Stanley Works v. McKinney Mfg. Co.

• Decision Date: 27 August 1981
• Docket Number: Civ. A. No. 79-567.
• Citation: 520 F. Supp. 1101
• Parties: The STANLEY WORKS, Plaintiff, v. McKINNEY MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

520 F. Supp. 1101

The STANLEY WORKS, Plaintiff, v. McKINNEY MANUFACTURING COMPANY, Defendant.

Civ. A. No. 79-567.

United States District Court, D. Delaware.

August 27, 1981.

William Prickett and Michael Hanrahan, Prickett, Jones, Elliott, Kristol & Schnee, Wilmington, Del., for plaintiff; Frank W. Ford, Jr., and Richard S. Clark, Brumbaugh, Graves, Donohue & Raymond, New York City, of counsel.

Henry E. Gallagher, Jr., Connolly, Bove & Lodge, Wilmington, Del., for defendant; Gordon D. Coplein and Joseph Lerch, Darby & Darby, P. C., New York City, of counsel.

OPINION

MURRAY M. SCHWARTZ, District Judge.

This is an action for patent infringement under 35 U.S.C. § 271. Defendant denies infringement and counterclaims for a judgment declaring the patent invalid under 35 U.S.C. §§ 102(a) and (b), and 103. The Court has jurisdiction by virtue of 28 U.S.C. § 1338. Finding that the litigated claims of the patented invention were obvious under section 103, the Court holds those claims invalid.

BACKGROUND

A. The Devices

Plaintiff, The Stanley Works ("Stanley"), owns United States Patent No. 3,806,852 (the "Suska patent") (PX1)¹ for a "switch activating hinge," some of the claims of which are the subject of this lawsuit.² The device monitors the opening and closing of doors to indicate the presence of intruders. The presence of a security device remains unknown to those intruders because it is hidden and protected by the door's familiar hardware.³ As embodied in Stanley's commercial product, the invention comprises a standard door hinge (in a range of sizes) with a magnet attached by a casing to the back of one hinge leaf, and a "reed switch"⁴ in a similar casing attached to the back of the other hinge leaf. (PX42a-c). When the hinge leaves and their respective casings are attached to the door and door jamb, the magnet and its casing lies within an aperture within the door, while the reed switch and its casing project into the door jamb and are connected to an electrical wiring system. As the door opens or closes, the hinge leaves pivot apart or together, moving the magnet away from or closer to the reed switch. Reacting to the magnet's changed proximity, the switch's filaments open or close to break or connect an electrical circuit. Any change in that circuit can be registered, for example, on a light panel or alarm system. Thus, a guard learns that the door has been opened or closed.

The accused device, a magnetic monitoring hinge, produced by McKinney Manufacturing Co. ("McKinney"), does not differ from Stanley's hinge once it is installed; the elements appear and function as described above. Tr. at B193 (Gwozdz) (see PX33). McKinney's monitor is sold, however, in separate parts: hinge, magnet in metal casing, and reed switch in plastic casing.⁵ (PX27). In the field, magnet and reed switch in their casings are force fitted into mortise holes in the door and jamb. The McKinney hinge is then mounted on the door and door jamb so that circular recesses in the backs of the hinge leaves receive the flat ends of the cylindrical casings embedded in the door and door jamb. (PX28) Both Stanley and McKinney monitoring devices are completely concealed by the hinge leaves. As a consequence, in theory, an unauthorized intruder cannot disarm a monitoring device of whose existence he cannot be aware as a prelude to accomplishment of an unauthorized, undetected entry.

B. File History of the Patent

On October 2, 1972, Charles R. Suska, then Stanley's Manager of Product Engineering and Research, filed an application for a patent covering his switch activating hinge. (PX2). The patent examiner rejected the application on the ground of over-broad language. Suska's original claim 1 described "a magnet producing a magnetic field associated with a first hinge leaf, and a magnetically activated switch responsive to the magnet associated with a second hinge leaf," (PX2 at 11) (emphasis supplied). Reasoning that the phrase "associated with" could encompass prior art in which a magnet and reed switch were used anywhere on a door hung by hinges, the examiner rejected the application. He observed, inter alia, that the claims would be allowed if there were a substitution of more precise terms for "associated," suggesting "mounted on" or "mounted to." (PX2 at 16). Thereafter, Suska refined his invention. Consequently, he abandoned the prior application (PX3 at 32) and submitted a continuation-in-part application adopting the phrase "mounted on" in the disputed claims. (PX3 at 16). The claims proving acceptable (PX3 at 26-27), the Suska patent issued April 23, 1974.

During the pendency of the patent application, Stanley continued to work toward marketing the new product.⁶ By fall, 1972, advertising brochures had been prepared. (PX16, 17). In 1973, a few sales were made and in the following years, the "concealed switch hinge" or "CS" feature became part of Stanley's stock in trade. (See PX44).⁷ McKinney developed its magnetic monitoring hinge and put it on the market in late 1977 or early 1978. (Tr. at B182 (Gwozdz)). On October 28, 1977, Joseph W. Gwozdz, a McKinney employee, applied for a patent on the McKinney device. Patent No. 4,148,001 was granted on April 3, 1979. (PX31). On December 4, 1979, Stanley filed this action. After a four-day bench trial on the merits, post-trial briefing and oral argument, the case is ready for decision. This opinion constitutes the Court's Findings of Fact and Conclusions of Law pursuant to Federal Rule of Civil Procedure 52.

VALIDITY

McKinney charges the Suska patent is invalid on the grounds it was anticipated under 35 U.S.C. § 102, and obvious under 35 U.S.C. § 103.⁸ In order to assess these grounds of invalidity the Court will discuss seriatim: a) the date of invention, b) the scope and content of the prior art, c) the merits of the charge of anticipation under 35 U.S.C. § 102 and d) the merits of obviousness as a basis for invalidity under 35 U.S.C. § 103 with particular emphasis upon: 1) identifying the pertinent art, 2) ascertaining the ordinary level of skill in that art and 3) examining whether the differences between the claims of the Suska patent and the prior art are such that the subject matter as a whole would have been obvious on the date of invention to one with ordinary skill in the art.

A. Date of Invention

As a threshold factual determination preliminary to assessing the anticipation and obviousness defenses, the Court must determine the date of invention. Under statutory patent law, the date of invention may be as late as the date of filing of the patent application, in this case, October 2, 1972. (PX2). However, recognizing that the creative and experimental processes must occur prior to that date, Congress left room in the statutory scheme for proof of an earlier date of invention.⁹ To succeed in claiming the earlier date, the inventor bears the relatively heavy burden of proving when his invention was "reduced to practice." Successful reduction to practice occurs, in the case of a mechanical device, when the machine has been constructed that embodies the invention claimed by the patent, and that machine has been shown to be suitable for its intended purpose. DeLong Corp. v. Raymond International, Inc., 622 F.2d 1135, 1143 (3d Cir. 1980); Grefco, Inc. v. Kewanee Industries, Inc., 499 F.Supp. 844, 848 (D.Del.1980), aff'd mem. (3d Cir. 1981); Rexroth v. Gunther, 205 U.S.P.Q. 666, 672 (Bd.Pat.Int.1979). Cf. Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966). The prototype claimed as a reduction to practice need not be ready for full-scale commercialization and further experimentation will not bar a finding of reduction to practice. DeLong, supra, 622 F.2d at 1143; Rexroth, supra, 205 U.S.P.Q. at 672. Nevertheless, the factfinder must be convinced that the prototype offered was "reliable and useful." Bell Telephone Laboratories, Inc. v. Hughes Aircraft Co., 422 F.Supp. 372, 380 (D.Del.1976), aff'd, 564 F.2d 654 (3d Cir. 1977), cert. denied, 435 U.S. 924, 98 S.Ct. 1489, 55 L.Ed.2d 518 (1978); Accord DeLong, supra; Van Aucken v. Cummings, 49 F.2d 490, 492 (C.C. P.A.1931); Grefco, supra, 499 F.Supp. at 848.

Stanley argues that reduction to practice occurred not later than December, 1971. (See PX4). In support of this date, plaintiff offers the testimony of Charles R. Suska that by the end of 1971 he had completed and tested¹⁰ a model of the concealed switch hinge. (Tr. at A36-42 (Suska)). The prototype in question, PX5, was not the first built by Suska; it was the one regarded as a "functional unit. It was doing the job we expected it to do." (Tr. at A42 (Suska)). Similar models were sent to Stanley's five regional sales offices in late December, 1971 to early January 11, 1972. Tr. at A37-38 (Suska). Stanley's correspondence shows these sales efforts bore fruit in the form of a January 11, 1972 meeting with a prospective purchaser interested in the concealed switch hinge among other Stanley products. (PX4, PX9). The documentary evidence of public promotion of the new product lends considerable support to Suska's claim that his invention had been reduced to a successful model by the end of 1971. The record as it stands is judged sufficient to accredit Suska's testimony.¹¹ See Bell Telephone Laboratories, Inc. v. Hughes Aircraft Co., 564 F.2d 654, 657 (3d Cir. 1977); Bennett v. Serota, 477 F.2d 1385, 1390-91 (C.C.P.A.1973). Accordingly, I find December 30, 1971 as the date of reduction to practice of Stanley's concealed switch hinge as disclosed in claims 1, 2, 6, 7, 8, 9 and 11 of Patent No. 3,806,852. Having determined the date of reduction to practice, attention is now turned to the scope and content of the prior art.

B. Scope and Content of the Prior Art

Pre-1972 door-monitoring devices fall into two major categories: the mechanically activated and the magnetically activated.¹² In the first category is a door-monitoring hinge disclosed in U.S. Patent No....