
    Milton SPIRT, Plaintiff, v. J. F. D. MANUFACTURING CO., Inc., Defendant.
    Civ. No. 10798,
    United States District Court E. D. New York.
    June 3, 1955.
    Alexander Mencher, New York City, for plaintiff.
    Morris Kirsehstein, New York City, for defendant.
   RAYFIEL, District Judge.

The plaintiff, the owner of design patent No. D. 156,379, sues herein for damages for the infringement thereof. The patent was issued to him on December 6, 1949, and covers a design for an indoor television antenna, of the type popularly known as “Rabbit Ears”. It consists of a holder or base, containing two slots, from each of which extends an adjustable telescopic metal rod or antenna.

The plaintiff issued an exclusive license to Spirling Products Co., Inc., which has been added as a party plaintiff.

The plaintiff’s design patent, Exhibit No. 2 at the trial, follows:

A representation of the first allegedly infringing antenna made by the defendant, received in evidence as Plaintiff’s Exhibit No. 10, follows:

The defendant subsequently modified the base of its antenna, as appears from the following representation thereof, received in evidence as Plaintiff's Exhibit No. 11.

Except for minor variations in the ornamentation of the bases the defendant’s antennas are virtually copies of the plaintiff’s, and doubtless are infringements thereof. There is left, then, the question as to whether plaintiff’s patent is valid.

In the case of Neufeld-Furst & Co., Inc., v. Jay-Day Frocks, Inc., 2 Cir., 112 F.2d 715, at page 716, the law relating to the validity of design patents was summarized as follows: “In this circuit it is firmly established that more is required for a valid design patent than that the design be new and pleasing enough to catch the trade; it must be the product of “invention,” by which is meant that conception of the design must demand some exceptional talent beyond the skill of the ordinary designer. Nat Lewis Purses, Inc., v. Carole Bags, Inc., 2 Cir., 83 F.2d 475. Such a standard is necessarily vague and difficult of application. Nevertheless, ‘we are obliged to determine, as best we may, whether the design in question is original and aesthetic and involved a step beyond the prior art requiring what is termed “inventive genius” ’. See A. C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99.” (Emphasis added.)

At the trial the defendant submitted in evidence design patent known as the Leonard patent, applied for on October 8,1948, and issued on March 8, 1949, upon which was based the “Radion” antenna, received in evidence as Exhibit No. 9. In addition, the defendant submitted (part of Exhibit A) a photograph of the January 26, 1949, issue of “Radio and Television Weekly”, which contained an advertisement of the “Snyder” television antenna. The “Leonard” patent antedates that of the plaintiff as does the “Snyder” advertisement. All three are similar in appearance. Representations of the “Leonard” patent and the “Radion” and “Snyder” antennas follow;

As was stated in the case of Howell Co. v. Royal Metal Mfg. Co., 7 Cir., 93 F.2d 112, at page 113, “To entitle a party to the benefit of the statute, 35 U.S.C.A. § 31, the device must not only be new, but inventively new. The re-adaptation of old devices or forms, however convenient, useful, or beautiful they may be in their new roles, is not invention. Smith v. Whitman Saddle Co., 148 U.S. 674,13 S.Ct. 768, 37 L.Ed. 606.”

I have not overlooked the fact that the Leonard Patent was considered by the Patent Office in the issuance of the plaintiff’s patent, as shown by the file wrapper in evidence. In my opinion the plaintiff’s patent does not meet the test of “invention” necessary to establish validity. It is merely a variation of prior art, the preparation of which did not require uncommon or exceptional inventive skill or talent.

Accordingly, judgment is rendered in favor of the defendant dismissing the complaint.

Submit proposed findings of fact, conclusions of law and decree in conformity herewith.  