S. Dist. LEXIS 9959
CourtDistrict Court, S.D. Texas
DecidedOctober 7, 1970
DocketCiv. A. No. 68-H-39
StatusPublished
Cited by5 cases

This text of 319 F. Supp. 8 (Design, Inc. v. Emerson Co.) is published on Counsel Stack Legal Research, covering District Court, S.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Design, Inc. v. Emerson Co., 319 F. Supp. 8, 168 U.S.P.Q. (BNA) 519, 1970 U.S. Dist. LEXIS 9959 (S.D. Tex. 1970).

Opinion

SINGLETON, District Judge.

This suit concerns the infringement and validity of a design patent assigned to plaintiff. Jurisdiction is present under 28 U.S.C. § 1338(a). Venue is also present under 28 U.S.C. § 1400(b).

Plaintiff, Design, Incorporated, is a Texas corporation, with offices in San Antonio, Texas. Defendant, The Emerson Company, is a corporation with a regular and established place of business in Houston, Texas. The patent in question, U. S. Letters Patent No. DES. 201,224, was\issued to Alfred A. Sehroed[9]*9er on May 25, 1965. Prior to its issuance, the patent was assigned to plaintiff and that assignment was recorded with the United States Patent Office.

The subject of the Schroeder patent is an insulated beverage container and carrier. The container is manufactured by injecting air and a plastic-like compound into a metal mold and then cooling the mold and its contents to form the container. The end product is a generally rectangular box with a removable lid. The edges and corners of the box are rounded. A rope, which functions as a combined hinge and carrying handle, extends upwardly from the base and through the top. When the top is removed, there are reveáled in the base six circular holes, each about three inches in diameter, which hold canned or bottled drinks. At the upper end of these holes are a series of semicircular slots which permit the grasping of cans fully contained within the holes. Extending around the upper part of the base is a ledge, which mates with a lip extending around the top to hold the top in place. The top has a mating frustrualconical recess overlying each of the holes in the base to receive the bottle tops which protrude above the base.1

Sehroeder’s patent application was originally rejected by the patent examiner as being unpatentable over Graves No. 2,465,644, Yusz, No. 2,944,695, and Hunter, No. 2,961,124. Schroeder then amended his application urging a reconsideration of the rejection. The amended application, which was considered by a different patent examiner, was subsequently approved.

Until a fire destroyed plaintiff’s plant in January, 1965, plaintiff’s primary, if not exclusive customer was the Lone Star Brewing Company. After the fire, defendant seized the container mold as partial satisfaction for a debt owed by plaintiff to defendant. Thereafter, Lone Star approached defendant who began manufacturing its product for Lone Star.

After defendant began selling to Lone Star, plaintiff notified defendant of the existence of the patent. When plaintiff received a negative response to its demands that defendant cease manufacture, plaintiff brought the present suit. Plaintiff seeks injunctive relief against further manufacture and sales, treble damages under 35 U.S.C. § 284, attorneys’ fees, and costs of litigation. Defendant denies both validity and infringement and counterclaims for declaratory relief. A trial on the merits was held on March 3, 1970.

The statutory authority for the granting of design patents is 35 U. S.C. § 171 which provides:

“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.”

The statute is concerned with the appearance of the design, the appeal to the eye. It is the general effect of the design, its appearance as a whole that is controlling, or, to put it differently, a design is to be tested by the overall aesthetic effect, and this general effect is that which is produced on the eyes of the average or ordinary person or observer as opposed to the expert. See 2 Deller’s Walker on Patents, sec. 158, pp. 734-36 (2d ed.). In order for a design patent to be valid, it must be: (1) new, (2) original, (3) ornamental, (4) non-obvious to a person of ordinary skill in the art, and (5) not primarily for the purpose of serving a functional or utilitarian purpose. Barofsky v. General Electric Corp., 396 F.2d 340 (9th Cir. 1968).

[10]*10As for the first requirement, newness, defendant contends that the Schroeder patent was anticipated by the prior art. From the evidence submitted at trial, it appears that defendant’s primary reliance is on 35 U.S.C. § 102(b).2 Specifically, defendant urges that the specifications within the Schroeder patent were patented more than one year prior to Sehroeder’s second application which has a filing date of April 28, 19.64.3 The prior art references which bear the closest resemblance to the claims of the Schroeder patent are three patents by Szantay, each dated February 19, 1963 — DES. Nos. 194,637; 194,638; and 194,639. To constitute an anticipation, a prior art reference, whether a patent or other publication, must disclose the invention in such full, clear, and exact terms as to enable any person skilled in the art to which the invention relates to practice it. Monsanto Company v. Dawson Chemical Co., 312 F. Supp. 452 (S.D.Tex.1970). None of these patents meet that test.4 Each is significantly different from Schroeder in several respects. The two Szantay patents that did reveal the insides of the box showed one large hole instead of six smaller ones designed to hold individual cans or bottles. Neither the handles nor the tops of the Szantay and the Schroeder boxes are the same. The top of the Schroeder box has a singularly rounded edge and corners, while the box tops in the Szantay patents have multiple rounded edges and corners. The Schroeder box is flat on the bottom and top, but the Szantay boxes have ornamentation on bottom and top. There is nothing in Szantay comparable to the finger slots in Schroeder. Thus, it must be concluded that the Schroeder patent is not anticipated by the prior art.

Originality is the second of the criteria for a valid design patent. No evidence has been presented on this point. Since, however, the patent itself is presumed valid, Monsanto Company v. Dawson Chemical Co., supra, that requirement will similarly be presumed to have been met. Schroeder must have convinced the patent examiner that the beverage cooler was his idea or the patent would not have been issued.

The third requirement for a valid design patent is that it must be ornamental. Whether a design is ornamental or not depends on whether it appeals to the eyes as a thing of beauty. See Bentley v. Sunset House Distributing Corp., 359 F.2d 140 (9th Cir. 1966). It must be the product of aesthetic skill and artistic conception. Blisscraft of Hollywood v. United Plastics Company, 294 F.2d 694 (2nd Cir. 1961).

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Bluebook (online)
319 F. Supp. 8, 168 U.S.P.Q. (BNA) 519, 1970 U.S. Dist. LEXIS 9959, Counsel Stack Legal Research, https://law.counselstack.com/opinion/design-inc-v-emerson-co-txsd-1970.