# Opposition Brief — Hadco Products, Inc. v. Kidde > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1376%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1972 - **Citation:** 409 U.S. 1023 ## Text 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) — tae s alte --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1376%3A2. Public record. Not legal advice.