215 F. Supp. 3 | D. Del. | 1963
I. PRE-LITIGATION BACKGROUND
Plaintiff AMP, Incorporated, sued Burndy Corporation for infringement. Defendant’s answer denies infringement, charges the patent in suit is invalid, and seeks a declaratory judgment that the patent is invalid and not infringed. The patent, No. Re. 23,688 (7/21/52), was granted as a re-issue of No. 2,410,321 (10/29/46) on application of William S. Watts filed December 14, 1943. He assigned to plaintiff AMP, here.
The patent is for an electrical connector having a tubular metal ferrule adapted to receive an electrical conductor — i. e., the end portion of an insulated wire from which the insulation has been stripped to bare the inner conductor. Surrounding the metal ferrule is a tube of insulating plastic which is capable of transmitting from a crimping die to the ferrule and conductor, sufficient force to produce plastic or irrecoverable deformation of the ferrule and conductor without cutting or excessive extrusion of the plastic, so, after crimping, the plastic sleeve furnishes an insulating sheath for the ferrule to prevent an electrical short circuit.
About 30 years ago the common method of making electrical connections was by soldering.
Watts’ first pre-insulated connector was made with vinylidene chloride tubing (“Saran”). Other types of plastic tubing were tried, among which was a slightly plasticized copolymer of vinyl chloride and vinyl acetate (“Irv-O-Lite”).
5. saving in space and weight;
Plaintiff AMP started manufacturing and sale of pre-insulated connectors under Watts’ invention sometime during the latter part of 1943.
While plaintiff AMP started commercial manufacturing of the pre-insulated connectors in the latter part of 1943,
II. VALIDITY
1. I do not think the various prior patents or publications cited by defendant constitute a full anticipation of Watts’ invention within the meaning of 35 U.S.C. § 103. That the invention was not obvious is shown by the fact industry in general was not satisfied with the old “post-insulation” method for a number of years. There was an unsatisfied need and there were specific unsuccessful attempts to satisfy it. While the patented invention has enjoyed a strong degree of commercial success, this alone is not the test if the patent is otherwise weak.
2. As to prior art, Smith No. 2,173,-668 is the closest cited by defendant, because it is the only reference which discloses the use of a copper ferrule with an insulating sleeve.
Grypma No. 2,276,511 discloses a device which is not in itself an electrical connector; it is in fact intended to support and insulate a splice made by joining two wires one to another.
3. While cited prior art is not sufficient to throw a shadow on validity of Watts, it nevertheless contains sufficient teachings which were available to defendant Burndy to make its own devices without becoming an infringer of Watts. Watts, as will be shown in the discussion of infringement, infra, does not have the broad patent grant he thinks he has. The only feature of novelty in his allowed claims is in the phrase: “said tube having a resistance to cold plastic flow not significantly less than that of the metal of the ferrule.” This is what Watts had distinguishing him from Smith. It has been called the “RCPF limitation”. Burndy has used nothing from the Watts patent. Palpably Watts cannot be heard that his patent covers all plastics in the whole field of copolymers in the construction of electrical connectors.
4. The testimony in this case covers 3212 pages, there were several hundred exhibits, plaintiff’s brief and proposed findings came to 180 pages, defendant’s to 347 pages. As to the proposed findings, plaintiff filed 111, defendant 157, etc.
III. INFRINGEMENT
5. Claim 1 of the Watts reissue patent is typical; it reads as follows;
“1. An electrical connector of the type intended to be crimped onto a wire and including a soft metal ferrule and a normally rigid tube of tough and stiffly flexible insulating plastic tightly embracing said ferrule and covering the outer surface thereof, said tube having a resistance to cold plastic flow not significantly less than that of the metal of said ferrule, whereby said tube can transmit sufficient crimping pressure to the ferrule from a crimping tool to crimp the ferrule against a conductor by plastic flow in the metal thereof without cracking the tube or otherwise interfering with its mechanical and electrical effectiveness.”
The non-infringement defenses presented here are that the claims do not read on Burndy; and Burndy uses only prior teachings. These defenses involve the issues as to what is within the scope of the patented claims, what are the nature and clarity of the disclosure, and what was disclaimed during the Patent Office prosecution, if the doctrine of file wrapper estoppel is to be applied.
5. The doctrine of file wrapper estoppel teaches an applicant for a patent whose claims are rejected and who later amends his claim, either by adding limitations or by cancelling the claims and inserting other claims that are more limited, is thereafter estopped to assert any interpretation of his restricted claims that does not give more to the added limitations. Added limitations are strictly construed against the patentee and are regarded as disclaimers of everything else in the claims. For example, the patentee cannot, after the issue of his patent, broaden his claim by dropping the element which he was compelled to include in order to secure his patent. Smith v. Magic City Kennel Club, 282 U.S. 784, 789-790, 51 S.Ct. 291, 75 L.Ed. 707; Schriber-Schroth v. Cleveland Trust Co., 311 U.S. 211, 217-218, 61 S.Ct. 235, 85 L.Ed. 132. In short, the inventor may not have recourse to recapture claims which he surrendered by amendment. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736; Carter Products v. Colegate-Palmolive Co., D.C.Md., 164 F.Supp. 503, 4 Cir., aff’d 269 F.2d 299; cert. den. 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59. The doctrine of file wrapper estoppel has been applied in Delaware. Rohm & Haas Co. v. Permuttit Co., D.C.Del., 130 F.Supp. 260.
7. This is the crux: Watts disclosed and claimed a plastic which would recover to the “original size and form.”
8. These, as the evidence so clearly demonstrates, are two different classes of plastics, being at opposite poles, in any spectrum of consideration, in their characteristics. For example, one interesting characteristic of the two classes illustrates a critical difference: If a strand of Irv-O-Lite and a strand of nylon are stretched, the behavior of the two are different. In the case of the former, it will have an elongation of between 50% and several hundred percent depending upon the composition of the polymer and the amount of plasticizer in the strand.
Again, under compression, as in crimping, Irv-O-Lite assumes a set formation which it recovers after removal of compression.
9. Moreover, Burndy does not infringe because it uses nylon — which is possibly as far as Burndy could go in commercial good-faith in avoiding use of anything disclosed by Watts and still use an independent plastic. A look at Smith and Grypma shows they used plastic rubber prior to Watts; and plastics were used for electrical insulation in many environments before Watts. Nylon was available to Watts. He, instead, named opposite characteristics;
10. In short, nylon does not have the basic characteristics of Irv-O-Lite, which was specified in the one vitalizing phrase of Watts’ patent: “resistance to cold plastic flow.” In sum, Watts’ claim cannot be read on Burndy because, as stated, Burndy has no interest in “resistance to cold plastic flow”; Burndy’s insulating sleeves are not “tightly embracing said ferrule”; and other claimed limitations are missing. I accept the RCPF limitation as construed by Burndy’s expert, Dr. Hermann Mark.
11. In addition, Burndy’s sleeves are not “tightly embracing said ferrule.” The Watts patent
12. AMP uses stretching, followed by baking, to shrink the sleeve on the ferrule. This keeps the seam formed by edges of the ferrule sealed, keeps the sleeve on the ferrule, and keeps it from snapping open during crimping.
I have finished with Claim 1; but, in detail, Claim 2 is also not infringed. Burndy’s nylon tubes do not have “plastic memory”; and it does not tend “gradually to recover its original form after severe deformation”;
Claim 4 should also be considered, although ignored by plaintiff, and I think it is not infringed. Burndy’s SEALINE connectors do not have a “thin metal' sleeve” which “surrounds” its plastic tubes.
Claims 5 and 6 are not infringed because Burndy’s nylon and EEL-F do not “substantially” retain the “shape of the recess.” These two materials take a permanent set and retain the indent forever. Claim 7 is not infringed because Burndy’s materials do not have a “tendency to return, at least to some extent.”
13. This is the finding of no infringement: Burndy uses only the prior art teachings of Smith, Grypma, Heide-brecht, and the Bakelite Review Article that teaches the vinyl plastics, particularly vinyl chloride-vinyl acetate, are a substitute for rubber for insulating coverings for wires and cables; the Douglas article in Industrial and Engineering Chemistry teaches that these two copoly-mers are better than rubber for wire coating and “controlled hardness may be secured by adjusting the concentration of the plasticizer”; likewise Pfeffer and Patnode teach that various other plastics have the hardness to allow crimping of a
14. I conclude:
1. Defendant Burndy is not an in-fringer.
2. Plaintiff’s patent, without determining its breadth or scope, is valid.
3. Both the complaint and defendant’s counter claim should be dismissed.
The order of dismissal should provide that each party should bear its own costs and no counsel fees will be awarded.
. PX 1; Watts, E. 249-256.
. Whitley, E. 82; Bosworth, E. 148.
. Whitley, E. 86, 87; Bosworth, E. 155; Meyer, E. 435, 436.
. Bosworth, E. 148.
. Whitley, R. 75-78, 92, 93.
. PX 8; Watts, R. 195, 196; Bosworth, R. 150, 151; Tweddell, R. 213, 214; Dru-liner, R. 224r-228; Troeger, R. 290-292.
. Ibid.
. PX 3; Watts, R. 195-202; Sowa Dep., DX 148, pp. 37-39.
. Watts, R. 199-203; Sowa Dep., DX 148, pp. 37 — 41.
. PX 1, Col. 3, lines 34L37.
. Watts, R. 205, 206; Paules, R. 3001, 3006-8.
. Holcombe, R. 578, 596, 598; PX 43.
. Mark, R. 2252-2255.
. Watts, R. 254.
. Ibid. 255.
. Troeger, R. 282-286.
. Watts, R. 255.
. Ibid.
. Ibid. 255-256.
. Ibid 252-254.
. PX16, 17; Watts, R. 256-260; PX 20, p. 9.
. PX 9; Watts, R. 386; Bosworth, R. 157.
. PX 14; Druliner, R. 222-229; PX 13; Bosworth, R. 151, 152; Tweddell, R. 212-217; PX 18; Troeger, R. 282-296.
. Bosworth, R. 153, 155, 161-163, 189; Troeger, R. 282-289, 294, 295.
. ¡ Druliner, R. 228, 229; Tweddell, R. 217; Troeger, R. 294, 295.
. PX 24; Holcombe, R. 405.
. See n. 22, supra.
. Rogoff, R. 1582.
. DX 114; Rogoff, R. 1634, 1635, 1655, 1656.
. Rogoff, R. 1635.
. PX 85; DX 112; Rogoff, R. 1687, 1688, 1740, 1741.
. Rogoff, R. 1664^1716; DX 89-94.
. Rogoff, R. 1717, 1718.
. PX 31, p. 5, Claim 1; DX 114; Rogoff, R. 1720, 1806, 1807.
. PX31, p. 20.
. PX 31, pp. 9, 21.
. Holcombe, R. 461-465.
. DX 7, p. 8.
. DX 7, p. 83.
. DX 156, pp. 14-16; PX 2, Col. 1, line 53, to Col. 2, line 13.
. PX1.
. DX 158, pp. 18, 19.
. PX 122.
. 261 B\2a 601, 46 COPA 733.
. See, Chemical Construction Corp. v. Jones & Laughlin Steel Corp., 3 Cir., 311 F.2d 367.
. DX 113.
. PX 25, p. 12.
. DX 112, Tab 4.
. DX 113, Tab 5; Rogoff, R. 1750.
. DX 113, Tab 10; Mark, R. 2382.
. DX 113, Tab 9; Rogoff, R. 1760.
. What I have done here, in making my findings nnder 3TR 52, is to rely on the master or critical facts. The proposed findings suggested by both parties deal, in the main, with a multitude of irrelevancies.
. The doctrine was recently applied in an interesting case involving plastics. Van Brode Milling Co. v. Cox Air Gauge System, Inc., 9 Cir., 279 F.2d 313. For a general review of the doctrine, see Lewis v. Avco Manufacturing Corp., 7 Cir., 228 F.2d 919.
. Ool. 3, line 22; Claim 2; Mark, B. 1885-6; PX 11-21.
. R. 2107.
. Mark, R. 1853-56; Orowan, R. 844.
. Orowan, R. 827-8.
. Mark, R. 1855.
. Orowan, R. 830-2; Paules, R. 3003-4; DX 13.
. Orowan, R. 706.
. Orowan, R. 1036-7.
. Orowan, R. 846.
. Mark, R. 1852.
. Orowan, R. 844-8.
. Orowan, ibid.
. Mark, R. 1853-5; DX 122, 123;. Oro-wan, R. 844.
. Mark, R. 1853.
. Mark, R. 1853-54.
. R. 847.
. R. 848.
. Mark, R. 1853-56.
. R. 1855.
. Watts, R. 369.
. R. 2107.
. Dr. Mark’s qualifications have been recognized as “admittedly one thoroughly familiar and skilled in the art of dealing with rubber and resins; United States Rubber Co. v. Marzall, D.C.D.C., 91 F. Supp. 1, 2; and one of the world’s authorities in the field of polymer chemistry, La Maur, Inc. v. L. S. Donaldson Co., D.C.Minn., 190 F.Supp. 771, 774.”
. R. 741, 755, 1831-34, 1838-9, 2035-30; DX 120.
. R. 2038-47.
. R. 2038-40; PX 25.
. R. 2049-56; 2073-78.
. PF Q 45-46; Mark, R. 2078-9.
. DX 38, Test 9.
. DX 133, R. 2082-87.
. DX 133, R. 2088.
. DX 133, R. 2089-90.
. Ool. 3, line 16.
. Watts, R. 356-7.
. Line 18.
. Lines 19-21.
. R. 3560-7.
. Watts, R. 205-6.
. RogofE, R. 1620-22.
. R. 1620-21.
. Grypma, R. 1078.
. Watts, R. 358.
. RogofE, R. 1620-26; DX 11, 12, 115, 116.
. Holcombe, R. 491-8.
. Fanwiek, R. 1390; RogofE, R. 1591 — 92.
. Holcombe, R. 495, 47-8.
. R. 1620 — 4.
. Mark, R. 2105; RogofE, R. 1620-21; Holcombe, R. 591-4.
. R. 3156-9.
. R. 3160-2.
. Fanwiek, R. 3162-3.
. Mark, R. 2106-7.
. O rowan, R. 2770-3.
. Rogoff, R. 1620.
. R. 2103.
. R. 2103.
. Mark, R. 2107-09.
. Ibid.