Case name and citation: Ropat Corporation v. McGraw-Edison Company, 535 F.2d 378 (7th Cir. 1976).
Facts: Ropat was issued a design patent on January 10, 1967, for an ornamental design of a popcorn popper. The patent was granted for a term of fourteen years. Ropat was later issued a utility patent on October 12, 1971, for a popcorn popper composed of a base and cover. This patent was granted for a term of seventeen years.
Procedural Posture: Ropat brought suit against McGraw-Edison and others for infringement of the utility patent. McGraw made a motion for summary judgment and argued that the utility patent was invalid because the utility patent and the earlier design patent claimed the same invention. The district court granted the motion for summary judgment and found that the two inventions were identical. Ropat appealed to the United States Court of Appeals for the Seventh Circuit.
Holding: The Seventh Circuit affirmed the district court’s ruling. The court held that the novel design feature claimed in the design patent produced the novel function that was claimed in the utility patent. The court held that the utility patent was invalid because Ropat had double patented the invention.
Important dicta: The court stated that a design patent and a utility patent may be issued on the same construction, but “each such patent must claim a separate, distinct patentable invention.†The court said that double patenting is determined by examining “the presence or absence of design features which produce the novel function claimed in the utility patent.†A utility patent and a design patent do not have to have identical claims in order to be found to constitute the same invention.
Critical analysis: If the court had allowed the utility patent to remain valid, Ropat would have been able to extend its patent term for an additional eight years. This would have been unfair because it was clear that the two patents covered the same invention, and Ropat should not have been given a twenty-two year monopoly. The court made the right decision.
Facts: Ropat was issued a design patent on January 10, 1967, for an ornamental design of a popcorn popper. The patent was granted for a term of fourteen years. Ropat was later issued a utility patent on October 12, 1971, for a popcorn popper composed of a base and cover. This patent was granted for a term of seventeen years.
Procedural Posture: Ropat brought suit against McGraw-Edison and others for infringement of the utility patent. McGraw made a motion for summary judgment and argued that the utility patent was invalid because the utility patent and the earlier design patent claimed the same invention. The district court granted the motion for summary judgment and found that the two inventions were identical. Ropat appealed to the United States Court of Appeals for the Seventh Circuit.
Holding: The Seventh Circuit affirmed the district court’s ruling. The court held that the novel design feature claimed in the design patent produced the novel function that was claimed in the utility patent. The court held that the utility patent was invalid because Ropat had double patented the invention.
Important dicta: The court stated that a design patent and a utility patent may be issued on the same construction, but “each such patent must claim a separate, distinct patentable invention.†The court said that double patenting is determined by examining “the presence or absence of design features which produce the novel function claimed in the utility patent.†A utility patent and a design patent do not have to have identical claims in order to be found to constitute the same invention.
Critical analysis: If the court had allowed the utility patent to remain valid, Ropat would have been able to extend its patent term for an additional eight years. This would have been unfair because it was clear that the two patents covered the same invention, and Ropat should not have been given a twenty-two year monopoly. The court made the right decision.