Thomas & Betts Corp. v. Litton Systems, Inc.

• Decision Date: 14 November 1983
• Docket Number: No. 83-537,83-537
• Citation: 220 USPQ 1,720 F.2d 1572
• Parties: THOMAS & BETTS CORPORATION, Appellant, v. LITTON SYSTEMS, INC., Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1572

720 F.2d 1572

220 U.S.P.Q. 1

THOMAS & BETTS CORPORATION, Appellant, v. LITTON SYSTEMS, INC., Appellee.

Appeal No. 83-537.

United States Court of Appeals Federal Circuit.

Nov. 14, 1983.

Sidney David, Westfield, N.J., argued for appellant. With him on the brief was William L. Mentlik, Westfield, N.J., Connolly, Bove & Lodge, Wilmington, Del., of counsel.

Robert E. Isner, New York City, argued for appellee. With him on the brief was Christopher B. Garvey, Yonkers, N.Y., Spencer T. Smith and Brian L. Ribando, Hartford, Conn., of counsel.

Edward M. McNally, Wilmington, Del., of counsel.

Before MILLER, Circuit Judge, SKELTON, Senior Circuit Judge, and SMITH, Circuit Judge.

JACK R. MILLER, Circuit Judge.

Thomas & Betts Corporation ("T & B") appeals from the decision of the United States District Court for the District of Delaware that T & B's U.S. Patent No. 3,990,767 ("the Narozny patent"), issued November 9, 1976, for an "Electrical Contact and Connector Means Employing Same," has not been infringed by the manufacture and sale by Litton Systems, Inc., Winchester Electronics Division ("Winchester"), of a "single strut" electrical connector construction. We reverse and remand.

BACKGROUND

In the early 1960's, a multi-conductor flat cable having a plurality of uniformly spaced conductors sandwiched between layers of insulation was developed. This became widely used during the 1970's. Flat cable commonly employs a pitch (spacing between adjacent conductors) of .050 inch. However, the mating end portions of standard "D" type electrical connectors (used to connect and disconnect electrical circuits) have parallel electrical contacts spaced .0545 inch apart.

In 1974, T & B asked its inventor to design a "D" type connector which would receive flat cable having a pitch of .050, but which would produce a standard "D" configuration having a .0545 pitch on its output side. T & B's inventor submitted an invention disclosure relating to an electrical connector having an upper portion (for input), a lower portion (for output), and a bendable central portion to effect the desired pitch change from input to output, all within a housing with suitably offset apertures to accommodate the upper and lower portions at different pitches. According to this disclosure, the bendable central portion of the connecting electrical contact could comprise either a pair of spaced parallel struts or a single strut. However, as filed on July 11, 1975, T & B's patent application (claims, drawings, and text) disclosed a central portion comprising only "a pair of spaced parallel struts." No significant changes were made in the specification or claims during prosecution before the U.S. Patent and Trademark Office ("PTO").

Shortly after introduction of T & B's connector in the marketplace (mid-1976), Winchester designed a virtually identical pitch change connector. In response to the institution of suit by T & B for infringement of claims 7 through 13 and 15 of the Narozny patent, Winchester modified the design of its "D" pitch change connector to eliminate one of the two parallel struts from the bendable central region of the contacts. Winchester stated in a letter to its British licensee that it did "not feel that this change will be in anyway [sic ] detrimental to the function of the contact in its end use." Enclosed with the letter was a drawing prepared by Winchester, reproduced below, to illustrate the modification of the original electrical contact structure.

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In the ensuing litigation, Winchester contended that the Narozny patent was invalid for failure to comply with 35 U.S.C. Sec. 112 (but did not assert invalidity in view of the prior art); admitted infringement of the claims in question by its double strut connector; urged that its single strut connector did not infringe the claims in question under the doctrine of equivalents; and argued that the claims, if read in the broadened scope necessary for infringement, would be invalid under 35 U.S.C. Secs. 102 and 103.

In an opinion dated July 31, 1981, ¹ the trial court held that the claims in suit met the best mode requirement of 35 U.S.C. Sec. 112 and, therefore, were valid. Further, the court found that T & B's double strut connector and Winchester's single strut connector performed substantially the same function in substantially the same way to obtain the same result and, therefore, were "fully equivalent" structures. However, the court refused to apply the doctrine of equivalents to support T & B's infringement claim because the effect "would be to extend the scope of the claim allegedly infringed to encompass prior art." 519 F.Supp. at 1199, 213 USPQ at 948. The court held that claim 7 (the only independent claim in suit) was not anticipated under 35 U.S.C. Sec. 102 by U.S. Patent No. 3,816,819 ("Judd"), U.S. Patent No. 3,912,983 ("Lowry"), U.S. Patent No. 3,731,254 ("Key"), or by a "Burndy device," but that it would have been obvious to the skilled artisan, under 35 U.S.C. Sec. 103, to combine the concept of the prior art "D" connector with the concept of using a bendable, single strut contact, disclosed by the Judd patent, to effect the necessary offset. Concerning the Judd patent, the court stated:

While as earlier indicated, this patent does not literally read on a Winchester type connector, it does clearly teach the use of bendable contacts to effect a pitch change ....

519 F.Supp. at 1202, 213 USPQ 950.

The court also attributed the commercial success T & B had achieved with its connector to the generally expanding market for electrical connectors in today's computer age, as evidenced by a sharp increase in the sales of all of T & B's connectors in the last five years.

The Narozny Patent

The Narozny patent discloses an electrical connector which is capable of terminating to standard .050 inch pitch, flat cable at one end and, at the other end, is capable of interfacing with systems requiring a standard "D" connector. Figure 6 of the Narozny patent perhaps most clearly illustrates the nature of the patented invention:

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The claimed electrical connector of the Narozny patent includes: ²

1. a housing consisting of:

a. an upper portion 68 having a first set of apertures, designated 82, spaced a distance (A) apart; and

b. a lower portion 70 having a second series of apertures, designated 84, spaced a different distance (B) apart; and

2. contacts 20 connecting the upper and lower series of apertures having:

a. upper conductor end portions 22;

b. bendable central regions "each comprising a pair of spaced parallel struts" 26; and c. lower conductor engaging end portions 24.

The Prior Art

Prior art "D" connectors which do not effect a pitch change are exemplified by U.S. Patent No. 3,820,058 ("Friend") which discloses a pierce type connector block 10 for forming electrical connections with insulated conductors in ribbon cable 26, as illustrated below. ³

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The connector block of Friend includes a housing 16, a plurality of contacts 30 having conductor engaging end portions 32 and 34 connected by a straight central portion, and a spaced series of paired, parallel apertures to position the contacts 18.

The Judd patent discloses a household plug capable of receiving and making electrical contact with an insulated wire, such as lamp wire, in order to connect it to the electrical outlet of a wall receptacle, as illustrated below:

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Extending from the lower part of the insulating housing 10 are a pair of parallel power blades 20 and 22. An insulated wire 28 having two parallel conductors 30 is inserted through a wire entry port at one end of the housing and is positioned above two insulation-piercing "contacts" 21 and 23 formed as an integral part of the inner ends of the power blades 20 and 22. The driving end 48 of a cam presses the insulated wire 28 into contact with the insulation-piercing "contacts" 21 and 23 and causes the "contacts" to penetrate through the insulating sheath of the wire.

Lowry discloses a plurality of contact members 40, each of which is permanently shaped to effect a pitch change and is situated within one of a set of grooves formed in a recessed plate 38.

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Key discloses a device for interconnecting flat multi-conductor cable with connectors accommodated in standard dual-inline sockets used in integrated circuit panel boards. The Key connector 22 comprises a housing including a base 50, upper cover structure 52, and terminals 51. Each terminal is stamped from metal and then permanently bent into an L-shaped configuration. The terminal post portions 73 extend through apertures 63 in the base 50. The integral contact portions 74 are disposed along the upper surface of the base with the transverse spacing between each one corresponding to the pitch of the flat multi-conductor cable 21, as illustrated below:

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The "Burndy device" was manufactured by Burndy and sold to Univac prior to 1965. We agree with the trial court's characterization of "[t]he contacts depicted on the Burndy connector drawings" as "stamped to form their fixed offset and, accordingly, ... not bendable at the junctures of the central portion and conductor engaging ends ...." 519 F.Supp. at 1200, 213 USPQ at 949.

ISSUES

The issues in this appeal are two-fold: (1) Did the district court clearly err in finding that Winchester's "single strut" electrical connector is equivalent to T & B's claimed "double strut" electrical connector? (2) Did the district court err in refusing to apply the doctrine of equivalents to support T & B's...