.j; , .';:
((}ircuit Court, S. D. Ohio,
PATENTS FOR INVENTIONS-DESIGN PAit'ENTS,,-NoVELTY, "
to be patentablem\lst be: 110 qifferent from aU others existing before it as to appear to be different to ordinary observers, and.it is immaterial that the amount o.f novelty is small. , '
The test for infringement of a design patent is that the designs appear the SaQl6 ttl observers. and the fact that there are minor differences of , 'detail filth mariner in which the appearance is produced, noticeable only by , experttl!do6S' not relieve the design from condemnation 8S an infringement; noris,itjll8terilt\ thaUhe allegoo;itlfringer used his owil name and the name of hJS qw:n, CQnnection with the design.
In Equity. Action for infringeinentof a patent. William Hubbell Fishe:r;; for cotiiplainants. , Bateman &JHarper, for defendant.
This suit is for infringement of design patent No. 16,664, granted April 27, :1886, to the complainants as assignees of John F. Martens,Jor;a design for acooking.stove. The claims relate to the or. namentation of the doors and other parts of a stove with sprigs, flowers, bud, ,butterfly, and bird, ,as shown and described in the letters patent; also'the oonfigurationand, ornamentation' of the legs, substantiallya$s4.owp.; The defenses. relied upon are that the designs claimed and Showllll'Nnot novel; that they are not inventions, nor patentable; that was not the first produoer or inventor thereof;' and that the defendant: does not infringe. "The ornamentation of the oven door...... which will)gerve as an illustration ,of the ornamentation of the stove, and avoid the necessity of forth the specifications and claims particby a series of twigs or sprigs, extending from the lower rear corner upward across the door. On the upper branch is a flower ofrose;.like form. The lpwer branch passes forward somewhat under thehaJ;lgle of the door, and depending from it is a bud; to the upper rear sid,e ofthe braaches is a bird, and on the lower branch a butter· fly; but the leadiag feature of the ornamentation is the particular branch with stems alld flowers as above described. The defendant has put in evidence quite a ,number of designs, all of date prior to complainants' patent, and ,claimed, to be in anticipation thereof. Prominent among thl;'seare the "Jewel Range, "a Detroit stove, and the Vedder patent, No. 609, graqted November 8, 1853. In Ol'l1amentation of the oven door of the found a series of twigs or sprigs extending from the Ipwerrear, oprner forward and upward across the door. On the upper branch is a Jlowerof rose-like form, and the lower twig or branch passes forward the handle of the door. In word, thedescription above oX the Qrnamentation of the complainants' stove-which is ill the Olll.in from ,the specification of the patent-would answer in the particulars for a description of the ornamentation of the Jewel range. In addition to the points of resemblance already stated, the
BEnWAY' ". OHIO STOVltCO.!
ground of the oven"doors of both stoves is pebbled', both doors are swelled, and both have broad, buffed edges all around, except on the rear: ,But when the doors themselves are placed side by side, as was done upon the hearing, the difference ,between them is at once plainly apparent, even to a casual observer. The same may be said of the Vedder stove, and of all the other alleged anticipating devices. Now, what is the proper test of the validity of a design patent? The statute (section 4929, Rev. St.) authorizes, among other things, the granting of a patent to any person' who has by his own industry, genius, efforts, and expense invented and produced any new and original. design for an ornament to be cast on any article of manufacture, the same not having been known or used by others before his invention ot production thereof, or patented or described in any patented publication. The design must be new and original, and an invention. But there need not be a great invention. That is not essential to the validity of any patent. The statute must have a construction reasonable, and at the same time.favorable to its beneficialoperation. As was said by the court in SimpsCYn v. Davis, Rep. 145, the result of the industry, genius, effort, and expense employed must "be a single ornament which, taken as a whole, can be considered to be the embodiment of a new idea in ornamentation. The amountofthe novelty may be small, but the effect ofthe ornament must, to some extent at least, be new. The ornament tuay in this sense be new and original, although all the forms used in ita composition are old and well-known forms of ornamentation." Take, in this connection, the following extract from Perry v. Starrett, 3 Ban. & A. 489: "In Gorham 00. v. White, 14 Wall. 511, it was held that to constitute fringement of a design patent the designs must be so similar as to appear to ordinary observers to be the same, and that they need not be so near alike as to appear to be the same to experts. It would seem to follow that, to const1. tute a new design that would be patentable as such. it must be so different from all others existing before as to appear to be such to the Bame class of ordinary .observers." Applying the tests suggested by these quotations, it is quite clear that the design patented to com plainants display!! invention, and that it is not anticipated by any of the designs produced upon the hearing by the defendant. It is not a mere aggregation of parts, as claimed by the defimdant, not only for the reasons already suggested, but also because, as testified for the complainants, it is "a conventional design." And in this very respect it displays invention. It differs essentially from the earlier designs in that, instead of being substantially copied from nature, it is the embodiment of a new and original conception; and the fact that the bird, the butterfly, and the bud, which, although parts of the design, may properly be regarded as accessories, are not new or original, does not sustain the claim that there is a mere aggregation of old and wellknown parts; nor does it invalidate the patent. With reference to the defense that Martens was not the first inventor, it is sufficient to say, without going into details, that it is not supported by the evidence.
The. question of infringement alone remains to be considered. The defendant's design omits the bird and the butterfly, and in other but minor details is different from the complainants', but the general apand bring the defend.. pearauce and effect of the two are. the ant?sdesign clearly within the rule laid down in Gorham Co. v. White, cited supra. The supreme oour,tsay in that case that the acts of CODgress which authorize patents for design contemplate not so much utilityas' a.ppearance, and that" thelaw manifestly contemplates that giving certain new and original appearancesto a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a lUeritomous service to the public. * * * Manifestly the mode in which these appearances are produced has very little, if anything, to do with giving increased salableness to the article. It is the appearance itself, therefore, no by what agency caused, that constitutes mfl,inlYi if not entirely, the contribution to the public which the law deems worthy of recompense. 'fhe appearance may be the result of peculiarity; of configuration, ornament alone, or of both conjointly, but, in whatever way produced, it is the neW thing or product which the patent law regards." Now; :add, to this the further consideration taken from the decision ofthecQurt in that case, that" the purpose of the law must be effected, if possible; but plainly it cannot be if, while the general appearance of the design is preserved, minor differences of detail in the manner in which the appearance is produced, observable by experts, but not noticed by Qrdinary observers, by those who buy and use, are Sllfficient, to relieve an imitating design from condemna. tion as aQ,4lfringement," and we, are forced to the conclusion that the omissiori.s and changes in the design as used by the defendant do not relieve it from liability as an infringer, nor does the fact that it used its own name and the name of its own stove, conspicuously displayed. in connection with the design. The rule is the same as in trade-mark cases, and in Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. Rep. 143, it was held that the addition of the infringer's name to it trade-mark, in the place of the owner's, does not, render the unauthorized use of it any less<an infringement. The decree will be for the complainants upon all the claims of the patent excepting the second and the seventh, for an injunction, and, under the act of February 4, 1887, (24 U. 8. 8t. at Large, 887,) for the sum of 8250, and for an account, with costs.
SARGENT ,. JENKINS.
PATENTS FOR INvENTIONS-PATENTABILITY-ANTICIPATION-WAsn-BoARD PROTECTORS.
(Circuit Oourt, N. D. New York. March 21, 1889.)
Letters patent No. 228.888, January 6.1880, to John :M. Gorham. describe a protector for wash·boards, which yields to pressure and returns to its nor· mal position automatically when the pressure is removed; the patentee stating that he is not to be confined to any particular form of device. Held not anUcipated by the protector of the Frike patent, which has not such yielding or resilient function. . .
In Equity. On motion for preliminary injunction. Bill by Sargent and others against J ankins and others. torlilstrajn the infringementofletters patent No. 223,338, to Joan Gorham, January 6, 1880.. . William O. Witter and George H. Ohri8ty, for complainants·. E. N. Dickersm and J. Walter Douglass, for defendants·
·WALLACE, J. The wash-boards which the defendants are manufacturing embody the invention specified in the first and second claims of the patent to Gorham; and the motion for a preliminary injunction should be granted, unless there is a serious question of the novelty of the subjectmatter of those claims. The essential feature of the wash-board of those claims· is a protector (to shield the operator from getting wet) which yields to pressure, and returnno its normal position automatically when the pressure is removed.. In the second claim the spring is the aevice which gives the elastic or resilient quality to the protector; but the patentee states that he is not to be confined to any specific form of device, .and consequently the first claim ,should be interpreted broadly to include any wash-board having a protector, whether with or without a spTing, which is so constructed as to bend or yield to pressure, and return when the pressure is removed. If the patent to Frike describes a wash-board having a pretector that possesses this function, and yields to pressure, and returns automatically on its pivot by gravity, the first claim is' anticipated; and, as the substitution of the spring for the weight would not iJ1Volve invention, the second claim would also be invalid. The protector of the Frike patent. however, is not of that character. There is no suggestion in the specification that it is to return to its position by gravity, or by any instrumentality except: by the hand of the operator. It is de.signed exclusively for a wash-board having a double face, and is constructed so as to afford a broad surface to support the operator (and protect him from getting wet) until he desires to Use the other side of the wash-board; when, by tilting it over, he can transfer it for use upon that side. It belongs to the second class of protectors referred to in Gor.ham's patent as not embodyinghls invention. The Frike patent was before the supreme court in the suit upon the complainants' patent agaipst Burgess. (9 Sup. Ct. Rep. 220,) and ia referred to in theopin-