BUA, District Judge.
This cause is before the Court on the motion of defendants Chicago Roller Skate Company ("Chicago") and Red Stone Enterprise Company, Ltd., for summary judgment on the ground that (1) Chicago's roller skate, Exhibit 17, does not infringe the design patent in suit, U.S. Patent Des. No. 261,542, owned by the plaintiff Brookfield Athletic Shoe Company, Inc.; (2) the patent in suit, No. 261,542, is invalid for the reasons enumerated in 35 U.S.C. §§ 102, 103 and 171; and (3) defendant is entitled to all of its costs, expenses, and attorneys' fees pursuant to the provisions of 35 U.S.C. § 285.
Defendants' motion has been fully briefed with memoranda supported by evidence produced through discovery, including depositions of expert witnesses and others. In accordance with 28 U.S.C. § 636(b)(1)(B), the Court referred the motion for summary judgment to the Executive Committee for designation of a magistrate to hear it and submit recommendations for disposition. Magistrate Joan H. Lefkow was designated; and on November 5, 1984, she filed a report which discloses a careful analysis of the issues and a resolution of them which the Court finds is amply supported by the record. Magistrate Lefkow has made recommendations for disposition of defendants' motion for summary judgment which the Court finds are supported by the authorities. Therefore, it adopts Magistrate Lefkow's report as its memorandum opinion; and on the authority of 28 U.S.C. § 636(b)(1)(C), the parties having had opportunity to file objections, the Court accepts in whole Magistrate Lefkow's recommendations, incorporates her report into this order making it a part hereof as Appendix A, and orders that:
1. The motion for summary judgment of the defendants Chicago Roller Skate Company and Red Stone Enterprise Co., Ltd., is granted on the question of infringement, and the Court finds that the roller skate in question, Exhibit 17, does not infringe the design patent in suit, U.S. Patent Des. No. 261,542.
2. Defendants' motion for summary judgment on the question of the validity of plaintiff's design patent is denied, and the Court finds that U.S. Patent Des. No. 261,542 is valid under 35 U.S.C. §§ 102, 103 and 171.
3. As recommended by Magistrate Lefkow, defendants' request for an award of attorney fees and costs is denied.
IT IS SO ORDERED.
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
BROOKFIELD ATHLETIC SHOE COMPANY, INC., Plaintiff,
CHICAGO ROLLER SKATE COMPANY and RED STONE ENTERPRISE COMPANY, LTD., Defendants.
83 C 5301
TO: The Honorable NICHOLAS J. BUA United States District Judge
MAGISTRATE'S REPORT AND RECOMMENDATION
This is an action for infringement of a design patent. Pending is defendants' motion for summary judgment asserting invalidity and non-infringement.
Brookfield Athletic Shoe Company (Brookfield) is a Massachusetts manufacturer of athletic footwear. In the late 1970's, Brookfield began to manufacture and sell roller skates of its own design. In 1981, it patented a particular skate design, U.S. Des. No. 261,542 ("the patent", "the patent in suit"). The patented design, entitled "Integral Shoe Sole and Wheel Mounting for Roller Skate" (Defendants' Exhibits 1, 14), has the appearance of a wheel mounting plate with multiple angled bosses to secure the skate wheels. The element that connects the skate boot to the wheel mounting is of a wedge shape, with the heel end slightly raised. The "wedgee" sole and wheel mounting plate are constructed in one piece. It is this patent that the defendants have allegedly infringed.
Defendant Chicago Roller Skate Company (Chicago) is a roller skate manufacturer. In 1979 Chicago began purchasing for distribution in the United States an inexpensive outdoor sidewalk skate from the defendant Red Stone Enterprises (Red Stone), a Taiwan manufacturer. This skate (Defendants' Exhibit 17) has a plate with multiple angled bosses for wheel mounting. The aspect that connects the plate to the skate boot is of an exaggerated wedge shape with an extra wedged piece inserted directly under the heel. These elements are combined in one integrated piece. Defendants first contend that the patent is invalid because the design lacks the necessary requirements of novelty and nonobviousness under 35 U.S.C. §§ 102 and 103. Second, even if the patent is valid, defendants contend the Chicago design does not infringe because it is so different from the Brookfield design that the ordinary observer would readily distinguish the two skates. Last, Red Stone individually contends it has not committed an act of infringement within the United States. Defendants also seek attorney's fees under 35 U.S.C. § 285 on the grounds that this is a spurious law suit.
I. VALIDITY OF THE DESIGN PATENT
A patent, once granted, is presumed valid. 35 U.S.C. § 282. That presumption is strengthened if all the pertinent prior art was before the Patent Office and considered by the examiner in issuing the patent. Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d 866, 871 (7th Cir.1974), cert. denied, 419 U.S. 874, 95 S.Ct. 135, 42 L.Ed.2d 113 (1974). The examiner need not cite all the prior art, for "it is presumed that the examiner considered the [uncited] art and discarded it as being no more pertinent than that cited by him." Panduit Corp. v. Burndy Corp., 517 F.2d 535, 538 n. 2 (7th Cir.1975), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304 (1975). A challenger may overcome the presumption of validity only by clear and convincing evidence to the contrary. Medical Laboratory Automation Inc. v. Labcon, Inc., 670 F.2d 671, 674 (7th Cir.1981); Astra-Sjuco, A.B. v. International Trade Commission, 629 F.2d 682, 688, 67 C.C.P.A. 128 (1980).
The patent in suit claims to be an "ornamental design for an article" under
The burden of proof is on the defendant to show by clear and cogent evidence that the design is not novel. Illinois Tool Works, Inc. v. Continental Can Co., 273 F.Supp. 94, 106 (N.D.Ill.1967), aff'd, 397 F.2d 517 (7th Cir.1968). Novelty of the design is a requirement under sections 101 and 102.
The novelty of a design patent is to be determined by its impact upon the ordinary observer. Novelty is established if the "average observer takes the new design for a different, and not a modified already existing design." Contico, 665 F.2d at 823, quoting Thabet Manufacturing Co. v. Kool Vent Awning Corp., 226 F.2d 207, 212 (6th Cir.1955). See also Clark Equipment Co. v. Keller, 570 F.2d 778, 799 (8th Cir.1978); Schnadig Corp. v. Gaines Manufacturing Company, Inc., 494 F.2d 383, 389 (6th Cir.1974).
A new combination of elements already existing in the prior art into a single product can be novel. Bela Seating Co. v. Poloron Products, Inc., 438 F.2d 733, 736 (7th Cir.1971); see Medtronic, Inc. v. Cardiac Pacemakers, Inc., 555 F.Supp. 1214, 1217 (D.Minn.1983). However, a combination of old elements will be carefully scrutinized to determine its novelty. Skil Corp. v. Rockwell Manufacturing Co., 358 F.Supp. 1257, 1259 (N.D.Ill.1973), aff'd in part, rev. in part sub. nom, Skil Corp. v. Lucerne Products, Inc., 503 F.2d 745 (7th Cir.1974).
In considering the novelty of the patent in suit the court takes the position of the "average observer" and must determine if the design is a truly "new" design and not a modification of a design existing in the prior art. The patent in suit claims to be an "integral shoe sole and wheel mounting for [a] roller skate". Defendants' Exhibit 1 at 1; Exhibit 2 at 2. The illustrations (Defendants' Exhibit 1), the photographic representations (Defendants' Exhibit 14a-d), and the physical example of the patented design (Defendants' Exhibit 14), demonstrate that from the side view the roller
The prior art cited by the Patent Office consists of four patents: Covell No. 116,161, Miller Des. 143,983, Coldwell Des. 162,129, and Ware No. 3,180,651. The Covell patent (Defendants' Exhibit 3), issued in 1871, is for a wheel mounting of fairly uniform thickness with curved "trucks" that attach to the wheels. It claimed to improve the skate's capacity for "describing circles of greater or lesser radius". The design in suit is obviously different from the design of the Covell skate. The Miller design patent (Defendants' Exhibit 4) is for a flat wheel mounting plate with curved angled bosses to attach the wheels. The main difference from the patent in suit is the clear absence of a boss to secure a toe stop. The Coldwell design patent (Defendants' Exhibit 5) is also a flat wheel mounting plate, but it has very shallow, sharply angled bosses for wheel attachment. This, as well as the absence of a boss for a toe stop, differentiates it from the patent in suit. The Ware patent, similarly to the patent in suit, is for a wheel mounting plate with angled bosses and a toe stop structure (Defendants' Exhibit 6). The patent in suit is different from the Ware patent in that the Ware patent bosses have less contour than the patent in suit. Further, the patent in suit integrates a wedge sole into this wheel mounting. This is a major distinction from the Ware patent.
Defendants request that the court consider other prior art in the same patent classification as the patent in suit, art that was not cited by the Patent Office. Although most can be dismissed summarily as discernibly different to the average observer from the design in suit,
Turning now to the legal issues, the court must first decide whether a genuine issue of material fact is presented making summary judgment inappropriate. Plaintiff asserts no genuine issue of fact on the issue of novelty. The patented design is comparatively simple; the court has before
Having observed all the prior art from the standpoint of the ordinary observer, the court finds that the design patent in suit meets the statutory requirement of novelty. It is different from all the prior art in that it integrates a wedge sole into a wheel mounting plate in a unitary construction. Although the prior art includes wedge soles and similar mounting plates, no prior design combined the two elements into one piece in this way. Rather, the prior art maintained the distinctness of these elements.
The second element that must be satisfied to establish design patent validity is whether the patented design was not obvious, that is, not in some way suggested by the previous designs in the particular subject matter. If the design is obvious, the patent is invalid. The statutory provision regarding obviousness states, in pertinent part,
35 U.S.C. § 103 (emphasis added).
Novelty and nonobviousness are distinct concepts. Lemelson v. Topper Corp., 450 F.2d 845, 848 (2d Cir.1971). Where novelty only requires ascertaining the average observer's impression of the "newness" of the design as compared to the prior art, nonobviousness has the more rigorous standard of whether a person skilled in the art would find that the design was suggested by the prior art. The proper test for a combination of elements known in the art is whether the prior art suggests to one ordinarily skilled in the art doing what the applicant has done. Farmhand, Inc. v. Lahman Manufacturing Co., Inc., 192 USPQ 749, 760 (D.S.D. 1976), aff'd, 568 F.2d 112 (8th Cir.1978), cert. denied, 436 U.S. 913, 98 S.Ct. 2254, 56 L.Ed.2d 414 (1978). To ascertain nonobviousness under § 103, the court must consider several questions. The scope and content of the prior art must be determined; the differences between the prior art and the claims at issue must be ascertained; and the level of ordinary skill in the pertinent art must be resolved. Graham, 383 U.S. at 17, 86 S.Ct. at 693. National Business Systems, Inc. v. AM International, Inc., 743 F.2d 1227, 1233 (7th Cir.1984).
Defendants argue that the prior art shows that the patent design was an obvious combination of prior design elements, thus invalidating the patent in suit. They assert that a wedge shaped sole was not a new design but had been used for some time and that a wheel mounting plate with a central rib and angled bosses was similarly an old idea. They argue the combination of a wedged sole with such a wheel mounting plate would be an obvious combination of the existing art to one of ordinary skill in the art. In support of these contentions, the defendants depend on the exhibits of the prior art and hypothetical combinations thereof. They suggest that combining the shoe sole of the Meyer, Kimmel or Sanders designs with the wheel mounting plates of Ware No. 4,058,323, Brookfield's "prior art skate" (Defendants' Exhibit 15), or Chicago's die cast metal sole plate (Pat. No. 4,058,323, Defendants' Exhibit 22), suggests the design patent in suit.
The combinations were created by Gordon K. Ware, president of Chicago. The record reflects that he is well qualified to speak as one skilled in the art of roller skate design. In an affidavit, Ware states that in his opinion these combinations were obvious. Plaintiff counters with its own well qualified witness skilled in the art, David Landay, co-inventor of the patent in
Plaintiff also points to Even Hsieh, the designer of the allegedly infringing skate in support of its contention of nonobviousness. Mr. Hsieh, together with Ware, patented a similar idea in (utility) patent No. 4,357,028 in November, 1982. In his deposition, Hsieh stated that his skate's new contribution to the art was the wedge contour of the sole. Moreover, Ware and Hsieh, seeking a U.S. patent for the skate, listed among the application claims that the design was for a
Plaintiff's Exhibit 10 ¶ 23 (emphasis added). This claim does suggest that, contrary to their assertion here, Ware and Hsieh considered the integration of the mounting with a wedge sole a nonobvious idea.
Further, plaintiff asserts that Hsieh, in his Taiwanese design patent application for this same design, suggested that the integration of a wedge sole with a wheel mounting was patentable because the description in the application was, in Mr. Hsieh's words, for a "new design of the roller skates with the rear outsole of its boot integratedly combined to the foot plate of roller skate chassis. It characters the roller skate with integrity, convenience and perfection." Plaintiff's Exhibit 12 at 109. See also Plaintiff's Exhibit 11, Application at ¶ 5.
Plaintiff argues that the conflict in the affidavits of Ware and Landay presents a genuine issue of fact concerning whether the prior art suggested the present invention to a person of ordinary skill. Patent cases are in most circumstances unsuited for resolution by summary judgment, for they ordinarily involve determinations of fact regarding, for example, the scope and content of the prior art. Harvestall Industries, Inc. v. Hochstetler, 656 F.2d at 1234. A determination of validity on a summary judgment motion is appropriate, however, where no material fact issue pertinent to the outcome of the case is raised and no expert testimony is necessary to illuminate the court on the design in dispute. Harvestall Industries, 656 F.2d at 1234-35. This is particularly true if the patented design is relatively simple and the court is capable of examining the prior art on its own. Id. Further, where the veracity of the facts is not in issue, and the court has before it all the pertinent prior art, the determination of obviousness is a question of law. Beatrice Foods Co. v. Tsuyama Manufacturing Co., 619 F.2d 3, 5 (7th Cir.1979). But summary judgment should not be granted if the technical aspects of the design are not readily comprehended by one unskilled in the art, if the record is inadequate, if there is a need for expert testimony, or if the expert testimony is conflicting, or if there is some other genuine issue of material fact. Acoustiflex Corp. v. Owens-Corning Fiberglas Corp., 572 F.Supp. 936, 937 (N.D.Ill.1983). See Technograph Printed Circuits, Ltd. v. Methode Electronics, Inc., 356 F.2d 442, 448 (7th Cir.1966), cert. denied, 384 U.S. 950, 86 S.Ct. 1570, 16 L.Ed.2d 547 (1966); Freeman v. Hammond Corp., 464 F.Supp. 404, 408 (N.D.Ill.1978).
Based on the affidavits, exhibits and deposition testimony, the court finds that the design in issue is not obvious from the prior art. Although defendants introduced many graphic illustrations to demonstrate how the prior art could be combined to create the invention in suit, they did not persuasively show that these combinations would have suggested doing what plaintiff did. As Landay's statement puts it, "Each of the [prior art] references ... has an undercarriage that is structurally and visually opposed to the design of [plaintiff's] patent." In addition, Hsieh's prior statements suggest he also found the integrated sole and wheel mounting combination to be a patentable idea. Further, Ware was a co-applicant with Hsieh for the U.S. patent of Hsieh's integrated design. All of these factors suggest that the notion of integration was not obvious.
Having determined that the design in suit is novel and nonobvious, it is concluded that the patent is valid.
II. INFRINGEMENT OF THE PATENT
The substantive test for determining infringement is akin to the test for novelty. The court need not compare the prior art and imagine an expert's "obvious" combinations thereof. Rather, the test for infringement is "that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1872). Minor differences in details, not the kind noticed by experts, but those usually overlooked by ordinary observers, are not sufficient to negate infringement if the general appearance of the design is the same. Gorham, 14 Wall. 511, 81 U.S. at 580-81.
Summary judgment for infringement of a patent should be granted only with great caution. Landau v. J.D. Barter Construction Co., 657 F.2d 158, 161 (7th Cir.1981). Summary judgment, where patent infringement is in issue, should be granted only in the clearest cases. Spiral Step Tool Co. v. Federal Mogul Corp., 185 USPQ 768 (N.D.Ill.1975). On the other hand, summary judgment on the issue of infringement is appropriate where the design in question can be easily comprehended. Continuous Curve Contact Lenses, Inc. v. Rynco Scientific Corp., 680 F.2d 605, 607 (9th Cir.1982); Hart v. Leisure Manufacturing Company, 201 USPQ 671, 673 (N.D.Ill.1978). "Where ... the designs are of a simple nature, not needing further elucidation, and the Court can affirm by mere comparison that the designs are not the same, the question of infringement is then a matter of law to be decided by the Court and summary judgment is proper." Summers v. Laubach, 191 USPQ 114, 118 (D.Kan. 1974). The court again concludes under these standards that no genuine material fact issue is present and that the issue of infringement can be decided as a matter of law.
Having observed the physical exhibits of the skate designs as might the ordinary consumer of roller skates, the court finds that the skates are not substantially the same and that an ordinary consumer would not confuse one for the other. Defendants' skate is different from Brookfield's skate in numerous ways. Defendants' skate has an extra piece of wedging at the heel, creating a discernibly steeper elevation in
The court concludes, therefore, that defendants' skate does not infringe plaintiff's design patent.
III. RED STONE AS A PROPER DEFENDANT FOR INFRINGEMENT
Defendant Red Stone contends that it is not a proper party to be held for infringement of the patent in suit because it has not committed the necessary infringing acts within the United States. Because we have concluded that Red Stone and Chicago are both free of liability for the infringement of the plaintiff's patent, as explained above, this issue need not be decided.
IV. DEFENDANTS' REQUEST FOR ATTORNEYS' FEES
The defendants have asked for attorneys' fees, arguing this is an extraordinary case because of the plaintiff's spurious motivations in bringing this action and its misuse of the judicial process. The patent laws, 35 U.S.C. § 285 (1982), provide that the court may in exceptional cases award attorney's fees to the prevailing party. An award of attorney's fees is reserved for situations involving misconduct or bad faith such as fraud on the Patent Office, discovery abuse or misrepresentations to the court. See Loctite Corp. v. Fel-Pro, Inc., 667 F.2d 577, 584 (7th Cir. 1981). Further, the existence of such extraordinary circumstances must be clearly proved to merit an award of attorneys' fees. Kalkowski v. Ronco, Inc., 424 F.Supp. 343, 354 (N.D.Ill.1976). The court should look to the record to determine if the plaintiff's conduct was so vexatious and unjustified as to constitute an exceptional case. Hyster Co. v. Hunt Foods, Inc., 263 F.2d 130, 134 (7th Cir.1959). The action was plainly not meritless or frivolous. Defendants have made little more than conclusory statements regarding the plaintiff's bad faith. We find no basis to award attorneys' fees.
CONCLUSIONS AND RECOMMENDATIONS
Based on the foregoing, it is concluded as follows:
1. There is no genuine issue of material fact as to any issue before the court and judgment may be entered as a matter of law.
2. Plaintiff's Design Patent No. 261,542 is novel and nonobvious and therefore valid.
3. The defendants' skate does not infringe the plaintiff's design patent.
4. No basis exists for an award of attorneys' fees to defendants.
Whereupon, it is recommended that defendants' motion for summary judgment be granted and that the application for fees be denied.
Written objections to any finding of fact, conclusion of law, or the recommendation for disposition of this matter must be filed with the Honorable Nicholas J. Bua within ten days after service of this Report and Recommendation. See Fed.R.Civ.P. 72(b).
DATE: November 5, 1984
The Ware patent No. 3,862,763 (Defendants' Exhibit 9) is for a functional improvement to a wheel mounting plate with a toe stop. While it may appear similar to the wheel mounting aspect of the patent in suit, the patent in suit integrates a wedged skate sole and is thus distinguishable. The Ware, Jr., patent No. 4,058,323 (Defendants' Exhibit 10) is different for the same reason.
The Kimmel patent No. 4,138,127 (Defendants' Exhibit 11) is for a skate boot and wheel mounting constructed together attached to two wheels instead of the conventional four. It is clearly different to the average observer. The Stevenson patent No. 4,146,241 (Defendants' Exhibit 12) is for a roller skate boot that snaps on to a wheel truck. It is clearly different in that there is no wedged sole involved, nor does the wheel plate have multiple angled bosses to attach the wheels.