Before EVANS and CHASE, Circuit Judges, and HINCKS, District Judge.
Plaintiff brought this suit to enjoin the infringement of Claims 1, 2, 7, 9, 10, 13, 16, and 19 of Patent No. 2,248,467, to Joseph Scilken. The court found all of these claims to be valid and infringed and enjoined further infringement of them. It also ordered an accounting of defendant's profits and damages. Defendant does not dispute infringement. It challenges the validity of the patent and all the claims involved.
Set forth in the margin are claims 10, 13, and 16,*fn1 which are sufficient for this opinion. The other claims are not so materially different as to present separate questions of patentable novelty.
The patent covers "A Refrigerated Display Fixture for Food." In his specifications the inventor says his invention "relates to refrigerated fixtures for the display of perishable goods such as foods, and more particularly to counter and window food display fixtures of the type generally used in self-service restaurants." Its object was to provide fixtures "by which the costly, time and labor consuming and messy use of cracked ice is entirely eliminated"; also "to provide mechanically refrigerated 'cool-counters' and window fixtures * * * which permit effective and convenient disposal of all types of foods, both solid and liquid, both within and without containers or trays and both within and on the surface of the fixture and which maintain such food at uniform and properly chilled temperatures." Specifically mentioned is the objective "to provide mechanically refrigerated fixtures of the character described in which food containing trays may be disposed and arranged and be properly chilled on all sides" and to provide "mechanically refrigerated fixtures of the character described in which fruits, melons and similar circular objects may be displayed and effectively chilled."
Defining the combination the inventor said:
"The display fixture may be constructed of units consisting of cooling plates, each of which may comprise a pair of flat sheets or walls separated by elements to form ducts or conduits for the passage of vaporized refrigerant. In one illustrated embodiment, the cool plates have their spacing elements formed by pressing out continuous portions of one of the plates, along the center part and the edges thereof, and welding the two plates together along the pressed out portions thus forming continuous spaces or ducts."
Scilken was a salesman and had sold refrigerated equipment for ice boxes, ice cream cabinets and the like. He conceived the idea, so he states, of employing cool plates to solve the problem of ice packed cool counters. He welded a number of cool plates together into an open bottom structure comprising a top for the food to be cooled on, and front, rear and end walls to support the top and to arrange all of these plates in such a manner that the passages would be connected in series and the refrigerating medium thus made to flow continuously through the top and side and end walls. This combination, so he asserts, produced a frost over the whole fixture giving the same a cool appearance and, in addition, uniformly cooled the space enclosed by the top, side, and end walls. Accompanying drawings are not helpful. They seem to be made with the purpose of making a rather simple structure, difficult, forbidding and awesome.
As an approach to our study of the patent, we accept plaintiff's contentions, upon which he builds his argument in favor of the validity of his patent, namely: (a) A patentable combination may be disclosed even though all elements are old. (b) Utility is not necessarily limited to greater efficiency or to a lowered cost of product of an article. It may be found in the greater appealability of the article to the eye. (c) The best test of patentable novelty, when a doubtful case is presented, is to be found in the verdict of the users. The prompt and extensive acceptance of the new article by users, unless attributable to other causes, furnishes persuasive evidence that there was a want which would have been filled earlier, had the mechanic been able to supply a product which would meet such demand. It must have required something more than the skill which a skilled mechanic possessed, otherwise the demand would have been met.
We may also add that patentable novelty may not be properly appraised solely by the extent of mechanical ingenuity displayed by him who offers a solution. Division among judges often grows out of the difference in the stance of the viewer. The object appears vastly different to the rear viewpoint observer than to him who viewed the problem before its solution.
Notwithstanding our ready acceptance of the foregoing, we find plaintiff confronted by the prior art,*fn2 also by difficulty in getting his patent into the doubtful class, and also by the insertion of claims which must be condemned as too broad. Claim 16 is an illustration. Its rejection would bar plaintiff's right to judicial protection of the other claims, if they were found to be valid, until a disclaimer of claim 16 was made. Unfortunately one may invent and lose his invention by failure to claim. He likewise may seek too much dominance of the art through too broad claims and lose all. Likewise he may, as did the plaintiff here, seek and secure a patent upon a combination when if he had anything to protect by patent grant, it was a design.
Turning now to a study of the claims, we find plaintiff took evaporator plates (which were old) and put them together so as to form a box - or a table - upon which food, in or out of trays, could be placed. He has taken a small evaporator plate and made a larger one through the use of a plurality of the smaller ones. He made side walls and a top out of evaporator plates. He has connected the plates so that the refrigerant flows in a continuous circuit from one plate to the other. The evaporator plate and the means for conducting the refrigerant through or about it, are both old, and have been so extensively used that neither novelty in their use or originality in their selection can be, or is, asserted.
A prior patent to Battista, No. 1,896,693, dated Feb. 7, 1933, supplies a stubborn argument against plaintiff's claim to patentable novelty. It covered a refrigerated display service, and its claim 1 reads:
"In a display counter of the character described having glass side walls, a pair of transparent shelves supported in spaced relation between the walls of the counter, said shelves being formed with a passageway extending therethrough, and means connecting the passageways of each shelf to form a continuous circuit ...