The opinion of the court was delivered by: BYERS
This is an action for infringement of the plaintiff's design patent No. 162,985, granted April 17, 1951 on application filed April 25, 1949, and for unfair competition, the complaint having been filed February 26, and the answer March 6, 1952.
The design is for a liquid serving unit consisting of a plunger operated bottle for beverages, surrounded by a tray holding glasses into which the beverage is siphoned, the combination being enclosed in a sphere, the upper and lower hemispheres being detachable and the upper one being surmounted by a handle device of crossed tenpins. When closed, the sphere resembles a bowling ball in appearance. The lower hemisphere is supported by a base having a depth of nearly a third of the vertical diameter of the sphere, and the design of the device is attractive.
That the defendants have offered for sale an infringing device (Cantor Exhibit No. 3) is too clear for dispute, and its contemplated slightly different device (Cantor Exhibit No. 5) differs from the latter only on the form of surmounting handle which in pictorial representation, seems not to include one or more tenpins. The defendants have made a motion for summary judgment, the searching aspect of which is the challenge to the validity of the plaintiff's patent.
There are subsidiary issues, namely, allegedly unfair competition on the part of the defendants and oppressive use of the patent of the plaintiff, involving purported threats to the defendants' business, both of which would require the taking of testimony if a decision of that aspect of the controversy should be required.
The defendants' showing on the question of validity is impressive, reliance being had upon the product patent of Bazelon No. 2,529,368, granted November 7, 1950 on application filed July 22, 1946, for a cellaret having a combined musical device and rotatable rack. The essential elements are a bottle, obviously to hold beverages, with a surrounding rack or tray holding glasses, which rack is rotatable. The pertinent statement is in the recitals, page 1, lines 39, et seq.;
"The rotating cellaret includes a casing generally designated at 10. As shown, the casing is made in spherical form and has lower and upper component semispherical parts 11 and 12, respectively. Rabbets 13 at the juncture of the component parts maintain the two parts in assembled relation but permit removal of part 12 from part 11. The component parts 11 and 12 may be suitably molded from plastic."
At page 3, line 22, in the specifications, the following appears:
"To facilitate removing the upper component part 12 of the casing 10 and to cause the spherical casing 10 represent a bowling ball, for example, it is provided with finger recesses 51."
It is unnecessary to go into the other aspects of the patent which involve a music box actuated by a spring situated in the base. The Figures 1 and 3 disclose a structure resembling a bowling ball resting on a base which seems to differ in appearance from the plaintiff's device only in that there is no surrounding handle on the upper hemisphere to facilitate its removal. The fact that the bottle shown in the drawings would evidently have to be lifted in order that part of its contents could be poured into the glasses resting on the tray, does not affect the resemblance in appearance or design between the completed assemblage shown in the plaintiff's patent and that of Bazelon.
The differences in design between the respective structures concern only minor matters, such as the absence in Bazelon of a handle for lifting the upper half of the casing, and the kind of a bottle which constitutes, of course, the most potent element of the entire assembly. The bearing of the Bazelon patent is sought to be minimized on the theory that its date of issue (November 7, 1950) is later than the filing date of the patent in suit (April 25, 1949), and it is urged that the disclosure could be measured only be an examination of the Bazelon application filed July 22, 1946. Since it is necessary to strive to understand what the art knew in measuring the advance, if any, made by this plaintiff, the Bazelon patent is thought to constitute prior art: Western States, etc., v. S.S. Hepworth, etc., 2 Cir., 147 F.2d 345, at pages 348,349.
The difficulty of obtaining a valid design patent has been pointed out in this Circuit as recently as in January of this year, Briddell, etc., v. Alglobe, etc., 194 F.2d 416 at page 419, and the cases cited in that connection have been examined and uniformly state the rule to be, Bell, etc., v. Catalda, etc., 2 Cir., 191 F.2d 99 at page 104:
"We have held that such a patent is invalid unless it involves 'a step beyond the prior art', including what is termed 'inventive genius.' A.C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99. We have noted that, as in all patents, there must be a substantial advance over the prior art."
The facts in that case are quite remote from these, but the statement of the rule is entirely in accord with prior holdings, such as White v. Leanore, etc., 120 F.2d 113, at page 114:
"The validity of a design patent depends upon the same factors as that of a mechanical patent: the condition of the art when the design was made; how long the need had existed; how nearly the art had approached the new design and when; how far the design met ...