Panduit Corp. v. Dennison Mfg. Co.
| Decision Date | 02 October 1985 |
| Docket Number | No. 85-1144,85-1144 |
| Citation | 227 USPQ 337,774 F.2d 1082 |
| Parties | PANDUIT CORPORATION, Appellant, v. DENNISON MANUFACTURING CO., Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Charles F. Pigott, Jr., Pigott, Gerstman & Gilhooly, Ltd., Chicago, Ill., argued for appellant.
Charles R. Wentzel, Panduit Corp., Tinley Park, Ill., of counsel.
James P. Ryther, McDougall, Hersh & Scott, Chicago, Ill., argued for appellee. With him on brief were Thomas C. Elliott, Jr., McDougall, Hersh & Scott, Chicago, Ill., and Thomas F. Curry, Dennison Mfg. Co., Waltham, Mass., of counsel.
Before MARKEY, Chief Judge, COWEN, Senior Circuit Judge, and NEWMAN, Circuit Judge.
Appeal from a judgment of the United States District Court for the Northern District of Illinois, Eastern Division, holding claims 1-4, 7, 10, 12, 14-22 and 24-27 of United States Patent No. 3,537,146 ('146 patent), claims 1, 10 and 12 of United States Patent No. 3,660,869 ('869 patent), and claims 1, 2, 5, 6, 11, 17, and 21 of United States Patent No. 3,965,538 ('538 patent) invalid on the ground of obviousness, and the same claims of the '538 patent invalid on the ground of double patenting. We reverse.
One-piece cable ties are used to bind a bundle of cables or insulated wires. Looped around the bundle, a strap has one end passed through an opening in a frame at the other end. Teeth on the strap engage with a locking device at the frame. The strap and device operate to permit tensioning of the strap end to prevent its loosening or withdrawal.
Prior art cable ties with rigid locking devices had a desired high strap withdrawal force, but an undesired high strap insertion force. Conversely, those with flexible locking devices had an undesired low withdrawal force and a desired low insertion force.
As stated in Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1544, 221 USPQ 1, 5 (Fed.Cir.1984), many patent suits "arise out of the affairs of people, real people facing real problems." That is true of the present suit.
Jack E. Caveney founded Panduit in the basement of his home in 1955, making first a plastic wiring duct. In 1958, he developed and began selling a two-piece plastic cable tie. In 1961, he began a research program to develop a one-piece plastic cable tie. That program lasted nine years and cost several million dollars. The end First sold in 1970, the tie of the '538 patent had by 1984 achieved annual sales of $50 million, and was accounting for half of Panduit's total profits and 80 percent of its cable tie sales.
result of that program is the tie of the '538 patent, which includes the features of all three patents in suit. Primary among its advantages are the minimal force required to deflect the locking member when the strap is inserted through the frame and the high force required to withdraw the strap from the frame. Jack Caveney was the first to envision and achieve a cable tie having a higher ratio of low strap insertion force and high strap withdrawal force than anyone else had ever achieved or thought possible. Panduit's commercial embodiment of the patents in suit achieves an insertion force of one-half pound and a withdrawal force of 80 pounds.
Beginning in 1968, Dennison Manufacturing Corporation (Dennison) put its staff of engineers and designers to work on a one-piece cable tie development program. It carried that program on at considerable expense for ten years, developing many ties and patenting some. None was successful. With the '869 patent before it, Dennison copied the tie claimed in that patent in 1976. When the '538 patent issued in 1976, Dennison thereupon copied the tie claimed in that patent. Having failed to succeed for over ten years with ties of its own design, Dennison achieved such success with its copy of the '538 tie as to make Dennison the second or third largest supplier of one-piece cable ties.
The '146 patent issued November 3, 1970 on an application filed August 6, 1968. Figure 7 is representative:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The '869 patent issued May 9, 1972 on an application filed May 1, 1969. Figure 9 is representative:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The '538 patent issued June 29, 1976 on an application filed May 5, 1969. Figure 9 is representative:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Dennison admits that the results of its research and development program, its Merser 8 and Merser 9 ties, "are covered by the representative claims of the patents-in-suit." Dennison's Merser 8 tie is admittedly covered by the asserted claims of the '146 and '869 patents. Dennison's Merser 9A tie is admittedly covered by the asserted claims of all three patents in suit. Dennison's defense was, accordingly, limited to its asserted invalidity of the patents in suit.
On December 14, 1978, Panduit sued Dennison, alleging infringement of certain claims of its '146 and '869 patents. Dennison answered on February 16, 1979, asserting invalidity of those patents. In 1981, Panduit amended its complaint, alleging infringement of certain claims of the '538 patent. Dennison's answer asserted invalidity of that patent.
After years of skirmish, trial was held on 13 dates between October 9 and November 8, 1984. A judgment was entered on December
4, 1984, following the court's ruling from the bench in favor of Dennison.
The district court said the closest prior art reference was United States Patent No. 3,127,648 to Emery (Emery). Panduit had cited Emery to the Examiner, who considered it during prosecution. As evaluated by the district court, however, Emery "had a problem," i.e., "that the strap of the cable tie protruded from the head 2 when the cable tie was in tension," and because "there was only one tooth on the Emery tie ... any pulling of the protruding end of the strap could easily disengage that one tooth."
When Panduit at trial said the claimed subject matter was patentably distinct in view of plural teeth on the pawl, sequential engagement of the pawl teeth with those on the strap, and wedging of those engaged members against the abutting wall, the district court responded that what it called Panduit's "new elements" were "simply a description of one element, not three," saying: "it seems to me that one element has been broken down into three elements, and in so doing [Panduit] is able to argue that it has more patentable differences over Emery than I find to be the case." 3
In response to Panduit's argument that Emery did not wedge the strap against the abutment wall, the district court said that "the text of the Emery patent makes abundantly clear that Emery's intention was to achieve wedging against the abutment wall," and that such wedging "can only be accomplished if [it] is inside the head, because that is where the abutting wall is." 4
When Panduit pointed out that Emery's drawing clearly shows engagement of the pawl and strap outside the frame, the district court said:
Now, how do we account for the drawing? I can't account for that drawing ... It's an aberration, it's an anomaly. And as I indicated a little earlier this afternoon, it is difficult to believe that someone whose only task was to make two drawings, could make a mistake on one of them when his business is making patent drawings. And yet, I adopt defendant's suggestion that what is represented by Figure 2 of Emery is a draftsman's error. 5
The district court said, "the problem addressed by [the '869 patent] was insufficient strength of compression." The court attributed that "problem" to "the hinge" 6 being positioned "essentially perpendicular to the axis of the strap." The district court said "[t]he solution devised by Caveney was to change the orientation of the pawl to a more or less vertical position, so that it would be essentially parallel to the axis of the tensioned strap, and then to place a ledge under the pawl to absorb the compressive force."
The district court found that "to increase the compressive strength of the cable tie, and specifically the pawl and hinge of the cable tie, you would set the pawl on a ledge." It further found that "it is obvious that a ledge should be an integral part of the head of the tie," and that "extending the ledge from side wall to side wall is an obvious way of accomplishing that."
The district court also looked to three references: United States Patent No. 3,484,905 to Eberhardt (Eberhardt), filed over three months after the '869 patent application (as a "contemporaneous development"); United States Patent No. 3,214,808 to Litwin (Litwin); and Japanese Utility Model Publication No. 27 023/1964 (Japanese patent), the first two of which had been cited during prosecution. The court said those references "showed structures analogous to the '869 ledge in that they absorbed compressive force."
The court concluded that "the result achieved by introducing a ledge...
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