SW Farber, Inc. v. TEXAS INSTRUMENTS, INCORPORATED

• Decision Date: 05 December 1962
• Docket Number: Civ. A. No. 2271.
• Citation: SW Farber, Inc. v. TEXAS INSTRUMENTS, INCORPORATED, 211 F. Supp. 686, 135 USPQ 394 (D. Del. 1962)
• Parties: S. W. FARBER, INC., Plaintiff, v. TEXAS INSTRUMENTS, INCORPORATED, Defendant.
• Court: U.S. District Court — District of Delaware

211 F. Supp. 686

135 USPQ 394

S. W. FARBER, INC., Plaintiff, v. TEXAS INSTRUMENTS, INCORPORATED, Defendant.

Civ. A. No. 2271.

United States District Court D. Delaware.

December 5, 1962.

Herbert L. Cobin, Wilmington, Del., for plaintiff; Hobart N. Durham (of Morgan, Finnegan, Durham & Pine), Laurence F. Scinto, New York City, of counsel.

C. Edward Duffy (of Logan, Marvel, Duffy & Boggs), Wilmington, Del., for defendant; Samuel M. Mims, Jr. (Texas Instruments Inc.), Dallas, Tex., Townsend M. Gunn (of Texas Instruments Inc.), Attleboro, Mass., Lloyd R. Koenig (of Koenig, Pope, Senniger & Powers), St. Louis, Mo., and Robert F. Davis (of Stevens, Davis, Miller & Mosher), Washington, D. C., of counsel.

STEEL, District Judge.

S. W. Farber, Inc., the plaintiff, sued Texas Instruments, Inc., the defendant, for infringement of U. S. Letters Patent No. 2,926,230 which was issued to plaintiff as assignee of Hoyt K. Foster, the patent applicant. The subject matter of the patent is a detachable temperature regulating connector for an electrically heated device such as a cooking utensil. The combination patent is for the regulating connector itself; the device with which the connector is used is not claimed as a part of the patented combination. The parties have stipulated that a decision with respect to Claim 1 will be dispositive of all other claims.¹

The plaintiff is incorporated in New York, the defendant in Delaware. Jurisdiction exists under 28 U.S.C. § 1338 (a).

By virtue of Pretrial Order dated November 27, 1961, the issue before the Court is limited to whether Foster was the sole inventor or whether Burch, or two of defendant's employees, Moorhead or Butts, were joint inventors with Foster.² At this juncture it is assumed that the patent is in all other respects valid, since all other defenses have been reserved for later determination, if the defense of joint inventorship should fail.

The plaintiff is engaged in the manufacture and sale of cooking utensils of various kinds. The defendant manufactures and sells thermostats through the Spencer Thermostat Division of its subsidiary Metals & Controls. Neither defendant nor its subsidiary manufactures or sells cooking ware.

Sometime in 1954, Foster, plaintiff's chief engineer, recognized the desirability of developing an electrically heated thermostatically controlled frying pan which could be completely immersed in water for washing. This was not possible with frying pans then on the market because the thermostats were in the handles and could not be detached when the pans were washed. Foster conceived the general idea of solving the problem by putting a probe type of thermostat in a detachable electric plug. Under this general conception a portion of the probe would extend from the plug through a hole midway between the electrical contacts of the plug so as to engage the bottom of the pan and sense its temperature. It was Foster's idea that the action of the thermostat in opening and closing the electrical circuit would keep the pan at predetermined temperature.

Foster's conception did not embrace the use of any particular kind of probe thermostat, although there were several on the market. When the "bulb and bellows" probe type of thermostat which he tried appeared to be unsuitable, he began to look for "a cartridge" type; that is, one cylindrical in shape, less than ½ inch in diameter, and not over 3-4 inches long, for use as a thermal unit in the plug.

On March 31, 1954, Lyndon W. Burch had filed a patent application for a cartridge type thermostat which embodied the "rod and tube" principle.³ The patent application did not show any specific use to which the thermostat might be put. It simply disclosed a unit which would move in a certain way in response to temperature variation. This application eventuated in Patent No. 2,793,270 which issued to Burch on May 21, 1957.

On October 12, 1954, Burch, having heard from a third party of Foster's desire to obtain a cartridge type thermostat, came to see Foster. Burch showed Foster several models which he had made, and demonstrated them. It was the first time that Foster had seen a cartridge type of thermostat that could be adapted to a removable plug in a cooking utensil, and he thought that it might be what he was looking for. Foster asked Burch about the availability of his thermostat. Burch said that he had already been in contact with Metals & Controls and that it had an option on the thermostat. Foster indicated that he was dubious about utilizing Metals & Controls to make the thermostat because in the past when plaintiff had attempted to work with Metals & Controls, plaintiff had not received a "good reception".

On October 13, 1954 Foster wrote a letter to a law firm, Morgan, Finnegan & Durham, enclosing a "sketch and some explanation" of an electric cooking utensil with removable heat control plug dated October 12, 1954. The letter and enclosure set forth the general idea of a detachable plug thermostat for an electric cooking utensil. The thermostat there disclosed was representative only, in a general way, of several types of thermostats that might be used.⁴

On the same day, Foster built what is sometimes referred to as a mock-up or "bread board" model, of an electrical plug which embodied the Burch thermostat. This was simply an experimental design to find out how good the heat control would be for frying pan usage.

On October 14, Foster tested the model by searing and cooking a pot roast. To bring the heat up to the desired level, it was necessary for Foster to make periodic adjustments of the thermal unit. Foster said that apart from enabling him to test how good heat control the Burch thermostat would give, it was "far from being a satisfactory model. It wasn't what you would consider a commercial model".

At about this same time, Burch saw Ottmar, the Vice President and general manager of Spencer Thermostat Division of Metals & Controls, and told him of his meeting with Foster. Burch asked Ottmar whether the defendant would be interested in manufacturing a thermostat for plaintiff. Ottmar was interested and authorized his people to do whatever development work on the thermostat as was necessary. Prior to this, Burch had orally agreed with Ottmar that defendant could have a license under the Burch patent.

Between October 14 and October 22, Farber and Foster discussed the refinements necessary to commercialize the thermostatic control plug as a detachable temperature regulator for a cooking utensil. They recognized that it was wrong to depend on the plastic plug to house the thermostat and to hold it in place, and that a rigid support was needed to keep the probe in alignment with the contacts which opened and closed the electrical circuit and with the adjusting screw. A rigid unitary construction was necessary not only for accuracy of calibration, but to enable the thermal unit to have a small amount of wiggle or play, within the plug. Without the wiggle, it was not possible for the termal unit to accommodate itself to the "warping" movement of the bottom of the pan which occurred when the pan was heated due to its by-metallic construction. Furthermore, since plaintiff contemplated that Leviton Manufacturing Company would supply the plug cord and electrical connector and assemble the thermostatic unit in the plug, Farber and Foster knew that unless the sensing tube and the electrical contacts were rigidly held in a fixed position with relationship to each other, shipment of the thermal unit would entail movement between the parts and would not be practical.

On October 22, 1954, Burch brought Lowell Comee from Metals & Controls to the Farber office to meet Farber and Foster. Foster showed Comee and Burch the mock-up model which he had made on October 13 and stated that he was going to use it as a plug in a device for controlling the heat of a frying pan. Burch asked if he could take the unit back to Metals & Controls so that it could evaluate the unit and see what could be done toward producing one which was commercially practical. With Foster's permission, Comee and Burch took with them the "bread board" model which Foster had built on October 13. Testimony as to other aspects of the meeting is in dispute and will be discussed later.

On November 11, a meeting was held at the Farber plant between Comee, Ottmar, Farber and Foster. Ottmar was a vice president and general manager of Metals & Controls and knew that the plaintiff felt its past experience with the defendant had not been good. Consequently, he devoted himself to attempting to convince Farber that the defendant was the right concern to manufacture the thermal unit for plaintiff. Ottmar said that defendant was building a sample of the thermostat for testing. He and Farber also discussed various business aspects of the matter, costs and so on. Technical discussions took place between Foster and Comee which are discussed in a later portion of the opinion.

On November 17, 1954, Comee and Moorhead, assistant chief engineer of Spencer Thermostat Division, met with Farber and Burch at plaintiff's plant and showed them a thermostat that Metals & Controls had made to see if it would work as plaintiff required. It was shown to them for their criticisms and approval. This model, constructed by Moorhead, was the first physical embodiment of the thermostat which included a bracket interconnecting the probe and electrical contacts so as to create a unitary assembly.

Following this meeting, Butts, another employee of Metals & Controls, made a minor change in the model which Comee and Moorhead had exhibited to Farber and Foster, consisting of a reversal of the position of the contacts.

On December 2, 1954, Moorhead, Butts and Comee visited plaintiff's plant and showed Farber and Foster a thermostat which incorporated Butts' modification. Defendant had built this thermostat into a cord plug which plaintiff had furnished to it. The thermostat...