Schmidinger v. Welsh

• Decision Date: 26 July 1965
• Docket Number: Civ. No. 97-60.
• Citation: 243 F. Supp. 852
• Parties: Joseph SCHMIDINGER and Tung-Sol Electric, Inc., Plaintiffs, v. Marie J. WELSH, James W. Welsh, Welflash, Inc., Oxford Electric Corporation, and its Hudson Lamp Division, Hudson Lamp Co., Inc., Best Mfg. Co., Inc. and its Hudson Lamp Co., Inc., Division, Defendants.
• Court: U.S. District Court — District of New Jersey

243 F. Supp. 852

Joseph SCHMIDINGER and Tung-Sol Electric, Inc., Plaintiffs, v. Marie J. WELSH, James W. Welsh, Welflash, Inc., Oxford Electric Corporation, and its Hudson Lamp Division, Hudson Lamp Co., Inc., Best Mfg. Co., Inc. and its Hudson Lamp Co., Inc., Division, Defendants.

Civ. No. 97-60.

United States District Court D. New Jersey.

July 26, 1965.

Steelman, Lafferty, Rowe & McMahon, Newark, N. J., Eyre, Mann & Lucas, New York City, of counsel, by William D. Lucas and Melvin H. Kurtz, New York City, for plaintiffs.

Walter A. Beers, Newark, N. J., Kenyon & Kenyon, New York City, of counsel, by Richard A. Huettner and William F. Noval, New York City, for defendants.

AUGELLI, District Judge.

This patent infringement suit involves the familiar automobile directional signal flasher.

Plaintiffs charge that the device manufactured and sold by defendants, which operates as a directional signal flasher for automobiles, is an infringement of claims 12, 17, 18, 23 and 26, of plaintiffs' United States Letters Patent No. Re. 24,023, hereinafter referred to as the 023 patent.

The action arises under the patent laws of the United States, and more particularly under 35 U.S.C.A. § 271 and §§ 281 to 285 of the same title. Jurisdiction is conferred on the Court by 28 U.S.C.A. §§ 1338 and 1400(b).

By stipulation, plaintiffs' complaint was amended to include a claim of unfair competition against defendants for allegedly using plaintiffs' trade secrets and confidential information relating to mass production techniques, in the manufacture of the accused device.

Defendants deny infringement and put in issue the validity of the 023 patent. They also deny the allegations of the unfair competition claim. The parties have agreed that defendants' second and third counterclaims, charging plaintiffs with unfair competition and violations of the antitrust laws, are to be tried separately, and subsequent to, determination of the issues now before the Court.

The trial of this action consumed 23 days and resulted in a rather voluminous record, including over 100 exhibits. There was much expert testimony, supplemented by demonstrations in court showing the assembly of the component parts of the patented and accused devices, and the manner in which they functioned.

Plaintiff Joseph Schmidinger, a resident of the State of New York, is the patentee of the 023 patent in suit. Plaintiff Tung-Sol Electric, Inc., a Delaware corporation having its principal place of business in New Jersey, has for many years been engaged in the manufacture and sale of miniature lamps and electrical equipment, particularly for the automobile industry. It has an exclusive license under the 023 patent, subject to a nonexclusive license to Signal-Stat Corporation, a company that had previously been sued by plaintiffs in the United States District Court for the Eastern District of New York for infringement of the patent in suit.

Defendants Marie J. Welsh and her husband James W. Welsh, residents of New Jersey, organized the defendant Welflash, Inc., a New Jersey corporation, for the purpose of manufacturing and selling the device accused in this case. Unless otherwise stated, any references hereinafter made to "Welsh" shall be deemed to apply to defendant James W. Welsh.

Defendant Oxford Electric Corporation, an Illinois corporation, and its wholly owned subsidiaries, defendants Hudson Lamp Co. Inc. and Best Mfg. Co. Inc., both New Jersey corporations, have acquired all of the physical assets, manufacturing techniques and "know how" of Welflash, Inc., and continue to carry on the business of that company in the production of the accused device.

The patent in suit describes a snap action device of wide application, one that is both electrically and thermally responsive. It may be used as a relay, flasher, circuit breaker, overload protector, load indicator, switch, or thermostat. When the device is to be used as a switch, the specifications, after suggesting the dimensions and materials to be used in connection therewith, state that "a switch of such dimensions and of such material is suitable for use, for example, as a flasher for automobile direction signal and stop lights."

The structure¹ of the claims of the 023 patent may be said to comprise: a resilient metal plate or buckling member having an inherent permanent deformation therein that runs straight through or across the member to provide a single stable position of configuration or constraint; a pull means, such as an expansible flexible ribbon attached at its outer ends to the convex side of the buckling member adjacent the ends of the deformation and preferably arranged parallel to the deformation; and, except in claim 26, a fixed support or electrical terminal that is attached to the pull means or ribbon. Snap action of the buckling member, in a uniform cyclic beat, is obtained by feeding electric current through the buckling member and pull ribbon in a divided circuit. Plaintiffs refer to the buckling member and pull ribbon of the device as the active elements thereof, and the fixed support, as the passive element.

In operation, and in the initial starting position, tension in the pull ribbon holds the buckling member in its snapped position. In this position the center of the buckling member is bowed out to form a channel positioned 90° to the permanent deformation and of opposite curvature thereto. The 90° channel of opposite curvature causes a gap to form between the buckling member and the pull ribbon. This 90° channel of opposite curvature is characteristic of the snap action of what plaintiffs termed the "hard" buckler of the patented device, which Schmidinger achieved by means of a single flexible pull ribbon arranged on the convex side of the buckling member parallel to the deformation.

When the buckling member is in its snapped position, a gap is formed between the buckling member and pull ribbon. At such time the electrical contacts are closed. When the operator of the automobile moves the signal lever into signaling position, electric current passes through the buckling member and pull ribbon in a divided flow to generate heat and relax the tension in the ribbon. As a result, the buckling member snaps to close the gap and open the electrical contacts. Thereupon, the buckling member and pull ribbon cool and contract, until the tension in the ribbon is restored to snap the buckling member and open the gap. The electrical contacts again close, and the cycle is automatically repeated as long as the directional signal lever remains in signaling position.

In each of the two positions assumed by the buckling member in its back-and-forth snap action, there is a so-called "locking" effect, where the buckling member dwells in position. This dwelling in each position is due to the differential expansion and contraction of the pull ribbon and buckling member. The buckling member remains or dwells in each position while the pull ribbon is expanding or contracting, but thereafter suddenly snaps and moves very rapidly through an equilibrium position located between the two "locked" positions. The differential expansion and contraction are caused by the divided circuit flow of current through the buckling member and pull ribbon, and the ambient cooling thereof.

Defendants contend that the invention of the 023 patent was anticipated by the prior art; that the claims in suit are invalid for lack of invention over the prior art; and also, that said claims are invalid because they are indefinite and vague. At this point it is appropriate to refer to the claims.

Claim 12 must be read together with claim 10. So combined, the claim covers:

"10. A snap action device comprising a disc having an inherent diametral deformation therein tending to cause it to assume a constrained shape, a support element having laterally flexible pull means fastened thereto and radiating out therefrom, the outer ends of said pull means being fastened to points of said disc at opposite ends of the deformation therein and on the convex side thereof whereby when the tension in said pull means is reduced the center of the disc snaps in one direction to assume its constrained shape and when the tension in said pull means increases the snap action of the center of the disc occurs in the other direction.

"12. The snap action device according to claim 10 wherein said pull means and disc are of electrical conducting material and the tension in said pull means is varied by differential expansion and contraction of said pull means and disc with passage of current therethrough."

Claim 17 reads as follows:

"17. A thermal switch device comprising a support, a buckling member having a portion adapted to occupy two different positions for operating a circuit opening and closing contact, and linear expansible pull means carried by said support and fastened at two spaced points to said buckling member to control the buckling thereof to cause said portion to occupy one of said positions responsively to current flowing through the expansible means, and said buckling member being carried by said expansible pull means, the buckling member being the form of a constrained disc with the outer ends of the expansible means fastened to one side of the disc at diametrically opposite points adjacent its periphery."

Claim 18 is identical to claim 17, except that the buckling member is described as "being a disc of comparatively thin spring metal doubly constrained by having a transverse bend formed therein and by the pull of the expansible means fastened at its ends to the convex side of said bend."

Claim 23 covers:

"23. A thermal switch device comprising a support, a substantially circular buckling member carrying a contact and having an inherent constraint tending to move said contact through a dead center position to occupy a circuit controlling position and linear expansible pull means carried by said support and fastened to said

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