J. G. Furniture Co. v. Litton Business Systems, Inc.

436 F. Supp. 380, 194 U.S.P.Q. (BNA) 483, 1977 U.S. Dist. LEXIS 15649
CourtDistrict Court, S.D. New York
DecidedMay 31, 1977
Docket73 Civ. 1259, 73 Civ. 1768
StatusPublished
Cited by4 cases

This text of 436 F. Supp. 380 (J. G. Furniture Co. v. Litton Business Systems, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
J. G. Furniture Co. v. Litton Business Systems, Inc., 436 F. Supp. 380, 194 U.S.P.Q. (BNA) 483, 1977 U.S. Dist. LEXIS 15649 (S.D.N.Y. 1977).

Opinion

MEMORANDUM OPINION

MOTLEY, District Judge.

In these two related patent infringement actions, defendant Litton Business Systems, Inc. (“Litton”) has moved for summary judgment, pursuant to Rule 56, Fed.R. Civ.P., on the ground that the subject matter of plaintiff J. G. Furniture’s allegedly infringed design patents would have been obvious to a person of ordinary skill in the art at the time the alleged invention was made (35 U.S.C. § 103). In 73 Civ. 1259, plaintiff has cross-moved for partial summary judgment holding its patent unobvious and valid in view of the prior art cited by defendant. In 73 Civ. 1768, defendant seeks summary judgment on the additional ground that the patent is invalid as being primarily the result of functional or utilitarian requirements (35 U.S.C. § 171). All three motions are denied.

Plaintiff is the assignee of two design patents which were issued to its assignor, Mr. John Nance, an employee of plaintiff. The patent in suit in 73 Civ. 1259 is United States Design Patent No. D.223,046, which was issued on February 29,1972 in response to an application filed on June 17, 1970. The subject matter of the patent is an L-shaped wooden desk and return unit which plaintiff refers to and markets as its “Reveal” desk system. The desk, which will be described in greater detail infra, is pictured in Exhibit A through the line drawings submitted to the Patent Office, and in Exhibits B and C through reproductions of photographs taken from different perspectives.

The patent in suit in 73 Civ. 1768 is United States Design Patent No. D.225,046, which was issued on November 7, 1972 in response to an application filed on December 29, 1970. The subject matter of this patent is a “desk array”, referred to and marketed as plaintiff’s “Reveal Raceway” desk system. This design consists of the parallel placement of two of plaintiff’s Reveal desks and returns, separated by a raceway 1 approximately six inches wide. The raceway is movable and designed for easy installation on the Reveal desks. In the panel forming the cover of the raceway are grommet holes which function as passageways for electrical and/or telephonic wires or cables, and electrical outlet receptacles,

*382 To be patentable, a product, including a design, 2 must not be “obvious”:

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. Patentability shall not be negatived by the manner in which the invention was made. 35 U.S.C. § 103.

Before examining in detail the particular facts of this case, it is useful to review the governing criteria which have been developed by the courts in applying section 103.

Although the grant of a patent by the Patent Office is attended by a statutory presumption of validity, 3 the Court of Appeals in this Circuit has recently reaffirmed that “[section 103] mandates a ‘rather rigorous standard’ in judging whether [a] claimed new invention [is] non-obvious [citation omitted].” Maclaren v. B-I-W Group Inc., 535 F.2d 1367, 1376 (2d Cir. 1976), petition for cert. filed, 45 U.S.L.W. 3371 (Nov. 16,1976). Although “ ‘the corrosive effect’ of time can easily lead a court to succumb to the tendency of regarding virtually any improvement as ‘obvious’ in light of the modern, updated art . courts have not been lax in closely scrutinizing the ‘non-obviousness’ of a claimed invention and disregarding patents that follow too closely in the wake of their predecessors [citations omitted].” Id. at 1375-6.

In the case of design patents, the courts of this Circuit have been particularly demanding. In discussing the requirement of section 103, Judge Friendly has noted that

[w]e have frequently indicated that the requirement of invention is not met by a design which is merely “new and pleasing enough to catch the trade”; rather we have insisted that the design reflect “some exceptional talent beyond the skill of the ordinary designer” ... or “inventive genius” . . . . We have noted that in view of this “[t]o obtain a valid design patent is exceedingly difficult [citations omitted.]” G. B. Lewis Company v. Gould Products, Inc., 436 F.2d 1176, 1178 (2d Cir. 1971).

Moreover, if a patent claim is based upon a combination of elements in the prior art, it must be scrutinized “with special care,” Julie Research Laboratories, Inc. v. Guildline Instrument's, Inc., 501 F.2d 1131, 1136 (2d Cir. 1974), although “[t]he mere fact that a person has utilized in combination a number of elements which severally were well known will not defeat the patentability of the combination.” Blisscraft of Hollywood v. United Plastics Company, 294 F.2d 694, 696 (2d Cir. 1961).

While the ultimate question of patent validity and the subsidiary determination of obviousness are both questions of law, Julie Research, supra, at 1136, the Supreme Court has indicated that the question of obviousness is to be determined against the background of three factual inquiries: “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 resolved.” Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966); Sakraida v. Ag. Pro, Inc., 425 U.S. 273, 280-281, 96 S.Ct. 1532, 1536-1537, 47 L.Ed.2d 784, 790 (1976). Accordingly, the court must examine each of these areas in light of the facts upon which the parties rely in support of their respective motions for summary judgment. Neither of the parties question that the summary judgment mechanism may be em *383 ployed in some cases to determine the validity of a patent challenged on the ground of obviousness. See G. B. Lewis, supra; Lancaster Colony Corp. v. Aldon Accessories, Ltd., 506 F.2d 1197 (2d Cir. 1974) (cross-motions); Monaplastics, Inc.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Sutton Import-Export Corp. v. Starcrest of California
762 F. Supp. 68 (S.D. New York, 1991)
Moore v. Stewart
600 F. Supp. 655 (W.D. Arkansas, 1985)
Bergstrom v. Sears, Roebuck and Co.
496 F. Supp. 476 (D. Minnesota, 1980)
Janex Corporation v. Bradley Time
460 F. Supp. 383 (S.D. New York, 1978)

Cite This Page — Counsel Stack

Bluebook (online)
436 F. Supp. 380, 194 U.S.P.Q. (BNA) 483, 1977 U.S. Dist. LEXIS 15649, Counsel Stack Legal Research, https://law.counselstack.com/opinion/j-g-furniture-co-v-litton-business-systems-inc-nysd-1977.