Scovill Manufacturing Co. v. Roto Broil Corp. of America

304 F. Supp. 834, 162 U.S.P.Q. (BNA) 341, 1969 U.S. Dist. LEXIS 13170
CourtDistrict Court, E.D. New York
DecidedFebruary 26, 1969
DocketNo. 65-C-637
StatusPublished

This text of 304 F. Supp. 834 (Scovill Manufacturing Co. v. Roto Broil Corp. of America) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Scovill Manufacturing Co. v. Roto Broil Corp. of America, 304 F. Supp. 834, 162 U.S.P.Q. (BNA) 341, 1969 U.S. Dist. LEXIS 13170 (E.D.N.Y. 1969).

Opinion

RAYFIEL, District Judge.

This action was brought by Scovill Manufacturing Company, assignee of the design patent in suit, against Roto-Broil Corporation of America (Roto-Broil) for (count 1) the alleged infringement of United States Design Patent 200,905, issued April 20,1965, for a power-operated knife, application for which had been made on June 29, 1964, and (count 2) for unfair competition arising from the alleged unauthorized use by the defendant of the phrase “the knife with the hole in the handle”, adopted by the plaintiff in its advertising to identify and promote the sale of the product in suit, commonly referred to as an electric knife. Jurisdiction is based on Section 1338(a) of Title 28, U.S.C. and the Patent Laws of the United States. The relief sought is for an injunction, an accounting of loss of profits, an assessment of treble damages, and costs and reasonable attorneys’ fees. Both plaintiff and defendant are engaged in the manufacture and sale of electrical household appliances, including electric-powered knives.

The defendant contends that the aforesaid patent is invalid, denies that its design is unique or distinctive, or that the Patentees were the original inventors thereof. It claims further that substantial parts thereof have been described and published in many patents granted prior to its issuance to the Patentees, and has incorporated a list thereof in its answer. It contends further (1) that the purported invention referred to in said Letters Patent had been in public use for more than one year prior to the date of the filing of the application therefor; (2) that the said Letters Patent were issued without due, proper and adequate investigation, and that the relevant prior art embodied in the patents cited in the defendant’s answer were overlooked by the Commissioner of Patents; and (3) that it has not infringed said patent or been in unfair competition with plaintiff in connection' with the sale of its electric knife.

The defendant also asserts a counterclaim for a declaratory judgment decreeing that the plaintiff’s patent is invalid and void; for an injunction restraining the plaintiff from claiming that defendant has infringed thereon; and for an accounting of damages arising from plaintiff’s aforementioned wrongful acts resulting in a loss of defendant’s customers and business.

The issues to be decided are: (1) whether the patent in suit is valid; (2) whether it has been infringed by the defendant; (3) whether the design of the defendant’s accused power-operated knife has caused or is likely to cause prospective purchasers of plaintiff’s product to be confused as to the source or origin thereof, thereby permitting the defendant to compete unfairly with the plaintiff; and (4) whether the defendant has caused its customers to use the phrase “knife with the hole in the handle” for the purpose of palming off its electric knife as the plaintiff’s.

Prior to the trial the parties entered into the following stipulation:

“IT IS HEREBY STIPULATED AND AGREED by and between the parties to the above entitled action that the following facts are uncontested :
1. That United States Letters Patent for a design entitled Power Operated Knife, No. Des. 200,905 were issued to plaintiff Scovill Manufacturing Company on April 20, 1965.
2. That the entire right, title and interest in and to the design invention covered by the said Letters Patent No. Des. 200,905 was assigned to plaintiff Scovill Manufacturing Company by the co-inventors thereof Dave Chapman and Robert C. Le Sueur by an instrument in writing dated June 22, 1964, duly recorded in the United States Patent Office on August 27, 1964 in Reel 1433, Frame 496.
3. That plaintiff has been at all times since April 20, 1965, and is now the owner of the said Letters Patent.
[836]*8364. That defendant has been, since April 1965, and is now making, using and selling power-operated knives exemplified by the specimen marked for identification plaintiff’s Exhibit 1 which is asserted by plaintiff to infringe the design patent in suit.
5. That the said' knife, Exhibit 1, is designated by defendant as its Model W-2, and that the design embodied in the said Model W-2 is also embodied in power-operated knives made and sold by defendant which are designated as its Model W-10 and its Model W-25, which are also asserted by plaintiff to infringe the design patent in suit.
6. That Jay-Kay Metal Specialties Corp., a New York corporation, and Peerless Broil-Quick Corp., a New York corporation, are wholly-owned subsidiaries of Roto-Broil Corporation of America, the defendant in this action, and that for purposes of this action, any and all acts of the said Jay-Kay Metal Specialties Corp. and Peerless Broil-Quick Corp. and their respective officers and employees having to do with the manufacture, use or sale of the power-operated knives alleged by plaintiff to infringe the design patent in suit No. D-200,905 shall be deemed to be acts of the defendant Roto-Broil Corporation of America.
7. That since issuance of the patent in suit, electric carving knives have been advertised by
Riviera Appliance Corporation
Shetland of Salem
Toastmaster Division of McGrawEdison Co.
Sunbeam Corporation
having handles as illustrated by defendant’s Exhibits Q, R, S and U respectively.
8. Plaintiff has, since the institution of this suit, used in some of its advertising the expression ‘The original knife with the hole in the handle’.
9. Plaintiff has advertised that its electric knife with the hole in the handle ‘puts the weight of the knife under the hand to make carving easier to guide and to control’.
10. Defendant has never used the expression ‘Knife with the hole in the handle’ in its own advertising but has used the expressions ‘easy-to-grip handle’ and ‘open, sword-grip handle’.
11. Plaintiff, in its line of electric appliances, has sold, prior to the application for the patent in suit and more than one year prior thereto, portable mixers, stationary mixers and steam irons with handles as illustrated in defendant’s Exhibit M.”

The applicable statutes, contained in Title 35 U.S.Code, so far as they are here pertinent, follow:

Sec. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless — ■
(b) the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. (Emphasis supplied)
Sec. 103 Conditions for patentability; non-obvious subject matter.
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title,

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304 F. Supp. 834, 162 U.S.P.Q. (BNA) 341, 1969 U.S. Dist. LEXIS 13170, Counsel Stack Legal Research, https://law.counselstack.com/opinion/scovill-manufacturing-co-v-roto-broil-corp-of-america-nyed-1969.