The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is an action in equity, based on the alleged infringement by the defendant of design patent, No. 80,318, issued by the United States Patent Office to Edward Karfoil, for design for a doily, granted January 14, 1930, on an application filed August 27, 1929.
The said design patent was duly assigned by the said inventor to the plaintiff Royal Lace Paper Works, by an assignment in writing duly dated on the 2d day of February, 1935, and recorded in the Patent Office on February 5, 1935, in Liber D 162, page 446, and plaintiff is now the lawful owner and holder of said patent.
The defendant has interposed an answer setting up the defenses of invalidity and noninfringement.
The specification contains no description of the design; reliance being placed upon the drawings which form part of that patent.
The patent in suit is for a doily, and is made in different sizes. The design is cut into the paper, or other article from which the doily is made, with a die. The dominating feature of the design is the outer border, the inner border, and the four angular corner pieces, one at each corner, partially interfitting, as that is what first attracts the eye when it looks at the design.
The defendant pleaded eight prior art patents, but offered in evidence only three design patents, issued to J. W. Catty, as follows: No. 32,605, for doily, granted April 24, 1900; No. 36,510, for doily or similar article, granted August 18, 1903; and No. 36,686, for doily or similar article, granted December 22, 1903.
The last-mentioned three patents, in evidence, do not show the dominating feature of the patent in suit. Each of the said three patents shows three or more borders, but none of them shows angular corner pieces, partially interfitting with the outer border at each corner.
None of the three patents so offered in evidence shows the design of the patent in suit, but each has an entirely different general appearance and effect, and I cannot see how any one would confuse the design of the patent in suit with the design of either of said patents.
While it is true that isolated elements of the design of the patent in suit may be found in each of the patents so offered in evidence, the combination of the patent in suit, in its entirety, is not found in any of the said prior art patents.
A design patent cannot be anticipated by showing the elements separately to be old, but the test is the appearance of the whole design, as it appears in use. Ashley v. Weeks-Numan Co. (C.C.A.) 220 F. 899, 902; Bayley & Sons v. Braunstein Bros. Co. (D.C.) 246 F. 314, 316; Pelouze Scale & Mfg. Co. v. American Cutlery Co. (C.C.A.) 102 F. 916.
Of course, the design patent in suit must involve invention, and it is not enough that it is new, original, and ornamental, but it must also be the result of the exercise of inventive faculty. The test for a design patent is the same as for a mechanical patent.
I find that the patent in suit does involve invention, and novelty is not negatived by combining features that were separately found in other articles of the same class. Graff, Washbourne & Dunn v. Webster et al. (C.C.) 189 F. 902, affirmed (C.C.A.) 195 F. 522.
The issuance of the patent in suit is prima facie evidence of its validity. Lehnbeuter v. Holthaus, 105 U.S. 94, 96, 26 L. Ed. 939; Shoemaker, ...