Tappan Co. v. General Motors Corp.

N.D. Ohio

Tappan Co. v. General Motors Corp.

248 F. Supp. 978, 148 U.S.P.Q. (BNA) 344, 1965 U.S. Dist. LEXIS 9855

District Court, N.D. Ohio·Decided December 6, 1965·No. Civ. A. No. 37217·Published·Cited by 1 cases

Opinion

GREEN, District Judge.

This action came on for trial upon plaintiff’s complaint alleging that defendants had engaged in acts of infringement of two design patents belonging to plaintiff, being Nos. Des. 174,240 (March 15, 1955) and Des. 180,069 (April 16, 1957), hereinafter referred to as ’240 and ’069. The patents in suit cover two different designs for cooking ranges.

Defendants General Motors Corporation and Frigidaire Sales Corporation are charged with infringement in the manufacture and sale of the alleged infringing ranges, while defendant Halle Bros. Co. was charged with contributory infringement in the retail sale of the said ranges. The alleged infringing ranges are sold by defendants under the trade name “Flair.”

At the trial no evidence was offered by plaintiff regarding sales by Halle Bros. [979]*979Co., and at the conclusion of plaintiff’s prima facie case a motion to dismiss as to defendant Halle Bros. Co. was granted.

As against defendants General Motors and Frigidaire the case was tried on the same evidence, and the Court will not refer to the defendants separately in the course of this memorandum.

Defendants have asserted several defenses to the claims of patent infringement made by the plaintiff. Defendants contend that both the ’240 and ’069 patents are invalid for the following reasons:

1) Lack of invention over the prior art.

2) The invention of the patents, if any, is functional rather than ornamental.

3) The designs of the patents were created by persons other than the named patentees.

4) Anticipatory public use.

5) Insufficiency of disclosure under 35 U.S.C. 112.

Defendants further contend that the accused ranges do not infringe the ’240 and ’069 patents, even if they be considered valid.

The ranges here in suit are variously referred to as “free-standing” or “high-oven” “eye-level” ranges. The basic configuration of such a range has the surface burner at about counter height with the oven portion of the range mounted above the surface burners, generally at about eye level. Ranges of this type may be set on a separate base cabinet or placed into existing kitchen counter-top space.

Both patents in suit disclose ranges with all controls situated above the eye-level oven. The accused ranges manufactured and sold by defendants also have the controls so situated, although the arrangement of the controls differs from that shown in the patents.

Ranges of the free-standing design are clearly distinguishable from conventional cooking ranges, which are of counter-height, floor-standing cabinet design, with the ovens below the surface burners, the surface burners being on the counter-top level of the range. The oven and surface burner controls on such a range are usually located either on the front of the range above the oven doors, or on the top of the range or on a panel behind the surface burners.

From the evidence it appears that the great bulk of ranges commercially produced and sold from the middle 1930’s to the middle 1950’s were of the conventional variety.

Plaintiff’s ’240 patent was issued on March 15, 1955 and the ’069 patent was issued on April 16, 1957. Plaintiff’s first public production and sale of ranges embodying the designs of either patent occurred in 1958, being the design of the ’069 patent. Those ranges were designated by plaintiff as the Fabulous 400 line. Plaintiff never produced a commercial range of the design of the ’240 patent.

Defendant introduced the alleged infringing ranges into the market in 1960. At the time defendants entered the market, plaintiff’s Fabulous 400 range had met with great consumer acceptance, and plaintiff’s share of the electric range market had substantially increased.

Prior to the time that both plaintiff and defendants placed their free-standing ranges on the market, ranges of the “built-in” type had become a substantial factor in the general range market. A built-in range is of a design suggested by its name — the oven is built into a wall at about eye level and the surface burners are situated on a counter top separate from and contiguous to the oven. Both plaintiff and defendants were influenced by consumer reaction to the built-in ranges in determining to develop a freestanding range. The free-standing range reflects the general relationship of burners and oven of the built-in range, but has the advantage of greater flexibility of use while not requiring physical alteration of the kitchen for installation.

After giving careful consideration to the entire record herein, the Court has concluded that this case can be resolved [980]*980on the issue of infringement of the patents in suit.

Both parties are in agreement that the basic test of infringement in a design patent action is represented by the Supreme Court decision in Gorham Manufacturing Co. v. White, 14 Wall. (81 U.S.) 511, 20 L.Ed. 731 (1871). That basic test is:

* * * that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same — if the resemblance is such as to deceive such observer, inducing him to purchase one supposing it to be the other — the first one patented is infringed by the other.

The matter of prior art, however, is a significant factor in the field of design patents, as it is in mechanical patents, and must be taken into account in considering the question of infringement. Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., 226 F.2d 207 (CA 6, 1955); Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428 (CA 6, 1933); Rowley v. Tresenberg, 37 F.Supp. 90 (D.C.E.D.N.Y., 1941), aff’d 123 F.2d 844 (CA 2, 1941); Deller’s Walker on Patents, §§ 180, 181 and 182. It has been observed that the test of novelty of a design, the test of infringement of a patented design, and the test of anticipation of a patented design are all the same simple test — do the designs look alike to the eye of an ordinary observer ? Phoenix Knitting Works v. Rich, 194 F. 708 (CC Ohio, 1911). To infringe a design patent the accused device must appropriate the novelty in the patented device which distinguishes the design claimed in the patent from the prior art. Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (CA8, 1944); Applied Arts Corp. v. Grand Rapids Metalcraft Corp., supra, 67 F.2d, at 429.

As this Court interprets the decisions and text authorities considered, including those cited above, a basic general rule evolves. While a “Chinese copy” is not essential to constitute infringement of a design patent, there is no infringement unless the accused device substantially incorporates those features which serve to distinguish the patented device from the prior art, in the eye of the ordinary observer.

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