Banning v. Southwestern Bell Telephone Company, Civ. A. No. 71-H-1234.

• Decision Date: 05 June 1974
• Docket Number: Civ. A. No. 71-H-1234.
• Citation: 384 F. Supp. 831
• Parties: Joe Doyle BANNING, Plaintiff, v. SOUTHWESTERN BELL TELEPHONE COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Texas

384 F. Supp. 831

Joe Doyle BANNING, Plaintiff, v. SOUTHWESTERN BELL TELEPHONE COMPANY, Defendant.

Civ. A. No. 71-H-1234.

United States District Court, S. D. Texas, Houston Division.

June 5, 1974.

COPYRIGHT MATERIAL OMITTED

Oscar Nipper, Houston, Tex., for plaintiff.

A. H. Evans, Vinson, Elkins, Searls, Connally & Smith, Houston, Tex., Albert E. Fey, Fish and Neave, New York, N. Y., for defendant.

CARL O. BUE, Jr., District Judge.

Findings of Facts

1. In this action for alleged patent infringement, the plaintiff seeks damages for past infringement. The patent in suit, Banning patent 2,761,015 entitled PUSH BUTTON TELEPHONE NUMBER SELECTOR (herein referred to as "the Banning patent"), expired August 28, 1973.

2. Plaintiff is Joe Doyle Banning, the patentee and owner of the Banning patent in suit.

3. Defendant is Southwestern Bell Telephone Company, a corporation having an office and a principal place of business in Houston, Texas. In furnishing telephone services in Texas and elsewhere, Southwestern Bell offers to its subscribers telephone sets employing push button dial devices (called "Touch-Tone dials"), which are the devices here challenged as infringements of the Banning patent.

4. This action is brought by plaintiff under the patent laws of the United States (Title 35 U.S.C.); jurisdiction and venue are based on 28 U.S.C. §§ 1338(a) and 1400(b), respectively. This Court's jurisdiction and venue are undisputed with respect to both the parties and the subject matter in this action.

5. The issues framed by the pleadings in this case are whether or not the Banning patent in this suit is valid; and, if valid, whether or not it has been infringed by Southwestern Bell's Touch-Tone dial telephones.

6. Claim 1 of the Banning patent reads as follows:

1. In a telephone number selector, a case including a button receiving bore therein, a cylindrical button adapted to be slidably received within said bore, aligned multiple contacts within the wall of said bore and spaced from each other parallel with the bore axis, and a resilient contact carried by said button and arranged to slidable engage said multiple contacts.

Claim 3 of the Banning patent reads as follows:

In a telephone number selector as defined in Claim 1, the construction wherein said multiple contacts are mounted in a box, and wherein said bore includes a recess in the side thereof for receiving said box.

7. Banning patent 2,761,015 discloses a push button dial device which is intended to be used either as a repertory dialer for dialing a frequently called number with a single stroke of one button, or which may be used as a conventional dialer by successively pushing the buttons numbered "1" through "0" in proper sequence.

8. In the Banning device, a contact pin carried by each button slides along a series of electrical contacts mounted in the wall of the bore in which that button is mounted. The contacts in the wall of the bore are mounted parallel to the axis of the bore. As the button is moved, the contact pin on the button makes electrical connections with the fixed contacts in the bore. By providing the appropriate number of electrical contacts mounted in the wall of the bore, the button is intended to function either as a repertory dialer or as a single numbered button of a sequential dialer.

9. In the challenged Touch-Tone dial, a push button dial mechanism is provided. The basic structure of this push button dial mechanism is a 3×4 matrix of cranks (seven cranks in all) two of which cross beneath each individual button. Electrical contacts (seven sets; one for each crank) are mounted around the periphery of the push button dial device, remote from the push button themselves and from the bores in which they are mounted. Each set of contacts is near the end of, and is actuated by one of the cranks.

When a button is pushed, the two cranks which cross beneath it are rotated as the button moves down. This rotation causes each crank to engage and close the set of electrical contacts which is mounted near the end of that particular crank. The closing of these two sets of electrical contacts (one for each of the cranks which cross beneath a given button) interconnects the two predetermined inductances to the oscillator circuit. When any button is pushed, one of the two cranks which is rotated also moves a slide bar that closes a common switch. This common switch connects power to the oscillator circuit.

10. Desplats patent 1,451,328 (Defendant's Exhibit F) closely resembles Banning's device in both structure and operation. Desplats discloses an electrical signaling device which produces a series of d. c. pulses, such as for Morse Code, in response to the movement of a button up and down within a bore.

Desplats' device has a button which moves in a bore formed in a case. The button carries a resilient spring member which is an electrical contact, and which also urges the button toward its normal "up" position. One end of the resilient spring contact is secured to the base of the device, while its other end is free, and extends toward a non-conductive bracket mounted within the case. The bracket has holes in it with wire contacts interlaced through the holes, so that on one side of the bracket's surface the wires are inlaid and not exposed, while on the other side the wires are exposed to form a series of aligned multiple contacts arranged parallel to the axis of the button bore.

When the button is depressed, the free end of the resilient spring contact, which is carried by the button, slides down the inlaid side of the bracket and no contact is made between it and the interlaced, non-exposed wires. But when the button reaches the bottom of its stroke, the free end of the resilient spring contact moves under the bracket and returns (its speed being controlled by an airtight membrane) along the other side of the bracket where the wires have formed a series of multiple contacts aligned with the button axis. As the resilient contact spring carried by the button slides along these aligned multiple contacts, it generates d. c. pulses whose duration and timing are defined by the spacing of the interlaced wires.

11. White patent 12,929 (Defendant's Exhibit B) not cited by the Patent Office, discloses aligned contacts defined by strips of ivory spaced parallel to the bore axis in a d. c. impulse switch used as the key set for a telegraph terminal. Each key corresponds to a designated letter of the alphabet, and each key shaft is an electrically conductive metal bar with non-conductive strips of ivory spaced on its surface parallel to the axis of the bar. One electrical lead of the telegraph circuit is connected to the metallic bar through a sliding contact and plate so that the bar is connected to the circuit lead only during its down stroke. The other circuit lead is connected to a metal wiper spring which engages the lower end of the metal bar.

As the key is depressed, the metal wiper spring traverses the alternate surfaces of metal and ivory thereby producing d. c. impulses whose duration and timing are dependent on the width and spacing of the ivory strips, and which correspond to the dots and dashes for Morse code.

12. Blake patent 276,216 (Defendant's Exhibit C), likewise not cited in the Patent Office, also shows aligned multiple contacts (referred to as conducting strips) mounted within the wall of, and spaced parallel to the axis of, a bore or hole. Blake discloses a switchboard circuit which allows a telephone operator to make multiple connections by moving a rod, which carries a resilient contact spring at one end, in the bore which contains the aligned multiple contacts located between layers of insulation.

One electrical lead of the circuit is connected to the conductive rod and spring. The rod and spring selectively contact one of the conducting layers in the bore and thus connect it into the circuit; the particular connection made depends on the distance the rod is inserted into the bore. In this manner, the telephone operator can select a particular circuit by moving the rod in or out to a point indicated by an indicator.

13. Wagner patent 2,586,750 (Defendant's Exhibit N) teaches the basic structural configuration for the Banning device. Wagner discloses an electrical control switch with a cylindrical case having an internal bore and an external surface. A button fitted with a compression spring, slides within the bore and has a conductive collector ring attached to it.

The collector ring is concentric with the button and the cylindrical case, and slides along the external surface of the cylindrical case to make electrical contact with conductive strips of varying length, which are mounted in the external surface of the cylindrical case and spaced circumferentially from each other. The length of the conductive strip determines the time during which the current flows as the bottom is first depressed then released.

14. The four prior art references referred to above show all the elements called for by the claims of the Banning patent. Moreover, the use of push buttons in telephone dial devices is old — Meacham patent 2,410,833 (Defendant's Exhibit J) and Mallina patent 2,147,710 (Defendant's Exhibit H), both owned by the Bell System, are merely exemplary of literally dozens of push button dialers which were in the art long before Banning came along.

The Desplats prior art reference teaches a device which includes every single feature of Banning's claim — except the mounting of the multiple contacts actually within the walls of the button-receiving bore instead of next to it. The Blake prior art reference shows this feature and both the Blake and Desplats patents, like the Banning patent in suit, relate to the communications art.

15. The narrow difference between the Banning patent in suit and the Desplats prior art patent would have been obvious to a person of ordinary skill in the telephony art in 1953 when Banning...