John K. RAINS, Appellant, v. CASCADE INDUSTRIES, INC.
No. 16957
United States Court of Appeals Third Circuit
October 14, 1968
Rehearing Denied Nov. 13, 1968
241
Argued March 18, 1968.
Affirmed.
JOHN R. BROWN, Chief Judge (concurring):
I concur, but I would emphasize several things.
First, the fact that it is a dumb, unmanned barge, so that it never has a crew in the ordinary sense, does not obliterate the Sieracki-Ryan-Yakus warranties of seaworthiness to those coming aboard who do work traditionally done by seamen on a vessel that carries a crew. Thus, those who load or unload cargo on an unmanned barge are classic Sieracki seamen. So too would be one in Moye‘s position who comes aboard to make repairs. Second, the fact that it is a dumb, unmanned barge so that of necessity it is left by its towing tug in the hands of a third party who thereafter has exclusive—that is the only—physical possession and control of it does not extinguish the warranty of seaworthiness as to one in the ambiguous—amphibious seaman‘s status. Thus, had Moye, for example, while walking across the deck been injured from a deck plate giving way from rust, no one could push West so far as to deny the existence of a warranty of seaworthiness, a patent breach of it as a matter of law, a Jones Act negligent failure to maintain a safe place to work, and sure right of recovery as a Sieracki seaman. To the extent that Hurst v. Point Landing, Inc., E.D.La., 1962, 212 F.Supp. 160, stands for a different proposition, this Court would undoubtedly reject it as unsound.
It is a mistake, but not one made by this Court in this opinion, to read West as a holding that once all of the owner-charterers’ employees have left the scene the warranties of seaworthiness or Jones Act statutory obligation of furnishing a safe place to work will evaporate. Rather—apart from the unique factor of a ship long withdrawn from service and the injury occurring during the process of breaking her out of lay-up status—West takes a sensible but very restrictive stand as to the question of control. It is not approached in a doctrinaire or exclusively physical sense. Rather, it is approached in terms of the conditions giving rise to the injury. If the circumstance bringing about the injury is a transitory condition resulting from the course of performing the contract by one who alone has the present custody and control of the vessel, then the warranty of seaworthiness—which may exist simultaneously as to these very same shore workers concerning conditions over which the operating ship owner (charterer) has a realistic physical responsibility—does not extend to such person for such condition.
Frederick A. Zoda, Sperry & Zoda, Trenton, N. J., for appellee.
Before McLAUGHLIN, FORMAN and FREEDMAN, Circuit Judges.
OPINION OF THE COURT
FREEDMAN, Circuit Judge.
This appeal involves the validity of a design patent for an on-the-ground swimming pool.1
Plaintiff, the holder of the patent, alleged infringement by defendant and sought damages and an injunction. Defendant counterclaimed for a declaratory judgment of invalidity or of noninfringement and sought damages and injunctive relief. The district court granted defendant‘s motion for summary judgment, declared the patent invalid and entered judgment for the defendant. 269 F. Supp. 688 (D.C.N.J.1967).2
Although the district court did not dispose of defendant‘s counterclaim for damages and injunctive relief and made no certification of appealability under
A variation in the patent design depicts a wider deck at one end of the pool and vertical supporting posts reaching to the ground. Another variation is a larger version of the first design, with additional struts, studs and gussets.
In moving for summary judgment the defendant relied on a number of exhibits containing prior art. It is necessary only to review that portion of the prior art which is closest to plaintiff‘s design. A drawing for French Patent No. 768,506, a mechanical patent, issued in May, 1934, was submitted without verbal description of the patent itself. The drawing discloses an on-the-ground pool with what appears to be a rectangular tank, a deck extending horizontally from the long sides of the top of the tank, with struts similar to plaintiff‘s, but with no gussets. A vertical fence which is not, however, crisscross in type, encloses the two decks. A ladder extends from the end of the deck to the ground.4
A design patent issued to Donald Pruess in 19615 shows a square on-the-ground tank with a deck similar to plaintiff‘s which surrounds the pool. The fence, however, is not crisscross and is inclined outward from the deck, supported by struts extending from the top of the fence diagonally down to the base of the tank. There are no gussets. The pool has a modernistic flair and is marketed as the “Futura” by International Swimming Pool Corp.
Other previously patented on-the-ground pools have decks supported by vertical posts rather than diagonal struts. Defendant also presented a number of mechanical patents for window scaffolds and brackets, designed to provide strength and having the general triangular shape of the strut-gusset arrangement. Pictures of a crisscross fence like plaintiff‘s in Popular Mechanics were also presented.
On the basis of the prior art the district judge granted summary judgment for the defendant. Such a judgment is appropriate, under
We turn then to the merits.
The district judge granted summary judgment for the defendant on two grounds: (1) Plaintiff‘s design was obvious in the light of the prior art because what he had done disclosed at best the talent of an adaptor, but not the art of an inventor. “The design as a whole“, said the district judge, “would be obvious to a carpenter of ordinary skill familiar with the prior art.” (2) The design was not ornamental and was not the product of aesthetic skill and artistic conception and had “no particularly aesthetic appeal in line, form, color or otherwise.”
“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
“The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” (
35 U.S.C. § 171 ).
We have held that in order to be patentable a design must be new, original, ornamental and non-obvious to a person of ordinary skill in the art. R. M. Palmer Co. v. Ludens, Inc., 236 F.2d 496, 500 (3 Cir. 1956).9
The standard of non-obviousness under
On the standard of skill in the art, defendant offered no evidence, expert or otherwise. Plaintiff, however, in opposition to the motion for summary judgment offered affidavits and depositions on this subject. An affidavit of Henry S. Fischler, whose application for a patent was held by the Patent Office to constitute an interference with plaintiff‘s patent application, averred that at the time he made his patent application, International Swimming Pool Corp., his employer, was the dominant corporation in the on-the-ground swimming pool industry and that when International first learned of plaintiff‘s design it recognized that it was new, original, attractively ornamental and non-obvious not only to persons of ordinary skill in this field, but even to those possessing very considerable skill in the art. Fischler attested to his agreement with this judgment. He averred that because of its high opinion of plaintiff‘s design International directed him to prepare an application as close to it as possible. Fischler had had eleven years of continuous experience in the on-the-ground swimming pool industry and had worked for a number of manufacturers of such pools. The designs marketed by plaintiff and those who have substantially copied his design account, according to Fischler‘s affidavit, for approximately ninety per cent of the on-the-ground swimming pool sales in the United States. Plaintiff‘s company is now dominant in sales and popularity in the industry, which Fischler described as highly competitive. This success he said was not due to superior advertising or marketing, since plaintiff‘s competitors have also done this, but without the same success. Nor was it due, according to Fischler, to a generally expanding market. Plaintiff‘s design, Fischler averred, had been copied or imitated innumerable times by competitors, and defendant itself, a former supplier for plaintiff‘s pool, deliberately copied it.12
While some of these allegations state ultimate conclusions of law, they are entwined with allegations of fact which show that the level of skill required to produce plaintiff‘s design reaches beyond the minimum necessary for a patent and that his pool has had a remarkably great acceptance by the public. Evidence of facts establishing the level of skill in an industry necessarily are often cast in language similar to the ultimate conclusion of law, but the evidence is not to be disregarded on this account,13 and while commercial success alone is not enough to render an article necessarily patentable, it is relevant evidence of non-obviousness.14
It therefore was error to enter summary judgment for the defendant on the issue of obviousness.
The district court also erred in holding on summary judgment that plaintiff‘s design was not ornamental. To be ornamental the configuration must be designed for aesthetic appeal rather than dictated primarily by functional requirements,17 and the design as a whole must produce a pleasing impression on the aesthetic sense of the ordinary observer.19
The district court did not question that plaintiff designed the pool for aesthetic appeal, but it held that the design did not have aesthetic quality. Our examination of the design of plaintiff‘s pool leads us to the conclusion that it cannot be said as an indisputable statement of fact that the design is not pleasing to the ordinary observer, especially when this is considered together with the evidence of its wide popularity and commercial success.20
Defendant seeks to overcome this conclusion by the contention that the gussets were designed to provide support for the deck and walls of the tank rather than for ornamental purposes. Plaintiff disputes this contention and points to other methods of support which would have been of greater structural value as showing that their use was dictated by ornamental considerations. Moreover, in the prior art no gussets were used for support. Since neither party has offered any facts to resolve their dispute on this question it must await determination at trial.
Finally, defendant contends that even if the district court was in error in granting summary judgment for lack of non-obviousness and lack of ornamental quality, the judgment nevertheless should be sustained because plaintiff‘s patent lacked novelty. The standard of novelty is whether the design appears to the ordinary observer to differ from the prior art and not to be a mere modification of it.21 Here, too, there exists
We conclude that there are genuine issues of material fact which must be determined at a trial and that the entry of summary judgment therefore was error.
The judgment of the district court will be reversed and the cause remanded for further proceedings.
GERALD McLAUGHLIN, Circuit Judge (dissenting).
In this patent case plaintiff sued defendant for infringement. Defendant moved for summary judgment on the ground that the patent is invalid and not infringed. It stated that “There is no genuine issue as to any fact material to disposition of this motion and defendant is believed entitled to judgment as a matter of law.” Appellant agrees that in such situation summary judgment procedure is correct practice. See Allen-Bradley Co. v. Air Reduction Co., Inc., 391 F.2d 282 (3 Cir. 1968). Supporting its motion re validity it presented the prior art cited by the Patent Office in the matter together with prior art not cited by said Office. Plaintiff in his brief opposing a finding in favor of the defendant on said motion made the following affirmative statement concerning the use of summary judgment in this particular instance.
“While summary judgment is a difficult remedy to obtain in a patent case, we are in accord with its application here. As a result of defense counsel‘s diligent research the Court has before it all of the necessary prior art to determine validity.” The trial judge properly construing plaintiff‘s view as complete acceptance of the summary judgment procedure for determination of the base question as to the validity of the suit patent, proceeded to an exhaustive examination of the evidence thereon. His fundamental test for the granting of a design patent was that it “must be based upon invention of a new, original and ornamental design non-obvious to a person of ordinary skill in the art.” That is the sound teaching of Judge Kalodner‘s opinion in R. M. Palmer Co. v. Luden‘s, Inc., 236 F.2d 496 (3 Cir. 1956) which states the basic law here involved. The single claim of appellant‘s patent consists of reference to the drawings of same which are the only descriptive specifications of the patent. After study of all the related prior art, which is presented at length in his opinion, the district judge concluded that the plaintiff merely combined elements which were all prior art; that plaintiff was most familiar with that prior art and by an ordinary designer‘s regrouping of it came up with his pool design. The whole evidence plainly justifies the court‘s holding.
Much of plaintiff-appellant‘s briefs are devoted to a labored effort at denying that he had flatly conceded that “the Court has before it all of the necessary prior art to determine validity” and that therefore he was in accord with the use of the summary judgment procedure to so determine the all important question of validity of the patent. There is nothing now advanced in appellant‘s briefs from which can be inferred a genuine fact controversy regarding the patent‘s validity. The statutory presumption of validity is urged as a last resort but that falls as it should in the face of the impressive lack of the same
Appellant, in asserting his afterthought contentions, would now have it that the holding below is contrary to Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Actually, the district judge primarily relied upon that landmark decision for his findings in this appeal. In Graham, Mr. Justice Clark for the Court, laid down the fundamental principle that:
“While the ultimate question of patent validity is one of law, A. & P. Co. v. Supermarket Equipment Corp., supra, [340 U.S. 147] at 155 [71 S.Ct. 127, 131, 95 L.Ed. 162], the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, 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. Against this background, the obviousness or nonobviousness of the subject matter is determined.”
The trial judge meticulously followed the above guidelines. He passed upon all of the prior art and ascertained the differences between the latter and the Rains patent. He resolved the level of ordinary skill in the pertinent art. Strictly observing the Graham requirements, he determined from all of the above that there were no non-obvious arrangements in the Rains pool, that there were no genuine facts at issue regarding the validity of the said patent. Appellant‘s deliberate attempted repudiation of his carefully considered conclusion in his brief to the district judge that there were no true questions of fact on the validity issue, glaringly reveals how right he was the first time when he admitted that there were no genuine questions of fact in the validity issue and that the latter was properly before the court on motion for summary judgment.
I would affirm the judgment of the District Court.
Joe SEGURA, Appellant, v. Wayne K. PATTERSON, Appellee.
No. 9998.
United States Court of Appeals Tenth Circuit.
Oct. 1, 1968.
Rehearing Denied Jan. 8, 1969.