Triangle Conduit & Cable Co. v. National Elec. Prod. Corp.

• Decision Date: 12 April 1945
• Docket Number: No. 8764.,8764.
• Citation: 149 F.2d 87
• Parties: TRIANGLE CONDUIT & CABLE CO., Inc., v. NATIONAL ELECTRIC PRODUCTS CORPORATION.
• Court: U.S. Court of Appeals — Third Circuit

149 F.2d 87 (1945)

TRIANGLE CONDUIT & CABLE CO., Inc., v. NATIONAL ELECTRIC PRODUCTS CORPORATION.

No. 8764.

Circuit Court of Appeals, Third Circuit.

Argued February 13, 1945.

Decided April 12, 1945.

John Hoxie, of New York City (Marvel & Morford, of Wilmington, Del., and Hoxie & Faithfull and George E. Faithfull, all of New York City, on the brief), for appellant.

Samuel E. Darby, Jr., of New York City (Southerland, Berl & Potter, of Wilmington, Del., and Floyd H. Crews, of New York City, on the brief), for appellee.

Before PARKER and GOODRICH, Circuit Judges, and BARD, District Judge.

BARD, District Judge.

This is an appeal from a judgment of the District Court invalidating Robinson and Moore patents Nos. 2,222,555 and 2,222,556 and Frederickson patent No. 1,828,772, and dismissing a counter-claim for infringement.

Plaintiff brought suit seeking a declaratory judgment to invalidate the Robinson and Moore and other patents and defendant brought a counter-claim seeking damages for infringement. The District Court concluded that six of the patents were invalid and defendant now appeals to this court from that portion of the judgment invalidating Robinson and Moore patents Nos. 2,222,555 and 2,222,556 and Frederickson patent No. 1,828,772.

The sole issue presented is patentability since it is evident that the patents, if valid, are infringed. The patents are owned by National Electric Products Corporation, hereafter referred to as "National", and the alleged infringer is Triangle Conduit and Cable Company, Inc., hereafter referred to as "Triangle". The Robinson and Moore patents, pertaining to fibrous covered rubber insulated electrical building wire, will be considered together since the second patent describes the same combination but in a specific improved form. Theroz Co. v. United States Industrial Chemical Co., D.C., 14 F.2d 629.

Electrical wire used in the interior wiring of buildings is covered by a rubber compound to insulate the electrical current and maintain its flow within the wire circuit. It is essential that the rubber insulation be preserved intact and protected from the injurious effect of light, air and moisture. To provide this protection the rubber insulation is enclosed in a cotton jacket which is impregnated with an asphaltic compound, then coated with a pitch material, and finally waxed on the exterior. The cotton jacket protects the rubber from knocks, blows and kinks which are encountered during installation of the wire and, in addition, provides a base for the protective coatings of pitch and wax.

For many years the standard cotton jacket was a braided fabric. It provided ideal protection for the wire under the most severe kinking and stresses but it was not economical. Its application was slow since the threads were interlaced around the wire by a braiding machine consisting of two circles of spools mounted on carriers turning in opposite directions about the wire which was drawn up through the machine. The overlapping of threads was wasteful of cotton and the final product was of uneven thickness.

The electric wire industry had developed another form of jacket known as a "serving" consisting of cotton threads spirally wrapped on the wire in one direction only, with parallel turns laid close together without overlap at a substantial angle. The serving overcame all the economic disadvantages of the braided jacket. It could be applied quickly in an even layer without waste of material. But it had a tendency to separate and expose the rubber covering when the wire was subjected to a sharp bend, and this basic defect precluded adoption of the serving as a standard approved covering for wire.

For over twenty-five years the art addressed itself to the problem of eliminating the separating tendency of the serving. McCulloch patent No. 1,216,337 of 1917 proposed a serving interlaced with threads running lengthwise or helically. It failed to solve the problem in that it was basically a braiding operation and had similar economic disadvantages. In 1926 Western Electric Company developed Lamplough patent No. 1,610,954 which prescribed application of the serving before the rubber covering was vulcanized, the whole to be drawn through a hot bath or saturating compound so that the threads of the serving would become firmly attached to the softened rubber. The process failed to keep the serving in place when the wire was kinked and Western Electric returned to the use of an improved braided jacket. Frederickson patent No. 1,900,492 issued to National in 1933 paralleled the Western Electric scheme of adhesion and proposed a saturant of stearin pitch to induce firm attachment of the serving to the rubber. The adhesion was insufficient to prevent separation of the serving and the patent was rejected by the Underwriters' Laboratories.

The Robinson and Moore patents of 1937 successfully solved the problem which had confronted the art by combining a new counter-wound locking thread with the traditional spiral serving. The first claim of the patent contains the following description:

"1. An insulated conductor structure having a flexible metallic conductive element, and inner insulating structure and an outer protective jacket in the form of a filamentary insulating serving surrounding the said metallic conductive element with the turns of said serving lying against each other in a simple helical lay to form a closed wrapping, and a locking filament laid in a helix opposite in sense to the helix of the closed wrapping and disposed in the assembly outside and in contact with the said wrapping, said locking filament being laid with its turns out of contact with each other in an open binder structure and arranged each to form an angle approximately as great as 60° with the longitudinal axis of the conductor."

The spiral serving and counter-wound locking thread could be applied rapidly and cheaply and easily satisfied the economic goal sought by the art. Although inferior in many respects to the braided jacket, it provided an adequate protective covering for rubber insulated building wire and was approved by the National Board of Fire Underwriters. Competing manufacturers, with the notable exceptions of Western Electric Company and Triangle, entered into licensing agreements with National. The licensed manufacturers and Triangle, which was not a licensed company, began production of the Robinson and Moore wire and the product achieved immediate commercial success.

The basic contention asserted by Triangle is that the Robinson and Moore patents are anticipated by Roberts patent No. 242,911 (British). One of the prerequisites of a patentable invention is that it must be new or novel. The Roberts patent effectively negatives any novelty in the Robinson and Moore patents and is clearly an anticipation thereof.

The Robinson and Moore patents describe a serving consisting of threads wound helically around a rubber covered wire to form a closed but non-overlapping covering which is secured by a widely spaced binder thread oppositely wound at about a 60 degree angle to the longitudinal axis of the conductor. The threads which form the wrapping or serving are described as "fiber threads of moisture resistant character such as cotton, lint, hemp or paper thread". (Italics supplied). The use of a serving has been advocated by the art for some twenty-five years; but the patentable feature claimed is the use of oppositely wound locking cord which prevents separation of the serving when the conductor is bent or kinked.

The Roberts patent describes an improved, paper insulated, electric cable. The cable is covered by insulating strips or tapes of paper wrapped around the cable at an angle "approaching parallelism" with the longitudinal axis of the conductor. A widely spaced binding of paper, cotton tape or thread is oppositely wound around this layer at an angle which is not described but which appears, in the diagram, to be a slightly larger angle with the longitudinal axis than the 60 degree angle of the binder thread in the Robinson and Moore patent. Another layer of paper, wound in the opposite direction, together with another binder thread, provides double insulation; the whole is then enclosed in a leaden sheath.

The paper covering layer in the British patent is a spirally wrapped insulator which is similar to the Robinson and Moore serving except that it lays at a slightly different angle and has a greater thickness. Both patents permit the use of paper as a wrapping material, but the American patent also permits the use of cotton, lint and hemp. Although the Roberts patent does not describe the wrapper as a "serving", it must be the prior device itself and not merely the words by which it is described or the scope of the claim which provides the measuring rod of anticipation. Minerals Separation North American Corporation v. Magma Copper Co., 280 U.S. 400, 50 S.Ct. 185, 74 L.Ed. 511; Lanyon v. M. H. Detrick Co., 9 Cir., 85 F.2d 875.

National contends that the Robinson and Moore patents present an entirely different co-action of elements from that indicated in the Roberts patent. Specifically, the contention is made that the binder thread in the British patent combats the internal expanding force of a thick paper wrapper, whereas the binder thread of the American patent is intended to combat the separating force on the serving caused by a sharp bend or kink in the conductor.

We cannot agree with this contention. It is true that Roberts did not assert that his binder thread would prevent separation of the spiral paper wrapper if the cable was sharply bent. But that problem was not before him. He was experimenting with a heavy, lead sheathed cable which was not subjected to bends or kinks. It is a fair inference that if the heavy cable had been kinked, the binder thread described by Roberts would have prevented separation of the paper wrapper just as the Robinson and Moore binder prevents...