240 F. 979 | S.D.N.Y. | 1917
This suit is for infringement of a reissue of a design patent for a glass inkstand. The original patent, No'. 37,504, was granted to the complainant, Frank M. Ashley, August 8, 1905, and the patent was reissued December 23, 1913. Judge Learned Hand held the original patent valid and infringed by this defendant in the case of Ashley v. Tatum (C. C.) 181 Fed. 840. That decree was reversed by the Circuit Court of Appeals (186 Fed. 339, 108 C. C. A. 539), and the patent was held valid, but not infringed. The complainants’ inkstand and the alleged .infringing inkstand before the court in this suit are the same, or substantially the same, as those involved in the former suit. After the decision of the Circuit Court of Appeals, the complainant sought for a review by writ of certiorari, but the writ was refused, and thereafter a reissue was granted which is believed to have been the first reissue ever granted in the case of a design patent. The original patent was granted when the rules of the Patent Office did not permit a written description of a design patent, but only a diagram of the design.. The original patent stated that the complainant, Frank M. Ashley had—
“invented a new, original, and ornamental design for an inkstand, of which the following is a specification, reference being had to accompanying drawing, forming part thereof. The following is a plan view of an inkstand, showing my new design. I claim the ornamental design for an inkstand as shown.”
In the reissue patent, the specification sets forth that:
“The essential feature of my design consists in the general outline of the stand, which comprises a low, broad, flat base surmounted by a low' dome in which a funnel shape dip cup is located. Having thus described my invention, I claim an ornamental design for an inkstand, consisting of a low, broad, flat base surmounted by a low dome and a funnel shape dip cup located within the dome, substantially as shown and described.”
Judge Lacombe, writing for the Circuit Court of Appeals, in the former case of Ashley v. Tatum, supra, said:
“It may be that upon the state of the art at the date of his application complainant would have been entitled to a claim calculated to secure to him the dominant feature of his device, with or without ornamentation, unless, indeed, the ornamentation was carried to such an extent as substantially to modify the effect produced by the contour and proportions. But there is no such claim, and no written description upon which it could be based. The circumstance that both are absent, possibly solely because the Patent Office refused to allow any written description to be filed, does not give this court the power to write such a description and claim into the patent. We must construe the claim according to the rule laid down in the Dobson Case as ‘covering the design as a whole, and not any part of it as a part; [testing it] as a whole — as to infringement.’
“We cannot, therefore, eliminate the element shown in the drawing, viz., the absence of any applied ornamentation. That element must be held to be as essential a,s any other element. In defendant’s inkstand, the general contour of base and dome in the same relative proportions is found; but around the lower half of the dome there is a series of circumferentially displayed facets which effect a substantial modification of appearance of the inkstand*981 by suggesting tbe idea, tbat it is made out of cut glass, instead of pressed glass. Tbe difference between tbe two is readily apparent to any one — expert or nonexpert — and there seems no likelihood tbat, whether looked at together or apart, the one could be mistaken for the other. In our opinion, infringement of the claim has not been made out.”
It seems clear from Judge Lacombe’s opinion that the Circuit Court of Appeals has held that the defendant’s design was such a departure from the diagrammatic description of the complainant’s design contained in the original patent that it did not infringe. Both Judge La-combe and Judge Learned Hand held that the particular feature of complainant’s invention, which was new and meritorious, was the flat, broad base of the inkstand, surmounted by a low dome, and the pleasing effect based on the. simple and useful combinations. Judge Lacombe spoke of these characteristics as the “dominant” features of the design.
Reissue patents were discussed in the case of Miller v. Brass Co., 104 U. S. 350, 26 L. Ed. 783, Mr. Justice Bradley there said:
“But in reference to reissues made for the purpose of enlarging the scope of the patent, the rule of laches should be strictly applied; and no one should be relieved who has slept upon his rights, and has thus led the public to rely on the implied disclaimer involved in the terms of the original patent.”
The dates which are important for consideration are the following: The Circuit Court’of Appeals directed the dismissal of the bill by opinion dated March 13, 1911. Thereafter, and in the same month, the complainant communicated with his coimsel and sent the latter to Washington to see what could be done in regard to the matter of a reissue. Upon the advice of the Patent Office, a petition for a rehearing was thereafter filed, which was denied in October, 1911. Work was then commenced on a petition for a writ of certiorari, which was presented in March, 1912, and denied in May, 1912. The application for a reissue was not filed until January, 1913.
While, therefore, the reissue patent is valid and infringed, this suit cannot be maintained against this particular defendant, because of its intervening rights, and the bill must be dismissed, with costs.