Appendix — Blumcraft of Pittsburgh v. Citizens & Southern National Bank

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MAY 3 1969

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Supreme Court of ‘the United States

October Term, 1968..

No. 1355 ea

BLUMCRAFT OF PITTSBURGH, a Partnership Consisting

of Hyman Blum, Max Blum, Louis Blum and Harry P. Blum,

Petitioners,

v.

CITIZENS AND SOUTHERN NATIONAL BANK OF

SOUTH CAROLINA, DANIEL CONSTRUCTION COM-

PANY, INC. and COLONIAL IRON WORKS, INC.,

a

\

APPENDIX TO \

PETITION. FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS |

FOR THE FOURTH CIRCUIT.

\

James C. McConnon, ae

Henry N. Pavt, Jr, \

Pau & Pauvt, \

1815 Land Title Building, i

Philadelphia, Pa. 19110

Ratpx Barey, JR.,

125 Broadus Avenue,

Greenville, S. C. 29601

Attorneys for Petitioners

International, 711 So. 50th St., Phila., Pa. 19143—Tel. SA 7-8711 Area Code 215

. JOHN F. BAVIS, CLERK

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CLL PPE TN TEP FEO BL ET

District Court Opinion .

District Court Judgment

_Court of Appeals Opinion

Court of Appeals Judgment

Court of Claims Opinion .

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APPENDIX.

UNITED STATES DISTRICT COURT

D. Sour Caro.ina, °

GREENVILLE Division.

Civ. A. No. 4168.

May 23, 1968.

—_—_——

BLUMCRAFT OF PITTSBURGH, a Partnersuir Con-

SIsTING oF Hyman Buum, Max Buu, Lovis Buum anp

Harry P. Buu,

Plaintiff ,

v.

_CITIZENS AND SOUTHERN NATIONAL BANK OF

SOUTH CAROLINA, Dantet Construction Company,

Inc., AND CoLon1AL Iron Works, Inc., |

Defendants.

Patent infringement suit. The District Court, Simons,

J., held that design patent D-171,963 was valid and infringed

and that patent No. 2,905,445 was valid and infringed.

Order in accordance with opinion.

Ralph Bailey, Jr., Greenville, S. C., James C. McCon--’

non, and Henry N. Paul, Jr., Philadelphia, Pa. for plaintiff.

‘Donald L. Ferguson and W. Francis Marion, Green-

ville, S. C., and Warren N. Williams and Gordon D. Schmidt,

Kansas City, Mo., for defendants.

_ (la)

2a } District Court Opinion

ORDER.

Simons, District Judge.

Plaintiff, Blumeraft of Pittsburgh, a partnership,

manufactures architectural metal products such as railing

components. This action was brought against defendants

- under the patent laws of the United States for alleged in-

fringement of U. S. Patents No. D:171,9631 dated April 20,

1954, and No. 2,905,445? dated September 22, 1959, both

relating to a railing structure, although to two different

railings. Defendants denied infringement and counter-

claimed for. a judgment that both patents are invalid and

not infringed.

Defendant Citizens and Southern National Bank of

South Carolina, (C & S), is a corporation doing banking

business in South Carolina and has a branch in Greenville.

Defendant Daniel Construction Company (Daniel), a corpo-

ration having a place of business in Greenville, is a large

general contractor, Defendant Colonial Iron Works, Inc.,

(Colonial), is a corporation having its principal place of

business. in Columbia where it does subcontracting and fab-

ricating in the miscellaneous iron field.

The railing structure alleged to infringe the two patents

in suit was fabricated by Colonial and erected by Daniel in.

the bank building of C & S in Greenville. The railing com- |

ponents identified as ‘‘Clean Line”’ rail parts were manu- -

factured by and purchased from Architectural Art Mfg.,

Inc., of Wichita, Kansas. Architectural Arts has controlled

and conducted the defense of this suit, but is not a party to

1. See copy of plaintiff's Ex. 18 appended hereto and marked

‘Schedule A’”’.

' 2. See copy of plaintiff's Ex. 101 appended: hereto and marked

“Schedule S,

District Court Opinion eae

this action for the reasons stated in this court’s previous

order.® : 3

Plaintiff’s complaint alleges that the defendant, C & S,

has: been and still is infringing these patents by using orna-

mental rails embodying each of the patented inventions and

that the defendant, Daniel, has infringed these patents by

making, selling and using the ornamental rails embodying

the patented inventions, and further alleges that the defend-

ants jointly infringed these patents by making, selling

and/or using ornamental rails embodying the patented in-

ventions. é

Plaintiff further alleges that the aforesaid infringe-

ment was done wilfully and deliberately with the intention

to deprive the plaintiff of its rights with respect to the

patented inventions. Plaintiff was by order filed June 21,

1966, allowed to amend its complaint so as to add Colonial

as aparty-defendant.. _.. ,

Defendants’ answer. in substance denies that the plain-

tiff’s patents are valid, and further denies any infringement.

Defendants further ask by way of counterclaim for a declar-

atory judgment that both the design and mechanical patents

be declared invalid and void, and that the defendants do not

_and have not infringed or threatened to infringe any of the

‘claims of the patents in suit. .

By reply plaintiff alleges that the patents are valid and

that the counterclaim fails to state a claim upon which relief

can be granted, and further that the counterclaim states no

issue other ‘than those dealt with in the complaint and

answer.

3. Blumcraft of Pittsburgh v. Citizens & Southern National

Bank of S. C., 255 F. Supp. 441 (D. S. C. 1966). However, during

oral argument after trial, Warren Williams, counsel for defendants

and Architectural Art Mfg. Co., Inc., advised the court that his client,

Architectural Arts, would indemnify and save harmless the defend-

ants herein from any losses sustained by them as a result of this liti-

gation, even though there was no formal indemnity agreement before

trial. ;

4a. | - District Court Opinion

This suit is brought under the provisions of 35 U.S. C. A.

§ 271 et seq,’ alleging infringement by the defendants of

the invention of a design patent and a mechanical patent.

, The defendants’ contention that the patent is invalid

is based, on 35 U.S. C. A. §102° and 35 U. S.-C. A.

4. 35 U. S.C. A. § 271, provides as follows:

“(a) Except as otherwise provided in this title, whoever

without authority makes, uses or sells any patented: invention,

within the United States during the term of the patent therefor,

infringes the patent. .

“(b) Whoever actively induces infringement of a patent

shall be liable as an infringer.

“(c) Whoever sells a component of a patented machine,

manufacture, combination or composition, or a material or ap-

paratus for use in practicing a patented process, constituting a

material part of the invention, knowing the same to be especially

made or especially adapted for use in an infringement of such -

patent, and not a staple article or commodity of commerce suit-

able for substantial noninfringing use, shall be liable as a con-

tributory infringer.

“(d) No patent owner otherwise entitled to relief /for

infringement or contributory infringement of a patent shall

be denied relief or deemed guilty of misuse or illegal ex-

tension of the patent right by reason of his having done

one or more of the following: (1) derived revenue from

acts which if performed by another. without his consent

would constitute contributory infringement of the patent; (2)

licensed or authorized another to perform acts which if. per-

formed without his consent would constitute contributory in-

fringement of the patent; (3) sought to enforce his patent rights

against infringement or contributory. infringement.”

5. 35 U. S.C. A. § 102, provides-as follows:

“A person shall be entitled to a patent unless—

“(a) the invention was known or used by others in this

country, or patented or described in a printed publication in this

-or a foreign country, before the invention thereof by the applicant

for patent, or *

“(b) the invention was patented or described in a printed —

publication in this or a foreign country or in public use or on

sale in this country, more than one year prior to the date of the

application for patent in the United States, or

“(c) he has abandoned the invention, or

“(d) the invention was first patented or caused to be

_ patented by the applicant or his legal representatives or assigns

in a foreign coiintry prior to the. date of the application for pat-

District Court Opinion . 5a

§ 103.° Plaintiff’s complaint was filed September 27, 1962,

_and the case was heard without a jury at Greenville, South

Carolina on May 17, 1967. There are essentially four issues :

(1) The validity of U. S. Patent No. D-171,963; (2) the

validity of U. S. Patent No. 2,905,445; (3) the infringement

by defendants of U. S. Patent No. D-171,963; and (4) the:

infringement of U. S. Patent No. 2,905,445.

Plaintiff has submitted photographs and drawings of

railings installed by the defendants at the Citizens and

Southern National Bank building in Greenville, South Caro-

lina, together with various other exhibits, in support of its

contentions. The defendants have likewise submitted nu-

merous exhibits, drawings and photographs.

"FINDINGS OF FACT

The plaintiff is a partnership consisting of Hyman

Blum, Max Blum, Louis Blum and Harry P. Blum, all of

tent in this country on an application filed more than twelve

months before the filing of the application in the United States, or

“(e) the invention was described in a patent granted on

an application for patent by another filed in the United -States

before the invention thereof by the applicant for patent, or

“(f) he did not himself invent the subject matter “——

to be patented, or

“(g) before the applicant’s invention thereof the invention

was made in this country by another who had not abandoned,

suppressed, or concealed it. . In determining priority of inven-

tion that shall be considered not only the respective dates of

conception and reduction to practice of the invention, but also

the reasonable diligence of one who was first to conceive and

last to reduce to practice, from a time prior to conception by

the other.”

6. 35 U. S. C. § 103, provides as follows:

“A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102 of

this title, if the differences between the subject matter sought

to be patented and the prior art are such that the subject matter

as a whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art to which

said subject matter pertains. Patentability shall not be. negatived

by the manner in which the invention was made.”

6a : District Court Opinion

whom. are citizens of the Urtited States and ‘residents of,

Pittsburgh, Pennsylvania. The firm has its principal place

of business at 460 Melwood Street, Pittsburgh, Pennsyl-

vania 15213.

The defendants, C & S, Daniel, and Colonial, are corpo-

rations having places of business within the District of

South Carolina. -The acts complained of by the plaintiff

occurred within the District of South Carolina.

There is no issue as to jurisdiction since this action

arises under the patent laws of the United States and juris-

diction is conferred by 35 U.S.°C. A. § 281 and.28 U. S.C. A.

§ 1338-as to plaintiff’s complaint, and 28 U.S. C. A. §§ 2201

and 2202 as to defendants’ counterclaim. Venue is based

upon 28 U.S. C. A. § 1400.

In 1958 Lockwood-Greene Engineers, Inc., an architec-

tural and engineering firm having offices in Sonrtaabere,

- South Carolina, was retained by C & S to design a new bank

facility for construction in Greenville, South Carolina.

. Lewis S. Booth who testified for the defendants in the trial

was in charge of the design of the bank building. The build-

ing was constructed by Daniel during 1960 in accordance

with specifications and drawings issued by Lockwood-

Greene. The specifications called for Blumcraft rails to be

used throughout the building with the exception of one over-

look rail which was to be a welded galvanized pipe and wire’

mesh. With the exception of the overlook rail, the specifi-

cations of Lockwood-Greene provided that “all descriptions

in this specification and details shown on the plans are based

on design and catalog numbers that appear in the catalog of

Blumcraft of Pittsburgh, Pennsylvania for the purpose of

quality and design control. Other manufacturers’ items

similar in design and quality, in the opinion of the archi-

tect, will be considered for substitution in lieu of that speci-

fied in details in the drawings.”

All of the rails except the one for the balcony were

specified to be of the “in line” type wherein the handrails

and intermediate rails were in substantially the same verti-

District Court Opinion Ta

cal plane as the supporting posts. The baleony railing was

specified to be of the “offset” type with the handrails and

intermediate rails located to one side of.a vertical plane

composed of the supporting posts, and with the “offset”

rails carried on the post by brackets secured to the post.

Colonial bid on the miscellaneous iron for the bank building

which included the handrails and was awarded the subcon-

tract by Daniel. After the award of the subcontract to Colo-

nial and during construction of the bank building, C & S,

the owner, asked the contractor Daniel to take steps to re-

duce the overall cost of the project. Colonial was asked to

reduce the miscellaneous iron cost, if possible; and the use

of Architectural Art Mfg., Inc.’s “clean line” handrails was

suggested in lieu of the specified rails of Blumeraft referred

to in the specifications. Lockwood-Greene approved the

substitution of the Archifectural Arts “clean line” handrails ‘

on the main staircase “ec” of the bank building. Daniel later

obtained approval of Lockwood-Greene to use Archiitec-

tural Arts “clain line” handrails on the patio overlook as a

substitute for the welded pipe and wire mesh railing in the

original specifications. Neither Daniel nor Colonial re-

quested any change in connection with the Blumcpaft hand

railing originally specified for the patio balcony railing.

Neither the handrail shown and described in Patents

No. D-171,963, nor No, 2,905,445 was specified in the original

specifications of the Citizens and Southern National Bank

building in Greenville, and no bid based on such rail was

ever made by Colonial in connection with such building.

The railings were composed of parts manufactured by

Architectural Arts Manufacturing Company of Wichita,

Kansas. They were purchased from defendant Colonial,

installed by the defendant Daniel, and have been used by the

defendant C & S in its Greenville building. The patents in

suit had been issued and were in effect during the period of

construction, and continue to be valid unless proved invalid

by the defendants in the present suit. |

ee ne Se hg

8a District Court Opinion

The defendants contend that both patents are invalid

due to the state of the prior art, and that the patents were

obvious, which in itself invalidate the patents. |

There was a vast change in architecture to the modern

or contemporary style following the turn of the century and

there existed a need for railings compatible with the modern

design and made up of standard component parts, which

could be made available from stock and readily adapted by

an architect to suit the exigencies of a particular building

structure.

Many railings were designed on a job- _ job basis, and

many persons attempted to produce something harmonious

or compatible with the modern design of buildings. Despite

much effurt this need persisted and no railing manufacturers

were offering for sale a commercially usable failing system

in which a plurality of handrails are disposed away from

the supporting post, producing a “‘‘floating’’ visual effect.

Louis Blum, a partner in the Blumcraft firm, in 1952

conceived the railing design in suit to be used as a stairway

railing in a private residence. He spent two months work-

ing on the design, made rough sketches, had a model built,

and employed a patent attorney in development and pro-

curement of the patent; he was granted the a patent

(D-171,963) April 20, 1954.

Mr. Blum testified that he wanted ‘‘to develop an origi-

nal railing and something that should be novel, and I came

up with something to avoid having always having a hand-

rail directly over the post and the same with any other

members below, so I arrived at this floating system in which

the posts are in one plane, and the other handrail group of

members would be in another plane, and give the illusion of

separation between the two planes, group of handrails, and

between the posts.’’ (Tr. 13). It is apparent that he went

to considerable expense in developing the design and secur-

ing the patent.

District Court Opinion —S_—’ 9a

The design by Louis Blum of the design patent in suit

satisfied the need which had developed in the art over the

years. The design patent (No. D-171,963) depicts a num-

_ ber of vertically spaced, horizontal railings supported

by a plurality of horizontally spaced, vertical posts. The

rails appear to have a clean sweep of continuous uninter-

rupted lines, separate from the-upright units, and so ar-

ranged in relation to such upright units as to present the .

effect of floating in space. More particularly it is described

as follows:

a. A plurality of spaced parallel posts generally

rectangular in cross section and arranged so as to pre-

sent a series of spaced parallel vertical surfaces :

b. A plurality of spaced parallel hand rails gener-

ally flat or rectangular in cross section and arranged in

the same vertical plane so as to present a series of para-

llel horizontal surfaces ;

ce. Connecting brackets attaching the underside of

each handrail to the adjacent edge of each post, each

bracket comprising a rod-like member extending at

' right angles to the post and a substantially flat triangu-

lar member extending upward from the rod-like mem-

ber to the center of the underside of each rail leaving

the rail unobstructed throughout the hand-gripping

portionthereof; ,

d. The aforesaid elements so designed and: ar-

ranged as to cause the handrails to appear to float in

space away from the posts.

Prior to 1952 the Blumcraft firm did only custom built

work. After the new design jt relinquished custom built

work and sold parts to all fabricators. The Blumcraft

railing achieved remarkable success in the trade. The

railing was described as having a classical lasting design.

eee SS

10a District Court Opmion

Dr. Henry L. Kamphoefner, architect and Dean of the

School of Design at North Carolina State University and

expert witness for plaintiff,.stated that prior to 1952 most

of the railings were designed by the architects and it was

not until the Blumcraft patent that a prefab railing came

into existence. He also stated that Sweet’s Catalog is an

outstanding publication for architects, and that no design _

‘railings shown in Sweet’s Catalog which were comparable

to the modern design of buildings were available before the

Blumcraft railings. He listed the features of the design

patent No. D-171,963 as: (1) A series of parallel surfaces;

(2) parallel horizontal surfaces contrasted by a series of

vertical posts; (3) mechanical features ‘or fasteners that

_ connect rails to posts; (4) the visual impression created,

which is comparable to modern design, and which gives a

‘‘floating in space’’ effect to the horizontal railings which

are offset from the vertical posts and have small connec-

tions that ‘are unobvious and not easily seen. The prior art

at the time of the design patent was limited to railings

directly mounted-on the supporting posts or single hand-

rails mounted offset: from the supporting posts or a wall.

The design patent in suit, No. D-171,963, was pre-

viously involved in litigation in the Court of Claims.’ In

that case the patent was found valid and infringed. The

accused railing in the Court of Claims case was a different

railing froga the accused railings here, but nevertheless was

quite simild¥ as is shown by Plaintiff’s Exhibits 15, PA-3D

and PX-112.

Following the pa ae of-his railing design, Louis

Blum developed in 1955 a mechanism for mounting an orna-

mental handrail in spaced relation to an ornamental post,

at the same time providing ornamentation and structural

rigidity. This mechanism was developed comniercially by

7. Blumcraft of Pittsburgh v. United States, 372 F. 2d 1014, 178”

Ct. Cl. 798 (1967).

‘ District Court Opinion | dia

plaintiff and put on sale in 1956. This mechanical patent,

No. 2,905,445, was granted to him September 22, 1959.

Architectural Arts purchased prior to 1959 some $15,000

worth of tube line railing from p'aintiff. Total purchases

for all railings were in exeess of $30,000. Plaintiff in the

summer of 1959 saw the catalog cf Architectural Arts and

learned of the accused railings and also saw in The South

Carolina Magazine of Architecture a picture of the ac-

cused railing in the Citizens and Southern Bank building

at Greenville. |

DISCUSSION OF ISSUE NO. I—VA).IDITY OF

DESIGN PATENT NO. D-171,963

A patent is presumed to be valid and the burden of

proof is upon the one attempting to establish its invalidity.

35 U.S.C.A. § 282. ;

The defendants in attacking the validity of the design

patent in suit rely on numerous publications showing vari-.

ous railings and railing components as follows:

(1) Arch. Record, April 1933, pp. 235, 267, 269 (DX-

94a, b, c) :

(2) Arch. Record, July 1934, Title ie, PP. 5, 19 (DX-

95a, b, c)

(3) Arch. Forum, March 1937, Title Page, PP. 219, 222

(DX-96a, b, c)

(4)° Arch. Record, Oct. 1938, PP. 5, 39, 46 (DX. 97a, b, c)

(5) Arch. Record, March 1940, pp. 5, 143 (DX-98a, b)

(6) Arch. Record, August 1940, pp. 5, 65, 68 (DX- 99a,

b, ¢)

(7) Arch. Record, Sept. 1941, Title ie PP. 41, 45

(DX-100a, b, c)

(8) Arch. Forum, Oct. 1942, Title inhi pp. 35, 43 (DX-

101a, b, c)

a a OR SIE

’

12a District Court Opinion

(9) Arch. Record, Nov. 1945, pp. 5, 60 (DX-102a, b)

6e

(10) Sweet’s catalog Service. 1950, See."5~ 5.» p. 3 (DX-

103d)

*(11) Arch. Forum, July 1950, Title Page, p. 75 (DX-

"104a, b)

6c

(12) Sweet’s Catalog Service 1952, Sec. pF, p. 14 (DX-

~ 105d).

(13) Arch. Record, July 1952, Cover Page, 7 Page

pp. 149, 163 (DX-106a, b, ec, d)

(14) Arch. Detailing 1952, p. 166 (DX-113a, b)

6

(15) Sweet’s Arch. 1952, See.zja, p. 7 (DX-116a)

6e .

(16) Sweet’s Arch. 1952, See. pp, p. 3.(DX-116b)

Public Use, Hollander Mfg. Co. (DX-21 through DX-80)

In addition to the publications set forth above, de-

fendants rely upon an alleged prior use, the subject matter

being a railing forming part of the main stairway of the

Home Federal Savings and Loan Building on State Street

in Chicago, Illinois. Defendants also allege that the design

was obvious. If there were either a prior use, or the de-

sign were obvious, the patent in question would be invalid.

It is true that rails have been offset from supporting’

members or po8ts in prior use, and that some railings have

had multiple parallel rails. However, there was nothing

in the art at that time which gave the effect of the plurality

of spaced parallel handrails and a plurality of vertical °

planes, as-does plaintiff’s rail. None of the exhibits relied

on by the defendants as prior art have the distinctive fea-

tures of the Blum design. In fact considerable thought and

a substantial redesign of the cited exhibits by the defend-

District Court Opinion 13a

‘ants would be necessary in order to achieve the design hav-

ing the distinctive features of the Blum design.

Obviousness, as stated earlier, would also invalidate

the patent. But only through hindsight does the design

appear obvious, which of course is not the test. In apply-

ing the test of invention over prior art, we must bear in

mind that hindsight is more revealing than foresight. Pre-—

formed Line Products Co. v. Fanner Mfg. Co., 328 F. 2d

265, 271 (6th Cir. 1964), cert. den’d. 379 U. S. 846, 85 S. Ct.

06, 13 L. Ed. 2d 51. There being no reason for the lower

railings to be offset the design becomes more unobvious.

Defendants’ expert witness, Mr. Fishleigh, testified that

plaintiff’s design was contrary to the normal design in —

railings. He said ‘‘it is contrary to. what I would want

any way. In other words, if I want a railing, I don’t want

one which is floating loose, kicking around; I want ane

which in my instance would give some degree of or indica-

tion of rigidity, that if I thought I got ahold of it, it. would

hold me.’’ The plaintiff’s design is even more unusual in

view of the normal expectation that a rail would and should

appear very stable. Plaintiff’s design is quite contrary

to this in that it produces a floating effect, as opposed to

an appearance giving stability. |

Mr. Fishleigh further testified that no one example of

the prior art ‘‘anticipated’’ the. desigr patent, but that

- it Was necessary to combine earlier references to anticipate

the design patent. But separate presence in the prior art

of each element of combination will not prevent a finding

of invention. Wham-O-Mfg. Co. v. Paradise Mfg. Co., 327

F. 2d 748 (9th Cir. 1964). )

As stated by the court in Try-Me Beverage and Com-

pound Co. v. Metropole, 25 F. 2d 138 at 139 (E. D. S. ©.

1928) : ; |

‘It is not necessary for a design patent that all

the elements of the design be new; it is essential that

® SIRE PERE EMOTE ME ENT NS EI

14a ' Dastrict Court Opinion

the elements, whether new or old, be grouped or com-

bind in such a manner as to produce a pleasing ap-

pearance, different from what has preceded it. The

fact that the elements of a design patent were old does »

not establish want of invention in assembling them.

The decisive question is whether or not the design im-

parts a pleasing impression to the eye of ordinary ob-

servers.’’ (Citations omitted.) :

fn

Recognizing that it was not new to provide an off-

setting handrail from the supporting structures, neverthe-

less, it was new to offset all the rails in this particular man-

ner so as to minimize the connection between the railings

and the posts, thus giving the floating effect.

The entire record in the Court of Claims case was of-

fered in evidence by the planitiff in this case ® and plaintiff

contends that such decision is res judicata as to the

validity of the design patent. P

The court, however, need not decide whether the Court

of Claims case. is res judicata as to the validity although

such decision was persuasive, for this court has reached

its own independent determination that the plaintiff’s de-

sign ‘patent is valid.

The presumption of validity,® the prior judicial deter-

— 8. Note 7, supra.

9. 35 U. S.C. A. § 282 provides as follows:

“A patent shall be presumed valid. The burden of estab-

lishing invalidity of a patent shall rest on a party asserting it.

“The following shall be defenses in any action involving

the validity or infringement of a patent and shall be pleaded:

“(1) Noninfringement, absence of liability for infringement or

unforceability,

“(2) Invalidity of the patent or any claim in suit on any ground

specified in part II of this title as a condition for patentability,

“(3) Invalidity of the pateysor any claim in suit for failure to

comply with any requirement of sections 112 or 251 of this title, .

“(4) Any other fact or act made a defense by this title. we

District Court Opinion apa ‘La

-Iination and the commercial success ™ achieved by the

plaintiff overcome any doubt as to the validity of the de-

sign patent. Robertson Rock Bit Co. v. Hughes Tool Co.,

176 F. 2d 783 (5th Cir. 1949), cert. den’d, 338 U. S. 948, 70

S. Ct. 487, 94 L. Ed. 585. Inasmuch as defendants have

failed to sustain their burden of proving that the design

would have been obvious at the time it was made to one

having ordinary skill in the art, or that there was a prior

use, the court finds the design patent valid.

DISCUSSION OF ISSUE NO. II—INFRINGEMENT

OF DESIGN PATENT D-171,963

Having found the design patent valid the next question

is whether the defendants have infringed it. In determining

whether an accused structure infringes a patent, the rule of

reason must prevail and the real test is whether in sub-

stance the defendant has used the inventor’s idea as em-

bodied in the inventor’s structure. Trenton Industries v.

A. KE. Peterson Mfg. Co., 165 F. Supp. 523 (S. D. Cal. 1958). ©

The test of infringement in design patent cases may be

stated as follows: If, in the eye of an ordinary observer

giving such attention as a purchaser usually gives, the two

9. (continued )

“In actions involving the validity or infringement of a

patent the party asserting invalidity or noninfringement shall

give notice in the pleadings or otherwise in writing to the adverse

_ party at least thirty days before the trial, of the country, number,

date, and name of the patentee of any patent, the title, date, and

page numbers of any publication to be relied upon as anticipa-

tion of the patent in suit, or except in actions in the United

States Court of Claims, as. showing the state of the art, and

the name and address of any person who may be relied upon

as the prior inventor or as having prior knowledge of or having

previously used or offered for sale the invention of the patent

in suit. In the absence of such notice proof of the said matters

may not be made at the trial except on such terms as the court

requires.”

10. Note 7, supra.

11. Glen Raven Knitting Mills v. Sanson Hosiery Mills, 189

F. 2d 845 (4th Cir. 1951). ;

HO SI NT De EO

- 16a = District Court Opinion

designs are substantially the same and the resemblance is

such as to deceive such an observe, inducing: him to pur-

chase one supposing it to be the other, the patented design is

‘infringed by the other; Gorham Co. v. White, 81 U. S. 511,

20 L. Ed. 731 (1871); R. M. Palmer Co. v. Luden’s, Inc.,

128 F. Supp. 672, 236 F. 2d 496 (3rd Cir. 1956) ; Sanson

~ Hosiery Mills:v. Warren Knitting Mills, 202 F. 2d 395 (3rd

Cir. 1953).

Defendants claim those who pitbhaae railing systems

for buildings or designate the ones to be purchased, such as

architects, give considerable study to the photographic

representations, elevational views of the overall railing and

parts thereof, and sectional views available in the manufac-

‘turers’ and suppliers’ catalogs and ‘brochures before select-

ing any particular railing system, and give particular. at-

tention to the design details since these contribute to and

Geta affect the overall appearance of the railing.

While this\i is true architects are not the only ordinary pur-

~chasers of railings. In fact an ordinary man on the street

may choose which railing or design he might prefer in his

building or home. Aside from this, the fact that defend-

ants’ own witness was unable to tell. whether the illustration

in the C & S Bank drawings was a Blumcraft or Architec-

_ tural Art railing is certainly evidence that even one skilled

in the art may be confused between the two.

Defendants’ witness Louis P. Booth, in explaining why

the Blumeraft railing was not installed and why the ac-

cused railing was substituted therefor, stated that the con-

tractor of the building asked that another company’s hand-

rail be considered for several reasons, including availability,

cost and design. The proposed rails had five parallel rails

and the substitute had three rails. Other testimony also

reveals that one of the reasons given for the substitution

was that of economy, i.e. the substituted rails. were less

expensive. Among others, this of course is one of the-basic

‘ :

- District Court Opinion 17a

reasons for our patent laws. When an individual expends

time, money, and patience in the development of a new in-

vention, he has gone to considerable expense.. It i is only

fair that he be granted a patent so that he may recoup some

or all of his expense, and enjoy the benefits that he may de-

‘rive from his invention. Otherwise, an infringer could

merely copy an article without expending time, research or -

resources to develop an invention,‘and still reap the same

benefits.

The fact that Sluminate of Pittsburgh railings were .

specified in the plans is of no particular significance since

in this case and in mosi cases it is usually stated that the

products of other manufacturers may be used in lieu of

those specified which are similar in quality and design in the

opinion of the architect.

The defendants’ witness Booth enumerated some of the

differences in the two railings as follows:

‘“‘A. The first thing that strikes my attention is

that in the cross-section shape of the vertical supports,

the patent drawing is definitely rectangular in shape,

. whereas the photograph is square. The vertical shape

‘of the drawing in patent is much more stressed than in’

the photograph because of the interruption of the

photograph of the brackets, which hold the hand rails.

The shape of the hand rail is considerably different.

That i in the photograph being a much stronger, archi-

tecturally, than the soft oval form of the drawing. The

termination of the flared rails of the three members in

the photograph is entirely different from the drawing

which has termination of the top rail in a vertical ex-

tension to the floor, and the horizontal rails are cut

directly. The shape of the brackets is different in that

the photograph has a conical-horizontal member,

whereas the drawing appears to be cylindrical in shape.

Lea cenit #

. 18a . District Court Opinion

The attachment to the stair in the photograph is an

exposed bracket, and in the drawing it would be a con-

cealed insert into the side of the stair. The top of the

posts in the photograph is a truncated pyramid, and is

higher in relation to your top rail, whereas in the draw-

ing it is curved and ends directly at the top bracket

attachment. I believe that. * * *”’ ;

He stated that in his opinion the accused railing could be

distinguished from the patented railing. The court agrees

with him. They can be distingushed upon examination by

- attempting to so distinguish them; however, changes in de- :

tail so as to distinguish them will not prevent an infringe-

ment.

The defendants in distinguishing the accused structure

from the design patent listed numerous other differences,

none of which were substantial. After the defendant in

Try-Me Beverage & Compound Co. v. Metropole, supra,

pointed out numerous differences in the design on that

case, the court said:

‘Tt is not necessary to decide whether or not the

above dissimilarities may on close inspection be found

in the two designs. The test of infringement is not

‘whether dissimilarities between two designs may or

not be found. “The courts hold, on the question of in-

fringement, that if, in the eye of an ordinary observer,

two designs are substantially similar, and if the resem-

blance is such as to deceive an observer, the first de-

sign patented may be held to be infringed by the other.”’

The essence of a design patent resides in the appear-

ance of the design as a whole, not in the elements individ-

ually or in their method of arrangement. 69 C,J.S. Patents

§ 71. The United States Supreme Court in Graver Tank &

District Court Opinion 19a .

Mfg. Co. v. Lande Air Products Co., 339 U. S. 605, at page

607, 70 S. Ct. 854, at page 856, 94 L. Ed. 1097 (1950) stated:

‘‘(T]Jo permit imitation of a patented invention which

does not copy every literal detail would be to convert

the protection of the patent grant into a hollow and

useless thing. Sucha limitation would leave room for—

indeed encourage—the unscrupulous copyist to make

unimportant and insubstantial changes and substitu-

tions in the patent which, though adding nothing, would

be enough to make the copied matter outside the claim,

and hence outside the reach of law. One who seeks to’

pirate an invention, like one who seeks to pirate a

copyrighted book or play, may be expected to introduce

minor variations to conceal and shelter the piracy.

Outright and forthright duplication is a dull and very

rare type of infringement. To prohibit no other would

place the inventor at the mercy of verbalism and would

be subordinating substance to form. It would deprive

him of the benefit of his invention and would foster @on-

_cealment rather than disclosure of inventions, which is

one of the primary purposes of the patent system.”’’

It is the overail impression to the ordinary observer

giving such attention as a purchaser usually gives that is

important. Gorham v. White, 81 U. S. 511, 20 L. Ed. 731

(1871); Nebel Knitting Co. v. Sanson Hosiery Mills, 214

F. 2d 781, 783 (4th Cir. 1954).

Defendants’ witness Booth testified in a deposition in

1963 that the railing in the balcony before the window over-

looking the patio and the railing around the patio overlook

should be ‘‘uniform’’ in appearance. At the trial he said.

they should be ‘‘compatible’’, but would not object to the

word ‘‘uniform”’ as he had used in his deposition. His use

of the word ‘‘uniform”’ indicates that he himself considers

that there is no substantial distinction or difference between

the two railings.

BE ROR CR ear

= g!

AME

Rem:

Qe seers

20a District Court Opinion

It appears from the evidence that defendants purchased

the patented rails and made certain changes but essentially

have manufactured the same railing.

No evidence was offered by the defendants to show any

independent origin of the accused railing system produced

by Architectural Art Manufacturing Company after the

plaintiff in its presentation had shown opportunity and in-

clination of the defendants to copy the patented railings in

question. Here access and similarity is strong evidence of

copying the same as access and similarity is strong evidence

of copying in a copyright case. Bradbury v. Columbia

- Broadcasting System, Inc., 287 F. 2d 478 (9th Cir. 1961).

As stated earlier, the entire record in the Court of

Claims case was offered in evidence by the plaintiff in this

case.'” The accused railings in the present case are sub-

stantially the same in design as the accused railings in the

Court of Claims case (PX-15, PX-39, PX-112). The ac-

_ cused railings in the.present case embody each of the dis-

tinctive features held by the Court of Claims to character-

ize the Blum design patent in the Court of Claims case.

The distinctive features of both the plaintiff’s and de-

fendants’ railings produce the same overall effect, produc-

ing a clean uninterrupted sweep of parallel rail surfaces

giving the impression that the surfaces float away in space

from the posts to which they are connected by the minimiza-

tion of the connecting factors. Upon detailed inspection of

each 1 in a side-by-side zomparison differences are apparent,

but mere differences in detail have not changed the overall

effect so as to amount,to a different design from the patent

in suit.

The court finds the accused railing substantially similar

to plaintiff’s design patent, and accordingly finds the design

patent infringed.

12. Note 8, supra.

District Court Opinion 21a

DISCUSSION OF ISSUE NO. III—VALIDITY OF : \

MECHANICAL PATENT NO. 2,905,445

The mechanical patent in suit (No. 2,905,445) is charac-

terized by a clamping connector for connecting an orna-

mental handrail in spaced relation to an ornamental post, —

comprising separate v-shaped clamping means -which re-

ceive and clamp the dovetail-shaped base portion of the

handrail. More particularly the distinctive features of the ~

Blum mechanical patent in suit, as set forth in Claims 1 and

3 of the patent, are as follows:

* “1, In an ornamental rail structure, ornamental

post means, ornamental rail means having a dovetail

shape based portion and an upper hand-gripping por-

tion, separate V-shape clamping means in juxtaposi-

tion forming a dovetail shape recess receiving and

clamping the dovetail shape base portion of said rail

means and exposing the upper portion of said rail

means for hand-gripping, connecting means rigidly

connecting said clamping means and said rail means in *

spaced relation to said post means and threaded bolt

means passing through said clamping means forcing

and retaining said clamping means together.

‘*3. In an ornamental rail structure, ornamental

post means, ornamental rail means having a dovetail

shape base portion and an upper hand-gripping por-

tion, means connecting said rail means in spaced angu-

lar relation to said post means comprising a pair of

separate clamping members, the first of said clamping

members being rigidly affixed to said post means and

extending outwardly therefrom, the second of said

clamping members being connected to said first clamp-

ing member by threaded bolt means, said clamping

members having complementary V-shape portions

Da oi

oa al i alt ll aia al

22a. —~—sODistrict Court Opinion

forming a dovetail recess receiving the dovetail shape

portion of said rail means and exposing the upper por-

tion of said rail means for hand-gripping.’’

On the issue of the validity of the mechanical patent in

suit, defendants rely upon 22 different patents and publiéa-

tions showing various structures as follows: °

?

(1) Pat. No. D-173,299 (DX-83)—(Blum)

(2) Pat. No. 1,864,160 (DX-84)—( Williams)

—o 163,996 (DX-85)—(Hardy)

(4) “« «6 837,769 (DX-86)—(Allen)

ee: 1,165,193 (DX-87)—(McNeil)—

Sometimes referred to as 1,165,195.

(6) Pat. No. -. 1,569,060 (DX-88)—(Wright)

(7) “ Re 17,629 (DX-89)—(Wehr)

ae =. 2,056,842 (DX-90)— (Edgecomb)

(9) “* “ ~ 92427,723 (DX-91)—(Hawkins)

(10) “ « 2,654,579 (DX-92)—(Cremens) -

(11) “© “ D- 171,963 (DX-93)—(Blum)

(12) Arch. Record, July 1934, Title Page, pp. 5, 19

(DX-95a, b, c)

(13) Arch. Forum, March 1937, Title. Page, pp. 219,

a (DX-96a, b, c)

_ (14) Arch. Record, March 1940, pp. 5, 143 (Dx. 98a, b)

(12) ‘Arch. Record, Sept. 1941, Title Page, pp. 41, 45

(DX-100a, b, ¢)

( 16) Arch. Forum, Oct. 1942, Title Page, pp. 35, 43

(DX-101a, b, c)

District Court Opinion ; 23a

(17). Arch. Record, Nov. 1945, pp. 5, 60 (DX-102a, b)

6e

(18) Sweet’s Catalog Service 1950, Sec. —, p. 3 cial

~ 103d) 5 .

be .

(19) Sweet’s Catalog Service 1953; Sec. , po. 2,3

(DX-1074, e) | BL

‘ de

(20) Sweet’s Catalog Service 1954, See. ——, pp. 2, 3

.(DX-108b,¢) BLU

(21) Home Fed. Sav. & Loan—Photo No. 4 (DX-109c) ©

(22) Home Fed. Sav. & Loan—Photo No. 9 (DX-109d)

They rely particularly on the Hardy, Allen, McNeil, Wright,

Edgecomb and Wehr patents; also upon the prior use as

follows: Arch. Record, July 1934, p, 19, Hawkins, Cremens, |

Home Federal Savings & Loan, Chicago. Arch. Record,

November 1945 at p. 60; Arch. Forum March 1937, p. 222.

They also rely upon the plaintiff’s other patent in suit, the

Blum Design Patent No. 171,963. . ;

The principal art relied upon by the defendants to in-

validate Claim 1 of the mechanical patent is the Hardy

Patent No. 163,996 and the 1954 Blumcraft Catalog refer-

ence. Defendants’ witness Fishleigh through the use of

these two references attempted to create a structure as de-

fined by the plaintiff’s claim. He testified (pp. 401, 403, 404

of Tr.) as follows:

‘*In other words, I have previously pointed out that

this Hardy patent shows what has been referred to

here as in-line rail, where the rail was right in line with

the post. Then I go on to say it would have beer an

obvious mechanical expedient, if desired, to have used °

District Court Opinion

é g

' an intermediate laterally extending member ‘D’, rigidly *

connected to the post, such as illustrated in the 1954

_Blumcraft of Pittsburgh Catalog, and to have fastened

the clamping means and the rail to the end thereof in

laterally spaced relation to the post. And what I am.

saying is that in effect that if one wanted to take and

use this hand rail in offset relationship, that you could

use the post and the horizontal part D of the clamping

means with rather minor modifications, adjusted so

that you could then clamp the rail to that horizontal

portion and have a structure filly [sic] respond-

ent. x * * , .

‘‘In order to show how simple such an aggregation

would be, I-have prepared what I would call an adapier

member. * * * Now, the upper part of that member

conforms in cross-section substantially to the cross-

section of the upper part of the post in the Hardy

patent. The lower part of that member conforms sub-

stantially to the lower, to the shape and configuration

of the vertical so-called triangular clamping member,

* or connecting member, in the Sweet’s file, or t2e Blum-

craft, the structure of the Blumcraft 1954 catalog of

which this DX-102A to D inclusive is the model. Now,

all that is necessary is to remove the post from Hardy,

put in the adapter member, take off the rail from the

‘ Blumeraft device, and we have the Hardy rail; mounted

in an offset position with respect to the post instead

of being in-line as they were in the Hardy structure

itself.’’

-On crogs-examination concerning his adapter member Fish-

leigh stated that it was new, and that the Hardy and the

1954 Blumcraft reference had not been combined together

before:

- District Court Opinion . - + | 95a

‘¢Q. But there is no other part that is the same as this

(the adapter) that you know of ?

A. In toto?

Q. Yes.

A. No.’’ (p. 522)

He developed an entirely new member to combine them, and

then it was apparently through hindsight. His attempt

to produce the structure vividly demonstrates the unlike-

lihood that anyone skilled in the ornamental railing art

would attempt to do so. :

As to the McNeil Patent No. 1,165,193, —" relied

on by defendants, it cannot be used to invalidate plaintiff’s

patent. Although certain elements are the same McNeil

was used as anti-creeping device for railroad tracks, some-

thing far removed from the art in which the — inven-

tion resides.

| In speaking on the issue of obviousness Judge Learned

Hand in Reiner v. I. Leon Co., 285 F. 2d 501, 503, 504 (2nd

Cir. 1960) said:

- “The test laid down is indeed misty enowgh. It

_ directs us to surmise what was the range of ingenuity

of a person ‘having ordinary skill’ in an ‘art’ with

which we are totally unfamiliar; and we jo not see

how such a standard can be applied at all except by

recourse to the earlier work in the art, and to the gen-

eral history of the means available at the time. To

judge on our own that this or that new assemblage of

old factors was, or was not ‘obvious’ is to substitute

our ignorance for the acquaintance with the subject of -

those who were familiar with it. There are indeed

gome sign posts: e. g. how long did the need exist; how

_ many tried to find the way ; how long did the surround-

ing and accessory arts disclose the means; how im- .-

26a District Court Opinion

*

mediately was the invention recognized as an answer by

those who used the new ee

In Entron of Maryland Ine. v. Jerrold Electronics Corp.,

295 F. 2d 670, 1675 (4th Cir. 1961), thé Fourth Circuit Court

of Appeals said thet these general principles have guided

their decisions for many years.

These factors were considered as to both the mechani-

cal and design patents, and are set out in the foregoing dis-

cussion. For this reason the court will not linger on these

points.

The test of invention.where old elements are used in

the alleged invention is whether those elements are used in

a manner different from the previously known use in such

a way that the alleged invention would not have been

obvious to one skilled in the art. Preformed Line Products

Co. v. Fanner Mfg. Co., supra, 328 F. 2d at 272; Maytag

Co. v. Murray Corporation of America, 318 F. 2d 79, 81

(6th Cir. 1963). It is significant that the spacing connector

in the Blum patent also serves as the clamping means, and

this was a new function. The fact that numerous elements

singiy have been known for years to, those skilled in the

art does not necessarily invalidate a patent, for the patent

may-rest in the novel functions of these elements in com-

bination. A combination of old elements may be patentable

if they ‘‘perform, or produce a new, different or additional

function or operation in the combination than that thereto- .

fore performed and produced by them.’’ Great Atlantic

and Pacific Tea Co. v. Supermarket Equipment Corp:, 340

U. S. 147, 71 S. Ct. 127, 95 L. Ed. 162 (1950); Entron of

Maryland, Ine. v. Jerrold Electronies Corp., supra.

Had the court concluded that the combination of known

elements was obvious to one having ordinary skill in the

art it would not hesitate to hold the patent invalid in view

District Court Opinion ' 27a

of Great Atlantic and Pacific Tea Co. v. Supermarket

Equipment Corp. (1950), 340 U. S. 147 where at page 152,

71 S. Ct. 127 at page 130, the Court said:

‘The function of a patent is to add to the sum of useful

knowledge. Patents cannot be sustained when, * * *

their effect is to subtract from former resources freely

available to skilled artisans. A patent for a combina- ©

tion which only unites old elements with no change in

their respective functions, * * * obviously withdraws

what already is known into the field of its monopoly

and diminishes the resources available to skillful men.’’

The court should scrutinize combination patent claims with

a care proportioned to the difficulty and improbability of

finding invention in an assembly of old elements.’ For

patents are to ‘‘promote the Progress of Science and useful

Arts.’’ Article I, Sec. 8 of the Constitution. Their func-

tion is not to bestow a monopoly.

A significant asset of Blum’s mechanical patent 2

the flexibility allowed in combination with rigidity as is

required in rails. This is shown by the following testi-

mony of Louis Blum (Tr. p. 39):

“‘Q. What is the significance of this adjustability you

referred to, why is that important?

A. Well, in the building construction there is nothing

perfect, and without going to extensive measurements,

and handfitting bevels and pitches, which we call them

in stairway. For example, even though an architect’s

drawing may indicate certain measurements on a flight

of stairs going up, a good example is the concrete,

and they pour the concrete and the tolerance is so

great that the holes that were drilled in there for let’s

say for fastening the post to the stairway, would create

PER One e

28a District Court Opinion

imperfect, not perfect as far as dimension is con-

‘. cerned, but say with the bevels. Well, this eliminates

all these problems by having it adjustable.

Q. What would you do if it weren’t adjustable?

A. Well, they would have to be carefully measured, |

careful layouts made of the plans, and each member

hand fitted.’’ :

Although it was not new in the art rm have a rail offset —

from the post, it was novel to have the’Blum type of con-

nector for attaching the rail so as to give adjustability to

the particular need and rigidity as is required for railings.

One of the most important features of the mechanical

patent is the flexibility allowed in combination with rigidity.

The rail portion can be adjusted when the clamping mem-

bers are loose and may be moved, whereas when tightened

they are completely rigid. Although the defendants attack

the validity of the patent with numerous exhibits, particu-

larly the Hardy and McNeil Patents, the conrt finds that

none of the prior art shows this type of mezhanical ar-

rangement:

This court does not find that Blum developed the

méchanical patent from Hardy, the earlier Blum patent,

or from MeNeil. Even if such a conclusion were ae

the court would nevertheless conclude that Blum’s acts ‘

combining the pertinent elements of the prior art * * .

achieved a result not obvious to mere mechanical skill.’’

Preformed Line Products Co. v. Fanner Mfg. Co., 328 F.

2d 265, 273 (6th Cir. 1964), cert. den’d 379 U. S. 846, 80

S. Ct. 56, 13 L. Ed. 2d 51. Both mechanical and design

patents of plaintiff represent more than a ‘* ‘mere aggre-

gation of a number of old parts or elements which, in the ~

aggregation, perform or-produce no new or different func-

‘tion or operation than that theretofore performed or pro-:

duced by them, * * *.’ Great Atlantic & Pacific Tea Co. v.

District Court Opinion 29a

_ Supermarket Equipment Corp., 340 U.S. 147, 15i, 71 S. Ct.

~ 127, 130, 95 L. Ed. 162,’’ for here was 4 method by which

to offset the railings with a minimization of the connecting

factors, plus allowing ‘adjustability to the particular need.

The mechanical patent-was new and filled a need in the

art which now enables the production of prefabricated rail-

ings of modern design producing a floating effect through

the minimal connection between posts and rails. Accord-

ingly this court finds. patent No. 2,905,445 vaiid.

DISCUSSION OF ISSUE NO. IV—INFRINGEMENT

OF MECHANICAL PATENT NO. 2,905,445

As earlier quoted from Graver Tank & Mfg. Co. v.

Linde Air Products Co., om. S. 605, at page 607, 70 S. Ct.

854, at page 855: @

‘‘In determining whether an accused device or

composition infringes a valid patent, resort must be

had in the first instance to the words of the claim. If

accused matter falls clearly within the claim, infringe-

ment is made out and that is the end of it.

‘But courts have also recognized that to permit

imitation of a patented invention which does not copy

every literal detail would be to convert the protection

of the patent grant into a hollow and useless thing.

Such a limitation would leave room for—indeed en-

courage—the unscrupulous copyist to make unimpor-

tant and insubstantial changes and substitutions in the

patent which, though adding nothing, would be enough

to take the copied matter outside the claim, and hence

outside the reaci of law. One who seeks to pirate

an invention, like one who seeks to pirate a copyrighted

book or play, may be expected to introduce minor varia-

tions to conceal and shelter the piracy. Outright and

30a District Court Opinion

forthright duplication is a dull and very rare type of

infringement.”’

As stated in Marston v. J. C. Penney Co., 353 F. 2d

976, 985 (4th Cir. 1965), cert. den’d 385 U, S. 974, 87 S. Ct.

515, 17 L. Ed. 2d ‘37, patent infringement is first deter-

mined by looking to the words of the claims of the patent:

‘*To determine whether the accused article infringes.

* * * we must look to the words of the claims. If

- every essential element of the described combination,

or its-équivalent, is embodied [in the accused article,

the plaintiff] is entitled to prevail.”’

The Claims

The duplication of cach of the elements of the Claims

of the Blum patent by the accused Architectural Art struc-

ture is sufficiently demonstrated in Exhibits PX-103 and

PX-107. They show the corresponding parts of the respec-

tive railings colored the same. (Blum, Tr. 34-41).

1. With respect to Claim 1, the Claim requires:

‘‘In an ornamental rail structure, ‘ornamental post

means’’ |

Both structures are ‘ornamental railings and in each case

there is an ornamental post, colored blue. The Claim next

provides : .

‘‘Ornamental rail means having a dovetail shape base

portion ‘and an upper hand-gripping portion’’

In each case there is an ornamental rail having a dovetail-

shaped base portion, colored yellow, and an upper hand-

gripping portion, colored brown. The Claim continues:

District Court Opinion 3la

“separate V-shape clamping means in juxtaposition

forming a dovetail shape recess receiving and clamping

the dovetail shape base portion of said rail means and

exposing the upper portion of said rail means for hand-

gripping”’

In both the patented and accused structures, the yellow

dovetail-shaped base portion of the ornamental rail is

gripped by a pair of V-shaped clamping means, colored

pink, in juxtaposition forming a dovetail-shaped recess.

The Claim then requires: .

‘‘connecting means rigidly Connecting said clamping

means and said rail means in spaced relation to said

post means’’ -

The means for connecting the pink clamping means and

the yellow and brown ornamental rail in spaced relation

to the blue post are colored red in each exhibit. Finally,

the Claim provides for:

‘threaded bolt means passing through said clamping

means forcing and retaining said clamping means to-

gether.’’

In each case there is a threaded bolt, colored gold, which

is threaded into the threaded bore, colored green, within

the pink clamping means of each railing assembly. .

The duplication of the elements defined by Claim 1 of

the Blum patent in the defendants’ structure is evident. It

is further apparent that the defendants have duplicated

the unique feature of the Blum railing.mechanism by whjch

the clamping means and the connecting means are partly

included within the same member, namely, the member ex-

tending horizontally from the post.

As demonstrated, there is no difference between the

defendants’ structure and that claimed in Claim 1 of the

Pp

32a. District Court Opinion

Blum patent. In attempting to avoid infringement, the

defendants contend:

(1). that the yellow colored element is not really

a ‘‘base portion’’ in the defendants’ structure and that

therefore the V-shaped pink elements do not grip a

base portion, despite the fact that it is the lowest yr:

tion upon which the railing is based;

(2) that in defendants’ structure ‘‘there is no

means for connecting one clamp member separately to

to the post.cr bolting one clamp member to the other.

clamp member,’’ despite the fact that there is no

‘such requirement in the claim;

(3) that there is nothing in the defendants’ struc-

ture which corresponds to the threaded bolt 16 of the

Blum patent, despite the fact that. the defendants’

structure uses a threaded bolt to perform precisely the

same function in the same way in the defendants’ struc-

ture to force the clamping means together.

The defendants’ structure falls clearly within Claim

1-of the Blum patent. The only differences between the

defendants’ structure and the embodiment illustrated in

the Blum patent are visual, and these visual differences in

no way relate to the true invention or the Claims.

‘<e* * * Tf the patentee’s ideas are found in the con-

struction and arrangement of the subsequent device,

no matter what may be its form, shape, or appearance,

the parties making or using it are deemed appropria-

tors of the patented invention, and:are infringers.’ ”’

Fauber v. United States, 37 F. Supp. 415, 443, 93 Ct.

Cl. 11 (1941).

* 2. With respect to Claim 3 of the Blum patent, it calls

for: re

District Court Opinion 33a

‘‘In an ornamental rail structure, ornamental post

means”’

In both cases, as shown in the Exhibits PX-103 and PX-

107, there ar¢ ornamental rail structures for an ornamental

post, colored blue. Claim 3 next requires:

‘‘ornamental rail means having a dovetail ‘shape base

portion and an upper hand-gripping portion’’

In each case there is an ornamental rail having the upper

hand-gripping portion, and a dovetail-shaped base portion,

colored yellow. The Claim next provides for:

‘‘means connecting said rail means in spaced angular.

relation to said post means comprising a pair of sep-

arate clamping members, the first of ‘said clamping

members being rigidly affixed to said post means and

extending outwardly therefrom, the second of said

clamping members being connected to said first clamp-

ing member by threaded bolt means, said clamping

members having complementary V-shape portions

forming a dovetail recess receiving the dovetail shape

portion of said rail means and exposing the upper por-_

tion of said rail means for hand-gripping.’’

In each case there is mearis connecting the rail to the post

in spaced angular relation. In each case the connecting

means comprises a.pair of members having complementary

V-shaped portions forming a dovetail recess receiving the

dovetail-shaped portion of the rail. In each case the first of

said clamping members is rigidly affixed to the post. In

the case of the plaintiff’s structure, the first clamping mem-

ber is a single piece. In the defendants’ accused structure;

the first clamping member is made up of two pieces which

are joined together in the assembled.railing. In the case of.

each of the railings, the second clamping member is con-

*,

RA Dic RIN eS ap abil Ime BET VAN

34a District Court Opinion

nected to the first clamping member ‘by a threaded bolt.

In each case the ornamental rail is so gripped by its base

_ portion that the upper portion is exposed for hand- -gripping.

In the case of the infringement of Claim 3 by the de- .

fendants’ structure every element of the Claim finds corre-

spondence in the accused railing assembly. The only differ-

ence other than visual between the accused structure and

the embodiment of the patented structure illustrated in the

patent.is that the first clamping member in the patent is a

single piece, while in the ‘defendants’ structure the first

- clamping member, performing the identical function, is,

made up of two pieces -joined together in the assembled

railing. It is well settled that the mere separation of a

single member into two parts performing the same function

does not avoid infringement. Abbott v. Barrentine Manu-

facturing Company, 255 F. Supp. 890, 899 (N. D. -Miss.

1966) ; No-Joint Concrete Pipe Co. v. Hanson, 344 F. 2d 13 |

(9th Cir. 1965),.cert. den’d 382 U. S. 843, 86 S. Ct. 79, 15 L.

Ed. 2d 83; Specialty Equipment & Mach. Corp. v. Zell Motor

Car Co., 193 F. 2d 515, 518 (4th Cir. 1952). In the latter

case it was said that where a valuable contribution is made

to the art, the patent is entitled to liberal treatment.

In attempting to avoid infringement of Claim 3 of the

Blum patent, the defendants argue:

(1) that the first clamping member of the accused

structure is not ‘‘separately rigidly affixed directly’’

to the post and the second clamping member is not

‘‘bolted directly and solely to the first clamping mem-

ber,’’ despite the fact that there are no such limita-

tions in the claim, which merely requires a. pair of

‘“separate clamping members’”’ connected by a-threaded

bolt ;

(2) that the accused structure’has no element cor-

responding to the threaded bolt 16 of the Blum patent,

District Court Opinion 85a

despite the fact that the defendants’ structure employs

a threaded bolt to perform the same function in the

same way to connect the clamping members together ;

(3) that, as argued in connection with Claim 1,

the dovetail portion of the ornamental rail is not a

‘‘base portion’’ and therefore the clamping members

do not receive a base portion of the rail, despite the

fact that the yellow-colored dovetail element in the

defendants’ structure is the lowest portion of the orna-

mental rail upon which it is based.

The accused ornamental railing strectures respond

fully to the mechanical invention as set forth in Claims 1

and 3 of the Blum mechanical patent. Claim 1 is infringed

literally; the saine is true of Claim 3, save that the ‘‘first

clamping member’’ recited in the Claim finds response in

two elements which are joined together to perform the

same function in the accused structure. The accused struc-

tures are mechanically the same as the one embodiment in

the invention described in the specification of the patent.

The accused railings however differ in their visual appear-

ance from the embodiment shown in the mechanical patent

by virtue of the upward extension of the clamping members.

The accused railing structures serve the purpose of. the

mechanical patent in suit-by performing the same function

in substantially the same way by virtue of producing a rigid

. clamping connection for connecting an ornamental railing in

spaced relation to an ornamental post by means of separate

_v-shaped clamping means which receive and clamp the dove-

tail shaped base of the railing. Although the accused rail-

ing structure does not have a first clamping member which

is separately, rigidly affixed directly to the post as in the

patent, it appears evident that the accused telescoping con-

nector which is attached directly to the post is used as an

36a - __—_ District Court Opinion

expedient to avoid reading directly on the plaintiff’s patent.

However, the second clamping member is bolted to the first

clamping member pulling them together. Without this, of

course, there could be no tightening or loosening of the

clamping members so as to engage the doveshaped base

portion of the rail... _

There was much argument as to the base portion of the

defendants’ structure. This court concludes that merely

becaise the sides of the base portion are lower, this does not

prevent one from seeing the base portion as it should be .

seen. Infringement should not be that easily avoided.

Alterations in form, visually or with mechanical equiv-

alents, do not avoid infringement. Here the two structures

do the same work in substantially the same way and accom-

plish the same result,-therefore, the two are the same.

Entron of Maryland, Inc. v. Jerrold Electronics Corp.,

supra. | es

‘Accordingly, it is concluded that Patent No. 2,905,445

is infringed by the defendants.

CONCLUSIONS OF LAW

(a) The court has jurisdiction of the ulin and the

subject matter involved.

(2) The Blum design patent No. D-171,963 is valid.

(3) The defendants have jointly and "severally in-

fringed the Blum Design Patent No. D-171,963 hy making,

using and selling railings installed at the C & S National

Bank, Greenville, S. C.

_ (4) The Blum Mechanical Patent No. 2,905,445 is

valid.

(5) The defendants have jointly wn severally in-

fringed Patent No. 2, 905,445 by making, using and selling

\ “ | Ne ee lec men. Deo “

- . ‘

District Court Opinion — «8a

the oraamental railings installed at the Citizens and South-

ern National Bank, Greenville, S. C.

Plaintiff is entitled to judgment enjoining defendants,

its officers, servants, agents, and those in privity with it

from any further infringement of the patents at suit, and

to an accounting to determine the amount of damages to

which the —- | is — as a result of the infringe-

ments. —

And it 1 18 SO , Gedered.

District Court Opinion vIe¢

SCHEDULE "A"

April 20, 1954 L BLUM ~ - Des. 171,963

RAIL 7

Filed Aprii 24, 1953

BLUMCRAFT OF PITTS. v. U. S.

Court of Claims No. 38-63

PX-/8

DESIGN PATENT NO. 171, 963

_———

Neopet ae

.

;

District Court Opinion

Patented Apr. 20, 1954

4Ua ©

Des. 171,963

UNITED STATES PATENT OFFICE

RAIL

Louis Blum, Pittsburgh, Pa.

Application April 24, 1953, Serial No. 24,676

Term of patent 14 years

(Cl. D28—1)

To all whom it may concern: °

Be it known that I, Louis Blum, a citizen of the

United States, residing at Pittsburgh, county of

Allegheny and State of Pennsylvania, have in-

vented a new, original, and ornamental] Design

for Rails, of which the following is a specifica- .

tion, reference being had to the accompanying

drawing, forming a part hereof, in which:

The single figure is a view in perspective of a

rail, showing my new design.

I claim:

The ornamental design for a rail, as shown.

\

References Cited in the file of this patent

Sweet’s File, Architecturai, 1952, section 6e,

sub-section RE, page 14; section 6e, sub-section

HA, page 7, and section 6e, sub-section BL, page

3, top left and right items.

ter ee

BM RP SYR LORE TIP ME

te Age YA

x ILE RO MRO RG HORI RTE OLE CURL TET PE INS

District Court Opinion

SCHEDULE "B"

Sept. 22, 1959 BLUM ©

_» ORNAMENTAL RAIL STRUCTURES

Filed June 16, 1955

2,905,445

SPIEL LOIRE LIONEL VRE DONE PEELS AO, LIRR ERO Nt EGE

. ‘

8 ORNS aM ME MUN OR ea TORT SIRT

LONI RIE at BER:

District Court Opinion a Se

‘UNITED STATES PATENT OFFICE

CERTIFICATE OF CORRECTION

Patent No. 2,905,445 September 22, 1959

Louis Blum

It is hereby certified that error appears in the above numbered pat-

ent requiring correction and that the said Letters Patent should read as

corrected below. be.

Column 2,.line 64, strike out "and", -first te ee

column 3, line 27, for "second" read -- first --; line 28,

for "first" read ~-- second --; column 4, line 37, for |

“Hauhenstein" read -- Hauenstein --. : j

Signed and sealed this 3rd day of April 1962.

(SEAL)

Attest:

ERNEST W. SWIDER DAVID L. LADD ~

Attesting Officer | Commissioner of Patents

six scchigiiahiseabaaiiedic taps bak

WLSBLE Ewe WE & WY OOF 8 wes

United States Patent Office

- 2,905,445

Patented Sept. 22, 1959

1

2,905,445

ORNAMENTAL RAIL STR

Blam, Pittsbergh, to Blumcraft of

— Fl meerig” Rdg a firm

Application Jume 16, 1955, Serial No. 515,902

6 Claims. (Cl. 256—65) |

This invention relates to new and useful improvements

in ornamental rail structures, more particularly to means

.for mounting and fastening ornamental rails to wall

brackets’ or supporting posts, and it is among the objects

thereof to provide special < ing means for securing

ornamental shaped rails at the under face thereof with-

out engaging or obstructing the top and side faces of the

rail to interfere with the gripping thereof.

It is a further object of the invention to provide special

means for anchoring the rail clamping members to a hol-

- low rail support. ; j

It is still a further object of the invention to provide

end caps for the ends of the rails and the top of the posts,

which shall be secured therein by a wedging member, and

which shall. also be serviceable as a clamp anchoring

means. These and other objects of the invention will

become more apparent from a consideration of the ac-

companying drawing constituting a part hereof, in which

like reference characters designate like parts and in which:

Fig. 1 is an isometric view in elevation, partially in

section, of a fragmentary portion of ornamental hand

rails and supporting posts;

Fig. 2, an exploded view of a portion of an ornamental

rail and clamp therefor; ~ ;

Fig. 3, an end elevational vigw, partially in cross-

section, of ah ornamental rail clamp post and clamp sup-

porting bracket; and, ;

Fig. 4 is a side elevational view taken along the line

4—4 of Fig. 3. °

In the drawing, the numeral 1 designates a dovetail

shape rail supporting posts of hollow construction ex-

truded of aluminum or the like; the numeral 2, an orna-

mental rail of similar shape supported on the post 1 by

clamps 2. The rails 2 are of hollow construction and are

provided with end caps 4, which are secured inside of

the rail 2 by a wedging action, as will be hereinafter ex-

plained. The rail supporting post 1 is also provided

with an end cap.5 of similar construction as the end caps

4, to which the clamping element 3 of the upper rail is

secured, as shown in Fig. 3. With reference to Fig. 2

of the drawing, the dovetail shape hollow rails 2 are

engaged by clamps generally designated by the numeral

3, which consists of a cylindrical member 6 having a

threaded interior for receiving a stud 7 having a swivel

end 8 pivotally mounted at 9, so that when inserted in an

opening 10 of the rail supporting post 1, the swivel

member 8 will assume the upright position, as shown in

Fig. 1, and as shown in dotted lines in Fig. 2. By turning

the barrel, or cylindrical member 6, on the threaded

portion of the stud 7, it can be drawn up tight to cause

the swivel end 8 of the stud 7 to abut the wall of the rail

supporting post 1 to securely hold the barrel 6 thereon.

The member 6 is provided with a reduced portion 11,

which acts as a pilot or guide for a clamping cylinder 12,

that has a cylindrical recess 13 for sliding engagement

with the pilot element 11. Both the members 6 and 12

are provided with flat seating surfaces 14, with V-shaped

notches 15, as is more clearly shown in Fig. 3 of the

10

top rail, while it employs the clamping element

2, utilizes a stud bolt 17 for mounting the cylin-

oiamber 6 on the ead clomare § of the supporting

This end closure 5, as shown in Fig. 1, is of

shape and has a reduced portion 18 that fits in

of the supporting post 1 having sliding

The member § is recessed at 19

closure for the top

The end closures 4 with the hollow rails 2, are of the

same construction as the closure 5 on the post 1, to

effect clamping engagement with the inner wall of the

rails 2 to- firmly secure the end closures in place.

It is evident from the foregoing description of this in-

verition that ornamental rail clamps and closures made

in accordance therewith, provide a simple expedient as-

sembly and efficient support without interference with the

free use of the railing and greatly enhance the orna-

mental effect where dovetail shape designs and extru-

sions are employed. It is evident that such railings.may

be assembled at the place of use with no tools required

except a drill for drilling the openings 10 in the post for

receiving the studs 7. .

Although one embodiment of the invention has been

herein illustrated and described, it will be evident to those

skilled in the art that various modifications may be made

in the details of construction without departing from the

principles herein set forth.

I claim: :

1. In an ornamental rail structure, ornamental post

means, ornamental rail means having a dovetail shape

base portion and an upper hand-gripping portion, sep-

arate V-shape clamping means in juxtaposition forming

a dovetail shape recess receiving and clamping the dove-

_ tail shape base portion of said rail means and exposing

70

the upper portion of said rail means for hand-gripping,

connecting means rigidly connecting said clamping means

and said rail means in spaced relation to said post means

and threaded bolt means passing through said clamping

means forcing and retaining said clamping means to-

gether. :

2. In an ornamental rail structure, ornamental rail

means having a dovetail shape base portion and an upper

hand-gripping portion, clamping means supporting said

rail means comprising a pair of separate clamping mem- ©

bers having substantially V-shape portions joined to form

a complementary dovetail shape and recess receiving and

clamping the said dovetail shape base portion of said |

rail means with the upper portion of the rail means

exposed for hand-gripping and holding means holding

said separate clamping members together and rigidly

clamping said rail means comprising’ internally threaded

means on one side of said clamping means and a threaded

bolt disposed within said clamping means and in threaded

engagement with said internally threaded means.

“District Court Opinion

44@.

9,005,445

3. In an ornamental rail structure, ornamental post

mearis, ornamental rail means having a dovetail shape

base portion and an upper han¢-gripping portion, means

connecting said rail means in spaced angular relation to

said post means comprising a pair of separate clamping

members, the first of said clamping members being rigidly

affixed to said post means and extending outwardly there-

from, the second of said clamping members being con-

nected to said first clamping member by threaded bolt

means, said clamping members having complementary

V-shape portions forming a dovetail recess receiving the

dovetail shape portion of said rail means and exposing

the upper portion of said rail means for hand-gripping.

4. In an ornamental rail structure, ornamental post

means, ornamental rail means having a dovetail shape

base portion. and an upper hand-gripping portion, means

for supporting said rail means on said post means com-

prising a pair of separate clamping members having

notches joined to form a dovetail shape recess for re-

ceiving the dovetail shape base portion of said rail means

with the upper portion thereof exposed for hand-gripping,

_ the first of said clamping members having a recess, the

second of said clamping members having means for at-

tachment with said post means and having an interiorly

threaded extension for sliditig movement in the recess in

the first said clamping member, and a bolt extending

through said second clamping member into the interiorly

threaded extension of said first clamping member for

drawing said clamping members into clamping engage-

ment with said rail. .

‘' §, In an ornamental rail structure, ornamental rail

means having a dovetail shape base portion and an upper

hand-gripping portion, clamping means supporting said

rail means comprising a pair of separate clamping mem-

10

15:

_ ing member for drawing said members into

bers, each of said clamping members comprising V- 35

shaped notch means and having an internal bore for re-

ceiving a threaded bolt, said V-shape notch means form-

ing a dovetail shape recess receiving the dovetail shape

: 4

base portion of said rail means and exposing the upper

portion of said rail means for hand-gripping, the internal

bore of one of said clamping members being threaded

for threaded engagement with a bolt.and bolt means dis- .

posed within said internal bores and threadably engaging

the threaded internal bore of one of said clamping mem-

base portion and an upper hand-gripping portion, means

supporting said rail means on said post means isi

a pair of separate clamping members joined to

dovetail shape recess receiving said dovetail

portion with the upper portion of said rail

posed for hand-gripping, a bolt with a swivel at

first of

receiving

+

Eg

first

end and threaded at the other

clamping members having a threaded

threaded end of said first bolt, said post r

opening for receiving the swivel end of said

said swivel constituting an abutment within

retaining said first clamping member in rigid

with said post means, said first clamping

an interiorly threaded extension at the end

posite said threaded end, the second of said

members having a recess for iving said

and a second bolt extending through — so

F

7

REs

Thess

first

said

engagement

engagement with said rail means.

"References Cited in the file of this patent

' UNITED STATES PATENTS

. 450,127 Wrigley April 7, 1891

876,059 Irons Jan. 7, 1908

1,631,831 Jones June 7, 1927

1,795,857 . Hauhenstein -...-.--.. March 10, 1931

2,229,194 Sklarek Jan. 21, 1941

District Court Judgment 45a

UNITED STATES DISTRICT COURT

. For tue District or SoutH CaRoLina.

Crivin Action Fite No. 4168.

BLUMCRAFT OF PITTSBURGH, a Parrnersuip, Con- |

sistiInc or HYMAN BLUM, MAX BLUM, LOUIS

BLUM anp HARRY P. BLUM,

Plaintiff,

v.

CITIZENS AND SOUTHERN NATIONAL BANK OF

SOUTH CAROLINA, DANIEL CONSTRUCTION

COMPANY, INC., anp COLONIAL IRON WORKS,

INC.,

Defendants.

JUDGMENT.

This action came on for trial before the Court, Hon-

. orable Charles E. Simons, Jr., United States District Judge,

presiding, and the issues having been duly tried and a

decision having been duly rendered,

It is Ordered and Adjudged that Blum design patent

No. D-171,963 and Blum Mechanical Patent No. 2,905,445

are valid and have been infringed by the defendants. Judg-

ment is entered for the plaintiff, Blumeraft of Pittsburgh,

a Partnership consisting of Hyman Blum, Max Blum, Louis

Blum and Harry P. Blum, enjoining defendants from any

further infringement of the patents at suit, and to an ac-

counting to determine the amount of damages to which the

plaintiff is entitled as a result of the infringements.

Dated at Columbia, S. C., this 3rd day of June, 1968.

Form approved. Mruter C. Foster, JR.,

Enter judgmeni forthwith: Clerk of Court.

Cuar.es EK. Simons, Jr., By Francis Metts, |

U. S. District Judge. ‘ | Deputy Clerk.

GOLEM DP OP IY LE re

grgnenora

so tid LLNS OLLIE TANT FOL TID |

PE EME YE ee INLD RIOD IRN OA) OH

PER’

46a Court of Appeals Opinion

UNITED STATES COURT OF APPEALS

For THE FourtH CrrculIT

No. 12719

BLUMCRAFT OF PITTSBURGH, a Partnersuip Con-

SISTING oF Hyman Buum, Max Buu, Louis BLuM, anp

Harry P. Buu,

Appellee,

v.

CITIZENS ann SOUTHERN NATIONAL BANK or

SOUTH CAROLINA, DANIEL CONSTRUCTION

COMPANY, INC., anv COLONIAL IRON WORKS,

-INC.,

Appellants.

AppEaL F'RoM THE Unrrep Srares District Court FoR THE

Disrrict or SoutH CaRoLina, AT GREENVILLE. CHARLES

E. Simons, Jz., District JUDGE.

(Argued December 2, 1968 Decided February 19, 1969).

- Before SopeLorr, Winter, and Butznenr, Circuit Judges.

——_

Warren N. Witiiams (Gorvon D. Scumwpr and Dona L.

Fercuson on brief) for Appellants ; and James C. Mc-

_ Connon (Henry N. Paut, Jr., and Paut & Pau; Rape

Bamey, Jz., and Bamey & Dorrry on brief) for Appellee.

Court of Appeals Opinion 47a

Butzner, Circuit Judge: ©

This appeal is taken from the district court’s ruling

that two patents, D-171,963 for design and 2,905,445 for a

mechanical device, owned by Blumeraft of Pittsburgh were

valid and infriffged by railings produced by Architectural

Art Manufacturing Co.1. We hold that both patents are

invalid under 35 U.S. C. § 108.

a

Blumeraft’s design patent, D-171,963, was granted

April 20, 1954 to Louis Blum for a railing styled for use in

buildings of contemporary architecture. His application

contained a single claim for the design ‘‘as shown”’ in a

drawing.: The railing consists of multiple parallel rails off-

set from vertical posts. The handrails are generally flat

with slightly curved gripping surfaces. The posts are rec-

tangular. Inconspicuous L-shaped brackets attach the

undersides of the rails to the ‘posts, leaving the gripping

surfaces of the rails unobstructed. The multiple, offset,

- and parallel handrails set up a horizontal plane in opposi-

tion to the vertieal plane formed by the parallel posts. The

result, with the connections betwéen the two planes mini-

mized, is the visual illusion that the handrails are floating

free. 7 ae

The law authorizes the grant of a patent to ‘‘[w]hoever

invents any new, original and ornamerttal design for an

article of-manufacture . .. .’’?35 U.S. ©. §171. Architee-

fural Art urges that the design patent is invalid under 35

U.S. C. §§ 102 and 103 because it was anticipated by the

prior art and its subject: matter was obvious to a person

having ordinary skill in the art of creating ornamental rail-

1. Blumcraft v. Citizens & So. Nat'l Bank, 286 F. Supp. 448

(D. S. C. 1968). The patents are reproduced in the appendix.

Blumcraft v. Citizens & So. Nat'l Bank, 255° F. Supp. 441 (D. S. C.

1966) (ruling on venue).

“i

— x

Detaled ecg het, Sein aa el aan eRe

cabot Saas

en wt, —— IIE thn sive 2S nye 6 owe hie DAREN

48a Court of Appeals Opinion

ing. The Court of Claims recently found Blum’s design

patent valid. Blumcraft v. United States, 372 F. 2d 1014

(Ct. Cl. 1967). We agree with it and with the district court

that Blum’s design was novel because the prior art did not

‘disclose multiple rails offset from posts by inconspicuous

connectors presenting the illusion of the rails floating in

space. But a design must be more than novel. As Judge

Soper wrote in Glen Raven Knitting Mills v. Sanson Hosiery

Mills, 189 F.2d 845, 851 (4th Cir. 1951):

‘‘(T here must be an exercise of the inventive faculty,

and if the design lacks this quality, it will not suffice to

say that it is new, original and ornamental, and has re-

ceived wide public acceptance.’’

Title 35 U. S. C. § 103? denies patentability to a novel de-

sign if the differences between the design and the prior art

are such that the design would have been obvious to a per-

‘son skilled in the art of designing ornamental} railings. The

test for obviousness, which must be applied as critically to

designs as to other inventions, is: ‘‘the scope and content

of the prior art are to be determined; differences between

the prior art and the claims at issue are to be ascertained ;

and the level of ordinary skill in the pertinent art resolved.

Against this background, the obviousness or nonobvious-

ness of the subject matter is determined.’’ Graham wu. John

Deere Co., 383 U.S. 1, 17 (1966).

Multiple parallel rails offset from their supporting

posts were known to the prior art. Two examples are

Hollaender’s stair rail, 1949, and Wallach’s Jamaica store,

2. Title 35 U. S. C. § 103 provides:

“A patent may not be obtained though the invention is not iden-

tically disclosed or described as set forth in section 102 of this

title, if the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as

_ a whole would have been obvious at the time the invention was

made to a person having ordinary skill in the art to heeunae said

subject ‘matter pertains. .

Court of Appeals Opinion _ 49a

1950. However, neither of these designs, nor the many ex-

amples of multiple rails that intersect their posts, gave the

floating effect which the district court found in Blum’s

patent. Prior art also discloses that architects who custom

designed railings, not Blum, first appreciated and met the

requirements of contemporary architecture for modern rail-

ing design. In a church built in the early 1940’s, Eliel and

Eero Saarinen achieved a floating effect with a single rail

offset from balusters by inconspic rackets. The rail

follows the stairwel// from fligh¥ to flight with unbroken

lines. A similar illusion was obtAined in a sanatorium built

in the mid-1930’s. Photographq of the Kansas City Audi-

torium, published in 1937, and of a W. T. Grant store, pub-

lished in 1940, disclose relatively Nat, single‘ handrails offset

from posts and walls by subdued breckets. A Chicago sav-

ings and loan office contains a railing\installed in 1952 that

follows and reinforces the lines of a cuyved staircase. The

architect accentuated the separation bet the horizontal

/ and vertical lines,of the railing by ae the top rail

\

with brackets.

The difference§ between the prior art and Blum’s

design are minor. \His predecessors offset multiple rails

with prominent connectors and single rails by inconspicuous

connectors. Blum merely offset multiple mails by incon-

spicuous connectors to achieve with several rails the float-

ing effect that had plreviously been imparted to a single

rail. It is apparent from the sophistication of the prior

art that designers of q@rnamental railings, including manu-

facturers and architects, were highly skilled. Therefore,

the fact, which the district court emphasized, that prior

art would have to be redesigned to achieve Blum’s railing

is not decisive. The joining of known components usually

requires skill, but this does not necessarily negate obvious-

ness. Cf. Smith v. Whitman Saddle Co., 148 U. S. 674

(1893). : mi

PPTL TATE T PS IRE

4

as

POLLO LOE EE PELE PLO NE CIN EG

‘

50a — Court of Appeals Opinion .

Grahani v. John Deere Co., 383 U. 8. 1, 17 (1966),

also directs i inquiry into secondary indicia of obviousness

or nonobviousness, including commercial success and long-.

- felt but unsolved needs... Blumcraft’s commercial success -

lay in the fact that it was the first to offer a railing of.

acceptable modern design as a prefabricated product. Both

- Blum and an architect testifying in his|behalf stressed this

point, ard Blumcraft’s advertising es the utili-

tarian advantages of its railing.’ ~However, commercial

success that results from the prefabrication of a known

architectural style; and not creative artistry, fails to sup-

port patentability. Cf. Battery Patents Corp..v. Chicago

Cycle Supply Co.,-111 F. 2d 861 (7th Cir. 1940); R-Way

Furniture Co. v. Duo-Bed CHP» 216 F. Supp. 862 (N. D.

IH. 1962).

To prove long-felt, unsolved need, Blumcraft says,

“The need for a commercially available railing system

compatible with modern architecture had existed for some |

time prior to the Blum invention.’’ This observation il-

lustrates both Blum’s success and the invalidity of his

’ patent. There was no unsolved need for attractive modern

railings. Architects were capable of supplying them

through custom design. There was a-need, however, for

a prefabricated railing system embodying modern design.

3. In 1953 Blumcraft advertised: . .

“Blumcraft presents a new approach in railings, —interchange-

able components that afford the Architect greater flexibility in

design, reduce to a minimum the hazards of errors in measure-

ments, templates and shop fabrication, and permit ease of in-

stallation in the field by ordinary mechanics without special tools.

Simple field adjustment for height, pitch and spacing is provided

CCAR EDSOMOTEOUS CEOS A See Kea d because budget is always a

limiting factor in railing design? the reduced costs in fabricating

_ and erection will be particularly appealing to the Architect. —

* * *

“Complete railings or, —_— parts available to metal fabri-

cators.”

Court of Appeals Opinion : dla

Blum met this need by adapting known custom designs to

a prefabricated railing system. Blum’s product enabled

architects to specify the number and location of posts and

the number and spacing of rails to create designs compatible

with the architecture of many modern buildings. Blum’s

contribution to the art was not his design ; this was obvious.

It was his railing system which was unique. But Blum’s

railing system is not the proper subject of-a design patent.

The statutory grant of a design patent is for appearance *

and not for a method of manufacture or assemblage,® func-

tion, or utility.* .

IL ) -

Blum’s mechanical patent 2,905,445, was issned Sep-

tember 22, 1959 upon an application filed June 16, 1955.

The two claims in suit are Nos. 1 and 3.7. The patent, as

4. 35 U.S. C. §171; Gorham Mfg. Co. 0: White, 81 U. S. 511,

525 (1872) ; Deller’s Walker on Patents, § 158 (2d ed. 1964).

5. Harmon Paper Co. v. Prager, 287 F. 841, 843 (2d Cir. 1923) ;

Harmon Paper Co. v. Kimberly Clark Co., 289 F. 501, 508 (E. D.

‘Wis. 1922). - }

. 6. Connecticut Paper Products v. New York Paper Co., 127

F. 2d 423, 429 (4th Cir. 1942). : ‘

7. Claim 1: “In an ornamental rail structure, ornamental post

means, ornamental rail means. having a dovetail

shape bzse portion and an upper hand-gripping por-

tion, separate V-shape clamping means in juxtapo-

sition forming a dovetail shape recess receiving and

clamping the dovetail shape base portion of said rail

means and exposing the upper portion of said rail

means for hand-gripping, connecting means rigidly

conn¢cting said clamping means and said rail means

in spaced relation to said post means and threaded

bolt means passing through said clamping means

forcing and retaining said clamping means to-

gether.” ae,

Claim 3: “In an ornamental rail structure, ornamental post

means, ornamental rail means having a dovetail

shape bz.se portion and an u hand-gripping por-

tion, means connecting said rail means in space

“

52a Court of Appeals Opinion

described by the district judge, ‘‘is characterized by a

clamping connector for connecting an ornamental handrail

in spaced relation to an ornamental post, comprising sepa-

rate v-shaped clamping means which receive and.clamp the

dovetail-shaped base portion of the handrail.’’? The contro-

versy involves the device that holds the rail offset from

the posts. It is depicted in Blum’s application as a cylinder

attached perpendicularly to the post by a bolt. Attached

to the.end of that cylinder by another bolt is a second

cylinder of the same diameter. Screwed together, the

cylinders grip, in a mouth formed by v-shaped notches, -

the dovetail base of a handrail. As Blum explained, the

connector gripped the handrail like a vise.

The prima-facie presumption of a patent’s validity

[35 U. S. C. § 282] can be given little weight. The Patent

Office cited none of the ornamental railings found in the

prior art. Cf. Heyl & Patterson, Inc. v. McDowell Co., 317 |

F. 2d 719, 722 (4th Cir. 1963). It referred, instead, to a |

device like a toggle bolt for fastening fixtures to a wall, :

to a split glass or porcelain knob for stringing electrical

transmission wires, to a bracket for attaching a lamp toa.

typewriter, to an anti-theft bracket ‘for attaching a fog

light to an automobile bumper, and, finally, to a device

for clamping scaffolding which does not need an -unob-

structed handrail.

7. (continued ) ;

angular relation to said post means comprising a

pair of separate clamping members, the first of said

clamping members being rigidly -affixed to said

post means and extending outwardly therefrom, the

second of said clamping members. being connected

to said first clamping. member by threaded bolt

means, said clamping members having complemen-

tary V-shape portions forming a dovetail recess

receiving the: dovetail shape portion of said rail

means and exposing the upper portion of said rail

means for hand-gripping.”

Court of Appeals Opinion 53a

By 1954, the use of posts and handrails was ancient.

And placing the rail in “‘spaced relation’’ to the post was

well-known. Indeéd, these elements were found in Blum’s

design patent, which is prior art. In addition, the un-

patented device Blum originally used in railings manu-

factured from his design patent disclosed the flexibility

plus rigidity that the district court found unique to Blum’s

later mechanism. Absent from Blumcraft’s original device

‘was the use of clamps with v-shaped notches to secure dove-

tailed rails, but a dovetail grip had been widely used. It

appeared, for example, in Hardy’s patent 163,996, issued

in 1875. Hardy used a clamp drawn together by screws

to hold a handrail above the top of a post. The clamp’s

grip resembled that formed by a man’s thumb and index

finger. It engaged the dovetail base of the rail the way

Blum’s does. The chief difference between the devices

lies in the way the clamp is fixed to the post: Hardy’s

clamp gripped the top of the post as well as the rail; Blum

attached one cylinder of his clamp to the side of the post.

by a bolt. We believe, however, contrary to the district

judge, that this difference is insubstantial. It was within

the skill of an ordinary mechanic to attach a vise-like clamp

to a post in any number of positions by any number of

means. Nor is it significant that the surface of Hardy’s

clamps form the lower part’ of his handrail. They need

not function exclusively as clamps to make their dovetail

‘grip apparent. The prior art of ornamental railings is

sufficient to establish the obviousness of Blum’s patent.

Moreover, devices similar to Blum’s have long beén

used to secure railroad rails. The best example is MecNeil’s

1915 patent, 1,165,195, which used a two-part clamp drawn

together by bolts to grip the base of the rail in a shaped

- recess and anchor it to straps or bars. The fact that Mc-

‘Neil’s mechanism was designed to hold railroad rails and

not handrails does not make his patent irrelevant. Both

a Court ‘j peeers Opinion

his abide naa Blum’s s perform the same function:

they stabilize a rail without interfering with the use of

its upper surface. Because’ both are simple devices em-

ploying the same ‘universally known principles of me-

chanics, McNeil’s patent is pertinent prior art and sup-

ports our conclusion that Blum’s device was obvious.

Mast, Foos, & Co. v. Stover Mfg. Co., 177 U. 8. 485, 493

(1900) ; Knapp v. Morrss, 150 U. S. 221, 226 (1893) ; Skee-

Trainer, Inc. v. Garelick Mfg. Co., 361 F. 2d 895, ‘898 (8th

Cir. 1966).

The judgment of the district court is reversed, and

this case is remaded for entry. of final scisceeis sali in favor

of the defendants.

a

Court of Appeals Judgment ie 55a.

: - JUDGMENT. |

UNITED STATES COURT OF APPEALS

For THE FourtH Crrcury. °

No. 12719.

BLUMCRAFT OF PITTSBURGH, a Parrnersuip, Con-

sistINc or HYMAN BLUM, MAX BLUM, LOUIS

BLUM ann HARRY P..BLUM, © : Appellee,

v. .

CITIZENS AND SOUTHERN NATIONAL BANK OF

SOUTH CAROLINA, DANIEL CONSTRUCTION

COMPANY, INC., anv. COLONIAL IRON WORKS,

ivy ; Appellants.

Appeal from the United States District Court for the

District of South Carolina.

This cause came on to be heard on the record from the

United States District Court for the District of South

Carolina, and was argued by counsel. |

On consideration whereof, It is now here ordered and

adjudged by this Court that the judgment of the said Dis-

_ trict Court appealed from, in this cause, be, and the same

is hereby, reversed with costs; that the cause is remanded

South Carolina at Greenville, for entry of final judgment

in favor of the defendants, vonsistent with. the opinion of |

the Court filed herein. _

FILED. ' Samueu W. Parmurrs, _

Fes. 19,1969 . | ~ Clerk.

SaMvuEL W. Puiuirs

Clerk

a er ee

d6a Court .of Claims Opinion

‘UNITED STATES COURT OF CLAIMS.

No. 38-63.

Feb. 17, 1967.

BLUMCRAFT OF PITTSBURGH, a Parrnersuir, Con-

SISTING OF Hyman Buum, Max Buum, Louis BLuM anp

Harry P. Buu,

v.

UNITED STATES COURT OF CLAIMS.

Action for patent infringement. The Court of Appeals

held that design patent D-171,963 was valid and infringed.

Judgment for plaintiff. at

James C. McConnon, Philadelphia, Pa., for plaintiff;

Henry N. Paul, Jr., Philadelphia, Pa., Robert/U. Geib, Jr.,

Washington, D. C., and Paul & Paul, Philadelphia, Pa., of

counsel.

Michael T. Platt, Washington, D. C., with whom was

Asst. Atty. Gen. Barefoot Sanders, for defendant.

Before Cowen, Chief Judge, and Laramore, Durree,

Davis, Coutins, SkELTon and Nicuots, Judges.

OPINION

Per Curiam:

This case was referred to Trial Commissioner Donald

K. Lane, with directions to make findings of fact and recom-

mendation for conclusions of law. The commissioner has

done so in an opinion and report filed on September 22,

1966. The case is before the court on plaintiff’s motion for

judgment on the issue-of liability, filed November 14, 1966,

wherein plaintiff moves that the court adopt the commis-

Court of Claims-Opinion 57a

sioner’s report per curiam as the opinion and findings of

the court and that judgment be entered on the issue of lia-

bility on the basis of the petition as amended,* and that the

case be referred to the commissioner for an accounting to

determine the amount of compensation to which plaintiff is

entitled. Defendant has filed no opposition or response to

plaintiff’s motion for judgment on the issue of liability and

the time for so filing pursuant to the rules of the court has

expired. Since the court agrees with the trial commission-

er’s findings, opinion and recommendation for conclusions

of law, as hereinafter set forth, it hereby adopts the same

as the basis for its judgment in this case without oral argu- .

ment. Therefore, the court concludes that design patent

D-171,963 is valid and has been infringed and that plain-

tiff is entitled to recover on the petition as amended for the .

. unauthorized use by defendant of the invention defined in

said design patent. Plaintiff’s motion for judgment on the

issue of liability is allowed and judgment is entered for

plaintiff with the amount of recovery to be determined pur-

suant to Rule 47(c) (2).

OPINION OF COMMISSIONER**

LaNnE, Commissioner:

This is a patent suit under Title 28 U.S. C. § 1498, in

which plaintiff seeks to recover reasonable and entire com-

pensation for the unauthorized use of a patented invention.

Plaintiff, a partnership haying its place of business in

Pittsburgh, Pennsylvania, is the owner of United States

Design Letters Patent No. D-171,963, entitled ‘‘Rail,’’ and

which was issued on April 20, 1954, for a term of 14 years.

* Plaintiff's second amendment to the petition on which defendant

had entered its consent was filed November 2, 1966.

** The opinion, findings of fact, and recommended conclusion of

law are submitted under the order of reference and Rule 57(a).

IONS I cael |

LRSM MBER EL IESE IMENT INR IEA POS NG

Po EACLE NAA ARONA LOR TART

PROSE AMGEN

.

RET STR Pa Oe

Aa tlle RD aes orld Rey My eee oeb

28a Court of Claims Opinion

The patent is hereinafter referred to as the design patent.

It is found that the design patent is valid and that it has

been infringed by defendant. The issues now before the

court are the issues of design patent infringement and

design patent validity. Defendant contends that the design

patent must be limited in scope to the railing design il-

lustrated, i.e., that no element illustrated may be eliminated,

and contends that the design patent is invalid under Title

35 U. S. C. § 103 as being an obvious design in view of

the state of the art prior to the summer of 1952.- The ap-

plication for the design patent was filed April 24, 1953.

The design patent claim reads: ‘‘The ornamental de-

‘sign.for a rail, as shown.’’? Only one claim is required in

a design patent. The above claim is written as required

. by the United States Patent Office. In determining whether

or not a design patent is infringed it is necessary to exam-

ine the illustrative drawing rather than detailed claim lan-

guage. The test for design patent infringement is sub-

stantial identity of appearance. The true test of identity of

design is the sameness of appearance, and the mere differ-

ence of lines in the drawing, a greater or smaller number

of lines, or slight variances in configuration will not destroy

substantial identity. Gorham Mfg. Company v. White, 81

U.S. (14 Wall.) 511, 526, 20 L. Ed. 731 (1871). The test °

of sameness of effect on the eye means the eye of an ordi-

nary observer rather than the eye of an expert in the

subject matter. 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 ordinary purchaser, inducing

him to purchase one supposing it to be the other, the de-

sign patented is infringed by the other. Gorham, supra,

528. ;

The distinguishing features of the rail design shown

in the design patent are set out in finding 6. Stated more

Court of Claims Opinion 59a

briefly, the paténted rail design creates an illusion of a

plurality of hand rails floating in space away from the sup-

porting posts. The aesthetic effect is pleasing. The testi-

mony of witnesses for both parties supports the conclusion

that the overall effect of the designs of the several accused

installations is like the overall effect of the design taught

by the design patent. There are minor differences in some

installations in the number of hand rails, the end of the

rails, and the’ ornamentation of the supporting posts, but

the overall effect is one of substantial identity. The dif-

ferences are discoverable only by close scrutiny.

The observer test for determining infringement of

design patents has been followed many times since its an-

nouncement years ago in the Gorham case. The test was

appliéd in the case of a design for a table top in 1960.

_E.'H. Sheldon & Co. v. Miller Office Supply Co., Inc., 188

F. Supp. 67, (DC-Ohio, 1960). The issue of infringement

of a design patent presents a question of fact for the trier

of the facts to. determine. The evidence in this case sup-

ports a finding that defendant’s hand rail installations iden-

tified in finding 9 produce the same floating in space effect

away from the supporting posts as the degyign illustrated

in plaintiff’s design patent. The designs have the same

pleasing aesthetic effect on a normal observer.

Defendant contends that the design patent is invalid

in view of Title 35 U. S. C. §103 which provides that a

patent may not be obtained though the invention is not

identically disclosed or described in a printed publication

or in public use, if the differences between the subject

matter sought to be patented and the prior art are such

that the subject matter as a whole would have been obvious

at the time the invention was made to a person having

ordinary skill in the art to which said subject matter per-

tains. Defendant has relied upon 15 prior publications and

1 prior use, and urges that it would have been obvious to

tle ah

al ap aie:

LO beh cait

60a Court of Claims Opinion

select one or more features from each _of several of the .

citations to come up with the design taught by the design

‘patent. It is clear that many new designs might be created

by this approach of picking a feature here and another

feature there. However, it is equally clear that every such

possible combination would not have the pleasing aesthetic

effect, appeal of beauty, and compatability with modern —

architecture achieved by the design taught by plaintiff’s

design patent. Invention lies in the combination of certain

features to create a desirable effect.

Defendant’s witness stated that the railing shown in

Architectural Record, 1940, page 68, defendant’s exhibit 2,

produced the closest visual effect of the several prior art

items relied upon by defendant to anticipate the design

patent. The witness stated further that to obtain the same

visual effect as the patented design it would be necessary to

modify the Architectural Record railing by changes in rail

section, changes in the post direction, and changes in the

decorative features, and that one would really have to re-

construct said prior art railing to obtain the same visual

effect. The Architectural Record railing illustration shows

' pipe rails and pipe posts but does not clearly show how the

rails are secured to the post. The overall appearance of

this prior art item is not one of having a plurality of rails

arranged in the same vertical plane offset from the plane

of the posts to produce an illusion of a plurality of hand

rails floating in space away from the supporting posts.

A design must be judged from its appearance as a

whole and to be patentable must possess beauty and orig-

inality. The fact that all the elements of a design

may be individually old does not prevent a design from

being patentable. Application of Johnson, 36 CCPA 1145,

175 F. 2d 789 (1949). That there is but a simple regroup-

ing of old elements does not negative design invention,

Court of Claims Opinion — 6la

for simplicity, may be ingenious in reaching a new and

' pleasing ornamental design.’ It is in the combination of

design features in which originality and aesthetic skill may

be evidenced. Such originality is shown in the design

taught by plaintiff’s design patent. The importance of the

appearance of the whole design was noted by Chief Judge

Garrett in the following language in Application of Jen- .

nings, 182 F. 2d 207, 37 CCPA 1023 (1950) :

In considering patentability of a proposed design

‘the appearance of the design must be viewed as a,

whole, as shown by the drawing, or drawings, and

compared with something in existence—not with some-

thing that might be brought into existence by selecting

individual features from prior art and combining them,

particularly where combining them would require

modification of every~individual on as would be

required here.

A design patent covers a design as a whole, and not any

part of it as a part. A design patent is to be tested as a

whole in considering novelty and infringement. Dobson v.

Dornan, 118 U.S. 10, 15, 6 S. Ct. 946, 30 L. Ed. 63 (1886).

Obviousness or nonobviousness is determined by con-

‘sideration of.the scope and the content of the prior art, the

differences between the prior art and the design claimed,

and the level of ordinary skill in the pertinent art. Second-

ary ‘consideration may be given to commercial success, long

Aeelt bitt unsolved needs, and the failure of others to provide

‘ a satisfactory solution. Graham v. John Deer Co. of Kan-

sas City, et al., 383 U.S. 1, 17, 86 S. Ct. 684, 15 L. Ed. ad

045 (1966). Plaintiff’s dette patent possesses novelty,

utility, and nonobviousness, and passes the accepted tests

for patentability.

In 1949 this court considered a design patent and relied

on the test of infringement laid down by the Supreme Court

LT HWE

62a Court of Claims: Opinion

_ in the Gorham case, supra. The court found that certain

secretary-bureau, ‘safe locker, and dental cabinet designs

used by the Department of the Navy did not have sufficient

' identity of appearance with a design patent for a combina-

tion bookease and desk-cabinet to constitute infringement .

thereof. Dickey v. United States, 114 Ct. Cl. 439, 455, 84.

F. Supp: 741,-(1949), cert. denied, 338 U, S. 938, 70 S. Ct.

339, 94 L. Ed. 578 (1950). In 1955 this court considered

a design patent on a plastic-covered wire staple removing

device. The court found that patent invalid and stated that

_ the only substantial differénce ‘between the prior art staple

remover and the patented design was. one of materials of.

manufacture and not of design. Ace Fastener Corporation

“vy, United States and Paragon Plastic Corporation, 149 Ct.

‘CL. 555, 276 F.2d 391. In the present case it is concluded

that the accused rail: installations do have sufficient iden-

tity of appearance with that of the plaintiff’s design patent -

for a rail to. constitute infringement, and it is concluded

further that the design patent illustrates a pleasing design

not taught by o or obvious from the aaa art and is valid

thereover.

. Summarizing, it is found'that “tnintiff’s ’s design patent - |

is valid and has been infringed by defendant. Plaintiff is

<<. to recover reasonable and entire compensation for

ch unauthorized use, the value of which should be deter-

mined by further proceedings persuant to Rule 47(c).

_Finprvas OF Fact

. This is a patent suit brought under itle 28 U. s, C.

§ un for the recovery of reasonable and entire compen-

sation for unlicensed use or manufacture by or for the

United States of the-invention covered by design patent

No. D-171,963 relating to an ornamental desigu for a rail-

ing. The petition was filed February 12, 1963, and was

Court of Claims Opinion i 63a

amended and supplemented by a petition filed August 20,

1965. -

2. The plaintiff, Rlumeraft of Pittsburgh, is a partner-

ship consisting of Hyman Blum, Max Blum, Louis Blum,

__and Harry P. Blum, all of whom are citizens of the United

States and residents of Pittsburgh, Pennsylvania, said firm

having its principal place of business at- 460 Melwood

Street, Pittsburgh, Pennsylvania 15213. 7

3. Design patent No. D-171,963 was issued to Louis-

Blum on April 20, 1954, for a term of 14 years, on an ap-

plication filed April 24, 1953. The patentee assigned this

patent to the plaintiff April 25, 1955, by an instrument

recorded in the United States Patent Office. Plaintiff is

the owner of the patent in suit. The patent drawing and

specifications are reproduced herein. In the first action

by the Patent Office Examiner, it was stated that the

drawing appeared to disclose novelty. Following com- .

pliance’ with formal requirements, the application for

patent was allowed without a rejection on prior art.

mie 7

ee ene ay

: :

Yeh + ee

errecemeomre en tr amenneemesgerans neopets

Court of Claims Opimon 65a

‘Term of patent 14 years

(Cl. D28—1)

To all whom it may concern:

Be it known that I, Louis _—_— a citizen of the

United States, residing at Pittsburgh, county of Allegheny

and State of Pennsylvania, have invented a new, original,

and ornamental Design for Rails, of which the following

is a specification, reference being had to the accompanying

drawing, forming a part hereof; in which:

The single figure is a view in —* of a rail,

showing my new design.

I claim:

‘The ornamental design for a . rail, as shown.

REFERENCES CITED IN THE FILE OF THIS PATENT

Sweet’s File, Architectural, 1952, section 6e, sub-

section RE, page 14; section 6e, sub-section HA, page 7,

and section 6e, sub-section BL, page 3, top left and right

items. ’

4. Louis Blum joined the Blumcraft firm in 1927. At

that time its business was in the manufacture of ornamental

and miscellaneous iron work. During the 1930’s and 1940’s

- Louis Blum was engaged in the capacity of a partner, in

designing for the firm iron, bronze, and aluminum products

such as railings, lanterns, lighting fixtures, and hand-forged

hardware. In the summer of 1952 he conceived the railing

design which is the subject of the patent in suit as a design

to be used for a stairway railing in a private residence in

substitution for a proposed railing that had been designed

for said residence by an architect. A model embodying the |

Blum design was built and tested about July or August

1952. Shop drawings of the railing were. made by Louis

aes

66a Court of Claims Opinion

Blum on September 18, 1952. The model wag seen and ap-

proved by the residence owner in the Blumcraft offices. The

aforesaid railing design created by Louis Blum came about

some time after architecture in this country, especially that

of monumental buildings, had changed considerably in the

direction of the modern or eontemporary style.

5. The modern or contemporary school of architecture

began to receive recognition in the 1920’s and became more

substantially established in the 1930’s. It has since become

a mass movement throughout the world. Characteristic of

the movement is the effort in the design of buildings to free

certain planes and surfaces so as to give them the effect of

floating in space, also the effort to achieve simplicity by the

elimination of features which are irrelvant because lacking

functional justification, and by the use of clean, continuous,

uninterrupted lines. The design-of railings was slow com-

pared to other products in keeping up with modern design.

By 1936 a definite need had arisen for a railing design both

~ pleasing to the eye and having a simplicity compatible with

the contemporary styling of buildings, particularly monu-

mental buildings. There was also a need for a design made

up of component parts which could be made available from

stock and readily adapted by an architect to suit the exi-

gencies of a particular building structure. Designers and

fabricators of railings had failed to satisfy these needs, and

it was therefore a common practice in 1952 for architects to

make their own railing designs on a job-by-job basts. Thou-

sands of railings were designed in an effort to produce

something which was harmonious or compatible with the

modern school of design for buildings.

6. The design illustrated in the patent in suit is char-

acterized by hand rails which appear to have a clean sweep

- of continuous uninterrupted lines separate from the upright

Court of Claims Opinion _ - 67a

supports. The hand rails are so arranged in relation to |

such upright supports as to present the effect of floating in

space. The distinctive features of the design of the patent

in suit comprise:

a. A plurality of spaced parallel posts generally rec-

tangular in cross section and arranged so as to

present a series of spaced parallel vertical sur-

faces ;

b. A plurality of spaced parallel hand rails generally

flat or rectangular in cross section and arranged in

the same vertical plane so as to present a series of

parallel horizontal surfaces ;

ce. Connecting brackets attaching the underside of

each hand rail to the adjacent edge of each post,

each bracket comprising a rod-like member extend-

ing at right angles to the post and a substantially

flat triangular member extending upward from the

rod-like member to the center of the underside of

each rail leaving the rail unobstructed throughout

the handgripping portion thereof; |

d. The aforesaid elements so designed and arranged

as to cause the hand rails to appear to float in

space away from the posts.

7. Since the introduction of the railing design illus-

trated in the patent in suit, the business of plaintiff has in-

creased greatly. The design has stood the test of time and

continues to receive favor from architects and builders.

The design has enjoyed commercial success.

8. The defendant has never had and does not now have

any written authorization or license from plaintiff to use

the invention of the design patent in suit.

SLAC IES ROTI: A

SRV RINE LAE POE ALON IR OLN

waren ace Brinn _—

«68a

Court of Claims Opinion

9. Plaintiff has presented photographs of _— in-

stallations at certain of defendant’s agencies as evidence of

infringement of the patent in suit. These photographs are

included herein by reference and comprise: |

ae

- sioner’s exhibit 3.)

The railing in the entrance lobby of the 3.9 ft.

hypersonic wind tunnel, N ational Aeronautics and

Space Administration, Ames Research Center,

Moffett Field, California. ( Plaintiff’ s exhibits 39

((b)-(1), inel.).) :

The railing on stairway No. 1, Data Reduction

Center, National Aeronautics and Space Admin-

istration, Ames Research Center, Moffett Field,

California. (Plaintiff’s exhibits 39 ((0)- (s),

incl.).) |

The railing on stairway No. 2, Data Reduction

Center, National Aeronautics and Space Adminis-

tration, Ames Research Center, Moffett Field, Cali-

fornia. (Plaintiff’s exhibits 39 ((t) and (u)).)

The railing of the front stairs of the new school

building, Department: of the Interior, Bureau of

Indian Affairs, Stewart, Nevada. (Plaintiff’s ex-

hibits 39(w), (x), (y), (2), (aa).) -

The railing on the side stairs of the new school

building, Department of the Interior, Bureau of

Indian Affairs, Stewart, Nevada. (Plaintiff’s ex-

hibits 39(bb) and (cc).) ;

The railings leading to the doorways of the build-

- ing of the Department of the Interior, Forestry

Service, at Mount Hebron, California. (Commis-

10. The design of the railing in the entrance lobby of

defendant’s NASA office building identified in item a. of

Court of Claims Opinion 69a.

finding 9, and depicted in plaintiff’s exhibits 39(b)-(1) and

also shown in defendant’s exhibits 25(A)-(F) and-°28, typi-

fies the subject matter charged to infringe plaintiff’s patent

here in suit. Said railing was manufactured and installed

by or for the defendant at some date subsequent to’ Decem-

ber 2, 1958, and prior to the February 12, 1963, filing date

of plaintiff’s original petition. —

11. Each of the distinctive features of plaintiff’s pat-

ented design set forth in finding 6 above is present: in each

of the accused structures. Said accused structures produce

in their overall effect upon the eye a clean, uninterrupted

sweép of parallel railing surfaces giving the impression that.

the said surfaces float in space away from the supporting

posts to which they are connected. In applying a railing of

any specific design to a structure such as a stairway, plat-

form, or baleoniy, it is to be expected that the railing must

be adapted or conformed to meet the special conditions im-

posed by such structure. Necessarily the nature of the

terminations, the character of the slopes and changes of

direction of the hand rails, the number and spacing of the

posts, and the manner of mounting the lower ends of the

posts, are variable factors that are determined and con-

trolled by the environmental conditions which are encoun-

tered. Such adaption or conformation of a railing to a

particular structure need not destroy the identity or change

the distinctive features of a railing design.

12. When viewed in the manner and at the distance at

which railings are customarily observed, each of the several

accused railing constructions is indistinguishable from the

railing design disclosed in the plaintiff’s patent in suit.

When the railings are carefully scrutinized or placed side

by side for element by clement comparison, such differences

as may appear reside in minute and inconsequential details

LARP PIP ECP TERNS NE ISNT LI

See

70a Court of Claims Opinion

or result from the-adaptation of the patented design to meet

the conditions of a particular installation. No difference of

substance has been shown and the overall impfession upon

the eye of the beholder is the same.. The aesthetic effect is

one of identity. :

13. Defendant contends that the design patent in suit

is invalid over the disclosures of the following 15 prior

publications plus a railing installation in Chicago, Ilinois.

The defendant’s exhibit number is indicated by DX.

Architectural Forum, March 1937, page 222, DX-1.

Architectural Record, August 1940, page 68, DX-2.

Architectural Forum, October 1942, page 43, DX-3.

New Pencil Points, January 1943, page 24, DX-4.

Architectural Forum, March 1950, page 100, DX-5.

Architectural Forum, July 1950, page 75, DX-6.

Sweet’s Catalog Service of 1951, Arch. Sec. 6a/A,

page 21, DX-7.

h. Progressive Architecture, November 1951, page 26,

DX-8.

_ i. Sweet’s Catalog Service of 1952, Arch. Sec. 6c, page

14, DX-9.

j. Architectural Detailing, Hornbostel & Bennett, Rein-

hold Publishing Co., 1952, page 165, DX-10.

i. Arehitectural Detailing, 1952, page 166, DX-11. _

l. Architectural Detailing, 1952, page 158, DX-12.

m. Progressive Architecture, August 1950, page 97,

DX-12A.

n. Architect’s Working Details, Boyne, Architectural

Press, Great Britain, 1953, page 60, DX-13.

nme ef FP

-

Court of Claims Opinion Tla

,

o. Excerpts from Ornamental Metal Handbook,’ 1945),

DX-42a, 42B, and 420. | —

.

14. Defendant contends that the design patent in suit

is invalid over the design of a railing installed in April

1952 in the Home Federal Savings and Loan Building at

202 South State Street, Chicago, Illinois. This railing is

shown in DX-24A-2, and comprises a single hand railing

supported by heavy acute angle gooseneck-shaped brackets

_offsetting it from and above a series of framed and spaced

glass panels. The overall appearance of the Savings and

Loan railing is different from the appearance of the rail-

ing design illustrated in the- patent in suit. The. single

Savings and Loan hand rail does not have the appearance

of foating in space.

15. Defendant's expert stated that there is no railing

shown in the cited prior art that would produce the same

visual effect in all respects as that produced by the railing

illustrated by the design patent in suit. He also testified

that in his opinion the railing shown in Architectural Ree-

ord, 1940, DX-2, produced the closest visual effect to that

of the patented railing, and that to obtain the same visual

effect it would be necessary to modify said prior art railing

by changes in the rail section, in the post section, in the

post direction, and in the decorative features, and that

one would really have to reconstruct the entire prior art

railing to produce the visual effect of the railing design

of the patent in suit.

16. None of the other prior art railing disclosures

presented by defendant produces a visual effect any closer

to that of the patent in suit than DX-2 chosen by defend-

ant’s expert. DX-2 shows pipe rails and posts but the con-

necting means are not clearly apparent. Architectural

»

et

LM RPI OLE ACNE Fe

'

72a | Court of Claims Opinion

Forum, DX-1, shows .a double railing supported by posts

having relatively heavy U-shaped brackets at the post top.

Architectural Forum, DX-3, shows a continuous hand rail,

supported: by brackets from tubular posts which project

above the rail. New Pencil Points, DX-4, shows a mesh

screen railing supported by offset posts. Architectural

Forum, DX-5, shows a stair railing having tubular rails

and tubular posts in a single plane. Architectural Forum,

DX-6, is similar to DX-5, but appears to include glass ©

panels between tubular rails offset from tubular posts.

Sweet’s, DX-7, shows tubular hand railing supported by tu-

bular posts in a single plane with a single stair post offset.

Progressive Architecture, DX-8, shows a stair rail sup-

ported’on the tops of rectangular cross section posts which

also carry flat strip guard members. Sweet’s, DX-9, shows

a stair rail having three flat strips mounted on tubular

posts without offset. Architectural Detailing, DX-10, shows

a single hand rail carried by offset posts supporting glass

panels. Architectural Detailing, DX-11, shows a box-like

hand rail carried by offset square posts supporting frosted

glass panels. Architectural Detailing, DX-12, and Progres- —

sive Architecture, DX-12A, show pipe stair rails similar

to those shown in DX-2. Architect’s Working Details, DX-

13, shows the same pipe stair rails illustrated in DX-12.

‘Excerpts from Ornamental Handbook, DX-42A, 42B, and

42C, show a variety of railing braces, center rails, and

wall bracket fastenings, all unlike. in appearance those il-

lustrated in the design patent in suit. ;

17. None of the citations relied on by defendant as

prior art embraces all of the distinctive features of the

Blum patented invention as set forth in finding 6, nor

do the prior art exhibits, including those pertaining to the

railing installed in the Chicago building, whether con-

; sidered individually or collectively, contain any teaching

Court of Claims Opinion | - 73a

or disclosure suggesting a design containing all of said

distinctive features. A designer with skill in the railing

art having before him the prior art citations relied on by

defendant and the photographs of the prior use, would

have to engage in substantial redesigning of the elements

shown therein in order to achieve a design like that shown

in the patent in suit in which the rails appear to float away

from the vertical posts. None of the citations relied: on

by defendant as/ prior art, including the exhibits illustrat-

ing the prior use, produces the overall aesthetic effect upon

the eye which is produced by the design illustrated in the

patent. in suit. None discloses rails having a clean sweep

of uninterrupted lines separate from the upright posts,

presenting the illusion-of floating in space.

18. At the trial, the trial commissioner ordered that

only the issues of patent infringement and patent validity

would be considered and that any accounting issues should

be deferred until entry of an order by the court on lia-

bility, and that in the event of an accounting both parties

should have the right to present evidence upon patent mark-

ing and upon the right of plaintiff to recover compensation

from the defendant by reason of the manufacture and use

- by or for the defendant of railings produced by Kawneer |

Corporation and/or. Raileraft Corporation.

CoNCLUSION oF LAW

Upon the foregonig findings of fact, which are made

a part of the judgment herein, the court concludes as a:

matter of law that design patent D-171,963 is valid and has

been infringed and that plaintiff is entitled to recover. for

the unauthorized use by defendant of the invention defined

in said design patent. Judgment is entered to that effect.

The amount of recovery will be determined pursuant to

Rule 47(c) (2).