H. C. WHITE CO.
v.
MORTON E. CONVERSE & SON CO. et al.
No. 327.
Circuit Court of Appeals, Second Circuit.
June 6, 1927.*312 James J. Kennedy and W. Jay Ennisson, both of New York City, for appellant.
Thomas G. Haight and William F. Hall, both of Washington, D. C., and Otto Munk, of New York City, for appellees.
Before L. HAND and SWAN, Circuit Judges, and CAMPBELL, District Judge.
L. HAND, Circuit Judge (after stat-stating the facts as above).
The design patent appears to us to be not a design patent at all. We recognize that in æsthetics there are no standards, and that the design need not please such sensibilities as we may personally chance to possess. Nevertheless, we must find that the disclosure has at least a rudimentary æsthetic appeal, for so we interpret the word, "ornamental." This we have more than once said. Rowe v. Blodgett, 112 F. 61; Ashley v. Weeks, 220 F. 899, 901; Dietz v. Burr, 243 F. 592, 594; Wilson v. Haber (C. C. A.) 275 F. 346. The rule obtains elsewhere. Boyle v. Rousso, 16 F.(2d) 666 (C. C. A. 8); Williams v. Kemmerer, 145 F. 928 (C. C. A. 3); Pashek v. Dunlop, 8 F.(2d) 640. The plaintiff's tricycle has neither proportion, ornament, nor style, which could in our judgment make the remotest appeal to the eye. If little children at once want to have it, it is because they can see the possibility of play that it opens to them. It can touch their fancy only by what they can do with it, not by the pleasure they get by looking at it. Indeed, as we view it, it is fortunate for the plaintiff that this is true, as will presently appear.
On the other hand, a majority of us think the mechanical patent valid. The nearest approach is Spring's tricycle, for we cannot take seriously enough for discussion the mechanical toy of a century and a quarter ago. It would indeed have taken very little to change Spring's disclosure into the patent in suit. Yet, as it stood, it was wholly unsuited for little children. It had no flat broad seat no broad seat at all, in fact. Such seat as it had, if by that one means, as White did, the whole part connecting the rear wheels with the front one, was not horizontal. It required a thorough reconstruction to be made into White's disclosure. We at once agree that, given the suggestion of making it into a safe tricycle for very small children to paddle *313 about upon, the necessary adjustments were simple. In that respect the situation is a common one. Again and again, ad nauseam, courts have been fond of saying that it is the obvious when discovered and put to use that most often proves invention. In such matters we look rather to history than to our own powers of divination, if history is at hand. Kirsch v. Gould, 6 F.(2d) 793 (C. C. A. 2). Children have not changed, and would have liked as well to push about astride a little tricycle 200 years ago as to-day. The means have been also always at hand. The end and the means having therefore been for long available, this inventor merely thought to unite them by a fortunate insight which had theretofore escaped the imagination of others. We see in this an invention just because, being so simple, it had not occurred to any one before. The fact that the changes were so slight is quite irrelevant, so long as they were essential to the purpose, as they were. While the statute grants monopolies only for new structures, and not for new uses, invention is not to be gauged by the necessary physical changes, so long as there are some, but by the directing conception which alone can beget them. Traitel v. Hungerford, 18 F.(2d) 66 (C. C. A. 2). That was certainly absent before it came to White's mind.
Infringement of claim 2 being too plain for discussion, especially in the case of so successful an invention, we pass to a point of law which we must agree is not free from doubt. Had the design patent been valid along with the mechanical we should have been considerably embarrassed to avoid the defense of double patenting, for the attempted distinctions between the two disclosures appear to us trivial. A design patent may anticipate a mechanical, Lein v. Myers, 105 F. 962 (C. C. A. 2); and if both issue to the same inventor we may assume without deciding that it will be a case of double patenting, Cary v. Neal (C. C.) 90 F. 725; Williams Calk Co. v. Neverslip Mfg. Co. (C. C.) 136 F. 210. We do not think our decision in Bayley v. Standart Art Co. (C. C. A.) 249 F. 478, is to the contrary, because the mechanical patent, which was there the earlier and disclosed the design, did not require it as a necessary part of the invention.
Judge Archbald did indeed say in Williams Calk Co. v. Neverslip Mfg. Co. (C. C.) 136 F. 210, 212, that the invalidity of the design patent would not affect the defense, but this was, as he expressly added, entirely obiter, and we cannot agree. On appeal (C. C. A.) 145 F. 928, the point was not decided. So far as we can find there is no other case on the point in the books. It is quite true that a licensee may not dispute the validity of the patent in a suit for royalties. U. S. v. Harvey, 196 U. S. 310, 25 S. Ct. 240, 49 L. Ed. 492; Marston v. Swett, 66 N. Y. 206, 23 Am. Rep. 43; though the contrary is the case after decree of invalidity in another suit, Ross v. Fuller (C. C.) 105 F. 510; the theory being that this effects an "eviction." In accord with the last case, a seller may not recover the purchase price when the patent has been declared invalid. Herzog v. Heyman, 151 N. Y. 587, 45 N. E. 1127, 56 Am. St. Rep. 646. These cases do not appear to us to control.
A patent is a bargain between the sovereign and the inventor in which the consideration moving to the inventor is the grant. Whatever may be the result if throughout the granted term the inventor has had the enjoyment of his apparent monopoly, it seems to us that, when his patent is declared invalid before its expiry, the consideration fails and the counter consideration moving from the inventor i. e., the dedication of the disclosure may be revoked. There being no chance for apportionment of the dedication, it ought not therefore to be held that a subsequent and valid patent is itself invalidated because of the original dedication. The whole vice of double patenting arises from the fact that the second patent defeats the dedication made in the first by extending the term of the original monopoly. Anything, therefore, which relieves the inventor of the first dedication, sets him free again to dedicate the disclosure, if not otherwise abandoned, and leaves it as a valid consideration for the second grant. Since the design patent had not expired at the time of the decree declaring it void, the inventor had not enjoyed his entire consideration, and the second grant was adequately supported by the disclosure.
Decree affirmed as to the design patent; decree reversed as to the mechanical patent and cause remanded with directions to grant an injunction upon claim 2. No costs.