Panduit Corporation v. Stahlin Bros. Fibre Works, Inc.
| Decision Date | 11 April 1969 |
| Docket Number | No. 4935.,4935. |
| Parties | PANDUIT CORPORATION, Plaintiff, v. STAHLIN BROS. FIBRE WORKS, INC., Defendant. |
| Court | U.S. District Court — Western District of Michigan |
Petherbridge, O'Neill & Aubel, Chicago, Ill., Roy E. Petherbridge, Chicago, Ill., Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich., for plaintiff; Peter P. Price, Grand Rapids, Mich., of counsel.
Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., John D. Simpson, Chicago, Ill., Schmidt, Smith & Howlett, Grand Rapids, for defendant; Richard L. Spindle, Grand Rapids, Mich., of counsel.
This is a patent infringement action brought by Panduit Corporation, a Delaware entity, with its principal place of business in Illinois (hereinafter plaintiff or Panduit), against Stahlin Bros. Fibre Works, Inc., incorporated and doing business in Michigan (hereinafter defendant or Stahlin Bros.). Plaintiff, owner of Kurt R. Walch U. S. Letters Patent No. 3,024,301, by mense conveyances (hereinafter Walch patent), alleges infringement of its patent by defendant.
The Walch patent teaches a wiring grille to be utilized in the wiring of control systems for electrical equipment. Plaintiff asserts that the defendant's "Loc" slot duct and "Web" slot duct infringe the Walch patent.
The action is brought pursuant to the patent laws of the United States, 35 U.S.C. § 281 et seq. The court has jurisdiction under 28 U.S.C. § 1338.
The control system of electrical equipment, in general, consists of a multitude of electrical components, such as relays and terminals, connected by a number of electrical wires. In order to facilitate the fabrication, subsequent revision and repair of these control systems, common practice is to install the electrical components and interconnecting wires in a metal enclosure. This entire assembly is known as an electrical control panel (shown in PX-41 and PX-66A-F). ("PX" refers to plaintiff's exhibit; "DX" refers to defendant's exhibit.)
Normally, the control panel is prefabricated as a separate unit and subsequently connected to the equipment, such as automated production line machinery, which it will control. After the control panel is joined to the machinery, the integrated unit is tested and any malfunctions corrected. If any later changes are made in the machinery or its mode of operation, changes often are also necessary in the wiring of the control panel.
Several techniques were in use before 1954 for wiring control panels, but no technique provided a satisfactory way to wire, repair and revise the control panels efficiently.
One of the earliest techniques was the "flat wiring" method in which each wire was laid flat against the back wall of the control panel. Multiple wires, running side by side in a parallel manner, were attached to the back wall. This method provided an attractive and a rather accessible panel; however, it required skilled craftsmen, was rather costly and required an inordinate amount of space.
With the development of more complex control panels, the number of electrical interconnections increased, requiring the use of more connecting wires. The space requirements of the "flat wiring" method were prohibitive and the "tied" or "laced" cable or harness method came into common usage. With this method, the wires were installed loosely on the panel between the components. After the wires were installed, they were tied or laced together with a cord or cable. Although this method saved space, it required skilled craftsmen to make a neat installation and was very time consuming. One of the difficulties with lacing was the problem of physically tracing an installed wire. Removal and replacement of a wire were also difficult.
These two methods, flat wiring and tied or laced harness, were in common use by the late 1920's, and their shortcomings were recognized by people in the industry who were constantly searching for solutions. (Testimony of Luc, Caveney, Taylor and Walch.)
After much trial and error, General Electric produced a steel grille which had perforated round holes through which wires were threaded (PX 63A). This device was patented in the 1930's (PX 67-6A and PX 62 at 50-53). Another product in use in the early 1950's was a U-shaped wiring duct (PX 2) which incorporated multiple openings in the side walls through which wires were threaded and then connected to the electrical components.
However, ducts with holes also had shortcomings. When these ducts were filled with wires, the wires were rather inaccessible and it was difficult to trace individual wires or to revise the wiring. For example, to remove any wire from the duct, it was necessary to disconnect the wire and thread it back through the hole. If the wire was not near the top of the duct, it was frequently necessary to remove a number of wires to gain access to the wire being traced or rerouted.
Kurt R. Walch, an employee of General Electric Company since 1926, was involved with electrical control panels and thoroughly familiar with the problems involved in flat wiring, tied or laced harness and round hole duct wiring techniques.
Mr. Walch, in 1953, as a senior advance engineer at General Electric, was given a broad assignment to improve wiring practices, including the improvement of wiring duct design. Four desirable functions or results were stressed by Mr. Walch in his work on the design of an improved wiring duct:
Mr. Walch in March of 1954 proposed an open slotted grille having parallel sides of flexible fingers with a restricted throat at the top (PX 20 at pg. 20D) (hereinafter the Walch grille). In March or April of 1954, he constructed a number of test grille models (PX 63) of soft copper wire. He selected the model having parallel spaced slots, flexible fingers and restricted passages at the open ends of the slots (PX 63) as the best. A patent application was filed on the Walch grille in October 1955, which ultimately resulted in the issuance of the Walch patent in suit.
Jack E. Caveney, president of plaintiff, is an electrical engineer who has engaged in the design and use of electrical control systems for many years. His experience in this field is both theoretical and practical. He has been engaged in design, correction and revision of control panels at both the source of manufacture and at field installations. In 1955, Mr. Caveney designed a wiring duct for control panels and, on a parttime basis, started a predecessor company of plaintiff to manufacture this wiring duct (hereinafter Panduit duct). This duct was similar to the Walch invention but had solid fingers instead of fingers formed of wire. In February of 1956, Mr. Caveney filed a patent application on the Panduit duct.
In 1959 the Patent Office suggested to both Mr. Walch and Mr. Caveney that they copy a claim into their respective patent applications for the purpose of determining which of them was the inventor of the subject matter of the claim. Each copied the suggested claim into his patent application and the Patent Office then instituted an interference proceeding based on this claim. Mr. Walch was awarded priority of invention. He was therefore entitled to this claim in interference and the Walch patent was issued March 6, 1962. Mr. Caveney filed a motion during the interference urging that Walch could not make the count in interference because of his wire constructions, but the Patent Office ruled that Walch could make the count. This claim in interference became claim 5 of the Walch patent in suit.
The heart of Panduit's business was the patented duct, and in order to protect its investment Panduit purchased the Walch patent from General Electric.
Mr. Caveney also continued to prosecute his application to obtain whatever additional patent protection he could on the details of the Panduit duct. This was done to determine whether he was entitled to any additional patent protection. The court finds that he proceeded in a reasonable and prudent manner
Mr. Caveney argued before the Patent Office examiner that although the Walch patent covered the basic invention, the solid plastic finger of the Panduit duct was a patentable improvement over the wire fingers of Walch. The examiner refused to adopt this argument and held that the Panduit duct was not patentable over the Walch patent.
Mr. Caveney appealed the examiner's decision to the Patent Office Board of Appeals and the United States Court of Customs and Patent Appeals. In 1967, the United States Court of Customs and Patent Appeals affirmed the Patent Office's rejection of the Caveney patent application, concluding that the Walch duct had all but one of the four listed advantages of the Caveney duct, that the commercial success of the Caveney duct embodied the Walch invention, and that the commercial success of the Caveney duct was attributable to those features of the Panduit duct covered by the Walch patent for which priority was awarded. In re Caveney, 386 F.2d 917.
Plaintiff now sues defendant Stahlin Bros., claiming defendant's Loc-Slot and Web-Slot ducts infringe claim 5 of the Walch patent. Claim 5 reads as follows (PX 30) (and Fig. 2, PX 27):
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