Jack Barofsky v. General Electric Corporation

396 F.2d 340 158 U.S.P.Q. 178 Jack BAROFSKY, Appellant, v. GENERAL ELECTRIC CORPORATION, Appellee. No. 21415. United States Court of Appeals Ninth Circuit. May 20, 1968, Rehearing Denied June 28, 1968. William H. Pavitt (argued), of Smyth, Roston & Pavitt, Los Angeles, Cal., for appellant. Ford Harris, Jr. (argued), of Harris, Keich, Russell & Kern, Los Angeles, Cal., for appellee. Before HAMLEY, and ELY, Circuit Judges, and POWELL, District Judge. HAMLEY, Circuit Judge: 1 This suit involves the validity and infringement of U.S. Design Patent No. D-176,492, issued to Jack Barofsky on January 3, 1956. Barofsky commenced the action against General Electric Corporation charging infringement of his patent and seeking damages and other relief. General Electric answered, denying infringement and asking for a declaratory judgment that the Barofsky patent is invalid. 2 After certain discovery activity, General Electric moved for summary judgment in its favor on the alternative grounds that the Barofsky patent is invalid and that it has not been infringed by defendant. Plaintiff opposed the motion for summary judgment and both parties filed additional evidentiary materials. The…

This suit involves the validity and infringement of U. S. Design Patent No. D-176,492, issued to Jack Barofsky on January 3, 1956. Barofsky commenced the action against General Electric Corporation charging infringement of his patent and seeking damages and other relief. General Electric answered, denying infringement and asking for a declaratory judgment that the Barofsky patent is invalid.

After certain discovery activity, General Electric moved for summary judgment in its favor on the alternative grounds, that the Barofsky patent is invalid and that it has not been infringed by defendant. Plaintiff opposed the motion for summary judgment and both parties filed additional evidentiary materials. The district court granted summary judgment for General Electric on the ground that the Barofsky patent is invalid, and did not reach the infringement issue. Barofsky appeals.

Barofsky’s design patent is entitled, “Television Cabinet or Similar Article.” It depicts a rectangular box-like central cabinet in the upper part of which is provided a smaller rectangular space which would presumably house a television screen or some other electronic entertainment component. Barofsky claims no…

(dissenting):

I respectfully dissent. Summary judgment may be rendered, upon motion, only when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(e); see Consolidated Elec. Co. v. United States, 355 F.2d 437 (9th Cir. 1966). I cannot agree that the drastic remedy applied by the District Court was proper under any of the theories presented.

The crucial issue relied upon by the majority concerns whether the appellant’s design was dictated' primarily by functional considerations. See Payne Metal Enterprises, Ltd. v. McPhee, 382 F.2d 541 (9th Cir. 1967); Robert W. Brown & Co., Inc. v. De Bell, 243 F.2d 200 (9th Cir. 1957). As to this question, I am convinced that a genuine issue of fact existed. The District Court concluded that a number of specific elements of the design, such as the bevels on the doors of the cabinet, were each present in the design for a “functional purpose.” The majority writes that whether the design was primarily dictated by functional…