Simmons Fastener Corp. v. Illinois Tool Works, Inc., 80-CV-468.

CourtUnited States District Courts. 2nd Circuit. United States District Court of Northern District of New York
Citation560 F. Supp. 1277
Docket NumberNo. 80-CV-468.,80-CV-468.
Decision Date04 April 1983

Kohn, Bookstein & Karp, Albany, N.Y., Wyatt, Gerber, Shoup, Scobey, Eliott, Gerber & Badie, New York City, for plaintiff; Richard A. Kohn, Albany, N.Y., of counsel.

Bouck, Holloway & Kiernan, Albany, N.Y., Cook, Wetzel & Egan, Chicago, Ill., for defendant; Granger Cook, Jr., Chicago, Ill., of counsel.

McCURN, District Judge.


The plaintiff, Simmons Fastener Corporation ("Simmons"), brought this action against defendant Illinois Tool Works ("ITW"), for a judgment declaring that United States Patent No. 3,802,476, entitled "Screw Anchor", and naming James E. Hoadley as its inventor, ("the Hoadley Patent") is invalid, not infringed, and not enforceable against Simmons. ITW, the owner of the patent by virtue of an assignment from Hoadley, has counterclaimed, charging Simmons with wilful infringement. Jurisdiction of the Court is based on 28 U.S.C. Sec. 1338 relating to patent suits and 28 U.S.C. Sec. 2201 authorizing declaratory judgments; venue is proper under 28 U.S.C. Sec. 1400.

A non-jury trial on the issue of liability only was held before this Court from January 18-21, 1983, with summation by the parties on February 3, 1983.1 This opinion constitutes the Court's findings of fact and conclusions of law pursuant to Rule 52(a) of the Fed.R.Civ.P.

I. Background

Both Simmons and ITW manufacture and distribute fasteners for industrial use. The Hoadley patent covers a fastener with particular application in the refrigerator industry. During the mid to late 1960's, manufacturers began to convert from refrigerators made with a steel inner liner and fiberglass insulation between the liner and the steel outer shell, to a thin flexible plastic liner, and foamed-in-place insulation between the liner and the shell. The new plastic liners, though advantageous in many ways, confronted manufacturers with difficulties in installing shelves and other hardware in the refrigerator cabinet. The liners were fragile and subject to cracking, and tended to be of uneven thickness. Moreover, holes made in the liner for the reception of fasteners would, if left exposed during the foaming process, result in seepage of insulation into the cabinet. The foaming process involved the injection of liquid polyurethane into the space between the steel outer shell and the plastic inner liner; that substance then expanded to fill the entire space between the shell and liner, insulating the refrigerator interior. Any seepage of foam through the liner during this process tended to disrupt production and damage the cabinet.

The Hoadley invention is one of many products which was devised in response to the fastening problems expressed by refrigerator manufacturers.2 More fully described elsewhere in this opinion, it is in typical embodiment a small metal plate (the exhibit offered to the Court is approximately 1 inch by ¾ inch in size) with a centrally located helical screw impression (App. A Fig. 1 # 14) and "wings", or bent plate edges (Fig. 2 # 12a). The plate is located to its proper position on the insulation side of a refrigerator liner by two upstanding "tabs" (Fig. 4 # 16). Once positioned, it adheres to the liner by the use of an adhesive pad, typically double-sided tape, on its face (Fig. 1 # 20). The tape not only enables the device to stick to the liner, it also seals the aperture in the liner, preventing insulating foam from seeping through to the cabinet. The device will anchor a screw, which is installed from the refrigerator cabinet through the liner and into the helical screw impression (Fig. 5). The screw can then be used to attach shelves and other hardware to the refrigerator cabinet.

Simmons presently manufactures a virtually identical device, which it calls an "adherable nut plate". This nut plate is the subject of the ITW counterclaim of patent infringement. Simmons bases its right to manufacture that product on three grounds: (1) the Hoadley patent is invalid because its subject matter does not meet the statutory requirement of non-obviousness. 35 U.S.C. Sec. 103; (2) the Hoadley patent is not infringed by the Simmons product because the patent claims a plate with two tabs "at opposite sides of" the screw impression, while the accused Simmons nut plate has three tabs situated around the screw impression which are not diametrically opposite one another; (3) the Hoadley patent is not enforceable due to the failure of ITW to fully and accurately disclose the prior art to the Patent Office during the prosecution of the patent, and due to various acts of patent misuse by ITW.

Because the Court has determined that the Hoadley patent is invalid as obvious under 35 U.S.C. Sec. 103, the issues of infringement and enforceability are not reached.

II. Nonobviousness Standard

In order to limit the availability of the patent monopoly to "those inventions which would not be disclosed or devised but for the inducement of a patent", Graham v. John Deere Co., 383 U.S. 1 at 11, 86 S.Ct. 684 at 690, 15 L.Ed.2d 545 (1966), Congress imposed three explicit conditions on patentability: utility, 35 U.S.C. Sec. 101; novelty, 35 U.S.C. Sec. 102; and nonobviousness, 35 U.S.C. Sec. 103. Simmons concedes that the patented screw anchor is both useful and novel, but insists that the device would have been obvious to one having ordinary skill in the appliance fastener art. Section 103 states, in pertinent part:

A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

In Graham v. John Deere, supra, the Supreme Court established the following guidelines for determining obviousness:

Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness, these inquiries may have relevancy.

Id., 383 U.S. at 17-18, 86 S.Ct. at 694.

It is essential in conducting this analysis that the Court avoid hindsight, and not "succumb to the tendency of regarding virtually any improvement as `obvious' in light of the modern, updated art." Maclaren v. B-I-W Group, Inc., 535 F.2d 1367, 1375 (2d Cir.1976); Karch v. United States, 568 F.2d 722, 726 (Ct.Cl.1977).3 At the same time, the Court does not need to ponder whether the subject matter was obvious to the inventor himself, in light of his actual knowledge of the prior art; our inquiry is directed to whether the subject matter would have been obvious to "the hypothetical person of ordinary skill in the art who is presumed to have knowledge of all prior art in his field of endeavor."4Pevar v. United States, 215 U.S.P.Q. 265, 277 (Ct.Cl. 1982); Application of Wood, 599 F.2d 1032, 1036 (Cust.Pat.App.1979); Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 83, 213 Ct.Cl. 395 (Ct.Cl.1977); Maclaren v. B-I-W Group, Inc., supra, 535 F.2d at 1378; Application of Winslow, 365 F.2d 1017, 1020, 53 Cust. & Pat.App. 1574 (Cust.Pat. App.1966). The determination to be made, then, is whether the subject matter of the Hoadley patent would have been obvious to a skilled engineer in the fastener field who was addressing the same problem and who was aware of the pertinent prior art.

III. The Prior Art

Numerous examples of patented and nonpatented devices which the parties agree constitute "prior art" under 35 U.S.C. Sec. 103 were presented to the Court in the course of the trial. ITW sought to illustrate their perspective of the development of the Hoadley screw anchor by introducing a "Hoadley Invention History" chart exhibiting five prior art devices: a metal plate, ITW screw grommets, ITW plastic 1/8 turn anchor, Simmons back-up plate, and the Ryder Varinut. Simmons, however, focused the Court's attention on three devices upon which their claim of obviousness primarily rests: the Knowlton fastener, the above-mentioned Simmons back-up plate, and the Krueger fastener.

The Patent Office cited seven patents which it found pertinent to the Hoadley invention. The Krueger fastener was the only one of the above-mentioned devices on its list. Of the remaining six Patent Office references, only the Phelan patent warrants description in this section.

In its attempt to comprehend the prior art, the Court was assisted by the relative simplicity of the devices and the mechanical principles they incorporate. The Court's understanding was greatly enhanced by the introduction of physical exhibits, photographs, diagrams, and patent descriptions, in addition to the explanatory efforts of the parties' expert and fact witnesses. This evidence revealed the following characteristics of the prior art:

A. Metal Plate: A simple plate of often scrap metal with a punched screw hole, which is held in place on the insulation side of the liner and sealed against leakage by conventional masking tape. The fastener is not self-adhering and requires a tool such as an awl to align the hole in the part with the hole in the liner until the tape is applied. Tape is not a dependable means for sealing the hole in the liner, as foam on occasion gets under the plate and leaks into the cabinet.

Installation is difficult; it requires one hand on either side of the liner and, depending on the location of the hole, might require two workers....

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3 cases
  • Simmons Fastener Corp. v. Illinois Tool Works, Inc.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • July 31, 1984
    ...'476 patent are infringed by the accused Simmons devices and whether the '476 patent is enforceable. REVERSED AND REMANDED. 1 560 F.Supp. 1277, 218 USPQ 547 (1983).2 The asserted grounds for unenforceability are that ITW failed to fully and accurately describe prior art to the Patent and Tr......
  • Simmons Fastener Corp. v. Illinois Tool Works, Inc., 86-CV-280.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Northern District of New York
    • June 24, 1987
    ...In its opinion, the court stated that "Knowlton exhibits a single plate, folded into two layers." Simmons Fastener Corp. v. Illinois Tool Works, Inc., 560 F.Supp. 1277, 1284 (N.D.N.Y.1983), rev'd, 739 F.2d 1573 (Fed.Cir.1984). ITW has jumped on this language to support its argument that the......
  • SIMMONS FASTENER CORPORATION v. Illinois Tool Works, Inc., 80-CV-468.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Northern District of New York
    • April 7, 1986
    ...judgment in favor of the plaintiff, finding that the patent was invalid due to obviousness. Simmons Fastener Corp. v. Illinois Tool Works, Inc., 560 F.Supp. 1277 (N.D.N.Y. 1983) (McCurn, J.). That judgment was subsequently reversed and the case was remanded by the United States Court of App......

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