Panduit Corp. v. Burndy Corp.
| Decision Date | 09 July 1975 |
| Docket Number | No. 73-1989,73-1989 |
| Citation | 517 F.2d 535 |
| Parties | PANDUIT CORPORATION, Plaintiff-Appellee, v. BURNDY CORPORATION and Burndy Midwest, Inc., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Gregory B. Beggs, Chicago, Ill., John M. Calimafde, New York City, for defendants-appellants.
David A. Vogel, Chicago, Ill., for plaintiff-appellee.
Before FAIRCHILD, Chief Judge, and CUMMINGS and PELL, Circuit Judges.
The plaintiff Panduit Corporation (Panduit) brought this action, charging the defendants Burndy Corporation and Burndy Midwest, Inc. (collectively, Burndy) with infringement of Panduit Reissue Patent No. 26,492. The district court found the plaintiff's patent valid and infringed and the defendants appeal.
The patent in suit relates to a hand-held plier-type binder strap tool for tensioning plastic self-locking binder straps around bundles to a predetermined tension and automatically cutting off the free end of the strap when the predetermined tension is reached. The bundles which are bound by such straps typically are groups of insulated electrical wires.
Prior to 1958, string, cord, and wire were used as binding elements. Since these binding elements were not self- In the tools having an automatic cutoff mechanism, a gripper pulled the free end of the binding material to tension the strap around the bundle. Tension in the strap was sensed by a biasing mechanism in which a spring was balanced against the tension in the strap. When the strap tension reached a predetermined tension and exceeded the spring force, crimping automatically began, followed by an automatic severing of the free end of the strap. Such a biasing mechanism and automatic cutoff were found in the Harvey 1,789,900 Patent (Harvey '900), the Harvey 1,989,699 Patent (Harvey '669), and the Gerrard 1,669,048 Patent (Gerrard '048). Since these tools included crimping mechanisms, they were large tools and not handheld, although they were hand-operated.
-locking, the binder tools at that time required mechanisms for twisting, crimping, or otherwise securing the ends of the binding elements. There were essentially two types of binder tools disclosed by prior patents: (1) tools having an automatic cutoff mechanism; and (2) plier-type tools.
The plier-type binder tools all had jaws and handles pivoted together, cutters, and some means for operating the cutter when required. Due to their small size, these tools could not contain automatic crimping devices; rather, the operator of the plier-type tool typically, upon sensing the correct tension, rotated the tool, thereby twisting the wire, and then manually operated the cutter to sever the ends of the wire.
In 1958, Thomas & Betts Company (Thomas & Betts) introduced a plastic self-locking strap for bundling wires into cables. 1 The self-locking strap is a flat, beltlike piece of plastic having a serrated side and a buckle at one end that permits the strap to be pulled through in one direction only. In using the self-locking strap, the operator manually places the strap around the bundle and feeds the end of the strap through the buckle. The strap is tightened either by hand or by use of a tool. When the strap is tightened, the tail of the strap may be left on or cut off as desired. The self-locking aspect of these straps eliminates the need for twisting or crimping the strap.
At the time it introduced the plastic self-locking strap, Thomas & Betts also introduced a patented plier-type hand tool (the Logan tool) for facilitating the installation of the straps. In using this tool, the operator looped the self-locking strap around the bundle and inserted the end of the strap through the buckle. The free end of the strap was then fed into the tool and the operator tightened the strap by squeezing the handles. The free end of the strap was cut off by manual operation of a cutter when the operator sensed the proper tension in the strap around the bundle.
From 1958 to 1962, Thomas & Betts was the principal manufacturer of plier-type binder tools for use in applying the plastic self-locking straps. In March 1962, Panduit introduced the patented plier-like tool which was designed to work with the plastic straps. As with the Logan tool, the operator of the patented tool places the strap around the bundle and pulls the strap end through the buckle. The free end of the strap is then fed through a slot in the first jaw of the tool and secured in a gripper in the second jaw. The operator squeezes the handles of the tool, thereby forcing the jaws apart and tightening the plastic strap around the bundle. Unlike the Logan tool, however, the patented tool contains a spring-controlled cutoff mechanism that operates automatically to sever the free end of the binder strap only when a predetermined tension is achieved in the strap around the bundle. That is, when the tension in the strap exceeds the tension in the spring of the tool, the severing mechanism is actuated, causing a blade to sever the free end of the plastic strap next to the buckle. The patented tool also contains an adjustment The patent in suit is a reissue patent of original Patent No. 3,169,560, filed March 8, 1962. During the prosecution of the original patent, the Examiner did not cite a single patent directed to a plier-type binder tool or a single patent disclosing a biasing mechanism for automatic cutoff. The original patent was issued in February 1965. In 1966, when considering litigation under the original patent, Panduit caused a validity search to be conducted. The Harvey '669 patent was found in this search. As a result of this search, a reissue application, citing the Harvey '669, was filed in order to add, amend, and narrow certain claims to distinguish the Harvey '669. The Patent Examiner at first rejected the claims in the reissue application as unpatentable over the Harvey '669 but eventually the reissue patent was granted.
mechanism so that the tension at which the binder strap is drawn can be changed to accommodate different sizes of binder straps and different sizes and types of bundles.
In late 1967 and early 1968, Burndy developed a "pistol-grip" tool for tensioning plastic self-locking straps. Like the Panduit tool, the Burndy tool contains an automatic cutoff mechanism to sever the strap when a predetermined tension is achieved.
Panduit charges that the defendants' tool infringes on claims 1 through 5 and 14 through 16 of the reissue patent. Essentially, these claims describe a plier-type tool having two jaw members and performing the following four functions: (1) applying a pulling force to the free end of the binder strap to tension the strap; (2) sensing the tension in the binder strap; (3) actuating cutoff when the predetermined tension is sensed; and (4) applying the necessary force to achieve severance. All of these functions are performed in automatic sequence with no operator decision.
In Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the Supreme Court suggested the following approach for determining whether an invention is obvious:
In the present case, there was no prior art containing both a bias mechanism and a plier-type tool. The district court, as well as Panduit, placed much emphasis on this fact. Under § 103, however, a claimed invention may be obvious, even though it is not identically disclosed or described by the prior art; it Here, the prior art disclosed both plier-type tools for applying plastic self-locking straps and biasing mechanisms for automatic severance. Panduit's improvement over the prior art consisted of incorporating into the plier-type tool a biasing mechanism so that the self-locking strap would be automatically cut off when a predetermined tension in the strap was reached.
is sufficient that the subject matter of the patented article, taken as a whole, has been disclosed by the prior art. "(O)bviousness does not require that the combination of prior art references precisely duplicate the patented article." Toro Mfg. Corp. v. Jacobsen Mfg. Co., 357 F.2d 901, 903 (7th Cir. 1966); Akron Brass Co. v. Elkhart Brass Mfg. Co., Inc., 353 F.2d 704, 706 (7th Cir. 1965).
The mere fact that a patent consists of a combination of old elements does not, of course, render it invalid. However, as this court has recently noted, a claimed invention consisting of old elements must pass a "rather severe test." Skil Corp. v. Lucerne Prod., Inc., 503 F.2d 745, 749 (7th Cir. 1974). See also Toro Mfg. Corp., supra at 904. The court must determine, with regard to a combination patent, whether the combination was reasonably obvious to one with ordinary skill in the art and whether the invention produced a "new or different function." Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 60, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969). "The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable...
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