SW Farber, Inc. v. Texas Instruments Incorporated

• Decision Date: 08 May 1964
• Docket Number: Civ. A. No. 2271.
• Citation: SW Farber, Inc. v. Texas Instruments Incorporated, 230 F. Supp. 883 (D. Del. 1964)
• Parties: S. W. FARBER, INC., Plaintiff, v. TEXAS INSTRUMENTS INCORPORATED, Defendant.
• Court: U.S. District Court — District of Delaware

230 F. Supp. 883

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

Civ. A. No. 2271.

United States District Court D. Delaware.

May 8, 1964.

COPYRIGHT MATERIAL OMITTED

Herbert L. Cobin, of Coxe, Booker, Walls & Cobin, Wilmington, Del., Hobart N. Durham, of Morgan, Finnegan, Durham & Pine, New York City, and John C. Vassil, New York City, of counsel for plaintiff.

C. Edward Duffy, Wilmington, Del., Robert F. Davis, of Stevens, Davis, Miller & Mosher, Washington, D. C., Townsend M. Gunn, Attleboro, Mass., Lloyd R. Koenig, St. Louis, Mo., and Harold Levine, Dallas, Tex., of counsel for defendant.

STEEL, District Judge.

S. W. Farber, Inc., the plaintiff, sued Texas Instruments Incorporated, the defendant, for infringement of United States Letters PatentNo. 2,926,230 issued to plaintiff as assignee of Hoyt K. Foster, the patent applicant.The patent states that it pertains to an improved detachable electrical connector and temperature regulator for electrically controlled heating devices.Defendant has denied validity but admitted infringement if the patent is valid.The thermostatic control plugs which defendant has manufactured and sold to West Bend Company, Mirro Aluminum Company and McGraw Electric Company are illustrative of the accused devices.

Defendant has filed two counterclaims.The first seeks a declaratory judgment adjudging the patent to be invalid, or alternatively, that the invention claimed was made in whole or in part by persons associated with defendant or its predecessor.The latter issue was tried separately and determined adversely to defendant.S. W. Farber, Inc., v. Texas Instruments Incorporated, 211 F.Supp. 686(D.Del.1962)¹.The second counterclaim is for unfair competition.

Much of the background of the controversy is disclosed in the opinion at 211 F.Supp. 686 and the Findings of Fact and Conclusions of Law stated there are incorporated herein by reference.By stipulation the record in the earlier trial is part of the present record.

JURISDICTION

The complaint seeks relief under the patent laws and jurisdiction exists under 28 U.S.C. § 1338(a).Counterclaim 1 arises out of an actual controversy between the parties as to the charge of infringement made by plaintiff against defendant and defendant's contention that it has rights to the patent in suit which plaintiff denies.Jurisdiction of counterclaim 1 exists under 28 U.S.C. §§ 2201-2202.Counterclaim 2 alleges a claim for unfair competition which has been joined with a substantial and related claim under the patent laws.Jurisdiction over counterclaim 2 exists under 28 U.S.C. § 1338(b).

THE VALIDITY ISSUE

The parties have agreed that claims 2 and 4 are typical or representative, that if claims 2 and 4 are valid, all claims are valid; if claims 2 and 4 are invalid, all claims are invalid, and if either claim 2 or 4 is valid and the other invalid, the remaining claims are not adjudicated.

While a number of defenses have been pleaded, only that asserted under 35 U.S. C. § 103 need be dealt with.²It provides that although an alleged invention is not identically disclosed or described in the prior art specified in Section 102 of Title 35, 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 of the invention to a person having ordinary skill in the art.

In early 1954 two thermostatically controlled fry pans were put on the market One was manufactured by Sunbeam and the other by Presto.The Presto pan could not be immersed in water for washing.That manufactured by Sunbeam could be immersed only up to the temperature dial on the handle and carried a notice to that effect.It had the thermostat permanently secured in the handle, and it could not be detached.

Sometime in 1954 Foster, the chief engineer of the plaintiff, recognized the desirability of developing an electrically heated, thermostatically-controlled fry pan which could be completely immersed for washing without damaging the pan.This was not possible with any of the electrified fry pans then being marketed.

With complete immersibility as his goal, Foster, prior to October 12, 1954, conceived the general idea of putting a probe type of thermostat in an electric plug which could be detached from the pan when it was washed.Under this general concept a portion of the probe would extend from the plug through a hole midway between the receptacle contacts of the plug and enter a recess in the bottom of the pan so as to engage the bottom of the pan and sense its temperature when the plug and pan were in operational relationship.It was Foster's idea that when the electric current heated the pan above the desired temperature the thermostat would open the circuit, and when the temperature of the pan fell below the desired temperature the thermostat would close the circuit, thus enabling the heat of the pan to be maintained at a relatively uniform pre-determined temperature.

On November 30, 1954 Foster filed a patent application, SerialNo. 471,949, embodying this concept.It eventuated in patent No. 3,095,498.The 493 patent is not in suit, for it did not issue until June 25, 1963 after the present action was begun.The 498 patent is for a combination consisting of an electrical cooking utensil and a detachable thermostat housed in an electrical plug.This initial concept did not embrace the use of any particular kind of probe thermostat, although there were several types on the market.The specifications provided that the thermostat could be:

"operated in any conventional manner such as by means of a bi-metal element or an expansible fluid and bellows and is preferably of the "on-off" type with the adjustment of the device being effected by means of a knob * * *".

As stated, the 230 patent relates to an "improved" detachable electrical connector and temperature regulator for electrically controlled heating devices, such as a cooking utensil.Unlike the 498 patent, the 230 patent does not claim the device with which the connector is to be used.The 230 patent is merely for a specific type of probe thermostat consisting of a combination of elements housed in an electrical plug.It is intended for use as a substitute for the unspecified type of probe thermostat disclosed in the 498 patent.

The subject matter disclosed and claimed in the 230 patent was conceived by Foster sometime after his cooking experiment on October 14, 1954 and before October 22, 1954.It was reduced to practice on December 2, 1954.On that date the invention of the 230 patent was complete.S. W. Farber, Inc. v. Texas Instruments Incorporated, supra, 211 F. Supp. p. 692.Foster filed his original application, SerialNo. 535,797, on September 22, 1955, and this eventuated in the 230 patent on February 23, 1960.

Originally, Foster had in mind using a probe thermostat of the bulb and bellows type in his control plug.³Later, he began looking for a probe thermostat of the cartridge type.There were several of these on the market.⁴The first time that Foster saw one which was sufficiently small to be adapted to a removable plug for use with a fry pan was on October 12, 1954 when Lyndon W. Burch visited plaintiff's plant and showed Foster a cartridge thermostat embodying a "rod and tube" thermal element which Burch had developed.

The 230 patent carried forward Foster's original idea disclosed in the 498 patent, by substituting a unitary thermostatic switch embodying the thermal element which Burch showed Foster on October 12, 1954 in place of the schematic generalized showing of a thermostat found in the 498 patent.

The thermal element disclosed by the 230 patent was the subject of an application, SerialNo. 420,064 which Burch had filed on March 31, 1954.This eventuated in patent No. 2,793,270 which issued to Burch on May 21, 1957.

The critical question under 35 U.S.C. § 103 is not whether the alleged invention in the 230 patent is identically disclosed or described in the prior art specified in 35 U.S.C. § 102.The issue is whether the differences between the subject matter of the 230 patent and the § 102 prior art are such that the subject matter of the 230 patent as a whole would have been obvious on December 22, 1954 to anyone having ordinary skill in the art to which its subject matter pertains.

When Foster faced the problem of developing a detachable temperature regulating connector to be used with electrically heated devices, he was chargeable with knowledge of the following prior art patents: Gaunt British patent No. 599,224 for which complete specification was accepted on March 8, 1948, Ross United States patent No. 1,431,542, which issued on October 10, 1922, Norton U. S. patent No. 2,024,471 which issued on December 17, 1935.⁵

Each of these three patents disclosed, as does the 230 patent, a detachable temperature controlling connector unit for an electrically heated device having spaced terminals, the connector unit comprising in combination a housing and a pair of spaced terminals for cooperating with the terminals of the device to be heated for applying electrical energy thereto.Each of the three patents contains a thermostat of some type.

Claim 2 of the 230 patent reads:

"A detachable temperature controlling connector unit for an electrically heated device, having space terminals, said connector unit comprising in combination a housing, a pair of space terminals for cooperating with the said first terminals for applying electrical energy thereto, a support mounted within said housing and carrying a tubular member extending outwardly from said housing in relation to the terminals thereof, said tubular member being adapted to be positioned in heat transfer relation with the said device when its said terminals are positioned in cooperation with the first terminals on said device, a pair of resilient contact carrying

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