568 F.2d 784 (6th Cir. 1977), 76-1983, Lucerne Products, Inc. v. Cutler-Hammer, Inc.

Docket Nº:76-1983.
Citation:568 F.2d 784
Party Name:195 U.S.P.Q. 472 LUCERNE PRODUCTS, INC., et al., Plaintiffs-Appellees, v. CUTLER-HAMMER, INC., Defendant-Appellant.
Case Date:September 29, 1977
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit
 
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Page 784

568 F.2d 784 (6th Cir. 1977)

195 U.S.P.Q. 472

LUCERNE PRODUCTS, INC., et al., Plaintiffs-Appellees,

v.

CUTLER-HAMMER, INC., Defendant-Appellant.

No. 76-1983.

United States Court of Appeals, Sixth Circuit

September 29, 1977

Argued Feb. 11, 1977.

Page 785

Frederick M. Bosworth, Frank C. Henry, Bosworth, Sessions & McCoy, Niel A. DuChez, Cleveland, Ohio, for defendant-appellant.

Richard J. Egan, Baldwin, Egan, Walling & Fetzer, Henry J. Zetzer, M. Reese Dill, Merkel, Campbell, Dill & Zetzer, Cleveland, Ohio, for plaintiffs-appellees.

Before PHILLIPS, Chief Judge, WEICK and EDWARDS, Circuit Judges.

EDWARDS, Circuit Judge.

After two appellate hearings, multiple briefings, and a remand to the District Court, this patent appeal is finally before the court on the merits. The history of this case is long, complex and now basically irrelevant to the current appeal. Nonetheless, we recite it 1 in skeletal form in the footnote below.

As to our current issues, appellant Cutler-Hammer contends that this court should reverse the District Court, which held that plaintiff Lucerne Products' patent (Matthews Reissue Patent RE. 26,267) is valid and has been infringed by appellant. Appellant contends that the Matthews Patent RE. 26,267 (hereinafter Matthews RE. 267) was not infringed and, anyway, that it is obvious to a person skilled in the art and is

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invalid because it was anticipated by the prior art. Appellant also contends that appellee committed fraud on the Patent Office by not disclosing a portion of that prior art, namely, the Stearns Patent 1,892,542. Appellant also argues as additional grounds for reversal that Matthews RE. 267 was not lawfully reissued by the Patent Office, that plaintiff Lucerne was guilty of misuse of the patent in suit, that Lucerne had disclosed the patent by public use more than one year before application for Matthews RE. 267, and that the District Judge erroneously and prejudicially excluded certain of defendant-appellant's exhibits.

Since, for the reasons given by the District Judge in his various opinions in this case, we find merit in only three of the issues stated above, we limit our discussion to the issues of infringement and validity of plaintiff's Matthews Reissue Patent RE. 26,267 and appellant's claim of fraud on the Patent Office.

THE PATENT IN SUIT

The District Judge entered lengthy findings of fact and conclusions of law in this case, basically rejecting those submitted by appellant Cutler-Hammer and adopting those submitted by appellee Lucerne. The claimed invention is a small electrical switch mechanism generally employed in electrically powered hand tools. It has been chiefly employed in applications where its operation was actuated by a trigger in hand held tools. The patented device is applicable to one-speed operations, but can be adapted to provide varied speeds. 2

The District Judge's findings of fact (drawn as indicated above) provide the following description of appellee's patent in its most favorable light:

  1. Plaintiff, Lucerne Products, Inc., is the owner of the entire right, title and interest in and to U.S. Letter Patent No. RE. 26,267, which was duly and legally issued to Benjamin H. Matthews on September 26, 1967 for an invention entitled "ELECTRICAL SWITCH WITH CAMMING BRIDGING CONTACT," upon an application filed by him in the United States Patent Office February 28, 1966, Serial No. 534,282.

  2. The switch structure that is described in the Matthews RE. 26,267 patent is an ON-OFF designed to close the circuit by lifting the leading end of bridging contact so that it does not slide on and off the stationary contact but rather drops down it and pulls away from it on a vertical basis so that arcing is reduced to a minimum and the contact areas are kept clean, thus prolonging the life of the switch and eliminating failures. The five claims in said patent are summarized as follows:

    1. An electric switch, consisting of a stationary insulator base having two spaced contacts with a projection between them, and a conductive sliding bridging contact with opposite contacting ends correspondingly spaced with a recess between them, so supported and arranged that on linear movement of the bridging contact toward the ON position, its leading end is held in a raised position until it approaches a position opposite the base contact, when the bridging contact pivots and the base projection enters the recess of the bridging contact causing the leading end to be lowered on a vertical bias to make contact with the base contact and close the circuit in the ON position; and wherein the same action takes place in reverse order when the bridging contact is moved in the opposite direction to the OFF position.

    2. The trailing end of the bridging contact engages its corresponding contact

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      on the base before the bridging contact pivots so that any arcing is limited to the leading end of the bridging contact and its corresponding base contact.

    3. A flat surface between the leading end of the bridging contact and the recess therein which on linear movement of the bridging contact causes it to ride on the base projection so as to avoid closing the circuit until the projection encounters the recess.

    4. Means of supporting the bridging contact so that the ends of the bridging contact slide across the base contacts upon engagement and disengagement with a wiping action.

    5. A combination of all the foregoing claims which permits the base projection to be a part of the base contact.

  3. The mechanics by which this is accomplished are fully described in the patent and in Matthews' testimony, viz.

    (A) The switch 12 (see Matthews' sketches p. 7 infra) includes a pair of spaced stationary contacts 19 and 20 and bridging contact 27 that is slidable with respect to the stationary contacts 19 and 20 between a bridging position to define the ON position for the switch (Fig. 6) and a non-bridging or OFF position for the switch (Fig. 5). The switch 12 has a slidable actuator 16 which includes a trigger portion 16a that projects outwardly of the pistol grip 11 for actuation by the hand of the operator gripping the pistol grip of the tool.

    (B) The principal and distinguishing feature of the patented switch is the pivotal action of the bridging contact 27 about its trailing end as the bridging contact moves between its (Fig. 5) OFF and (Fig. 6) ON positions for the switch.

    This pivotal action for the bridging contact 27 is accomplished solely by pivoting it about its trailing end on the projection 29 that is positioned between the stationary contacts and which engages the bridging contact as it is moved linearly between its (Fig. 5) (ON) position and (Fig. 6) (OFF) position. This movement of said bridging contact 27 between the Fig. 5 and Fig. 6 positions is effective to pivot the bridging contact about its trailing end so as to lift or raise the leading end thereof with respect to the stationary contact 20.

  4. The switch of the Matthews RE. 26,267 patent is constructed so that when the switch is actuated to its (Fig. 6) ON position (ON), the trailing end of the bridging contact 27 located at the left end as viewed in Fig. 5 engages its associated stationary contact 19 before the leading end of the bridging contact drops onto its coacting stationary contact 20 whereby "arcing," if it is to take place, will occur only at the leading end of the bridging contact 27, while the trailing end of the bridging contact 27 remains cool. This specially arranged construction positively insures that the leading end of the bridging contact 27 will always engage its stationary contact after the trailing end of the bridging contact has already engaged its stationary contact.

    Also, when the switch is actuated to its (OFF) position (Fig. 5), the leading end of the bridging contact located at the right end of this contact in Fig. 6 breaks engagement with its associated stationary contact 20 before the trailing end of the bridging contact breaks engagement with its associated stationary contact 19. This also insures that the leading end of the bridging contact is the "working end" of the bridging contact where only heat or arcing may occur.

    The spring pressure exerted by the compression spring 28 upon the bridging contact 27 is constant immediately upon the leading end of the bridging contact 27 engaging the stationary contact 20 and thereafter as the switch is actuated to its full (ON) position (Fig. 6) and, as wiping action of the bridging contact 27 on stationary contact 20 takes place this spring pressure remains constant to keep the two contact surfaces clean. This constant spring pressure also reduces contact bounce.

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  5. This switch of the '267 patent is designed primarily for portable electric power tool usage to provide a "retro" fit with existing switch devices in portable tools.

    It is, of course, impossible for a layman to visualize the patent in suit from this description. The following sketches, which were exhibits at trial, help to show its operation and to indicate its salient features:

    NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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    In comparison, the following are respectively appellant's and appellee's pictorial versions of the Cutler-Hammer "accused" switch.

    Appellant's version:

    NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

    Appellee's version:

    NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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    Although out of sequence in the development of this opinion, for convenience we follow these sketches with sketches of the two prior art patents which will be subject of later consideration:

    NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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    NOTE: OPINION CONTAINS TABLE OR OTHER DATA...

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