The opinion of the court was delivered by: FORMAN
This suit was brought for infringement of design patent No. 78,498, issued on May 14, 1929, for a term of fourteen years, on an application filed March 15, 1929, by John H. Balmer, president of the plaintiff company. It is for a combined tooth brush and tumbler holder.After the design was created, some fifty samples were made in preparation for plaintiff's launching the patented article on the market. Due to economic reasons plaintiff's design was not put on the market. Defendant is alleged to have pre-empted the field with its design infringeing on plaintiff's patent. The defenses are that the defendant's fixture antedated the invention of the patent, that the patent is invalid for lack of invention over designs of the prior art, and that there is no infringement.
The evidence discloses that long before the issuance of the patent in suit there were marketed a number of devices for a combination tooth brush and tumbler supporting fixture, practically identical in structure and precisely identical in function, but slightly different in general appearance. Each consisted of a back plate with slots constituting means for adherence to the wall of the room in which they were to be located. At right angles to this is a protruding plate which is recessed so as to contain a tumbler and on each side of which there are three perforations through which tooth brushes may be inserted.
Some of these in evidence are considered as follows:
In Exhibit D-1 the back plate is rectangular. The protruding plate, likewise rectangular, with rounded outer curves, has a circular recess in its center, to receive the tumbler and the six tooth brush perforations are lozenge shape. The supporting or back plate shows above the upper surface of the protruding plate about a half an inch and about an inch and a half below the nether surface.
In Exhibit D-2 the recess for the tumbler is square, accompanied on each side by a three-sided ledge through each of which are three lozenge-shaped perforations to admit the tooth brushes. The back plate is flush with the top edge of the protruding plate and extends below its nether surface approximately an inch and three-quarters.
In Exhibit D-3, to be sure, only a tooth brush holder is involved. The means for supporting the tumbler is absent.But it is significant that the back plate is octagonal, the upper part of the octagon showing above the upper surface of the protruding plate and the lower part showing below the nether surface of the same.
In 1923, Balmer, himself, patented a design for such a fixture, characterized by a circular back plate and an elliptical protruding plate in the center of which was a circular recess for the tumbler flanked on each side with three lozenge-shaped perforations (Exhibit D-6).
Just what did Mr. Balmer do to entitle him to patent the design in question? In 1926 and 1927, while in Europe, he says he saw a trend toward the modernistic style of thought, which might spread to bathroom fixtures, so that in July of 1927 his company started to work on the idea, and early in 1928 submitted sketches to the Globe Porcelain Company for the purpose of making dies. As a result of all of this there was produced the patented article. It has a back plate, the lower side of which is flush with the nether surface of the protruding plate. So much of the back plate as shows above the upper surface of the protruding plate has six sides and gives the appearance of the upper part of an octagon. The protruding plate is octagonal in shape. In its center is an octagonal recess to support the tumbler. This is flanked with the usual six perforations, perhaps more rectangular than lozenge in shape, three on each side to hold the tooth brushes. The variations from prior specimens consist in that the back plate does not show beneath the nether surface of the protruding plate. The general design of the back plate, the protruding plate, and the recess for the tumbler is octagonal, rather than circular or square. The front surface of the back plate is slightly indented or paneled, while seven of the outside edges of the protruding plate are also slightly indented with panels.
The foundation of plaintiff's right to claim a patent for this design is found in the following provision of the statute: "Any person who has invented any new, original, and ornamental design for an article of manufacture, not known or used by others in this country before his invention thereof * * * may * * * obtain a patent therefor." 35 U.S.C.A. § 73.
Following are some of the cases cited by the plaintiff to support his contention: In J. R. Wood & Sons, Incorporated v. Abelson's, Incorporated (C.C.A.) 74 F.2d 895, plaintiff brought suit alleging infringement of his design patent for a wedding ring, consisting of a double row of diamond chips extending partially around the ring. This design gave the appearance of cut diamonds and sold for less money. Witnesses testified as to its novelty. This case is distinguishable from the case at bar on the ground that a new effect was obtained by the design in that the appearance of cut diamonds was achieved. Obviously, considerable ingenuity is required to produce an effect of that sort. In Inflexible Company v. Megibow (D.C.) 251 F. 924, plaintiff charged infringement of his design patent for lace. Defendant interposed the defense of lack of novelty which was overruled. In this case the court found a newness of design that was the product of the inventive faculty (at page 925 of 251 F.) In Graff, Washbourne & Dunn et al. v. Webster et al. (C.C.A.) 195 F. 522, plaintiff brought suit for infringement of his kdesign patent for the border of a dish. There, the court admitted that each element of the patented design, considered separately, was old, but that a new impression was created by the combination and hence the patent was good against the objection that it was invalid. In Untermeyer v. Freund (C.C.) 37 F. 342, plaintiff's design for a watch case was upheld against defendant's contention that no invention was displayed. The design consisted of a central conventional star placed upon a larger star of leaves, both stars being in bas-relief. While this system of design existed in many forms, the court there held that in the particular form in which it was utilized its application was new and novel to watch faces. In General Gaslight Company v. Matchless Manufacturing Company (C.C.) 129 F. 137, 138, plaintiff sued for infringement of his design patent for gas lamps known to the trade as a cluster of lights. Defendant's defense was want of novelty and infringement. The court stated: "It is not seriously controverted that the design embodies features familiarly known, nearly all of which may in some form be found in pre-existing lamps. * * * The design patent in question is not for an ornament, pure and simple. The shape and configuration of the lamp also permit its classification as a useful article of manufacture. * * * No other similar lamp, which when lighted appeared like an electric light, was then known * * * [and plaintiff's design] insures the illumination of large areas."
The court is cognizant of the test of invention for design patents as cited by Judge Rellstab in Inflexible Company v. Megibow (D.C.) 251 F. 924, 925, wherein he quoted from Phoenix Knitting Works v. Bradley Knitting Company (C.C.) 181 F. 163; "'A design is patentable, if it presents to the eye of the ordinary observer a different effect from anything that preceded it, and renders the article to which it is applied pleasing, attractive, and popular, even if it is simple, and does not show a wide departure from other designs, or if it is a combination of old forms.'"
But in the ring case the design created not only a pleasing impression, but a unique and useful result, in that chip diamonds appeared to be cut diamonds. In the lamp case, the design created a similar impression upon the eye and also illuminated greater areas and gave the impression of an electric light. In the dish, lace, and watch design cases the designers necessarily possessed some genuis. And that genius was unique. The characteristics of the ...