National Connector Corp. v. Malco Manufacturing Co.

• Decision Date: 11 April 1968
• Docket Number: No. 18705,18706.,18705
• Citation: 392 F.2d 766
• Parties: NATIONAL CONNECTOR CORPORATION, Appellant, v. MALCO MANUFACTURING COMPANY, a Partnership, Amphenol Corporation, and Malco Manufacturing Company, Inc., Appellees. MALCO MANUFACTURING COMPANY, a Partnership, Amphenol Corporation, and Malco Manufacturing Company, Inc., Appellants, v. NATIONAL CONNECTOR CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

392 F.2d 766 (1968)

NATIONAL CONNECTOR CORPORATION, Appellant, v. MALCO MANUFACTURING COMPANY, a Partnership, Amphenol Corporation, and Malco Manufacturing Company, Inc., Appellees.

MALCO MANUFACTURING COMPANY, a Partnership, Amphenol Corporation, and Malco Manufacturing Company, Inc., Appellants, v. NATIONAL CONNECTOR CORPORATION, Appellee.

Nos. 18705, 18706.

United States Court of Appeals Eighth Circuit.

April 11, 1968.

John D. Gould, of Merchant & Gould, Minneapolis, Minn., for National Connector Corp.; Robert T. Edell, Minneapolis, Minn., was on the brief with John D. Gould, Minneapolis, Minn.

Wm. Marshall Lee, Hume, Clement, Hume & Lee, Chicago, Ill., for Malco Mfg. Co., etc.; Roy E. Hofer, Chicago, Ill., was on the brief with Mr. Wm. Marshall Lee. Also on the brief with Wm. Marshall Lee, Chicago, Ill., were Erwin C. Heininger and Robert L. Stern, of Mayer, Friedlich, Spiess, Tierney, Brown & Platt, Chicago, Ill., for Amphenol Corp.

Before VOGEL, Senior Circuit Judge, and BLACKMUN and LAY, Circuit Judges.

LAY, Circuit Judge.

The defendant National Connector Corporation (hereinafter called National) is charged by the plaintiffs (although more than one, hereinafter called Malco) with infringement of two United States Letters Patent Nos. 2,995,617 and 3,086,074, relating to electrical connectors.¹ The district court held patent '617 valid as to certain claims and found that National had infringed this patent in its types A and B series connectors, but not with its type C connector. In No. 18,705, National appeals the judgment of validity of patent '617, as well as the finding of infringement. In No. 18,706, Malco has cross-appealed the rejection of its claim of infringement by National's type C and likewise complains of the court's finding that patent '074 was invalid and additionally, of the finding that it was not infringed by National. In the judgment below Malco was awarded an accounting to ascertain damages. This action was stayed pending this appeal.

We find it unnecessary to discuss the claim of patent misuse and the various claims of infringement. We affirm the trial court's finding of invalidity on the '074 patent, and reverse as to the '617 patent, finding as a matter of law both patents obvious under 35 U.S.C. § 103.

MAXIMOFF '617 PATENT.

This patent is basically described by its title as a "Self-Locking Terminal." It consists of a metal contact or pin, inserted in a base plate (metallic) through a hole, held by a sleeve, sometimes called a bushing. It is described as a "feed through" terminal, which allows the flow of electrical impulses into multiple connections. The function of a very simple terminal connector may be visualized with the ordinary light plug. The utility of multi-contact terminal connectors becomes readily apparent in the twentieth century world of electronics. A means is thus provided for thousands of individual electrical connections through the use of a unitary terminal. As plaintiffs urge, the multi-contact terminal connector is the "heart" of the modern day computer, telecommunications systems and similar advanced electronic technology. For illustration, plaintiffs' plate-type connectors have been adopted by the United States Navy for the Polaris Missile program.

Malco first developed its "self-locking terminal" in 1957. It urges that it made possible the later development of its large "plate-type" terminal connectors, now used in the Polaris program. Contemporaneously, in 1960, Gardner-Denver Company developed a machine for automatically wiring a large, plate-type panel of terminal connectors. Thereafter, commercial success and utility were found for the plate-type connectors. The fabrication of these plates is considered by Malco to be a "trade secret."

Prior to the development of Malco's plate, molded block terminal connectors enjoyed exclusive commercial utility by computer manufacturers. It is pointed out that these blocks present many deficiencies which make them inferior to Malco's plate-type connectors. Efficiency, utility, flexibility and economy summarize the detailed arguments of improvement. Malco contends the rapid commercial acceptance of the plate-type connector demonstrates the obvious superiority between the two. These facts are deemed relevant by Malco since they argue that the plate-type connectors were made possible by development of the '617 self-locking terminals. Malco's evidence relates that the specific advantages of the "self-locking" terminal are rigidity of retention, low insertion forces, inherent straightening, elimination of manufacturing tolerances upon final assembly, inherent axial resiliency, capacity for extreme density of terminal contact pattern, flexibility for circuitry changes and versatility for prototype design of complex electronic systems.

It is urged that the novelty of the '617 terminal is in the "self-locking" concept. Malco claims that prior art employed locking barbs or other locking means of the contact pin within the plate. Malco urges that the "uniqueness" of the '617 patent is that it incorporates a flat or rectangular pin larger than the "aperture of the sleeve." When the pin is driven into the sleeve a "laterally opposed pressure locking force is imparted at laterally opposed positions." Thus the sleeve grips the two opposite sides of the plate aperture which rigidly holds the contact pin. This is referred to as an "opposed pressure interference fit."

In simplification, we quote from Malco's opening statement to the trial court, "* * * so what we are talking about here is driving a square peg in a round hole. * * *" And as counsel added, the essential difference is that the prior art "* * * shows round terminals in round sleeves in round holes."

The trial court found the '617 patent not anticipated by the prior art, and held the patent valid under § 103 relying upon (1) the immediate "phenomenal" commercial acceptance with the country, (2) the long-felt need and (3) the unexpected advantages and results flowing from its development. Cf. United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

The basic issue, assuming novelty and utility established, concerns "obviousness" under § 103. This necessitates inquiry into (1) the determination of the scope and content of the prior art, (2) the ascertainment of the difference between the prior art and the claims under '617, (3) "the background skill of the calling," and (4) the existence of so-called "subtests" or collateral indicia of "nonobviousness." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). However, "subtests" cannot become persuasive if prior art anticipates or otherwise makes obvious the attributes of the improvement involved.

Thus, in Calmar, Inc. v. Cook Chemical Co., decided together with Graham, supra at 26, 86 S.Ct. 684, 15 L.Ed.2d 545, although the patented device fulfilled a long-felt need and found great commercial success, nevertheless, these factors did not tip the scales of patentability where the improved art was found to be a "nontechnical" difference. See also Kell-Dot Industries, Inc. v. Graves, 361 F.2d 25 (8 Cir. 1966).

The prior art in the present case included electrical connectors described as the British, No. 641,917, Carlson, No. 2,919,300 and Clark, No. 2,744,812 patents. All of these utilized round pins in round sleeves, providing hermetic seals. Malco distinguishes the British patent as having a "conventional circumferential press-fit." In the Clark and Carlson patents there is no gripping effect involved, since the pin is the same size as the aperture. It is further argued that none of these patents features the nonround pin of the '617 patent.

And, Malco urges that '617 involves a different technique. The claim is made that all of the many advantages of the self-locking terminal flow from the new concept of "opposed pressure interference fit." Malco contends this is necessarily distinguishable from the prior art and any of its obvious potentialities. It is contended that this is made possible by the novel use of a flat terminal pin, called a "non-round gripping shank" in a sleeve and aperture of smaller dimension. As Malco urges, this is the "vital additional element."

It is stated that although the prior art, to-wit, Oxley, No. 2,911,460, anticipates the flat terminal pin, it is easily distinguishable since Oxley locks by barbs and does not rely upon any kind of pressfit. Oxley also alternatively employs a round pin. National attempts to demonstrate by the Oxley flat pin in combination with the British patent that the '617 invention is anticipated. Malco replies that this is "hindsight" application, that the advantages of the combination were unobvious, and in the words of their expert, "no one knew that it would work."

One of the difficulties in evaluating the '617 patent is that throughout the testimony there appear many claimed attributes of the self-locking terminal, which necessarily go beyond the basic patent involved. The facility of insertion force, torque resistance, straightening, rigidity retention, density, et al., relate as much to other vital factors outside of the specific claims of '617 itself. It is evident that the material within the plate and sleeves, the fabrication of them, the punching of the holes in the plate, the dimensions of the pin, the bushings and aperture involved are all significant and related to the claimed attributes. Malco's early claims demonstrate that the use of locking notches now excluded from the patent itself exaggerates many of these claimed advantages. The examiner excluded the locked notches from the original filings as being directly anticipated by the prior art. This was originally related by Malco to be an "important feature" of the patent.

Mr. Kukla, the former head of the Research and Development Department of Malco, testified: "* * * in the beginning of the program * * * the plastics used were just...