Slater Elec., Inc. v. Thyssen-Bornemisza Inc.

• Decision Date: 14 November 1986
• Docket Number: No. 81 Civ. 6101-CSH.,81 Civ. 6101-CSH.
• Citation: 650 F. Supp. 444
• Parties: SLATER ELECTRIC, INC., Plaintiff, v. THYSSEN-BORNEMISZA INC., a corporation formerly known as Indian Head, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

650 F. Supp. 444

SLATER ELECTRIC, INC., Plaintiff, v. THYSSEN-BORNEMISZA INC., a corporation formerly known as Indian Head, Inc., Defendant.

No. 81 Civ. 6101-CSH.

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

November 14, 1986.

COPYRIGHT MATERIAL OMITTED

John A. Diaz, Robert E. Paulson, Christopher A. Hughes, Morgan & Finnegan, New York City, for plaintiff, Slater Elec., Inc.

Granger Cook, Jr., Russell J. Barron, Cook, Wetzel & Egan, Ltd., Chicago, Ill., for defendant, Thyssen-Bornemisza, Inc.; Charles F. Richter, Quasha, Richter, Schneider & Wessely, New York City, William R. Laney, Laney, Dougherty, Hessin & Beavers, Oklahoma City, Okl., of counsel.

HAIGHT, District Judge:

Plaintiff Slater Electric Inc. began in 1973 to manufacture and sell a molded plastic electrical outlet box incorporating a useful labor-saving innovation. An outlet box is the rectangular, open-faced box in which an electrical wall outlet unit is mounted. To secure the outlet in a wall, the outlet is ordinarily screwed into the box, and the box is nailed to a wall stud. Plaintiff's particular innovation was to develop a way to speed the process of screwing the outlet unit into the box. By means of small metal clips placed in identical, carefully designed holes at the top and bottom of the plastic box, plaintiff made it possible for the screws securing the outlet in the box to be pushed, rather than screwed, into place. Apparently this innovation satisfied a need in the construction industry, for the new box proved popular, and plaintiff's competitors allegedly scrambled to copy it. One of those scrambling competitors was defendant Thyssen-Bournemiza ("T-B"), which began in 1981 to manufacture an outlet box with a similar clip-and-hole device which accomplished the same labor-saving end.

Plaintiff, which in the meantime had secured three patents on various aspects of its outlet box, promptly brought this suit for patent infringement. T-B has answered that its box does not infringe the patents on the Slater device, but that even if it does the patents are invalid. Presently before the Court are cross-motions for summary judgment addressed solely to the issue of infringement. Slater claims that the facts indisputably demonstrate infringement; T-B claims the exact opposite.

I. The Invention and the Accused Device

As noted above, the invention is an electrical outlet box into which screws securing the outlet may be pushed rather than screwed. The box has only two components, a molded plastic box and small metal clips inserted at each end of the box. Unthreaded holes are molded into bosses at each end of the box; the holes receive, but do not secure, the screws. The small clips, punched from sheet metal and inserted in slots next to the holes, secure the screws by means of a prong which projects from the clip into the hole and engages the threads of the screw. The prong is bent in the direction of inward movement of the screw. Because the prong is flexible, the threads of the screw slide over it, ratchetlike, as the screw is pushed in, but it catches the threads and resists if an attempt is made to pull the screw out, against the direction of the bend. This permits the screw to be tightened against the prong.

The three drawings below, taken from one of plaintiff's patents, illustrate one, although not the only, physical embodiment of this invention. Figure 1 shows an exploded view of the outlet box and outlet. The boreholes which receive the screws are located in bosses formed at the top and bottom of the box; the clips, numbered 8, are inserted in the bosses near the holes.

Figure 1

Figure 2 is a sample clip. The prong which engages the screw threads is numbered 23.

Figure 2

Figure 3 is a cross-sectional view of the hole and clip with a screw inserted.

Figure 3

The invention is a rather simple one. It contains one additional feature which requires some discussion in order to clarify the terms of this dispute. A major design problem for this type of device is devising a means for securing the clip in the slot next to the hole. Some such means is necessary, for pushing the screw in tends to push the clip inward out of the slot, while tightening the screw against the prong tends to pull the clip out of the slot in the other direction. In the example shown in Figures 1-3, this problem is solved by way of the two additional prongs punched from the clip, numbered 21 and 22 in Figure 2. As can be seen from Figure 3, these two prongs grip either side of a ridge, numbered 10, molded into the box inside the clip-holding slot. By abutting the ridge, prong 21 resists the outward pull caused by tightening the screw while prong 22 resists the inward push produced when the screw is inserted.

Because it works in a similar manner, the accused device is best described in relation to the sample invention shown above. The accused device is also a molded plastic outlet box with metal clips designed to permit screws to be pushed into them. The device uses an outlet box like that seen in Figure 1, with bosses for receiving the screws molded into either end of the box. The clip is inserted into a slot adjoining the screwhole, but the hole and clip are shaped differently from those of plaintiff's sample invention. Figures 4 and 5 are two views of defendant's clip, an L-shaped affair with several tabs. Figure 6, analogous to Figure 3 above, is a cross-sectional view of the assembled clip and hole.

Figure 4

Figure 5

Figure 6

Although the clip and hole of the accused device are shaped differently from those of the sample invention, they have similar functional features. Two prongs, numbered 1 in Figures 4 and 5, engage the threads of the screw. Like prong 23 in the patented device, they are bent in the direction of inward movement of the screw; they give if the screw threads are pushed over them but catch the threads and resist if outward force is applied to the screw. A second set of prongs, numbered 2, engages a pair of ridges, numbered 3 in Figure 6, which are molded onto either side of the hole and prevents outward movement of the clip. The prongs and ridges are situated so that a screw slides between them when inserted. By preventing outward movement of the clip, these prongs perform the function of prong 21 of the patented device. In contrast to plaintiff's clip, defendant's is not wholly internal. The short leg of the "L" remains outside the hole. The screw is inserted through the a square in this leg. Flaps on either side of the short leg of the "L," numbered 5 in Figures 4 and 5, prevent inward movement of the clip by resting in grooves cut in the top of the boss on either side of the hole. These perform the function of prong 22 of the patented device.

Plaintiff is suing for infringement of two patents. United States Patent No. 8,105,862 ("the '862 patent") covers an "outlet box having screw mounting means," i.e., the outlet box described generally above. United States Patent No. 4,188,854 ("the '854 patent") covers "screw mounting means," i.e., the clip and hole device described above which is used to secure the outlet in the box. Thus the '862 patent includes the device described in the '854 patent. In its cross-motion for summary judgment, plaintiff contends that defendant's outlet box and the means defendant's box uses to secure the outlet in the box fall within the description of the invention embodied in certain of the claims of the '862 and '854 patents. If the accused device falls clearly within the bounds of these claims a case of literal infringement is made out. Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950); Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir. 1984). Defendant contends essentially the opposite: that when the claims in the patents are properly construed — that is, construed in light of the prosecution history and specifications of the patents — the accused device plainly falls outside of them. In addition, defendant claims that in various statements plaintiff made to the patent examiners during prosecution of these patents it effectively disclaimed coverage of a device like defendant's. As a result, it is argued, plaintiff is estopped from claiming infringement now.

II. The Prosecution History of Plaintiffs Patents

Central to defendant's motion is the prosecution history of the patents. Both arise from a 1971 application for a patent on a "screw mounting means." In that application, the drawings reproduced as Figures 1-3 were used to illustrate the "preferred embodiment" of the invention sought to be patented.¹ With a few exceptions, claim one of the 1971 application, the broadest claim, is identical to claim one of the '854 patent here at issue.² The examiner in the Patent Office rejected the 1971 application as both anticipated by the prior art and as an obvious modification of prior art structures. Claim one of the 1971 application was amended slightly³ in an effort to persuade the examiner of its distinction from the cited prior art, but the effort was futile. The examiner again rejected the claims as anticipated, and plaintiff abandoned its application.

In 1973 plaintiff tried again. A new application for a patent on a "screw mounting means" was submitted which carried over much of the material in the 1971 application but added an alternative preferred embodiment of the invention. The new embodiment involved use of a differently shaped clip, seen in Figure 9, infra. Claim one of the new application, designed to accommodate both embodiments, is identical to claim one of the '854 patent.⁴ This application was considered by the same examiner who rejected the 1971 application and, perhaps not surprisingly, was rejected for similar reasons. In submitting an amended 1973 application, plaintiff amended claim one in an apparent attempt to define more precisely the role of the prong which engages the screw. This fared no...