The plaintiff,' in a declaratory judgment action, is seeking an adjudication that U. S. Patent No. 2,038,844, April 28, 1936, to Le Dorf is invalid. The plаintiff’s motion is supported by a stipulation which brings before the Court the Cole Patent No. 149,993 of 1874 and certain drawings showing, among other things, the structure made by the plaintiff, charged to infringe. It was also stipulated that the file wrapper of the Lе Dorf patent should be made part of the record for the purposes of this motion.
A consideration of the foregoing evidence leaves no doubt whatever in my mind that the Le Dorf patent is invalid for want of patentable novelty over Cole, and I see no reason why summary judgment should not be entered to that effect.
The claims of Le Dorf read literally on the structure disclosed by the Cole patent except that they do not call for the twо small fashioning slots of the earlier patent. The omission of these slots, which are merely devices in general use for shaping close fitting articles of wear and which have no part in the function of the completed artiсle, is obviously not an inventive step and, in fact, is not claimed by the defendant to be one.
Nor can it be argued thаt the two devices are not in the same field serving substantially the same purpose. There have been some cases in which invention has been found to subsist in appropriating an old device to a totally new' use. The defendаnt’s argument on this point is that the Cole innersole slipper is intended to be worn over a stocking, while the object of the Le Dorf device is to allow shoes to be comfortably worn without stockings. This argument, even if it had any basis of fact (which it has not), would not substantially differentiate the functions of the two. Actually, there is nothing in either of the patents to support it. The specification of the Cole patent states that the article is cut so as to “allow a shоe to be easily worn,” but there is no suggestion that its use is restricted to wearing it over a stocking, and the Le Dorf specification expressly states that it may be worn without a stocking or “may supplement the stocking.”
The defendant’s main argument really comes down to the proposition that the presumption of validity arising from the grant of the patent is of itself sufficient to raise a genuine issue as to a material fact and prevent entry of judgment under Federal Rules of Civil Procedure, rule 56(c), 28 U.S.C.A. following section 723c. I am not aware of any decision exactly in point, but that the dеfendant’s position in this regárd is not maintainable is shown by the long list of cases in which patents have been held invalid on demurrеr. Authority upon the point is plentiful and reference need only be had to Friend v. Burnham & Morrill Co., 1 Cir.,
In Gatch Wire Goods Co. v. W. A. Laidlaw Wire Co., 7 Cir.,
Of course, the presumption of validity gains strength when, as in this case, the prior art relied on to еstablish invalidity has been before the patent examiner, but it is still only a presumption, not- conclusive but rebuttable, and not creating any genuine issue of fact when clearly rebutted by the undisputed facts before the Court.
In the present case the defendant could have presented, by affidavit, any of the various matters which it now suggests might, upon a trial, mаke invention a genuine issue of fact. I doubt that any of them would have been sufficient in view of the almost complete anticipation by Cole but, if the patent had met with extraordinary commercial success, the defendant сould have shown that fact by affidavit. Expert opinion is often resorted to in patent cases to convince the Court that a patent is something other than it plainly appears to be but, if there are any factors in the рresent patents on which such an opinion could be based, they too could have been presented by affidavit.
In the third circuit, in American Safety Device Co. v. Liebel-Binney Const. Co., 3 Cir.,
Summary judgment for the plaintiff may be entered.