which litigation most frequently arises are actually of this sort, all factors determinative of the presence of invention or the fact of infringement are usually omitted from consideration except that of the effect on the eye. Other factors may be considered, but the cases in which they do not appear and could not have a part are so frequent that they are usually ignored in judicial expression. In very many cases, therefore, the inventive quality of a design seems to have depended, and probably did depend, solely upon its visible similarity to those already known, or its difference from them. So also the infringement of a later design seems to have been decided wholly by the distinction between them which could be perceived through the eyes.

In regard to this identity of visible characteristics the rule is probably that laid down in Gorham Co. v. White;518 "the thing invented or produced, for which a (design) patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. . . . It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recompense."519 It must be remembered that the court is here expressing itself in regard to a design whose sole purpose was its effect upon the eye. It was definitely stated by the later case of Smith v. Whitman Saddle Co.,520 in direct reference to the statement of rule just quoted, that appearance is not the only criterion, but that such elements as the more material usefulness of a design, or its effect upon other senses, than sight, may be considered if they enter into its character. But to the extent that visible character is the test of invention or infringement, the court held that it is the appearance to the eye of "an ordinary observer." It said, "The court below was of the opinion that the test of a patent for a design is not the eye of an ordinary observer. The

518 14 Wall. 511.

519 Accd. Dobson v. Dorman, 118 U. S. 10; Braddock Glass Co. v. Macbeth, 64 Fed. 118.

520 148 U. S. 674.

learned judge thought there could be no infringement unless there was substantial identity in view of the observation of a person versed in designs in the particular trade in question— of a person engaged in the manufacture or sale of articles containing such designs-of a person accustomed to compare such designs one with another, and who sees and examines the articles containing them side by side.' There must, he thought, be a comparison of the features which make up the two designs. With this we cannot concur. Such a test would destroy all the protection which the act of Congress intended. to give. There never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them. No counterfeit bank note is so identical in appearance with the true that an experienced artist cannot discern a difference. It is said an engraver distinguishes impressions made by the same plate. Experts, therefore, are not the persons to be deceived. Much less than that which would be substantial identity in their eyes would be undistinguishable in the eyes of men generally, of observers of ordinary acuteness, bringing to the examination of the article upon which the design has been placed that degree of observation which men of ordinary intelligence give. It is persons of the latter class who are the principal purchasers of the articles to which designs have given novel appearances, and if they are misled, and induced to purchase what is not the article they supposed it to be, if, for example, they are led to purchase forks or spoons, deceived by an apparent resemblance into the belief that they bear the 'cottage' design, and, therefore, are the production of the holders of the Gorham, Thurber, and Dexter patent, when in fact they are not, the patentees are injured, and that advantage of a market which the patent was granted to secure is destroyed. The purpose of the law must be effected if possible; but, plainly, it cannot be if, while the general appearance of the design is preserved, minor differences of detail in the manner in which the appearance is produced, observable by experts, but not .noticed by ordinary ob

servers, by those who buy and use, are sufficient to relieve an imitating design from condemnation as an infringement. We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."521

As the principles which apply to design patents are identical with those which have already been discussed throughout the book nothing further need be said of them in this connection.

521 Accord. Jennings v. Kibbie, 10 Fed. 669, holding that testimony of witnesses as to apparent identity is not necessary, and that the trial judge may properly reach a decision as a result of the impression on his own visual senses only.

The very slight difference of appearance necessary to constitute novelty in some cases where the appearance is the real purpose of the invention is illustrated by the case of Pelouze Scale & Mfg. Co. v. Am. Cutlery Co., 102 Fed. 916.

Ripley v. Elson Glass Co., 49 Fed. 927 Byram v. Friedberger, 100 Fed. 963; Macbeth-Evans Glass Co. v. Rosenbaum Co., 199 Fed. 154, the eye of the ordinary observer decides the question.

CHAPTER XI

EPILOGUE

Aaron Burr is reputed to have defined "law" as "whatever is boldly asserted and plausibly maintained." However incorrect this definition may be, it is more nearly true of the law respecting patents than of any other branch. In all litigation it is seldom the law itself that is in dispute. It does occasionally happen that the substance of a rule is in doubt and must be ascertained by the court. But in the overwhelming majority of cases, it is the proper application of undisputed rules to the particular facts, or, in other form of expression, it is the choice of the rule proper to the particular facts, on which attorneys and, often, the judges can not agree.

In patent law, however, the essential dissimilarity of sensible circumstance precludes the possibility of rules and the influence of other precedent cases. All of the characteristic issues are those of judicial opinion only. By the statute the defendant may attempt to show in answer to the suit both that the plaintiff's patent is invalid and that his own device does not in fact infringe it.

The complainant in a case is, therefore, ever attempting to convince the court that his idea of means is unlike anything that has preceded it, but that it is so like the defendant's device as to make the latter an infringement. Conversely, the defendant bends all his energies to demonstrating the essential similarity of the plaintiff's invention to prior knowledge and the real dissimilarity of his own device to that of the plantiff. For this, a "knowledge of the law" is not enough. He who would succeed in patent practice must, more than in any other branch of law, be able to analyze his case. He must see not only the presence of facts on which rules of law have already been predicated, but also the actual issues on which personal opinion may be divided, and the most forceful relationship of

his facts thereto. If he has the ability of a detective in ferreting out facts and in construing their true bearing upon the proposition he would like to demonstrate, so much the better. As even judicial opinion can not be wholly removed from the influence of personality, it is peculiarly well for the patent practitioner if to his knowledge of law and of fact he adjoins a power in persuasive argument and a magnetic personality.