Simmons Fastener Corp. v. Illinois Tool Works, Inc.

• Decision Date: 24 June 1987
• Docket Number: No. 86-CV-280.,86-CV-280.
• Citation: 663 F. Supp. 697
• Parties: SIMMONS FASTENER CORPORATION, Plaintiff, v. ILLINOIS TOOL WORKS, INC., Defendant.
• Court: U.S. District Court — Northern District of New York

663 F. Supp. 697

SIMMONS FASTENER CORPORATION, Plaintiff, v. ILLINOIS TOOL WORKS, INC., Defendant.

No. 86-CV-280.

United States District Court, N.D. New York.

June 24, 1987.

Wyatt Gerber Shoup Scobey & Badie (Eliot S. Gerber, of counsel), New York City, Kohn Bookstein & Karp (Richard A. Kohn, of counsel), Albany, N.Y., for plaintiff.

Cook Wetzel & Egan, (Granger W. Cook, of counsel), Chicago, Ill., Bouck Holloway Kiernan & Casey (Francis Holloway, of counsel), Albany, N.Y., for defendant.

MEMORANDUM-DECISION AND ORDER

McCURN, District Judge.

This action involves allegations of patent infringement made by defendant Illinois Tool Works, Inc. (ITW) against plaintiff Simmons Fastener Corporation (Simmons). The object of the allegations is a small metal device alternately known as a fastener, nut plate, or screw anchor (fastener) that is used primarily in securing shelves inside of refrigerators by serving as an anchor for a screw.

ITW has made such a fastener for a number of years, and that fastener is protected by U.S. Patent No. 3,812,476 (the Hoadley patent).¹ In December of 1985, Simmons introduced a fastener that ITW contends infringes the Hoadley patent.² Simmons subsequently filed a complaint in this court seeking a declaration that its new fastener does not infringe the Hoadley patent, and ITW in turn filed a complaint instituting a separate action in which it alleges that the new Simmons fastener does in fact infringe the patent. See 35 U.S.C. §§ 271, 281.

The separate actions were consolidated by the court, and a bench trial on the issue of liability was held between January 20 and 23, 1987. The court properly has jurisdiction of the matter pursuant to 28 U.S.C. § 1338(a) and 28 U.S.C. § 2201(a) and herein sets forth its findings of fact and conclusions of law in accordance with Fed.R. Civ.P. 52(a).

Factual Findings

Although ITW contends that the Simmons fastener infringes several claims of the Hoadley patent, the court's attention during trial was directed primarily to Claim 1 of the patent, which provides:

1. A screw anchoring device for pre-assembled aperture sealing attachment with an apertured panel to confine material, such as insulating material foamed in place between the panel and attached spaced wall or other structure; and comprising a plate member having a central aperture forming a helical screw receiving impression and a generally flat portion, a pair of upstanding tabs projecting from one face of the generally flat portion of said plate member at opposite sides of and adjacent to said screw impression, said tabs being struck from within the margins of said plate member, and a continuous pad of a material capable of being penetrated by said screw and having an exposable adhesive surface substantially covering and carried by the plate member, with the tabs projecting for entry into the panel aperture and through said pad to locate the anchoring device and with the adhesive surface of the pad extending across the panel aperture for mounting and sealing adherence to the adjacent panel surface whereby to prevent egress of trapped material through the panel aperture, and with the screw impression in position for threaded engagement with a screw passed through the panel aperture and the pad for attachment of a utility component to the opposite panel surface, and one or more wing portions formed from said plate member at one or more edges of said flat portion of said plate member, said wing portions being angled away from the face thereof opposite to that of the tabs, and adapted to be embedded in the foamed material for supplementing the other anti-rotative features of the anchor.

ITW's position is that the fastener infringes the claim literally and under the doctrine of equivalents. The court will compare the Simmons fastener to the elements of the claim itself and then determine whether there is infringement, either literal or under the doctrine of equivalents. As an aid in this discussion, the ITW and Simmons fasteners appear as follows:

(A) Wing Portion

The first issue that the court will address is whether the Simmons fastener has one or more wing portions used for supplementing the other anti-rotative features of the fastener. ITW maintains that the small piece on the Simmons fastener that connects the two larger pieces, called by Simmons the leaf and the plate, is a wing portion. Simmons, who appropriately enough refers to this small center piece as the connector, argues that it is not a wing portion because (1) it does not have a free edge and (2) it does not have the same function as the wing portion on the ITW fastener.

The court agrees with the arguments of Simmons. First, under any reasonable definition of the term, a wing must have a free edge. The wings on the ITW fastener do in fact have free edges, and although the physical embodiment of the patent is not controlling, the wings on the ITW fastener do serve to illustrate what typically is referred to as a wing.

Second, the connector on the Simmons fastener does not have the same function as the wings on the ITW device. A great deal of energy was expended by both sides on the question of whether the Simmons connector supplements the other anti-rotative features of the fastener.

In order to address the question of rotation, it is useful to briefly set forth how the fasteners are used in refrigerator assembly. Most modern refrigerators have an outer shell and an inner liner. The space between the shell and the liner is normally filled with some sort of insulating material, usually foam, that helps prevent cold from escaping the refrigerator. Shelves are attached to the inside of a refrigerator's storage area by screws. The screws go through openings on the shelves and protrude outward through the liner into the space between the liner and the outer shell. Fasteners, such as those under discussion in this case, are used to receive and anchor the screws when they go through the liner so that the screws can be tightened. The fasteners are thus located in the space between the shell and the liner and are therefore surrounded by the insulating foam.

ITW asserted during trial that when shelves are being attached to a refrigerator, there is sometimes a problem with what ITW calls "spinners." The spinner problem to which ITW referred allegedly occurs when a screw is too large for the screw impression in the fastener and the screw then jams in the screw impression, forcing the fastener to spin with the screw when the screw is turned. ITW maintains that anti-rotative features of a fastener, such as wings, will prevent the fastener from spinning in the foam. The fastener will hold tight, and the screw, despite its improper size, can be forced through the screw impression and properly tighten in the fastener.

Notwithstanding ITW's evidence on "spinners," the court heard little, if any, testimony that this type of spinning occurs in the real world of refrigerator assembly. ITW's own witnesses could not state that they had ever observed such spinning.

ITW directed the court's attention to a test that it performed that it contends establishes that the connector on the Simmons fastener helps prevent the fastener from rotating in the foam insulation. ITW took a number of Simmons fasteners and soldered screws in them. It then removed the connector portions from half of the fasteners and applied wax to the exposed surfaces on all of the fasteners so as to isolate the connector as a factor in preventing rotation. The fasteners were then embedded in foam insulation, and once the foam cured, a rotation force was applied to each fastener by way of the soldered screw to determine if and how much each fastener would rotate. The result of the test was that Simmons fasteners without connectors rotated more in the foam than those with connectors, thus presumably proving ITW's point that the Simmons connector serves to prevent the fastener from rotating.

Simmons also introduced evidence on "spinners," but spinners of a different type. Simmons called two witnesses who work for a major refrigerator manufacturer in Michigan that now uses Simmons fasteners. Neither of these witnesses had ever seen or heard of the type of spinning on which ITW presented evidence. Rather, they testified that in the past, on occasion, when shelves were being installed in refrigerators, the electrically powered screw guns that are used to screw the shelves into place were sometimes set with too much torque and would strip the screw impression in a fastener. When such stripping occurred, the screw would spin freely in the screw impression, but the fastener itself would not spin. However, since using Simmons fasteners, this type of spinning has not been a problem.

Simmons performed its own tests to determine if the connector on its fastener helps prevent the fastener from rotating. Simmons, like ITW, used fasteners with and without the connector. However, there were some differences between the Simmons and the ITW tests. Simmons contended at trial that the foam used in the ITW test, which Simmons inspected, was not as dense as the foam normally used in refrigerator construction. While ITW disputes this contention, Simmons used a denser foam that it maintains is of the type mormally used in the industry. Further, Simmons did not wax the non-connector surfaces of the fasteners, as such wax is never used in the actual assembly of refrigerators.

In Simmons's first test, a screw gun was set at fifteen inch pounds of torque, and no fastener, with or without the connector, rotated. In the second test, a very powerful torque wrench was used, and it applied a much higher torque load. Again, there was no rotation, as the screw impressions collapsed on all of the fasteners before there was any rotation of the fasteners themselves.

These test results are in accord with Simmons's argument that it would be all but impossible for the fastener to rotate. Simmons argues, and...