US Expansion Bolt Co. v. Jordan Industries, Inc.
| Decision Date | 27 July 1972 |
| Docket Number | Civ. A. No. 42485. |
| Citation | 346 F. Supp. 541 |
| Parties | U. S. EXPANSION BOLT CO. v. JORDAN INDUSTRIES, INC., et al. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Samuel J. Stoll, Robert S. Stoll, New York City, Don F. D'Agui, D'Agui & DelCollo, Philadelphia, Pa., for plaintiff.
Alan H. Bernstein, Stanley H. Cohen, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., for defendants.
This is a patent infringement action over which we have jurisdiction by virtue of 28 U.S.C. § 1338(a). Plaintiff is the owner of U.S. Patent No. 3,022,701, issued on February 27, 1962. This patent relates to an anchor-type wall fastener composed of an anchor and an expanding member. Three principal defenses to this action have been set forth by the defendants. First, they maintain that the patent is unenforceable because plaintiff is guilty of laches. Secondly, they assert that the subject matter of the patent at the time of invention would have been obvious to one having ordinary skill in the art and is thus invalid within the meaning of 35 U.S.C. § 103. Finally, defendants contend that even if the patent is held valid by this court, the accused products of the defendants do not infringe the patent.
Plaintiff's patent was issued in February of 1962. In May of that year, plaintiff's president, Mr. Zifferer, wrote to Mr. Topf, the president of defendant Jordan Industries, demanding a cessation of an alleged infringement of the patent in question. There then followed five years of intermittent correspondence and threats between the plaintiff and Jordan Industries before plaintiff filed this action in July of 1967. Defendants allege that this delay by plaintiff of five years in initiating the suit after it initially accused defendant Jordan of patent infringement constitutes laches or inequitable conduct and forecloses plaintiff from relief.
"* * * There are two elements in laches: (1) Lack of diligence on the part of the plaintiff; and (2) injury to defendant due to the inaction of the plaintiff." Westco-Chippewa Pump Co. v. Delaware Electric & Supply Co., 64 F.2d 185, 186 (C.A. 3, 1933). In this case, promptly after the patent was issued, plaintiff informed defendant Jordan in 1962 that it considered Jordan's "Jiffy" nylon anchor fastener to be an infringement of the patent. After an exchange of letters over a period of time, without conceding any infringement, Jordan agreed to modify its accused fastener by changing to another type of screw as the expanding member component of its fastener. This modification took place in 1964. Plaintiff promptly informed Jordan that it was in "total disagreement" with Jordan's view that the anchor as modified did not infringe the patent. Later letters from plaintiff to defendant Jordan over a period of years indicate that it consistently and emphatically accused Jordan of infringement of its patent.
This is not a case of a patent holder sleeping on its rights, failing to advise the alleged infringer of its displeasure with its actions and thus leading the defendant to think that it could safely manufacture its device with impunity. However, even if we were to conclude that plaintiff should have been more diligent in litigating its claim at an earlier date, this action would not be barred by laches because defendants have failed to demonstrate that their position was materially and prejudicially changed because of plaintiff's delay in protecting its rights. There was no evidence whatsoever of a large investment in new machinery, or any other significant expenditure or burden occasioned by plaintiff's delay in bringing this action. Without proving such injury, the defendants have not sustained their defense of laches. Jenn-Air Corporation v. Penn Ventilator Co., Inc., 464 F.2d 48 (C.A. 3, June 27, 1972). Compare Westco-Chippewa Pump Co., supra.
Our starting point in assessing any challenge to the validity of this patent is the presumption that the patent is valid with the burden of proof resting on the party asserting invalidity. 35 U.S.C. § 282. In light of this statutory presumption the burden is a heavy one. Trio Process Corporation v. L. Goldstein's Sons, Inc., 461 F.2d 66 (C.A. 3, May 22, 1972); Eagle Iron Works v. McLanahan Corporation, 429 F.2d 1375, 1382 (C.A. 3, 1970). "* * * Invalidity must be demonstrated by clear and convincing proof." Trio Process Corporation, supra, at p. 70.
Recognizing, however, that "the presumption is by no means conclusive", Schmidinger v. Welsh, 383 F.2d 455, 462 n. 10 (C.A. 3, 1967), cert. denied, 390 U.S. 946, 88 S.Ct. 1037, 1040, 19 L.Ed.2d 1134 (1960), we must evaluate defendants' claim that the patent is invalid because its subject matter was obvious at the time of invention. The standard of obviousness is set forth in 35 U.S.C. § 103 which provides:
"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 the invention was made to a person having ordinary skill in the art to which said subject matter pertains. * * *"
The patent in suit is a wall fastener composed of an anchor and an expanding member, sold commercially as the "Tap-It" fastener. These fastening type devices are commonly used where conventional fasteners such as a nail or screw without anchor cannot be utilized because of the composition and physical characteristics of the wall to which the object will be attached. As stated in the patent, such wall materials would include concrete, cinder block, brick, plaster, stone, marble, composition board and others. The basic principle by which anchor type fasteners operate is not complicated. After a hole is drilled in the material, the anchor when placed in the hole is wedged in as it is expanded by a nail, screw or other member driven into it. The friction against the sides of the hole keeps the anchor in the wall, thus enabling an object to be fastened to a wall otherwise unsuited for such purposes.
The expandable anchor of plaintiff's patent is molded of plastic having the general properties of nylon. It generally has a cylindrical configuration with a head which does not enter the hole. At the headed end there is a longitudinal hole to receive the driven expanding member, with the other end having a longitudinal slot aligned with that hole and extending to it. The slot separates a pair of flexible portions. They are forced outwardly as the member is driven through the slot because of the fact that the slot has a smaller diameter than the shank of the expanding member. The expanding member part of this patent has a substantially cylindrical shank with a pointed tip adapted for wedging action as in the conventional nail. It can most aptly be described as a "screw-nail", however, because unlike the conventional nail, only the bottom half of the shank is smooth. The top of this "screw-nail" has a screw-type head with a slot for a screwdriver, and next to this headed end shallow screw threads with rounded edges which terminate about midway on the length of the shank.
The patent states that the "screwnail" may be hammer driven in a translatory motion (longitudinal, nonrotational). It is not rotated into the anchor with its threads cutting into the anchor wall. Instead, after being hammer driven, the nylon material of the anchor cold flows into the spaces between the threads to form transitory screw threads in the anchor wall. This member, because of its slotted screwtype head may be screwed out of the anchor by screwdriver means. Since nylon has a relatively retentive memory, once the "screw-nail" is withdrawn from its wedging engagement the anchor will tend to resume its original form and proportions and will, therefore, be refusable.
The primary method by which we must determine whether this patent was obvious at the time of invention has been set forth by the Supreme Court in recent decisions.
The prior art must be evaluated as of August 10, 1959, the time of invention ...
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US Expansion Bolt Company v. Jordan Industries, Inc.
...from its wedging engagement the anchor will tend to resume its original form and proportions and will, therefore, be reusable." 346 F.Supp. at 542-543. II. The standard of obviousness as a ground of patent invalidity is set forth in 35 U.S.C. § 103, which provides: "A patent may not be obta......