Opposition Brief — Hadco Products, Inc. v. Kidde

No Question in This Case Is Worthy of Review

The Design of the Patent in Suit Is a Trivial Obvious

Ys Departure From the Prior Art

The Patent in Suit Being Directed to a Combination

Must Meet the High Standards of Combination

It Is Specious to Argue That Under the Standards

Established by the Court of Appeals, No Design

P ‘The Presence of Secondary Factors, Such as Com-

mercial Success, Will Not Make for Patentzbility

Without Invention

COPY BOUND CLOSE IN CENT&EeE

,

TABLE OF CITATIONS.

Cases”

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.

BOG U. S. S7 (19GB) «.. anne nnn een ewer e eee w en wns

Deep Welding Inc. v. Scisky Bros. Inc, 417 F. 2d 1227

cM, ) eeeeeeeeeererererrrrrrrrrrirrrririr

Dempster Bros. Inc. v. Buffalo Metal Container Corp.

F. 2d 420 (2nd Cir, 1965) ......- 2 ese nen ennenwene

Graham v. John Deere Co., 383 U. S. 1 (1966) ..........

Great Atlantic & Pacific Tea Co. v. Supermarket Equi

Corp., 340 U. S. 147 (1950) .....----- eee eennnnnen

Keller v. Adams-Campbell Co., Inc., 264 U. S. 314 (1924) ...

McCullough v. Maryland, 4 Wheat. 316 (1819) ..........

Southern States Equipment Corp. v. USCO Power Equi

Corp. 209 F. 2d 111 (Sth Cir, 1953) .....-- +++ --0eee

United States v. Adams, 383 U. S. 39 (1966) .........+..

Wheaton v. Peters, 8 Pet. S91 (1834) |... ©. . 0-5 c nnn nnnne

Statutes

BB UD, BC. BFE nnccccccccccccccccccccccccccccccscsomm

Rules:

-- 88 8

Sep. Ct. Rule 19... 2... c scence eee e eee n ee nn een ewennnm

This is a commonplace action for patent infringement

» ordinary invalid design patent, in which the District

rt concluded that the subject matter of the patent in

was not obvious, and the Circuit Court, in reversing,

imously concluded that it was obvious. This case meets

. of the criteria required by this Court as reasons for

ting review on certiorari as set forth in its Rule 19.

Petitioner, Hadeo, has phrased its “‘QUESTIONS

SENTED FOR REVIEW”’ in an attempt to conform

ese criteria. In actuality, however, the decision of the

uit Court for which review is sought, is not in conflict

any decision of any other court of appeals on the same

ut, nor with the statutes, nor with the applicable deci-

| of this Court.

Chief Justice Taft's admonition set forth in Keller v.

ns-Campbell Co., Inc., 264 U. 8. 314, 319 (1924) applies

special force to the subject case :

‘Such an ordinary patent case, with the usual issues

f invention, breadth of claims, and non-infringement,

his Court will not bring here by certiorari unless it be

ecessary to reconcile decisions of circuit courts of ap-

al on the same patent.’’

fespondent, Kidde, accepts Hadco's statement of the

» ental ont fot ts below, and jurisdictional

ads

With regard to the statement of the case Hadco has

ated or twisted the record in many aspects. By way

ample, Hadco asserts ‘‘undisputed testimony’’ of

reality of application’’ for the fixture of the patent

COPY BOUND CLOSE IN CENTER

2 Respondent's Brief in Opposition

in suit. This is based on the direct examination

of the patentee, Daum. On subsequent « x

Daum conceded that ail lighting fixtures are of

application (Record 547a to 548a) :°

“A. Of course, all fixtures are of universal

cation if you want to put it om am application.

to the individual. (Emphasis added.)

Indeed, he characterized as ridiculous any

that either his fixture was unique in being of uni

sign, or that the prior art fixtures were not of

design :

“Q. . . . You didn’t anderstand that as

that your Tudor was of universal design, could

anywhere and these others could not and you

determine it?

“A. I didn’t mean that way. I really

“Q. I see.

“A. Because that would be ridiculous tos

statement like that.”"’ (Emphasis added.)

Parenthetically, Hadco’s statement infers that

small company, which has been manhandled by

Actually, as reflected by the record, Hadco is a

subsidiary of Esquire, Inc., a corporation on the

Stock Exchange.

* Refers to the Joint ix Filed in Appeal to the

States Court of Appeals for Third Circuit.

Respondent's Brief in Opposition

ARGUMENT

Question in This Case Is Worthy of Review.

The Design of the Patent in Suit Is a Trivial Obvious

Departure From the Prior Art.

The patent im suit, Deum’s Design Patent 199,143,

s & trivial obvious departure from the prior art.

the design constitutes a combination of elements,

of which is present in the prior art. Daum testified

what made the fixture of his patent interesting to the

its contour or silhouette, i.e. in his deposition DX-

52la, he stated:

; «d over the drawing of the patent application

issued as the patent in suit is set forth in the accom-

ing Appendix. As the Circuit Court held, and as is

evident, the prior art fixture is ‘‘quite similar

Hadco fixture in overall silhouette and contour’’

COPY ROINGEA CrlrAMmenr ms oer ee

7 Respondent’s Brief in Opposition

Viewed in a position most favorable to Hadco,

are, as the Circuit Court found ‘‘clearly recogn

simple modifications’’. *

Overall, the Circuit Court found (A18): *

“When viewed in light of the prior art, the

lighting figure, on the contrary, appears simply,

attractive variation on a well-played theme.

not project the synergistic effect necessary to

a patent for a design which is a combination

and well-known elements. The differences in the]

lantern do not create such a new and unexp

sult in the appearance of the lighting fixture asa

as to be a product of invention or of a skill

that of the ordinary designer in the art.’’

The great bulk of the Circuit Court’s holdi

based on documentary evidence, as to which it

bound by F. R. C. P. 52(a), Deep Welding Inc. ».

Bros., Inc., 417 F. 2d 1227, 1229 (7th Cir., 1969) ; D

Bros. Inc. v. Buffalo Metal Contaimer Corp., 352 F.

423 (2nd Cir., 1965); Southern States Equipment C

USCO Power Equipment Corp., 209 F. 2d 111, 117 (

1953).

Kidde’s expert witness, Robert Stith, was a

of long experience (having designed custom lig

tures before the First World War when the bulk

lighting fixtures were of custom design rather thas

catalog or off the shelf items). He testified to thei

2. (Cont’d.)

“Almost identically to the Hadco lantern, however, the

Ce ee Ger ae ee oe ee curve i

oy Se Se ae Oe ae a

lower edges, terminating in a rippled _ Except

four sided, the cages also are virtually i to that

Hadco fixture in contour of silhouette.”

COPY BOUND

Respondent’s Brief in Opposition 5

liarity of his generation of lighting fixture designers

the components making up a lighting fixture of the

set forth in the patent in suit, and how such designers

sembled and restyled these well-known components to

nce on demand a plethora of designs.’

The Circuit Court correctly found that it was within

kill of such a lighting fixture designer to retain or de-

these well-known components, or to modify their shape

contour.

The Patent in Suit Being Directed to a Combination

Must Meet the High Standards of Combination

Patents.

The standards for combination patents have been set

is Court in Great Atlantic & Pacific Tea Co. v. Super-

et Equipment Corp., 340 U.S. 147, 152 (1950) ; Ander-

Black Rock, Inc. v. Pavement Salvage Co., Inc., 396

57, 61 (1969) ; and United States v. Adams, 383 U. S.

966). These were precisely the standards which the

lit Court followed, even to quoting from AéP and

wson’s-Black Rock (A7-8):

“Where, as in the present case, a combination patent

s involved, additional aspects of nonobviousness come

. Hadco misstates Stith’s testimony in its Petition. By way

at 13, it faults the Circuit Court for stating that

estad Weeder with tediented Glancis ancute oot Ge

y placed on the lower edges of roofs and vent caps as shown in

tent in suit, asserting that Stith’s testimony regarding the prior

lated only to a sinuous curve. However, as reference to A66

s clear, Stith was testifying precisely as to the structure shown

gure 1 of the patent in suit (A66) :

“Q. Now, in connection with roofs of that period used on

interns, was it common to have the peripheral edge of the roof

avy with a sinuous curve as shown in Figure 1 of the patent

' suit? (Emphasis added)

“A. It was frequently done because it was, I think, the

heapest and easiest decoration that could be put therein.”

CLOSE IN CENTER

Respondent's Brief in Opposition

into play. The court must ‘scrutinize combiq

patent claims with a care proportioned to the diff

and improbability of finding invention in an ass

of old elements.’** Such a patent must create ag

gistic effect, one in which the combination of ele

results ‘in an effect greater than the sum of the se

effects taken separately.’**’’

“18. Great Atlantic & Pacific Tea Co. v. Supen

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

“19. Anderson’s-Black Rock, Inc. v. Pavement §

Co., Inc., 396 U. S. 57, 61 (1969); United States v. A

383 U. S. 39 (1966).”

It Is Specious to Argue That Under the Stam

Established by the Court of Appeals, No Desj

Patentable.

Hadco asserts that under the standards of the G

Court it is not possible to sustain the validity of any d

patent. This assertion is hypothetical and not a p

question for review. Moreover, the assertion is simp

true.

Both the District and Cireuit Courts applied «

tially the same standard. At no time heretofore did E

assert that the standard is too strict or improper.

What is involved in the case at bar is a design:

differs from the prior art by mere trifles. Such design

far short of the Constitutional standard.‘

A collection of designs, many of which would me

mp w Ose tA

Respondent's Brief in Opposition 7

of the New York Museum of Modern Art, a portion of

is displayed in its Philip L. Goodwin Galleries of

Many of these pieces are shown in the book entitled:

Design Collection, Selected Objects, The Museum of

om Art, New York’’ published by the Museum of

» Art in 1970. This book’s preface reads in part:

“The Design Collection of The Museum of Modern Art

was established in 1934 and now includes over 1,800

mass-produced or handmade objects. They have been

selected on the basis of their quality and historical

significance to illustrate the development of design

juring the past seventy-five years.

“Some 125 of these objects—including household and

office appliances, tableware, tools, and furniture—are

continuously exhibited in the Philip L. Goodwin

Galleries, opened in 1964 and named in honor of the

architect who from 1935 to 1940 was chairman of the

Museum’s Department of Architecture and Industrial

Art. This international selection presents both an his-

torical survey of styles, from Art Nouveau to the

present, and a standard of reference for judging con

temporary design.’’ (Emphasis added.)

The book illustrates such outstandingly inventive de-

a8 the Charles Eames lounge chair and ottoman, Eero

en molded plastic armchair, Mies van der Rohe

ge chair, Frank Lloyd Wright desk, Nizzoli design for

ivetti typewriter, and inventive designs in a folding

me, coffee grinder, lamp, portable radio, control

i for an IBM 305, ete.* Many of these designs conform

. ee Soman a & Mey i. Goodwin Galleries

and Design is set forth in the accompanying Ap-

— —_——

im 7.timer It CoAT CLO

8 Respondent’s Brief in Opposition

to the standard of the Constitution, and promo

progress of the useful arts. In contrast, the paten p

sign simply constitutes a slight variation from tl

art, easily within the skill of an ordinary worker in th

or ordinary designer. ;

Hadco Would Have This Court Withdraw

Constitutional Standard and Adopt the 8

of the Patent Office.

At page 22 of its Petition, Hadco bemoans that

Patent Office continues to accept design applications

issue about three thousand design patents every y

unsuspecting inventors who are led to believe that t

receiving protectable rights’’.®

Hadco’s apparent solution for this alleged pre

to have this Court abandon the Constitutional standar

adopt that of the Patent Office.

Manifestly, the subject situation is a clear case of

this Court has termed ‘‘the notorious difference

the standards applied by the Pateat Office and

courts’’, i.e. Graham v. John Deere Co., 383 U. 8.1,

(1966) :

‘“We have observed a notorious difference be

standards applied by the Patent Office and by

courts.

‘‘Although we conclude here that the inquiry

the Patent Office and the courts must make as toy

6. As set forth in the book The Design Collection, quoted

the Museum of Modern Art has selected 1,800 designs as

the “standard of reference for . . . design” for the past seve

years. This 1,800 designs in seventy-five years contrasts

Patent Office issuing “about three thousand design pate

year.”

COPY BOUND

Respondent’s Brief in Opposition 9

ility must be beamed with greater intensity on the

quirements of 4103, it bears repeating that we find

change in the general strictness with which the over-

| test is to be applied. We have been urged to find in

(03 a relaxed standard, supposedly a congressional

action to the ‘increased standard’ applied by this

yurt in its decisions over the last 20 or 30 years. The

andard has remained invariable in this Court.’’

he Presence of Secondary Factors, Such as Commer-

cial Success, Will Not Make for Patentability

Without Invention.

he District Court was overly impressed by the al-

sommercial success of the design of the patent in suit.

yer, secondary fectors, such as commercial success,

iifillment of long-felt need, cannot make up for the

e of invention. The Circuit Court gave measured

{7 to all of these secondary considerations, and de-

ed that invention was plainly lacking (A20):

Under the mandate of John Deere, supra, this court

8 given measured weight to secondary considera-

ons such as commercial success, the opinion of other

anufacturers in the pertinent art, and the fulfillment

t long-felt need. In determining the validity of a

sign patent, however, the primary target of inquiry

mains the design itself, and the presence of sec-

ndary factors ‘without invention will not make

“50. Philips Electronic and Pharmaceutical Industries

orp. v. Thermal and Electronic Industries, Inc., 450 F. 2d

164, 1174 (3 Cir. 1971); Frank W. Egan & Company v.

fodern Plastic Machinery Corp., 387 F. 2d 319, 324 (3 Cir.,

67) cert. den. 361 U. S. 883 (1959).

Hadco’s statement at page 7 of its Petition that the Circuit

rejected these secondary considerations as “altogether irrele-

$a gross misstatement of the record.

CLOSE IN CENTER

10

Respondent's Brief in Opposition

patentability.’** Having concluded that the ;

itself is not a product of invention, it cannot

tained as nonobvious on the basis of other seog

considerations. ‘Where . . . invention is 7

lacking, commercial success cannot fill the void

“S1. Anderson’s-Black Rock, Inc. v. Pavement

Co., Inc., 396 U. S. 57, 61 +k E. J. Brooks Ce

Stoffel Seals Corp., 266 F. 2d 841, 844 (2 Cir., 1959),

“52. Jungersen v. Ostby & Barton Co., 335 U.

567 (1949).”

CONCLUSION

The petition should be denied.

Respectfully submitted,

Aztuusg H. Szme.

Epwarp C. Gonpa

Auten L. GREENBERG

Szme., Gonna & GotpHammes, P. C.

Suite 600, Three Penn Center Plam

Philadelphia, Pa. 19102

Attorneys for Re

THE PATENTEE DAUM DEFINED THE ESSE

HIS DESIGN AS: ;

“PRIMARILY, SILHOUETTE. THAT

MAKES IT INTERESTING TO THE }

SEE PAGES 3 AND 4, SUPRA.

Figure 1 of Daum Patent App’ ication Drawing, DX-19

imposed Over Prior Art Herwig Fixture, DX-220, Re

in Opinion of Circuit Court as “Kidde’s Item No. 5, 3

See Footnote 35 to Opinion of Circuit Court at Al

Principal Differences in Contour Between the Two |

Are Due to Errors in the Drawings of the Daum Pates

cation, Namely the Outside Simulated Ventilators, Whid

Conceded Should Not Be on the Drawings, See Footn

Circuit Court’s Opinion at A3.

(12)

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