Burndy Corp. v. KEARNEY-NAT., INC., 75 Civ. 3248 (VLB).
| fullCitation | Burndy Corp. v. KEARNEY-NAT., INC., 466 F.Supp. 80 (S.D. N.Y. 1979) |
| Decision Date | 02 January 1979 |
| Citation | 466 F. Supp. 80 |
| Docket Number | No. 75 Civ. 3248 (VLB).,75 Civ. 3248 (VLB). |
| Parties | BURNDY CORPORATION, Plaintiff, v. KEARNEY-NATIONAL, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, for plaintiff.
Paul M. Denk, St. Louis, Mo., Brumbaugh, Graves, Donohue & Raymond, New York City, for defendant.
This is a declaratory judgment action. The subject matter of the action is a patent ("the Zemels patent") that has been assigned to defendant, Kearney National, Inc. ("Kearney"). The Zemels patent covers items known as "compression connectors."1
Plaintiff, Burndy Corporation ("Burndy"), seeks a judgment declaring that the Zemels patent is invalid and that the manufacture, use, or sale by Burndy or its privies of compression connectors made and sold by Burndy does not constitute an infringement of any valid claim of the Zemels patent or an infringement of any other rights of Kearney. Burndy also seeks an injunction restraining Kearney and Kearney's privies from asserting infringement, and from bringing or threatening any infringement actions against Burndy and its privies based on the Zemels patent or any other patent under which defendant now has the power to assert a claim of infringement. Burndy also seeks attorneys' fees.
Kearney asserts the validity of the Zemels patent and, by counterclaim, seeks an injunction restraining Burndy from infringing the patent; compensatory damages for Burndy's alleged past infringements of the patent; and attorneys' fees.
Burndy is incorporated in the State of New York, and Kearney, incorporated in Delaware, has a place of business in New York City. Both companies are engaged in the manufacture and sale of electrical products, including electrical compression connectors.
Burndy bases its claims in this action on 35 U.S.C. §§ 101, 102, 103, 112, and 285.2 Kearney bases its claims on 35 U.S.C. § 271.3
This court has personal jurisdiction of the parties. Subject matter jurisdiction is based on 28 U.S.C. §§ 1338, 2201, and 2202. Venue is proper under 28 U.S.C. § 1391(c).
A bench trial was had herein. This opinion contains my findings of fact and conclusions of law pursuant to Rule 52(a), Fed.R. Civ.P.
Burndy advances several arguments in support of its contention that the Zemels patent is invalid,4 but principally relies on the argument under 35 U.S.C. § 103 that the patent is invalid on the grounds of obviousness.5
For the reasons stated below, I find that the Zemels patent is invalid on the grounds of obviousness. 35 U.S.C. § 103. Therefore, Burndy is entitled to the declaratory judgment and injunction sought herein.6
Because I agree that the Zemels patent is invalid under Section 103, and because this conclusion is dispositive, I do not reach Burndy's other arguments.7
I find that this is not an "exceptional" case within the meaning of 35 U.S.C. § 285 and conclude that Burndy is not entitled to attorneys' fees.
The Zemels patent,8 originally issued to Carl G. Zemels, pertains to an electrical compression connector that is made of dead-soft aluminum and is formed in the shape of an "H". The compression connector is generally used in overhead installations, and its purpose is to connect a power-carrying conductor (called a "line conductor") to a "tap conductor" that carries the electrical power from the line conductor into a particular building. Thus power may be tapped from a line conductor and transferred, via a tap conductor, into the building of an electrical power consumer.
The electrical compression connector covered by the Zemels patent is known as an H-frame connector. The connector has a pair of upper arms (called "lips" in the patent) and a pair of lower arms (also called "lips" in the patent). Each pair of arms defines a space, which space is termed a "socket" in the patent. The H-frame connector thus has an upper socket and a lower socket. The upper socket generally is larger than the lower socket, and the upper socket is used to hold the line conductor while the lower socket is used to hold the tap conductor.
The process of installing an H-frame connector proceeds roughly as follows. A lip of the lower socket and a lip of the upper socket each has an extension or "tab." (See Numbers 11 and 12 of Figures 1, 2, 3, 5, Appendix A). These tabs, which are made of a weaker metal than the metal that composes the rest of the connector, are designed to be bent over into each socket by the finger of a lineman. Thus, the lineman takes the connector to the conductor; places the line conductor in the upper socket; and bends the tab into the socket over the line conductor so that the line conductor is at least loosely secured in the upper socket. The lineman then places the tap conductor into the lower socket of the H-frame connector and bends the tab of that socket over the tap conductor so that the tap conductor is at least loosely secured in the lower socket. Having thus loosely secured both the line conductor and the tap conductor in the connector, the lineman next takes a compression tool, which has dies at one of its ends, and places the dies around the opposite ends of the connector. Finally, he closes the handles of the compression tool, thereby crimping and shaping the sockets of the connector around the line conductor and the tap conductor. The H-frame connector has now been installed.
Two important goals in developing processes in this area are 1) to achieve the snuggest possible fit between the connector and the power lines, and 2) to minimize the amount of energy and effort necessary to obtain a snug fit.
In the application that led to the patent in suit, Zemels stated both of these goals as objects of his invention. The key to attaining these goals, according to Zemels, was the presence of "channels" or "voids" of a particular size and in a particular position in the body of the compression connector. (See Numbers 14 and 16 in Figures 1-6, Appendix A). These channels or voids, and the details regarding their size and position, are essential to all the claims of the Zemels patent.9
The Zemels patent must be considered against a background in which various compression connectors were developed. Kearney began to manufacture and sell H-frame connectors in the early 1940's. Kearney's original H-frame connector, which was covered by the Graham patent,10 had no channels in its sides. The original H-frame connector was improved upon by the Hoffman patent,11 which was issued in 1955 and which was, like the Graham patent, assigned to Kearney. The Hoffman patent taught the addition of tabs to two of the arms of the connector. Kearney developed a series of connectors based on the Hoffman patent known as the 81 series connectors, which required twelve different sizes of connectors to accommodate the 78 different sizes of conductors that were then in use. The Series 81 connectors were manufactured and sold during the 1950's and 1960's.
Ten of the 12 sizes of Series 81 connectors could be properly crimped around the conductors by means of a hand compressor, but two models could be properly crimped only by means of a hydraulic compressor. This fact made the latter two models less desirable; a hydraulic compressor is more expensive and heavier than the hand tool and is not well regarded by the utility companies, which are the major consumers of compression connectors.
Kearney realized that these two models of connectors were less marketable than they would have been if they had been crimpable by a hand tool. Several Kearney employees, including William Olive, the Chief Engineer, and John Thornton, Zemels' supervisor, considered the problem.
In November, 1963 Zemels, a Kearney design engineer, began to consider the problem. Zemels had been graduated with the title of mechanical engineer from a university in the Soviet Union. After coming to the United States in 1949, he had worked as a design engineer for almost 14 years.
In January, 1964 Zemels developed sketches of an H-frame compression connector with channels, which he showed to Thornton. He was authorized by Thornton and Olive to do formal work on the matter. Zemels then considered the details of the proper size and location of the channels that would be necessary to attain the optimal fit in the crimping process. He concluded, inter alia, that in connectors with different sized sockets, the smaller socket should have thicker arms (or "lips") than the larger socket so that the crimping process, which had to close both sockets at once, would result in a snug fit around both the larger line conductor and the smaller tap conductor. Zemels concluded further that this thickening of the arms of the tap socket in connectors with different sized sockets should be accompanied by a shifting of the channels from the midpoint of the connector to a point closer to the tap socket.
In March, 1964 Zemels conducted his first tests on his prototypes. His superiors at Kearney were favorably impressed with his progress, and he continued to work on the project of finding suitable replacements for the two problematic models in Kearney's Series 81 connectors. By early 1965, Zemels had finished the basic work on the two connectors that were later to replace the two troublesome models in Series 81. Between November, 1966 and November, 1967, Zemels redesigned Kearney's entire Series 81 on the basis of his insights. In the process he reduced the number of models from 12 to seven, which comprise Kearney's Ultra Squeezon 500 series of connectors.
In June, 1964 Zemels, through Kearney's patent attorney, filed an application with the Patent Office. This application was rejected.12 The application that ultimately led to the Zemels patent was not filed until May, 1966, and the patent was not granted until May 30, 1967.
The guidelines for analysis under ...
To continue reading
Request your trial
-
Revlon, Inc. v. Carson Products Co.
...Co. v. Roper Corp., 724 F.2d 951, 960 (Fed.Cir.1983); In re Marshall, 578 F.2d 301, 304 (C.C.P.A.1978); Burndy Corp. v. Kearney-National, Inc., 466 F.Supp. 80, 90 (S.D.N.Y.1979). Defendant obtains support for this argument from the deposition testimony of plaintiff's laboratory employees to......
-
Gilbreth Intern. Corp. v. Lionel Leisure, Inc.
...Monolith Portland Midwest Co. v. Kaiser Aluminum & Chemical Corp., 407 F.2d 288 (9th Cir.1969). See also Burndy Corp. v. Kearney-National, Inc., 466 F.Supp. 80 (S.D.N.Y.1979); Trans-World Display Corp. v. Mechtronics Corp., 437 F.Supp. 692 (D.S.) (S.D.N.Y.1977); W.L. Gore & Associates Inc. ......
-
Nicofibers, Inc. v. Reichhold Chemicals, Inc.
...1393, 47 L.Ed.2d 692 (1976). This has been called "a specialized reasonable man test for obviousness," Burndy Corp. v. Kearney-National, Inc., 466 F.Supp. 80, 88 (S.D.N.Y.1979). Determining the level of ordinary skill in the art is a two-step process. General Motors, Inc. v. Toyota Motor Co......
- Burndy Corp. v. Kearney-National, Inc., 79-7160