Petition — Panduit Corp. v. Burndy Corp.

Supreme Court brief1975

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IN THE ae

Supreme Court of the United States — —

OcTOBER TEKM, 1975

Petitioner,

BURNDY CORPORATION anp

BURNDY MIDWEST, INC.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT.

CHARLES F. PicorTr, Jr.,

GEORGE H. GERSTMAN,

LETTVIN, Picott & GERSTMAN,

135 South LaSalle Street,

Chicago, Illinois 60603,

Counsel for Petitioner.

Of Counsel:

CHARLES R. WrewtzzL,

iAICHARD B. WAKELY,

17301 Ridgeland Avenue,

Tinley Park, Illinois 60477.

October, 1975.

)

Gunthorp-Warren Printing Company, Chicago e Financial 6-6565

Y 1975 |

PAGE

I i ie cia a ens 2

PME ct tick Ke eiDdluliecewT) <ieknte Kmee onc 2

CE the ie). A an ee 3

Constitutional Provision and Statute Involved ........ 4

Statement of the Case.......ic.ssescccceunessseees. 5

Reasons for Granting the Writ .................... 9

My RNs hi SS. ee. OS 9

B. Purpose of Section 103 Was to Define Patent

COE 4 6h 0s how ies eS Bie bee's Cees lds 11

C. Section 103 as Defined by Graham ......... 13

D. Black Rock Appears to Define Patentability in

a Manner Inconsistent with Graham........ 14

1. Statements in Black Rock Regarding

Patentability Criteria ................. 14

2. Requirement of “New or Different Func-

tion” for “Combination Patents” ........ 15

3. “Invention” Is an Illusory Concept ...... 16

E. The Record of This Petition ............... 17

ip i RR o's 065 abcde a Uns 6.6.60 <0cubs 0.¢:mace on 18

CasEs CITED.

Anderson’s-Black Rock v. Pavement Salvage Co., 396

U. & ST (10) «66 cS. 3, 8, 9, 14, 15, 16, 17

Application of Fielder, 471 F. 2d 640 (CCPA, 1973) ... 17

Blair v. Dowd’s Inc., et al., 438 F. 2d 136 (D. C. Cir.,

SRTET coceveeebsneccueb cd onilen Cl, 10

Blohm & Voss AG-v. Prudential-Grace Lines, Inc., 489

ee ere ie eee 9

Eisele v. St. Amour, 423 F, 2d 135 (6 Cir., 1970) ..... 10

Graham v. John Deere Co., 383 U. S. 1 i * Sa

» e'e’e's ‘e's e'e eee ee e'eie'e see's «Bp Ip 8, 9,93, 14, 15; 16,17,19

Great Atlantic & Pacific Tea Co. v. Supermarket Equip.

Corp., 340 U. S. 147 (1950) ..........400.- 8, 11, 16,17

Hadco Products, Inc. v. Walter Kidde & Company, 462

Ps Ae BAe. CF ela: ETE av c kena cecucweite cc. 10

Hotchkiss v. Greenwood, 52 U. S. (11 How) 248 (1850). 11

Indiana General Corp. v. Krystinel Corporation, 421 F. 2d

1GZS (2. Cieg 1900S ito. saariencact ccooctinn.... 16

Koppers Co., Inc. v. S & S Corrugated Paper Mach. Co.,

Inc., 517 F. 2d 1182 (2 Cir., 1975) .............. 10

LaSalle Street Press, Inc. v. McCormick and Henderson,

Inc., 445 F. 2d 84 (7 Cir., 1971) ...... occu ccccce, 10

McClain v. Ortmayer, 141 U. S. 419 sR ARS 16

Philips Industries, Inc., et al. v. State Stove & Manufac-

turing Co., Inc. ..... F. 2d _...., 186 USPO 458 (6

Calin SUWEE Wied nb00 hes kcctaab adie cc. 10

Reeves Instrument Corporation, et al. v. Beckman Instru-

ments, Incorporated, 444 F. 2d 263 (9 Cir., 1971) ..10, 16

Regimbal, et al. v. Scyman. ‘xy, et al., 444 F. 2d 333 (9

WS GTRE sedpeuws oivcs hadebids 66065 cckk ino 10

iii

Reiner v. I. Leon, 285 F. 2d 501 (2 Cir., 1960) ...... 15

Safety Car Heating & Lighting Co. v. General Electric

Co., 155 F. 2d 937 (2 Cir., 1946) ............008, 15

Santa Anita Mfg. Corp. v. Lugash, 369 F. 2d 964 (9 Cir.,

ROOF 3 6 MAS RR OFA CR PAY AL 16.

Skil Corp. v. Lucerne Products, Inc., 503 F. 2d 745 (7

i Or ak ik BETO EST is Beobit css eke ee: 16

Sutter Products Co. v. Pettibone Mulliken Corp., 428

Bp OU OF Gee ENTER ace anciotateelicvcece. 10

U. S. Expansion Bolt Company v. Jordan Industries, Inc.,

et al., 488 F. 2d 566 (3 Cir., 1973) .............. 9

Van Gorp Manufacturing, Inc. v. Townley Industrial

Plastics, Inc., 464 F. 2d 16 (5 Cir., 1972) ........ 9

Walt Disney Productions v. Fred A. Niles Com. Ctr., 369

Fe ES ae Se MED és ecicetcsvescscsedncs 15

Williamson-Dickie Mfg. Co. v. Hortex, Inc., et al., 504

Pa ee ee Re a SPE Ka vd cers eiesbeedecare 9

CONSTITUTION.

United States Constitution, Article I, Section 8, Clause 8.. 4

STATUTES.

Se aie ie EE ose vc heme cka cone oe reccwnees 2

Be es en oa er 5

TO | ere RAR AE Oe Ae 5

ee ok Eee 3, 4, 9, 11, 12, 13, 14, 16, 17, 19

seg ee ee

-—

PUBLICATIONS.

Dunner, Gambrell & Kayton, Patent Law Perspectives,

1969-70 Annual Review, § A. 1{1] p. 6 (1970) ..... 10-11

Mintz & O'Rourke, After Black Rock: New Tests of

Patentability—The Old Tests of Invention, 39 Geo.

Wash. L. Rov, 123.(1970) ... 0... os cceccceccsss 10

Judge Giles S. Rich, Laying the Ghost of the “Invention”

Requirement, APLA Journal, Vol. 1, No. 1 (1972)

P00 whe be cee 6 66 eek ube BREE 6 ke og 9, 10, 12, 16

IN THE

Supreme Court of the United States

OcToser Term, 1975,

No.

PANDUIT CORP.,

Petitioner,

vs.

BURNDY CORPORATION and

BURNDY MIDWEST, INC.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT.

—_—_—.

Petitioner, Panduit Corp., respectfully prays that a Writ of

OPINIONS BELOW.

The opinion of the Court of Appeals for the Seventh Circuit

is reported at 517 F. 2d 535, 186 USPQ 75 and is reprinted in

the Appendix to this Petition at page A2'. The opinion of the

Court of Appeals denying Petitioner's request for rehearing is

reported at 517 F. 2d 535, 541 (App. Al3). The opinion of

the United States District Court for the Northern District of

Illinois, Eastern Division, holding Petitioncr’s patent valid and

infringed is reported at 378 F. Supp. 775, 180 USPQ 498

(App. Al15).

JURISDICTION.

The judgment of the Court of Appeals was entered on May

30, 1975 (App. Al2). A timely Petition for rehearing was

denied July 9, 1975 (App. A13), and this Petition for a Writ

of Certiorari was filed within 90 days of that date. The jurisdic-

tion of this Court is invoked under 28 U. S. C. § 1254(1).

1. Hereinafter cited as App. .........

QUESTION PRESENTED.

As to the certiorari policy:

The Graham Vv. John Deere decision by this Court defined the

tests of patentability required by 35 U. S. C. § 103.2 However,

confusion exists in the federal courts regarding the tests of patent-

ability as a result of the Anderson’s-Black Rock® decision, au-

thored by Mr. Justice Douglas, which appears to prescribe

tests that exceed and are incousistent with the tests of the

Graham case and 35 U. S. C. § 103. While some courts treat

Black Rock as merely a reaffirmation of Graham, other courts

struggle to apply more severe tests, which typically results in

the patent being held invalid.

Should it not be made clear what the tests of patentability

are, so that the confusion and divergence of opinion in the

federal courts, which has existed since Black Rock, can be

eliminated?

On the merits:

Did the Court of Appeals err in invalidating Petitioner's

patent, and more particularly , by applying tests of patentability

that exceeded the tests defined in this Court’s Graham decision

and 35 U. S. C. § 103?

2 Deere Co., 383 U. S. 1 (1966): “The ques-

tions, i of the companion cases before us, are what

effect did the 952 Act have upon traditional statutory and judicial

tests of tentability and what definitive tests are now required.”

(383 U. S. at 3).

A S-Black Rock v. Pavement Salvage Co., 396 U. S.

—

57 (1969).

CONSTITUTIONAL PROVISION AND

STATUTE INVOLVED.

e——

This case involves Article I, Section 8, Clause 8 of the United

States Constitution (App. Al) and Section 103 of the Patent

Act of 1952, 35 U. S.C. § 103 (App. Al).

STATEMENT OF THE CASE.

This suit was brought by Petitioner, Panduit Corp., against

Respondents, Burndy Corporation and Burndy Midwest, Iac., in

the United States District Court for the Northern District of

Illinois. Jurisdiction was founded upon 28 U. S. C. § 1338(a)

and venue existed under 28 U. S. C. § 1400(b).

The Complaint charged infringement of United States Letters

Patent No. Re. 26,492 (hereinafter referred to as the “patent in

suit”), reissued to Petitioner. The case was tried before the

District Court without a jury over a period of seven trial days.

The District Judge held Petitioner's patent to be valid and

Prior to 1958, string or cord was used to bundle electrical

wires into cables used in electrical systems. The string or cord

was applied by using simple tools such as pliers or a knife, and

at times the string or cord was applied manually, without tools.

Such bundling required a skilled workman, was time consuming,

and it was difficult to add or remove wires.

4. App. A34.

5. App. All.

6. A copy of the patent in suit is at App. A35.

In 1958, the Thomas & Betts Co. (T&B) introduced plastic

self-clinching binder straps for bundling wires into cables. Such

binder straps had a connector on one end through which the

other end of the strap was passed. The connector engaged the

strap in a locking arrangement to preclude reverse movement of

the strap through the connector.

In 1958, T&B also introduced a hand tool for facilitating

installation of the plastic self-clinching binder strap. An objec-

tive of T&B’s strap and tool combination (as stated in T&B’s

literature) was to prevent excessive tightening. However, the

T&B tool was deficient because the tension of the strap was

entirely up to the operator’s discretion and it was impossible

to control the tension during installation. This resulted in

straps which were improperly applied and were not under sub-

stantially uniform tension. If the binder straps were drawn too

loosely about the bundle, the wires in the bundle could escape

from the desired position and could get into a dangerous

location. If the binder straps were drawn too tightly about

the bundle, the binder strap could break during tightening

requiring a second binder strap, the binder strap could fail

at a later date with a potentially dangerous result, or the in-

sulation on the wires could be damaged.

Because of the problems using prior art binder strap tools,

sales of plastic binder straps were severely hindered. Petitioner

initiated an active program,.seeking to find a binder strap tool

that overcame the problems of the prior art tools. After working

for over two years during which time numerous possible designs

were considered and discarded, the inventors named in the

patent in suit conceived the tool of the patent in suit. Others

in the field including T&B recognized the problem but were

unsuccessful in finding a solution. Petitioner’s tool was intro-

duced in March, 1962, and immediately was accepted by the

industry.

The patent in suit discloses a small hand tool having a binder

strap tensioning mechanism for tightening a binder strap about

the Harvey patents disclosed a hand-held tool nor did the Harvey

patents include mechanisms for automatic severance in direct

In its decision the Court of Appeals applied additional tests

to the tests of patentability set forth in Graham v. John Deere,

stating that “a claimed invention consisting of old elements must

pass a ‘rather severe test.’""° The Court of Appeals further

7. App. A30.

8. App. A7-A8.

9. App. A24.

10. App. A7.

stated that it was required to determine with regard to a

combination patent, not only whether the combination was

obvious to one with ordinary skill in the art (35 U. S. C.

§ 103) but also “whether the invention produced a ‘new or

different function,’ ” citing Anderson’s-Black Rock and A & P.™

The Court of Appeals also stated that while the solving of a

long felt need in the industry and the commercial success of the

item may be indicia of obviousness or non-obviousness, “those

matters without invention will not make patentability.”"* Thus

while the Court of Appeals mentioned Graham, it actually

applied more rigorous tests, i.e., that in addition to being new,

useful and unobvious, the elements forming the tool must pass

a rather “severe test”, must produce “a new or different function”

and must also have the abstract and undefinable feature which the

Court of Appeals called “invention”.

11. App. A7; Anderson’s-Black Rock, Inc. v. Pavement Salvage

Co., 396 U. S. 57 (1969). Great Atlantic & Pacific Tea Co. V.

Supermarket Equip. Corp., 340 U. S. 147 (1950).

12. App. A10.

REASONS FOR GRANTING THE WRIT.

A. Introduction.

Section 103 of Title 35, United States Code (the 1952 Patent

Act) has been said to be “the heart of the patent system and the

justification of patent grants.”

In 1966, this Court offered its interpretation of Section 103

in Graham v. John Deere Co.* While the Graham case set

understandable tests of patentability based upon reasonably

objective factual inquiries and focused on whether the invention

(i.e. the device) was obvious or non-obvious to one having

ordinary skill in the pertinent art at the time of the invention,

this Court’s subsequent opinion in Anderson’s-Black Rock, Inc.

v. Pavement Salvage Co. * produced tests of patentability

which appear inconsistent with the Graham tests. The language

used by this Court in Anderson’s-Black Rock appears to require

that the device under consideration (a) produce a new or

different function, (b) produce a synergistic result, and (c) have

the illusory quality of “invention”. |

The federal courts are now confused—while Black Rock is

sometimes treated as merely a reaffirmation of Graham and the

Graham tests are applied,’* other times courts struggle to apply

13. Judge Giles S. Rich, Laying the Ghost of the “Invention”

Requirements, APLA Journal, Vol. 1, No. 1, p. 26 (1972). Judge

Rich has been Associate Judge of the United States Court of Cus-

toms and Patent Appeals since 1956, and is a nationally known

patent expert.

14. 383 U.S. 1.

15. 396 U.S. 57 (1969).

16. U.S. Expansion Bolt Company v. Jordan Industries, Inc.,

et al., 488 F. 2d 566, 568 (3 Cir. 1973); Blohm & Voss AG Vv.

Prudential-Grace Lines, Inc., 489 F. 2d 231, 237 (4 Cir. 1973);

Williamson-Dickie Mfg. Co. v. Hortex, Inc., et al., 504 F. 2d 983,

987 (5S Cir. 1974); Van Gorp Manufacturing, Inc. v. Townley In-

highly subjective tests of “new or different function”, “synergistic

results” and “invention”, which typically results in the patent

being held invalid.*’ The patent system is presently left with

an uncertainty as to defining patentability—an uncertainty that

is detrimental to the patent system, requiring this Court’s settling

of an important question of federal law.**

dustrial Plastics, Inc., 464 F. 2d 16, 19 (5 Cir. 1972); Eisele v. St.

Amour, 423 F. 2d 135, 139 (6 Cir. 1970); LaSalle Street Press, Inc.

v. McCormick and Henderson, Inc., 445 F. 2d 84, 92 (7 Cir.

1971); Reeves Instrument Corporation et al. v. Beckman Instru-

ments, Incorporated, 444 F. 2d 263, 271 (9 Cir. 1971).

17. Koppers Co., Inc., v. S & S Corrugated Paper Mach. Co.,

Inc., 517 F. 2d 1182, 1188 (2 Cir. 1975); Hadco Products, Inc. v.

Walter Kidde & Company, 462 F. 2d 1265, 1270 (3 Cir. 1972);

Philips Industries, Inc. et al. v. State Stove & Manufacturing Co.,

S, cctiadad i ow 186 USPQ 458, 462 (6 Cir. 1975); Regimbal

et al. v. Scymansky et al., 444 F. 2d 333, 337-340 (9 Cir. 1971);

Blair v. Dowd’s Inc. et al., 438 F. 2d 136, 137 (D. C. Cir. 1970);

Sutter Products Co. v. Pettibone Mulliken Cu.p., 428 F. 2d 639, 651

(7 Cir. 1970).

18. “In 1966, I felt that the Supreme Court had quite success-

fully clarified it [35 U. S. C. § 103]. I am discussing it again because

I and many others see that confusion remains rampant in the courts

and has arisen even in the Supreme Court, which fact is creating

even more confusion in the lower courts. It all seems so unnecessary

and it is damaging to the patent system and discouraging to in-

ventors, to whom we owe much, and that is bad for the country.”

Rich, Laying the Ghost of the “Invention” Requirement, APLA

Journal, Vol. 1, No. 1, p. 27 (1972).

“While the response of a particular court may not be predicted

with absolute certainty, it may be presumed that Black Rock will

revive the divergence once prevalent among the circuits. The avail-

ability of a broad spectrum of language . . . places a patentee in the

impossible position of attempting to estimate the strength of the

case he must make to secure a patent. Further, the rigorous position

taken in Black Rock seriously jeopardizes existing patents. This is

precisely the situation which preceded the 1952 Act and prompted

its enactment.” Mintz & O’Rourke, After Black Rock: New Tests of

Patentability—-The Old Tests of Invention, 39 Geo. Wash. L. Rev.

123, 151 (1970).

“The Court in Anderson’s-Black Rock attempts a well-nigh im-

possible feat by trying to hold simultaneously viable, two mutually

exclusive legal doctrines. It also ignored the full and painfully de-

veloped legal history of how the subjective standard of ‘invention’

and its impossible burden was replaced by an attempt at a reason-

B. Purpose of Section 103 Was to Define Patentability.

In Hotchkiss V. Greenwood,” this Court in 1850 held that

more than mere novelty and utility was required for patent-

ability, and held the standards to be something more than the

skill level “possessed by an ordinary mechanic acquainted with

the business.” This additional element was then called “inven-

tion.” However, the problem of defining “invention” became

critical as technology became more complex.

Shortly prior to the Patent Act of 1952 this Court in the

A & P decision” invalidated a patent relating to a grocery store

checkout stand on the ground that the checkout stand was a com-

bination of known elements which did not meet tests requiring

(a) that they perform or produce a new or different function,

(b) that the whole in some way exceeds the sum of its parts, and

for these tests for patentability to remain in the Patent Act

of 1952. Section 103 reads:

“§ 103. Conditions for pateniability; non-obvious sub-

ject matter.

A patent may not be obtained though the invention is

not identically disclosed or described as set forth in section

102 of this title, 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. Patentability shall not be negatived by the manner

in which the invention was made.”

ably objective standard of patentability. Justice Holmes said that the

life of the law has not been logic but experience. In Black Rock, the

Supreme Court has defied both.” Dunner, Gambrell & Kayton,

(sO. Perspectives, 1969-70 Annual Review, § A. 1 [1] p. 6

19. 52 U.S. (11 How) 248 (1850).

20. Great Atlantic & Pacific Tea Co. v. Supermarket Equip.

Corp., 340 U. S. 147 (1950). noe

Section 103 was written not to define invention—but to define

“patentability”. The term “invention” is used in Section 103 as a

concrete noun to describe the subject matter under considera-

tion, not the quality of the device.™

Section 103 specifically concerns the conditions for the sub-

ject matter under consideration to be patentable, with one of

these conditions being non-obviousness. The statute requires

that if the subject matter is not identically disclosed in the

prior art, the differences between the subject matter and the

prior art must be viewed. One must determine obviousness or

non-obviousness as the condition for patentability by viewing:

(a) the subject matter as a whole, (b) at the time the invention

was made, (c) to a person having ordinary skill in the art

to which the subject matter pertains.

There is no language in Section 103 which requires giving

different types of subject matter different conditions for patent-

ability. There is no language in Section 163 which requires that

the subject matter produce a new or different function or result.

There is no language in Section 103 that requires that the

elements of the subject matter produce a synergistic result. There

is no language in Section 103 that requires that the subject

matter exhibit some abstract quality called “invention.” Thus

while Section 103 was intended to provide understandable tests

of patentability based upon objective factual inquiries, the

federal courts are confused and often apply tests which are

totally subjective and undefinable.

21. Judge Giles Rich, one of the writers of Section 103, stated:

“The first policy decision underlying § 103 was to cut loose

altogether from the century old term ‘invention’. It really was a

term impossible to define, so we knew that any effort to i

would come to naught.” Laying the Ghost of the “Invention” Re-

quirement, APLA Journal, Vol. 1, No. 1, pp. 33-34 (1972).

C. Section 103 as Defined by Graham.

In Graham v. John Deere Co.,* this Court stressed as strongly

as possible that a prerequisite to patentability is an inquiry into

the obviousness of the subject matter sought to be patented.

This Court expressly recognized, in Graham, that Congress

focused upon non-obviousness rather than invention.* Thus

this Court held that Congress did not intend to change the

general level of patentable subject matter, but that the Section

103 condition of non-obviousness “will permit a more practical

test of patentability’.* This Court stated the basic factual

inquiries under Section 103 to be as follows:

“Under § 103, the scope and content of the prior art are

to be determined; differences between the prior art and the

claims at issue are to be ascertained; and the level of

ordinary skill in the pertinent art resolved. Against this

background, the obviousness or non-obviousness of the

subject matter is determined.”™

This Court also stated in the Graham case that the Eighth

Circuit's test of patentability, requiring a new result in the

patented combination, was not the correct test of patentability.**

Thus Graham appeared to provide reasonably objective and

understandable tests of patentability, by laying to rest the illusory

concept of “invention” and the requirement for some new or

different function to result from the combination.

383 U. S. 1 (1966).

Id. at 14.

Id. at 17.

Ibid.

383 U. S. at 4.

ARSE

D. Black Rock Appears to Define Patentability im a Manner

Inconsistent with Graham.

1. Statements in Black Rock Regarding Patentability Criteria.

Although in tic Granam case this Court stated that the

Eighth Circuit test of patentability, requiring a new or surprising

result in the patented combination, was not “the correct test”,””

in Black Rock this Court criticized the development under con-

sideration by indicating that the elements of a combination

patent must produce a new or different function, as follows:

“The combination of putting the burner together with

the other elements in one machine, though perhaps a matter

of great convenience, did not produce a ‘new or different

machine,’ Lincoln Co. v. Stewart-Warner Corp: 382 -U.S.

545, 549, within the test of validity of combination

patents.”* |

Additionally, in Black Rock this Court indicated that a

“synergistc result” is a necessary condition of patentability, as

follows:

“A combination of elements may result in an effect

greater than the sum of the several effects taken separately.

No such synergistic result is argued here.””

Still further, while this Court in Graham criticized the term

“invention” as being “less definite” than “non-obviousness” and

recognized the Section 103 emphasis of non-obviousness as a

condition for patentability, Mr. Justice Douglas, writing for this

Court, revived the concept of “invention” in the Black Rock

case by stating:

“It is, however, fervently argued that the combination

filled a long felt want and has enjoyed commercial success.

But those matters ‘without invention will not make patenta-

bility, A&P Tea Co. v. Supermarket Corp., 340 U. S.

147.”"

27. Ibid.

28. 396 U. S. at 60.

29. 396 U.S. at 61.

30. Ibid.

The federal courts are confused. Black Rock appears to give

a combination patent some kind of unique status, requiring

(a) a new or different function, (b) a synergistic result, and

ments was set forth in Graham and, in fact, this Court appeared

to have obviated these concepts in Graham.

2. Requirement of “New or Different Funciion” for “Combination”

Patents.

Notwithstanding this Court’s displeasure in Graham with the

Eighth Circuit’s test of patentability," in Black Rock this Court

revitalized this test. Because Black Rock set forth the test which

Graham rejected as being incorrect, the federal courts and the

patent bar have become confused and it is impossible to deter-

mine the tests of patentability presently approved by this Court.

The rule requiring that a combination of known elements

produce a new or different result, or have a synergistic result,

does not take into account the fact that bringing the old elements

together may have been unobvious. Substantially every device

is made up of a combination of known elements.** Any test

viewing the new, different or synergistic result of the combins-

tion of known elements after such elements are combined assumes

improperly that such combination of known elements was

obvious. Thus using the result after the combination is made

to determine patentability, completely overlooks the obviousness

or non-obviousness of initially making the combination. This is

Pa of Aggeaie ter the Eighth Clrcuit wee a 4 2 md

Graham as incorrect (383 U. S. at 4). Subsequently, the Seventh

Circuit indicated its belief that Graham had laid to rest the test of

“unusual and ing result.” Walt Disney Productions v. Fred A.

Niles Com. Ctr., 369 F. 2d 230, 234 (7 Cir., 1966).

32. Judge Learned Hand stated: “Substantially all inventions are

for the combination of old elements . . .” Safety Car Heating &

Lighting Co. v. General Electric Co., 155 F. 2d 937, 939 (2

- sey, Also see Reiner v. I. Leon, 285 F. 2d 501, 503 (2

° 16

contrary to the legislative intent of Section 103 and inconsistent

with the standards set forth in Grahm.™

Further, in Black Rock this Court appears to make a distinc-

tion between patents covering a combination of old elements

and some other kind of patents. There is no logical or statutory

reason for a federal court to apply certain tests of patentability

to what it believes to be one kind of device while applying

harsher tests of patentability to a different kind of device.

Nothing in the Patent Act states or even hints that “combination

of known elements” devices require stricter tests of patentability

than some other kind of devices.** Nevertheless, some federal

courts continue to cite A&P and/or Black Rock for requiring

a special severe test for “combination” patents.*

3. “Invention” Is an IMusory Concept.

“Invention” is such an abstract and subjective concept that

it is impossible to be defined with any logical definiteness. In

1891, this Court stated in McClain v. Ortmayer,” that “inven-

tion cannot be defined . . . .” In the A&P case, this Court stated:

33. “Carried even further, there is doubt that anything would

be patentable. Not only are all mechanical and electrical devices

constructed of old elements but all chemical products are the result

of combining known chemical elements. To continue to reduce

patentability with a view toward uses of old elements would ultimately

lead to the conclusion that those ‘inventions’ which survive are un-

patentable because they amount to no more than a discovery of

something which already existed in nature.” Reeves Instrument

Corp. v. Beckman Instruments, 444 F. 2d 263, 270-271 (footnote

4).

34. “Congress in § 103 threw down the gauntlet to these notions

by substituting a different test—the obviousness test—applicable to

all inventions alike. Since then no justification can be found for

treating one kind of invention differently from another.” Rich,

Laying the Ghost of the “Invention” Requirement, APLA Journal,

Vol. 1, No. 1, p. 43 (1972).

35. Skil Corp. v. Lucerne Products, Inc., 503 F. 2d 745, 749

(7 Cir. 1974); Indiana General Corp. v. Krystinel Corporation, 421

F. 2d 1023, 1032-1033 (2 Cir. 1970); Santa Anita Mfg. Corp. v.

Lugash, 369 F. 2d 964, 966-967 (9 Cir. 1966).

36. 141 U. S. 419, 427.

“The concept of invention is inherently elusive when

applied to combination of old elements.”*"

For one to say that patentability requires “invention” begs

the question—what is “invention”? It is submitted that the ques-

tion should not be whether the device before the court is an

“invention”—the question should be whether it is a patentable

invention.

Thus while Graham indicated to the courts and the patent

bar that Section 103 was an obviousness test and not a test of

“invention”, Black Rock confused the issue by citing A&P for

the proposition that matters without invention will not make

patentability.** By employing a test that requires “invention”

in addition to non-obviousness, the legislative purpose of Sec-

tion 103 is being defeated, the courts and the Patent Office

are free to use subjective and confused reasoning in determining

patentability, and there can never be uniformity of patentabiliiy

standards.

E. The Record of This Petition.

In the instant case, the Court of Appeals recognized that

Petitioner’s tool was not identically disclosed in the prior art.**

However, the Court of Appeals considered the tool as being

made up of “a combination of old elements” and stated ‘hat such

a claimed invention “must pass a rather severe test”.*® This dis-

criminatory test with respect to a mechanical combination of

37. 340 U. S. 147, 151.

38. 396 U. S. at 61. The U. S. Court of Customs and Patent

Appeals indicated its difficulties with Black Rock and A & P by

i ne ee 471 F. 2d 640, 645 (CCPA,

patentability” ’ is difficult to interpret since it requires an under-

standing of the meaning of the term ‘invention,’ a formidable

task, and an appreciation of the distinctions between ‘invention’

and ‘patentability’ if any.”

39. App. Aé.

40. App. A7.

0 i he ee ee

elements, as apparently contrasted with other types of inven-

tions, is non-statutory and is submitted to be improper. No

logical reason exists for a mechanical device made up of a

combination of old elements, as substantially every mechanical

device is, to have to pass a more severe test than other types of

inventions.**

The Court of Appeals further held that in addition to deter-

mining whether the combination was reasonably obvious to one

with ordinary skill in the art, the court must determine whether

the “invention” produced a new or different function.** This

additional requirement is also non-statutory and submitted to

be improper.“

The Court of Appeals recognized Petitioner's argument that

its tool filled a long felt need in the industry and was a com-

mercial success, but held that these matters without “invention”

will not make patentability.* Thus the Court applied the

illusory concept of “inventiou” to subjectively invalidate Peti-

tioner’s patent.

F. Conclusion.

What are the tests of patentability? The federal courts, the

Patent Office and the patent bar at present are confused because

of the apparent inconsistency of tests previously applied by this

Court. The instant case is an ideal case for this Court to review,

and to use in setting forth reasonable tests that courts, the Patent

Office and the patent bar can follow logically and with relative

objectivity.

The decision by the Court of Appeals for the Seventh Circuit,

holding that a severe test is required for combination patents,

that a new or different function is required and that the device

must exhibit “invention” is contrary to the legislative purpose

41. See discussion, supra, p.16.

42. App. A7.

43. See discussion supra, p. 15.

44. App. Al0.

of Section 103 and severely exceeds the tests set forth-by this

Court in Graham. Tests that are susceptible of understanding

and logical application are required. For the reasons stated, a

Writ of Certiorari should issue to review the judgment and

opinion of the Court of Appeals for the Seventh Circuit.

Respectfully submitted,

CHARLES F. PicorTr, Jr.,

GEorGE H. GERSTMAN,

LetTTvin, Picott & GERSTMAN,

135 South LaSalle Street,

Chicago, Illinois 60603,

Counsel for Petitioner.

Of Counsel:

CHARLES R. WENTZEL,

RICHARD B. WAKELY,

17301 Ridgeland Avenue,

Tinley Park, Illinois 60477.

October, 1975.

re le = =—

yur ewe Oo ery

APPENDIX

United States Constitution, Art. I, § 8, CL 8

The Congress shall have Power * * * To promote the

Progress of Science and useful Arts, by securing for limited

Times to Authors and Inventors the exclusive Right to their

respective Writing and Discoveries.

35 U.S.C. § 103

§ 103. CoNnDITIONS FOR PATENTABILITY; Non-Osvious Sus-

JECT MATTER

A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102

of this title, 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. Patentability shall not be negatived

by the manner in which the invention was made, July 19,

1952, c.950, § 1,66 Stat. 798.

" Ree oe ee ee en i a a ee reenter

in the

United States Court of Appeals

For the Seventh Circuit

No. 73-1989

Panpuir Corporation,

Plaintiff-Appellee,

Burnpy Corporation and Burnpy Mrvwest, Inc.,

Defendants-A ppellants.

Appeal from the United States District Court for the Northern

District of Illinois, Eastern Division — No. 70 C 2210

Frank J. McGarr,, Judge.

Arcurep SepremsBer 16, 1974— Decmep May 30, 1975

Before Famcuip, Chief Judge, Cummincs and PELL,

Circuit Judges.

Prit, Circuit Judge. The plaintiff Panduit Corpora-

tion (Panduit) brought this action, charging the defen-

dants Burndy Corporation and Burndy Midwest, Inc.

(collectively, Burndy) with infringement of Panduit

Reissue Patent No. 26,492. The district court found the

plaintiff’s patent valid and infringed and the defendants

appeal.

Background

The patent in suit relates to a hand-held plier-type

binder strap tool for tensioning plastic self-locking

binder straps around bundles to a predetermined ten-

sion and automatically cutting off the free end of the

strap when the predetermined tension is reached. The

bundles which are bound by such straps typically are

groups of insulated electrical wires.

Prior to 1958, string, cord, and wire were used as

binding elements. Since these binding elements were not

self-locking, the binder tools at that time required

mechanisms for twisting, crimping, or otherwise secur-

ing the ends of the binding elements. There were essen-

tially two types of binder tools disclosed by prior

patents: (1) tools having an automatic cutoff

mechanism; and (2) plier-type tools.

In the tools having an automatic cutoff mechanism, a

gripper pulled the free end of the binding material to

tension the strap around the bundle. Tension in the

strap was sensed by a biasing mechanism in which a

spring was balanced against the tension in the strap.

When the strap tension reached a predetermined tension

and exceeded the spring force, crimping automatically

began, followed by an automatic severing of the free end

of the strap. Such a biasing mechaniém and automatic

cutoff were found in the Harvey 1,789,900 Patent

(Harvey °900), the Harvey 1,989,699 Patent (Harvey

669), and the Gerrard 1,669,048 Patent (Gerrard 048).

Since these tools included crimping mechanisms, they

were large tools and not handheld, although they were

hand-operated.

The plier-type binder tools all had jaws and handles

pivoted together, cutters, and some means for operating

the cutter when required. Due to their small size, these

tools could not contain automatic crimping devices;

rather, the operator of the plier-type tool typically, upon

sensing the correct tension, rotated the tool, thereby

twisting the wire, and then manually operated the

cutter to sever the ends of the wire.

In 1958, Thomas & Betts Company (Thomas & Betts)

introduced a plastic self-locking strap for bundling

wires into cables.’ The self-locking strap is a flat, belt-

+ Thomas & Betts in not a party to this suit.

ee ee ee "

OM pride” ~ alas YE SOND RG: aR SD ei RAE. 9 sein oF

cette he ne - ary

like piece of plastic having a serrated side and a buckle

at one end that permits the strap to be pulled through in

one direction only. In using the self-locking strap, the

operator manually places the strap around the bundle

and feeds the end of the strap through the buckle. The

strap is tightened either by hand or by use of a tool.

When the strap is tightened, the tail of the strap may be

left on or cut off as desired. The self-locking aspect of

these straps eliminates the need for twisting or crim-

ping the strap.

At the time it introduced the plastic self-locking strap,

Thomas & Betts also introduced a patented plier-type

self-locking strap around the bundle and inserted the

end of the strap through the buckle. The free end of the

strap was then fed into the tool and the operator tighten-

ed the strap by squeezing the handles. The free end of

the strap was cut off by manual operation of a cutter

when the operator sensed the proper tension in the strap

around the bundle.

From 1958 to 1962, Thomas & Betts was the principal

manufacturer of plier-type binder tools for use in apply-

ing the plastic self-locking straps. In March 1962, Pan-

duit introduced the patented plier-like tool which was

designed to work with the plastic straps. As with the

Logan tool, the operator of the patented tool places the

strap around the bundle and pulls the strap end through

the buckle. The free end of the strap is then fed through

a slot in the first jaw of the tool and secured in a

gripper in the second jaw. The operator squeezes the

handles of the tool, thereby forcing the jaws apart and

tightening the plastic strap around the bundle. Unlike

the Logan tool, however, the patented tool contains a

spring-controlled cutoff mechanism that operates

automatically to sever the free end of the binder strap

only when a predetermined tension is achieved in the

strap around the bundle. That is, when the tension in

the strap exceeds the tension in the spring of the tool,

the severing mechanism is actuated, causing a blade to

sever the free end of the plastic strap next to the buckle.

The patented tool also contains an adjustment

mechanism so that the tension at which the binder strap

is drawn can be changed to accomodate different sizes of

binder straps and different sizes and types of bundles.

The patent in suit is a reissue patent of original Pa-

tent No. 3,169,560, filed March 8, 1962. During the

prosecution of the original patent, the Examiner did not

cite a single patent directed to a plier-type binder tool or

a single patent disclosing a biasing mechanism for

automatic cutoff. The original patent was issued in

February 1965. In 1966, when considering litigation un-

der the original patent, Panduit caused a validity search

to be conducted. The Harvey ’669 patent was found in

this search. As a result of this search, a reissue applica-

tion, citing the Harvey °669, was filed in order to add,

amend, and narrow certain claims to distinguish the

Marvey ’669. The Patent Examiner at first rejected the

claims in the reissue application as unpatentable over

the Harvey ’669 but eventually the reissue patent was

granted.

In late 1967 and early 1968, Burndy developed a

“‘pistol-grip’’ tool for tensioning plastic self-locking

straps. Like the Panduit tool, the Burnady tool contains

an automatic cutoff mechanism to sever the strap when

a predetermined tension is achieved.

Panduit charges that the defendants’ tool infringes on

claims 1 through 5 and 14 through 16 of the reissue pa-

tent. Essentially, these claims describe a plier-type tool

having two jaw members and performing the following

four functions: (1) applying a pulling force to the free

end of the binder strap to tension the strap; (2) sensing

the tension in the binder strap; (3) actuating cutoff

when the predetermined tension is sensed; and

(4) applying the necessary force to achieve severance.

All of these functions are performed in automatic se-

quence with no operator decision.

RAE I omnes

Obviousness

Burndy contends that the Panduit patent is invalid for

obviousness.? Under 35 U.S.C. § 103, an invention is not

patentable, even though it is not identically disclosed by

the prior art, if

‘the differences between the subject matter sought

to be patented and the prior art are sucu that the

subject matter as a whole would have been obvious

at the time the invention was made to a person hav-

ing ordinary skill in the art to which said subject

matter pertains.’’

In Graham v. John Deere Co., 383 U.S. 1, 17 (1966), the

Supreme Court suggested the following approach for

determining whether an invention is obvious:

[T]he scope and content of the prior art are to be

determined; differences between the prior art and

the claims at issue are to be ascertained; and the

level of ordinary skill in the pertinent art resolved.

Against this background, the obviousness or nonob-

viousness of the subject matter is determined.”’

In the present case, there was no prior art containing

both a bias mechanism and a plier-type tool. The district

court, as well as Panduit, placed much emphasis on this

fact. Under § 103, however, a claimed invention may be

obvious, even though it is not identically disclosed or

described by the prior art; it is sufficient that the sub-

ject matter of the patented article, taken as a whole, has

2 A patent is, of course, presumed valid, 35 U.S.C. § 282, and

this presumption applies to reissue patents with the same

force as it applies to original patents, 35 U.S.C. § 252.

Burndy contends that this presumption of validity is

weakened here beeause, during the prosecution of the reissue

patent, the Patent Examiner did not cite the Harvey ‘900,

which Burndy asserts is the most pertinent prior art. The

Harvey ‘900 patent was, however, classified within a class

searched by the Examiner. In this situation, it is presumed

that the Examiner considered the art and discarded it as be-

ing no more pertinent than that cited by him. Uarco Ine. v.

Moore Business Forms, Inc., 440 F.2d 580, 585 (7th Cir. 1971),

cert. dented, 404 U.S. 873; Canaan Prod., Inc. y. Edward Don

& Co., 388 F.2d 540, 544 (7th Cir. 1968).

been disclosed by the prior art. ‘ [O]bviousness does not

require that the combination of prior art references

precisely duplicate the patented article.’ Toro Mfg.

Corp. v. Jacobsen Mfg. Co., 357 F.2d 901, 903 (7th Cir.

1966); Akron Brass Co. vy. Elkhart Brass Mfg. Co., Inc.,

353 F.2d 704, 706 (7th Cir. 1965).

Here, the prior art disclosed both plier-type tools for

applying plastic _ self-locking straps and biasing

mechanisms for automatic severance. Panduit’s improve-

ment over the prior art consisted of incorporating into

the plier-type tool a biasing mechanism so that the self-

locking strap would be automatically cut off when a

predetermined tension in the strap was reached.

The mere fact that a patent consists of a combination

of old elements does not, of course, render it invalid.

However, as this court has recently noted, a claimed in-

vention consisting of old elements must pass a “rather

severe test.’’ Skil Corp. v. Lucerne Prod., Inc., 503 F.2d

745, 749 (7th Cir. 1974). See also Toro Mfg. Corp., supra

at 904. The court must determine, with regard to a com-

bination patent, whether the combination was

reasonably obvious to one with ordinary skill in the art

and whether the invention produced a ‘‘new or different

function.’’ Anderson’s-Black Rock, Inc. v. Pavement

Salvage Co., Inc., 396 US. 57, 60 (1969). ‘The mere

aggregation of a number of old parts or elements which,

in the aggregation, perform or produce no new or

different function or operation than that theretofore per-

formed or produced by them, is not patentable inven-

tion.’”? 4 & P Tea Co. v. Supermarket Equip. Corp., 340

U.S. 147, 151 (1950) ; Lincoln Engineering Co. v. Stewart-

Warner Corp., 303 U.S. 545, 549 (1938).

From our review of the record, we are convinced that

the Panduit patented tool, viewed as a whole, was ob-

vious in light of the Harvey patents and the prior plier-

type tools.* No ‘‘new or different”? function was produced

by the combination of the two known elements. The plier

portion of the patented tool performs exactly as it did in

the earlier plier-type tools. The biasing mechanism in

the Panduit tool, although not identical to prior biasing

mechanisms, performed essentially the same function as

those in the Harvey patents, i.e., it automatically set a

process into operation when a predetermined tension

was reached by balancing the spring tension against the

tension in the strap. The Harvey patents differed from

the Panduit tool, in this respect, only in the fact that

they provided for crimping prior to the severance.*

Plaintiff’s own expert conceded that the design of a bias-

ing mechanism was within the skill of the art. Moreover,

recognizing the desirability of having an automatic

cutoff mechanism in a plier-type tool, after the introduc-

tion of the self-locking strap, was not an inventive act ;

the vice-president of Panduit and co-inventor of the

patented tool admitted that such a combination was ob-

vious.

* Burndy challenges the fact that the district court substan-

tially adopted the findings and conclusions submitted by Pan-

duit. Although we think it not the best practice, we disagree

with the contention. As this court has noted, although the

adoption of large portions of one party’s proposed findings and

conclusions ‘‘has been criticized, United States v. El Paso

Natural Gas Co., 376 U.S. 651, 656-57 n.4, 84 S.Ct. 1044, 12

L.E.2d 12 (1964), such practice is certainly within the trial

court’s diseretion . . . .”’ Reese v. Elkhart Welding & Boiler

Works, Inc., 447 F.2d 517, 520 (7th Cir. 1971).

* The Harvey ‘900 patent provided, inter alia:

“‘The general object of this invention is to provide simple

mechanism for developing a predetermined amount of ten-

sion and operating to arrest the stretching at this point.

Also to provide means which will operate automatically to

sever the strap beyond the tie after the tie is formed.’’

The Harvey ‘699 patent provided, inter alia:

“‘A further object is to provide means for tensioning the

band to a predetermined tension.

‘‘A further object is to provide means which will operate

when the band has been tensioned to a predetermined

degree for interrupting further tensioning, and which

means may be utilized to automatically inaugurate the ty-

ing and severing operations.’’

Panduit makes much of the fact that, in the Harvey

patents,’ when the predetermined tension in the strap

around the bundle was reached, the crimping began.

Only after the crimping was over was there an

automatic severance. Although the crimping mechanism

was responsive to a predetermined tension being reached

in the strap around the bundle, the actual automatic

cutoff, according to Panduit, was responsive only to a

tension between the crimping and the point of cutting

and not to the tension of the strap around the bundle.

We find Panduit’s argument unpersuasive. The impor-

tant point is that the Harvey patents disclosed bias

mechanisms which, upon sensing a predetermined ten-

sion in the strap around the bundle, automatically and

wthout operator decision, set a process into operation.

Because the self-locking strap had not yet been invented

at the time of the Harvey patents, crimping was

In essence, Panduit merely eliminated the part of the

Harvey patents which had become obsolete due to ad-

vances in the binding-strap industry. The Panduit tool,

in fact, could not work except for and with the self-

locking strap. As explained above, Panduit’s own expert

admitted that making a tension-responsive mechanism

was obvious and within the skill of the art prior to the

introduction of the Panduit tool. The elimination of the

complicated crimping device simply enabled Panduit to

compact the mechanism into a hand-held tool. As the

Supreme Court has stated, ‘‘{I]f the omission of an ele-

* The Harvey ‘900 patent, which preceded in time the

Harvey ‘699 patent, is in the nature of a concept while the

Harvey “699 modifies and describes one figure in the Harvey

‘900. The parties disagree on which Harvey patent is the most

while Burndy argues thet it is the ates “tne a yaie

whi urndy argues it is arvey ‘900. iti

Panduit contends that the Harvey ‘900 patent is inoperative

prior art, the a ae is an i Fa obviousness,

even assuming arguendo Harvey ‘ is most pertinent

prior art, the Pandiut patent is invalid for obviousness,

despite the fact that the Panduit claims had been narrowed

somewhat in the reissue patent.

here

Al0

ment is attended by a corresponding omission of the

function performed by that element, there is no inven-

tion, if the elements retained performed the same func-

tion as before.’’ Richards y. Chase Elevator Co., 159 US.

477, 486 (1895). The First Circuit has similarly noted,

‘*to achieve small size, light weight, simplicity and lower

cost by the simple expedient of omitting a function of an

earlier machine because some change in technology has

made the function no longer necessary would, at least in

the absence of very exceptional circumstances, be only a

mechanic’s expedient.’? Shu-Conditioner, Inc. v. Bixby

Box Toe Co., 294 F.2d 819 (1st Cir. 1961).

Panduit’s reliance on Uarco Inc. v. Moore Business

Forms, Inc., 440 F.2d 580 (7th Cir. 1971), cert. denied,

404 U.S. 873, and Ortman v. Maass, 391 F.2d 677 (7th

Cir. 1968) is inapposite. In Uarco the unique feature of

the patented invention was not found in the prior art,

nor did the prior art suggest the combination. Moreover,

in Uarco, portions, which were not necessarily obsolete,

of the two most pertinent references would have had to

be discarded to produce a result similar to the patented

invention. In Ortman, to achieve the combination dis-

closed in the patent in question ‘‘would have required

the artisan to discard the principal elements’’ in the

prior art. 391 F.2d at 682. As in Uarco, the discarded

portions in Ortman were not found to be obsolete. In the

present case, the only item which had to be discarded

from the Harvey patents was the crimper, which had

been rendered obsolete by the introduction of the self-

locking strap. Moreover, the incorporation of the

automatic cutoff mechanism into a plier-type tool did

not require discarding anything from the prior plier

tools.

Finally, Panduit argues that its tool filled a long-felt

need in the industry and has been a commercial success.

While such secondary considerations may be ‘‘indicia of

obviousness or nonobviousness,’’ John Deere, supra at 18,

“those matters ‘without invention will not make paten-

tability.’’’ Black Rock, supra at 61; A ¢& P Tea Co.,

supra at 153. On the record before us, these factors do

not tip the scales in favor of patentability. See Higley v.

Brenner, 387 F.2d 855, 859 (D.C. Cir. 1967); Novo Indus.

All

Corp. v. Standard Screw Co., 374 F.2d 824, 828 (7th Cir.

1967), cert. denied, 389 U.S. 823; T.P. Laboratories, Inc.

v. Huge, 371 F.2d 231, 236 (7th Cir. 1966).

In view of our decision that the Panduit patent, taken

as a whole, is invalid for obviousness, we deem it un-

necessary to consider the issue of infringement.

Accordingly, the judgment of the district court is

reversed and the matter is remanded with directions

that the plaintiff’s complaint be dismissed.

REVERSED AND REMANDED.

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit

Al2

OPINION BY JUDGE PELL

UniTep States Court oF APPEALS

For the Seventh Circuit

Chicago, Illinois 60604

May 30, 1975

Before

Hon. THOMAS E. FAIRCHILD, Chief Judge

Hon. WALTER J. CUMMINGS, Circuit Judge

Hon. WILBuR F. PELL, Jr., Circuit Judge

PANDUIT CORPORATION, ’

Plaintif-Appellee, | Appeal from the United

No. 73-1989 vs. States District Court

for the Northern Dis-

BURNDY CoRPORATION and BurNpy | __ ‘trict of Illinois, East-

MIDWEST, INC., tern Division.

Defendants-A ppellants. 5

This cause came on to be heard on the transcript of the

record from the United States District Court for the Northern

District of Illinois, Eastern Division, and was argued by counsel.

On consideration whereof, it is ordered and adjudged by

this court that the judgment of the said District Court in

this cause appealed from be, and the same is hereby, RE-

VERSED AND REMANDED, with costs, in accordance with

the opinion of this court filed this date.

Al3

UniTED STaTEs Court oF APPEALS

For the Seventh Circuit

Chicago, Illinois 60604

July 9, 1975

Before

Hon. Tuomas E. FAIRCHILD, Chief Judge

Hon. WALTER J. CUMMINGS, Circuit Judge

Hon. WibBur F. Pet, Jr., Circuit Judge

PANDUIT CORPORATION, ! — = the United

Plaintiff-Appellee, i cnet

for the Northern Dis-

trict of Illinois, East-

P tern Division.

BURNDY CORPORATION and BURNDY No. 70 C2210

MENS, BNC, Frank J. McGarr

Defendants-A ppellants. i ; ’

No. 73-1989 vs.

In support of its petition for rehearing, Panduit Corporation

contends, inter alia, that this court in its opinion filed May

30, 1975, improperly invalidated its entire patent in issue.

The only issues before the district court concerned the validity

and infringement of Claims 1 through 5 and 14 through 16.

Those issues were the only ones before this court. The opinion

and judgment of this court are no broader than the claims

which were placed in issue by the parties, irrespective of the

impact that this court's opinion may have on other claims not

put in issue. To the extent that the scope of the holding of

Al4

this court was not entirely clear from the opinion filed May

30, 1975, the opinion and judgment of this court are ex-

pressly confined to Claims 1 through 5 and 14 through 16,

and as to those claims the patent is invalid.

We find no merit in the other contentions raised by the

petition for rehearing and no judge in active service having

requested a vote, the petition for rehearing is denied.

Al5

IN THE UNITED STATES DistTrRiCT COURT

For the Northern District of Illinois

- Eastern Division

PANDUIT CoRrP., .

Plaintiff,

vs.

> No. 70 C 2210

BURNDY CORPORATION and BURNDY

MIDWEST, INC.,

Defendants. }

FINDINGS OF FACT, CONCLUSIONS OF LAW

AND JUDGMENT ORDER

This is an action for infringement of U.S. Patent No. Re.

26,492, entitled “Binder Strap Tool”. The complaint charged

Defendants Burndy Midwest, Inc. and J S G Electric Co.

with direct infringement of said patent, and charged Defend-

ant Burndy Corporation with actively inducing infringement

thereof. J S G Electric Co. was dismissed by stipulation

(PX-1, ¢6). The Plaintiff seeks an injunction against in-

fringement and damages. The Defendants deny infringement

and contend the patent is invalid.

The Plaintiff, Panduit Corp., is a Delaware corporation having

its principal place of business at Tinley Park, Illinois, and

has the entire right, title and interest in and to U.S. Letters

Patent No. Re. 26,492, together with the right to bring and

maintain suit for past and future infringement thereof (PX-

1, 41, 2).

The Defendant Burndy Corporation is a New York corpora-

tion having its principal place of business in Norwalk, Con-

necticut. The Defendant Burndy Midwest, Inc. is an Illinois

corporation having its principal place of business in Schiller

Al6

Park, Illinois, and is a wholly-owned subsidiary of the De-

fendant Burndy Corporation (PX-1, 4 3, 4).

This Court has jurisdiction over the parties and the sub-

ject matter hereof and venue properly is laid in this district

as to the Defendants Burndy Corporation and Burndy Mid-

west, Inc. (PX-1, 45, 6).

The Defendants’ binder strap tools, Models TY50-1 and

TY120-1, are charged by Plaintiff to infringe claims 1 through

5 and 14 through 16 of the Re. 26,492 patent in suit. For

the purpose of determining whether such claims are infringed

by those tools, both tools can be considered as having the

same construction and mode of operation, except that the

Defendants’ Model TY120-1 does not have a face plate (PX-

1, 49, 10, 11).

The patent in suit is a reissue patent of original Patent

3,169,560, filed March 8, 1962 (PX-1, 47). The patent

is directed to a binder strap tool for applying binder straps

about bundles to a substantially uniform predetermined ten-

sion and cutting off the tail end of the binder strap when the

predetermined tension has been obtained in the binder strap

about the bundle (PX-4, col. 1, 1. 42 to col. 2, lL. 17; R-52

to 66). The bundle typically is a group of insulated wires in

an electrical system, such as that of a telephone system, com-

puter, electrical control box, or airplane (PX-6C, 33 to 36;

PX-4, col. 1, ll. 46 to 53).

A binder strap or cable tie used with the patented tool

is of the “self-clinching” type. A typical strap has a connector

on one end through which the other end of the strap is passed.

The typical strap has a row of teeth which selectively engage

teeth in a locking arrangement in the connector so that only

limited retrograde movement of the strap through the con-

nector is possible (R-4, 5, 70; PX-4, col. 2, ll. 41 to 54;

PX-6B, PX-6C).

Al7

Prior to 1958, string or cord was used to bundle into cables

electrical wires used in interconnecting various parts in electrical

systems. Such method required a skilled workman and was

time consuming. In 1958, The Thomas & Betts Co., then

the largest company in this field, introduced plastic self-clinch-

ing binder straps for bundling of wires into cables and also

introduced a hand tool (the “Logan” tool) for facilitating in-

stallation of those straps (PX-39, 56; R-586, 1031 to 1034).

An objective of the Logan tool was to install binder straps

under equal tension at spaced points along the bundled elec-

trical wires (Logan 3,047,945, col. 1, Il. 23 to 54).

It is necessary that the plastic binder straps be installed at

substantially uniform predetermined tension in order to protect

the integrity of both the strap and the bundle. If the strap is

installed too loosely, it may fall off, the wires of the bundle may

escape from the desired position and possibly come into contact

with moving parts of the machine or equipment, or otherwise

destroy the value of the installation. If the strap is installed too

tightly, the strap may be broken or damaged or the insulation on

the wires in the bundle may be crushed or broken, resulting in

a possible malfunction of the electrical circuit. Also, it is desirable

that the strap be cut off as closely to the connector as possible

in order to eliminate any sharp protrusions extending from the

end of the strap which might cause injury to workmen or as-

sociated equipment (R-308, 605; PX-14, p. 2; PX-76 col. 1,

Il. 23 to 32).

The Logan tool was deficient in its method of applying plastic

binder straps. Using such a tool, it was not possible to control

the tension in the binder straps during installation; tension

of the strap was entirely up to the operator’s discretion, re-

sulting in improperly applied straps which were not under sub-

stantially uniform tension (PX-39, PX-76, col. 1, ll. 46-55;

R-441, 448, 449, 454, 459, 462-470, 587, 593, 605, 606,

659-660). |

Als

Straps installed by these early tools had a significantly high

failure rate and during this early period of time, the plastic

binder straps were only used in a very small percentage of

their possible applications (R-1033, 1034, 1040, 1041).

The Thomas & Betts Co. had a large staff of engineers skilled

in this art (R-1034) who recognized the problem of overtension-

ing a strap when installed by the Logan tool. The Thomas & Betts

Co. did not produce a tension-responsive cut-off tool until

mid-1964 (PX-26, PX-40, 43 to 47, PX-76, col. 1, Il. 46 to

55; R-661, 1034 to 1039).

There was a long-felt need for the invention of the patent in

suit. The problem in installation of binder straps by other

prior art tools was recognized by others skilled in the art at

least three years before the time the invention in suit was made,

and those others attempted to solve this problem by other means.

which were not satisfactory (R-1037 to 1039, 720, 722).

In 1959, the Plaintiff embarked upon a program to introduce

a self-clinching strap and a tool for the installation of such straps,

which tool would allow installation of the straps under sub-

stantially uniform predetermined tension, so as to eliminate the

deficiencies theretofore found in the then-avai able installation

tools (R-586, 587, 604 to 607).

In early 1962, after numerous possible designs were con-

sidered, the inventors conceived of the tool of the patent in

suit, which tool appeared to be capable of tensioning a strap

to the predetermined tension and then cutting off that strap,

while the strap about the bundle and the free end of the strap

were under tension (R-611 to 615). This tool was introduced in

March, 1962, and immediately was accepted by industry.

The subject matter of the patent in suit is a hand tool of

small size and simple construction, having incorporated therein

a binder strap tensioning mechanism for tightening a binder strap

about a bundle, and a cut-off mechanism that operates to sever

the free end of the binder strap only in response to achieving

Al9

a predetermined tension in the binder strap about the bundle

(R-64 to 66). The novel and non-obvious feature of the patented

tool is the inclusion in a hand tool of actuating and biasing

means by which it is possible to obtain tensioning of the strap,

a sensing of the tension in the strap, actuation of severing means

to obtain cut-off, and cut-off of the strap in an automatic se-

quence by movement of a single lever in one direction with no

operator discretion (R-785).

In using the patented tool, a binder strap i: applied about

a bundle of wires, the free end of the strap is inserted through

the connector and the binder strap is pulled to hand tightness

about the bundle. A first jaw of the tool is placed against the

connector and the free end of the strap is engaged by a gripper

on the second jaw of the tool. The handles of the tool are

squeezed together to draw the free end of the binder strap

through the connector; several cycles of operation of the tool

handles may be required to reach the desired tension in the

Strap about the bundle, at which time the severing mechanism

of the tool is actuated while the binder strap is under tension

and in response thereto, and thereafter the severing mechanism

of the tool is actuated through a tension-responsive mech-

anism to cause a blade to sever the free end of the binder strap

adjacent to the connector (R-52 to 54).

An adjustment mechanism is provided so that the tension to

which the binder strap is drawn by the patented tool can be

changed to accommodate different sizes of binder straps (R-92,

93).

The invention is illustrated in the patent in a tool of “plier”

configuration. After introduction of the “plier” tool incorporating

the tension-responsive cut-off mechanism, the Navy expressed

a preference for a “gun”-shaped tool capable of tension-respon-

sive cut-off (R-619, 620, 660, 661).

At a December, 1963 meeting before the Navy Department,

Plaintiffs President, Mr. Caveney, was shown a Thomas & Betts

SPCR eer ere me ——

A20

tool of gun-shaped configuration which also incorporated therein

a tension-responsive mechanism (R-619, 620, 660, 661). There

is no evidence that such gun-type tool was known, manufactured,

or invented prior to the filing date of the original patent, 3,169,-

560 upon which the reissue patent was based (R-619, 620,

660, 661; Lawson, et al. Patent No. 3,334,815).

Subsequent to the meeting with the Navy, Plaintiff developed

its own gun-type tool which incorporates the basic concept of

the patented tool, but has certain improvements, such as the

tension-responsive cut-off mechanism so that the tool is not

sensitive to the position of the operator’s hand on the handle

(PX-32; R-584, 622, 623). The plaintiff obtained another

patent on the novel features in its gun-type tool (R-618, 622).

Claims 1-3 in suit were in the original patent and were

amended in the reissue application; claims 4 and 5 were in the

original patent and were not changed in the reissue applica-

tion; and claims 14 to 16 were added in the reissue application

(R-83, 100 103, 125).

Claim 1 of the Re. 26,492 patent defines the basic structure

of the invention in terms of a hand tool 1) having two jaw

members mounted to provide relative movement between them;

la) the first jaw member having means to restrain longitudinal

movement of one end of the strap, and 1b) the second jaw

member having means for pulling on the other end of the strap,

2) the relative movement in one direction between the jaw

members causing the strap to be longitudinally tensioned there-

between, thus to tighten the binder strap about an associated

bundle (R-86 to °8; PX-19); 3) strap-severing means mounted

adjacent the first jaw member for strap-severing relative move-

ment therebetween to sever the portion of the strap disposed

between the restrained end of the strap and the second jaw

member; 4) actuating means for producing the strap-severing

relative movement between the strap-severing means and the

first jaw member; and 5) bias means permitting activation of

the actuating means only when a predetermined tension is

A21

reached in the strap, to sever the portion of the strap disposed

between the restrained end of the strap and the second jaw

member while the strap is under tension (R-88 to 92; PX-i9).

Claim 2, dependent upon claim 1, further specifies that tire

bias means is adjustable to vary the predetermined tension

required to be reached in the strap before the strap-severing

means is actuated (R-92, 93; PX-19).

Claim 3 includes all of the elements of claim 1 and also

calls for jaw operating means for applying force to the jaw

members (R-95, 97 to 100; PX-21).

Claims 4 and 5 are original claims and were not changed

during the reissue of the original patent. The tool defined in

claim 4 and that defined in claim 5 comprises essentially the

same elements as claim 1 discussed above, certain of the ele-

ments being defined with greater particularity, such as the jaws

being mounted for pivotal movement, and, in claim 5 , that the

actuator for the shear blade is mounted on the second jaw mem-

ber to pivot with it (R-100 to 114; PX-22, 23).

Claims 14 to 16 were added to the patent during reissue.

Representative claim 14 is drawn to a tool having a first jaw

member, the jaw member having 1) a strap engaging member

for engaging an associated connector strap end during the tight-

ening of the loop about the bundle, 2) a second jaw member

having a strap pulling member thereon for pulling on the free

strap end during the tightening of the loop about the bundle, 3)

drive structure interconnecting the jaw members for moving

the jaw members away from each other to pull the free

strap end away from the connector strap end to tighten the loop

about the bundle and to place under tension the strap including

the portion disposed between the engaged connector strap end

and the second jaw member, 4) strap-severing means positioned

to sever the portion of the free strap end between the engaged

connector strap end and the second jaw member, and 5) an

actuator for the strap-severing means responsive to the place-

A22

ment of the strap under a predetermined tension for e~tuating

the strap-severing means to sever the free strap end between

the engaged connector strap end and the second jaw member

(R-126 to 129; PX-29, 30, 31).

In 1966, when considering litigation under the original

3,169,560 patent, the Plaintiff caused a validity search to be

conducted (PX-16; R-631). The Harvey 1,989,669 patent was

found in this search (R-631; PX-16). As a result of this search,

a reissue application was filed, the purpose being to add certain

limitations to some of the claims in order to distinguish over

the Harvey ’669 patent, and to eliminate some of the more

limited language in some of the claims in order to broaden

their scope, and also to add additional claims (PX-1; ¢ 7; PX-2,

pp. 16 to 18).

The reissue application was directed to the same subject mat-

“ter as the original patent and the only addition to the specifica-

tion of the original patent was the inclusion of the Abstract of

the Disclosure and the insertion of a patent number relating to

a previously pending application. The same drawings were used

in the reissue application that were used in the original patent

(PX-2, PX-4). The claims in issue are directed to the same

invention as claimed in the original patent and are fully

supported by the disclosure of the original patent. Claims 4 and

5 in issue are unchanged from the original patent (PX-2; R-100,

103). The Defendants introduced no evidence that the claims

were not supported by the original patent or were directed to an

invention different from that originally claimed.

The Harvey ’669 patent was brought to the attention of the

Patent Office by Plaintiff when the reissue application was filed,

and that patent was considered and cited by the Patent Office

before allowing the claims of the reissue patent (PX-2, pp. 17,

18, 20, 23, 24, 28, 30, 33, 34, 38, 41).

The Harvey ’669 patent relates to a machine for installing

steel strapping about relatively large bundles; it is not a hand

tool (R-514). In Harvey, one end of the metal band is held

A23

in a first gripper 7 and 8; the other end of the band passes

around the box and through a second gripper 6 and 26 and

through a crimping mechanism 50, then. below a shearing blade

161 into a third gripper 36. By operating the handle 71 which

is connected through the spur gear 93, the gripper 36 is

caused to move outwardly to tension the band about the box.

When a predetermined tension has been reached in the band

about the box, further tensioning of the strap is terminated by

means of the tension-responsive mechanism (Harvey *669, p.

9, right-hand col., Il. 9 to 58). When the tensioning mechanism

trips, continued operation of the handle causes the crimping

mechanism t secure the band together (Harvey °669, p. 9,

right-hand col., ll. 59 to 68). Integral with the spur gear 98 is

a severing cam 164 which is operatively coupled to the shearing

blade 161. Continued operation of the handle 71 after crimp-

ing actuates the shearing blade to sever the excess material of

the band (Harvey ’669, p. 8 right-hand col., ll. 54 to 69).

During prosecution of the reissue application, the Examiner

rejected only claims 1 to 4 and 14 as being met by the Harvey

"669 patent (PX-2, p. 22, last 4). In reply to this rejection,

and in the reissue oath, a number of reasons were advanced as

to why those claims and others distinguished from the Harvey

"669 patent (PX-2, pp. 17, 30 to 34, 38). One of the reasons

advanced, namely, the location of where the strap is severed

relative to the jaws, was in error (R-427). This erroneous

statement is not of any material consequence in distinguishing

the claims from the Harvey patent. In Harvey °669, the sever-

ing of the band has nothing to do with the tension in the band,

as the band is crimped before severing occurs.

The file wrapper of the patent in suit discloses that the

Examiner cited the following patents (PX-2, p. 41):

1,939,669 Harvey

1,463,869 Campbell

1,499,096 Campbell

2,569,623 Wognum

2,967,550 Rosenberger, et al.

A24

The Defendants cited the following patents as prior art

(PX-1, 4 19):

1,304,620 Steinkoenig

1,650,844 McChesney

1,669,048 Gerrard, et al.

1,789,900 Harvey

2,882,934 Gerrard

3,047,945 Logan

3,344,815 Lawson, et al.

At trial, Defendants also relied upon the early Thomas & Betts

tools (PX-39, 40; DX-26) as prior art, which tools are illus-

trated in the Logan 3,047,945 patent and the drawings identi-

fied as PX-43 to 47 (R-558 to 560, 581, 587, 819, 892, 893,

897 to 902, 905, 906).

The Defendants contend that the Gerrard 048 and Harvey

900 patents are more pertinent prior art than the Harvey '669

patent, because those patents have tension-responsive mecha-

nisms for cutting off the strap in response to a predetermined

tension (R-372, 383, 417, 418). No evidence was introduced

by the Defendants as to why the tension-responsive mechanism

of Gerrard 048 is any more pertinent than the tension-respon-

sive mechanism found in the Harvey ’669 patent considered by

the Examiner.

The preponderance of the evidence, including working models

and testimony of expert witnesses, establishes that the two

embodiments illustrated in the Harvey "900 patent would be

inoperable to tension plastic binder straps to a predetermined

tension and sever those straps at such tension while under ten-

sion (R-730 to 735, 739 to 743). The embodiment illustrated

in Figs. 5 and 6 of Harvey ‘900 is substantially identical to the

tension-responsive mechanism illustrated in Harvey °669; how-

ever, certain changes were made in the Harvey ’669 device which

render it operative (R-515, 516, 774). Harvey °669 includes a

complicated mode shifting mechanism having cams, levers and

gears and requires gear shifting after tripping of the tensioning

A25

mechanism to activate the crimping means and then, through

the gear and cam arrangement, to activate the cutter (R-1014).

The preponderance of the evidence establishes that the

tension-responsive mechanism of the Harvey ’669 patent is the

aoe pertinent prior art (R-771 to 774, 1010 to 1012; PX-81,

The claims in issue distinguish over the Logan patent because

the tool of the Logan patent does not include gripping means

on one of the jaw members; it does not include an actuator or

actuating means for the knife as the phrase is used in the patent

in suit, and does not include biasing means which prevent

actuation of the knife until a predetermined tension has been

reached in the strap (R-381, 382, 447 to 474, 776, 777, 780,

781, 782, 783).

The claims in issue distinguish over the Harvey "900 patent

because that patent is not a hand tool and it does not include

actuating means and biasing means as those terms are used in

the claims in issue (R-778, 779, 781, 783, 784, 929 to 939,

944 to 950, 967 to 972).

There is no single prior art patent which meets all of the

limitations of the claims in issue of the Re. 26,492 patent.

None of the patents cited discloses a hand tool which includes

actuating means for causing operation of the strap-severing

means and bias means permitting activation of the actuating

means only when the predetermined tension is reached in the

strap about the bundle.

The Gerrard ’048, Gerrard 934, Logan "945 and Harvey

900 patents originally were classified in classes 140-93, 140-

93.2, 30-134 and 149-93, respectively (R-753 to 755). Logan

and Gerrard '048 were later reclassified in class 140-93.6

(R-755, 756). There is no evidence that these original patents

were ever Officially classified in any other class and subclass

during the period of March, 1962 through November, 1968

(R-756 to 765) when the original and reissue applications were

A26

before the Patent Office. Those classes were searched by the

Examiner (PX-2, p. 72), whereby the Examiner considered

and discarded the additional prior art cited by the Defendants.

No testimony was offered as to how the Logan '945 and

Harvey "900 structures could be combined in any manner so

as to anticipate or render obvious the patented invention; no

testimony was offered as to how the prior art patents of Gerrard

934, Gerrard °048, Steinkoenig and McChesney could be

combined in any manner which would be obvious to one of

ordinary skill in the art so as to anticipate or render obvious

the patented invention; nor would it be obvious to a person

of ordinary skill in the art to combine structures of the various

prior art patents in a manner which would provide the structure

of the patented tool as set forth in the claims in suit.

The combination set forth in claims 1 through 5 and 14

through 16 of the Re. 26,492 patent would not have been

obvious to a person having ordinary skill in the binder strap

tool art in 1962, when the invention defined in the claims of

the patent was made, and these claims define a new combination

of elements which co-operate together to produce new, different

and unobvious results over the prior art.

The Defendants began to develop a tool to compete with the

Plaintiff's gun-type tool in late 1967 and early 1968 (PX-11,

12, 13, 14). The Defendants felt it essential that this tool

incorporate an automatic tension cut-off device because large

users of the binder straps insisted on a tool which automatically

tensioned the strap to a predetermined level and then cut the

extending tail (PX-13, p. 3, PX-14, p. 2, 43).

Prior to development of the accused tools, the Defendants

had in their possession and had inspected Plaintiffs “plier” tool

and gun tool, on which tools the original patent number

3,169,560 appeared (PX-1, 4 8; R-341, 342, 345, 346).

In use of the accused tools, the nose of the tool is placed

against the binder strap connector and the free end of the binder

A27

strap is engaged by a movable gripper on the tool. Manual

squeezing of the handles toward each other causes the binder

strap to be progressively tightened until a predetermined ten-

sion in the binder strap is achieved (R-69-72, 80, 81). There-

after a bias structure is overcome, allowing the roller-actuator

to engage a strap-severing member and cause it to sever the

free strap end adjacent to the strap connector (R-72, 81, 82).

Both of the accused tools operate in the same manner (PX-1,

{ 11), except the Model TY120-1 does not have the face plate

on the nose of the tool which appears on the Model TY50-1

(PX-1, 4 11; R-94).

The Defendants’ Models TY50-1 and TY120-1 are of a

gun configuration. Each of those tools includes a body portion

having a forwardly extending first jaw member on which there

is provided an abutment which restrains the connector end of

the associated strap (R-69 to 74, 94). In the Defendants’ Model

TY50-1 this abutment is in the form of a separate face plate

affixed to the jaw member (R-74) while in the Defendants’

Model TY120-1 this abutment is provided by a turned-over

portion of the first jaw member in the same fashion that a turned-

over portion of the jaw member provides the restraining means

in the tool illustrated in the Re. 26,492 patent (R-94, 806, 807).

The accused tools have the following structural features which

perform the indicated function:

a) Two jaw members in the form of an extended portion

of the body and a handle, which jaw members are

pivotally connected to provide relative movement be-

tween them (R-72, 73, 76).

b) The first jaw member has means to restrain longitudinal

movement of one end of the associated strap (R-74,

94).

c) The second jaw member has means for pulling on the

other end of the associated strap; the means compris-

ing a gripper affixed to the draw bar which in turn is

A28

connected to the second jaw member. The draw bar

performs no function other than as a link between

these two parts. The relative movement between the

jaw members causes the strap to be longitudinally ten-

sioned therebetween (R-76).

d) Strap-severing means in the form of a member pivot-

ally mounted on and adjacent the first jaw member

and having a blade at one end for severing the strap

and a cam surface at the other end fc engagement with

an associated actuator, the strap-severing means being

mounted on the first jaw member and adjacent thereto

for strap-severing movement relative thereto to sever

the portion of the strap disposed between the restrained

end of the strap and the second jaw member (R-74).

e) Actuating means in the form of a roller, which actua-

ting means produces the strap-severing movement be-

tween the strap-severing means and the first jaw

member when the actuating means is operated (R-78).

f) Bias means in the form of a spring which permits acti-

vation of the actuating means only when a predeter-

mined tension is reached in the strap (R-77).

g) The bias means in the accused tool also is adjustable

to vary the amount of the desired predetermined ten-

sion in the strap before the strap-severing means is

actuated (R-78).

Tensioning, activation of the actuator, and severing, in both

the patented tool and the accused tools, is accomplished by the

pivot point of the second jaw member shifting from a

location during tensioning which is spaced from the pass line

of the strap through the connector, to a location substantially

at the pass line of the strap through the connector to overcome

the bias at the predetermined tension, and back toward the

original location during severing (R-482 to 490, 693 to 695,

714 to 717).

A29

Claims 1 through 5 and 14 through 16 literally read on

these features of the accused tool (R-82 to 95, 97 to 114, 123

to 134, 138 to 158).

There is no file wrapper estoppel which would preclude the

Plaintiff from construing the claims in issue on a pistol-grip

tool. The file history of the patent in suit indicates that the

Examiner considered the phrase “jaw members” very broadly

when rejecting the claims on the Harvey '669 patent (PX-2,

pp. 23, 24). The Harvey ’669 patent is not a plier tool, and no

argument was made in the reissue application that the claims

were limited to a plier-type configuration in order to distinguish

the claims from the Harvey 669 patent. The “jaw members”

are defined in the patent only as members “which carry the

mechanism for causing the strap to be tensioned and cut off.”

(PX-4 col. 2, Il. 60 to 63). This is the same function per-

formed by the handle and body portion of the accused tools

(R-72 to 79, 144 to 149). A “jaw” is defined in Chamber’s

Technical Dictionary as “one of a pair of members between

which an object is held . . .” (R-146, 817).

There was no acquiescence by the patentees in the Exam-

iner’s statement that the claims copied from the Lawson patent

for interference purposes were not supported by the disclosure

of the reissue application (PX-2, pp. 60 to 67). The Examin-

er’s comments were not related to limitations in any of the

claims of the patent in suit, but were directed only to claims

copied from an entirely different patent. The file history of the

Lawson patent also indicates that those copied claims were

allowed only after limitations were inserted therein to distin-

guish those claims from the original Patent 3,169,560 (PX-5A,

pp. 13 to 23).

Although there are slight differences in the motions of the

corresponding parts between the tool illustrated in the patent

in suit and the accused tools, resulting from the specific differ-

ences in configuration of the actuator, namely, a rack-and-gear

A30

arrangement in the tool illustrated in the patent as compared

to the roller-ramp arrangement in the accused tools, and the

pivotal knife in the accused tool as compared to essentially a

“sliding” knife in the patented tool the claims in suit literally

read on the accused tools and the accused tools are the full

functional equivalent of the tools specified in claims 1 through

5 and 14 through 16 (R-154).

Test data and theoretical analyses by both Plaintiff and

Defendants’ employees indicate that both tools will tension a

binder strap to a substantially uniform predetermined tension

and thereafter cut off the extending tail of the binder strap

while the strap is under tension (R-155, 171, 172, 228, 229,

262, 328, 329, 692, 869 to 872). Although there is some

variation in tension among the straps applied by both the tool

of the patent in suit and the accused tools, this variation is of

substantially the same magnitude in both the patented tool and

the accused tools, and is relatively nominal compared to the

complete inability to control tension, other than by operator

discretion, in the binder strap tools of the prior art (R-155, 171,

172, 228, 229, 262, 269). Plaintiffs test evidence clearly

establishes that the patented tool and the accused tools will ten-

sion binder straps to substantially uniform predetermined ten-

sions and that the tension settings are adjustable (PX-26).

The actuating means called for in the claims in suit is not

limited to the gear-and-rack arrangement illustrated in the

patent. The language of these claims is broader than other claims

not involved in this litigation, such as claims 6 and 9, which do

specify that the shear blade and actuator have teeth which

engage each other, the teeth causing the movement of the

shear blade upon movement of the actuator.

The patent in suit is a pioneer patent. The tool of this patent

was the first hand tool for applying plastic binder straps to

incorporate a tension-responsive mechanism for automatically

initiating cut-off at a predetermined tension, and this feature

A31

is considered essential in binder strap tools used in this industry

(R-342-345, 656-657; PX-14, p. 2).

The claims in issue read on Plaintiff's plier tool as well as the

gun-type tool subsequently mam foctured by Plaintiff (PX-64;

R-156 to 158). It is the feature of automatic cut-off at pre-

determined tension in a hand tool which is the novel and highly

successful feature of the patented tool, and tools incorporating

such feature have been highly successful commercially and have

received wide acceptance in the field. Since introduction of the

original plier-type tool and subsequent introduction of Plain-

tiffs gun-type tool and through 1971, Plaintiff had sold

over one hundred thirty thousand (130,000) tools covered

by the claims of the patent in suit (PX-37). Large users of

binder straps will only accept tools which incorporate an auto-

matic cut-off at predetermined tension feature (PX-14, p. 2 4 2,

q 3, R-342 to 345).

This Court has jurisdiction of the parties hereto and of the

subject matter of this litigation, 28 U. S. C. Section 1338,

and venue is properly laid in this district as to the Defendants,

Burndy Corporation and Burndy Midwest, Inc.

A patent and each claim thereof shall be presumed valid, and

the burden of establishing invalidity of a patent or any claim

thereof rests upon the party asserting it, 35 U. S. C. Section 282.

The party asserting invalidity has the burden of establishing in-

validity by clear and convincing evidence, and every reasonable

doubt as to the validity of the patent should be resolved against

the party challenging validity.

The statutory presumption of validity applies to reissue

patents with the same force as it applies to original patents.

None of the prior art offered in evidence identically discloses

or describes the invention as claimed in U. S. Patent No. Re.

26,492 in accordance with the requirements set forth under 35

U. S. C. Section 102.

A32

The presumption of patent validity is strengthened where

the most pertinent prior art was before the Patent Examiner

during the prosecution of the patent application.

It is presumed that the Examiner considered and discarded

uncited patent references which are classified in the class and

and subclasses in which the patent in suit issued, or in a class and

sub-class which has otherwise been indicated as having been

searched by the Examiner.

Where there has been a long-standing need for a solution to

overcome defects in the prior art, the answer to the problem as

solved by the patentee of the patent was not obvious to those

skilled in the art.

When evidence shows that others in the art attempted to

solve the same problem and failed in their efforts and did not

arrive at the solution claimed by the patent in suit, the statutory

presumption of validity is substantially strengthened.

A need in the marketplace for a patented product coupled

with the commercial success of that patented product, while

not decisive in determining the question of validity, are ob-

jective factors showing unobviousness and materially strengthen

the presumption of the validity of the patent.

The claims in suit are entitled to the filing date of the original

patent, March 8, 1962 and the Lawson patent No. 3,344,815

is not prior art usable against such claims.

The inquiry into patentability must be directed toward the

subject matter as a whole and not to the elements of the claimed

combination and their individual novelty, and therefore a pat-

ented combination which results in a more facile, economical

or efficient unit, or which provides results unachieved by prior art

structures, cannot be anticipated piecemeal by showing that the

various elements of the invention are individually old.

The difference between the subject matter set forth in the

Re. 26,492 patent and the subject matter of the cited prior

art references as a whole would not have been obvious at the

A33

time the invention was made to a person of ordinary skill

in the art to which such subject matter pertains, under 35

U. S. C. Section 103.

The Re. 26,492 patent in suit and the claims 1 to S and

14 to 16 thereof are valid.

Patent claims are to be contrued liberally, particularly when

the patented invention has had significant commercial success

or the patent is of the pioneer type.

Patents are not limited to the embodiment of the invention

described in the specification and drawings since the patent

claims measure the invention. If the accused device achieves

substantially the same results in substantially the same way as

the patented device, the devices are the same in the eyes of the

patent law.

One appropriating the principle and mode of operation of

a patented device, and obtaining its results by the same or

equivalent means may not avoid infringement by making a

device different in form, even though it be more or less ef-

ficient than the patented device.

In determining equivalency, consideration must be given to

the purpose for each element as used in the patent, the qualities

of each element when combined with the other elements, and the

function which the element is intended to perform.

Infringement is not avoided by making into two pieces what

a claim specifies as one, provided that the two pieces perform

the function of the one in the same way.

The addition of an added element to a combination called

for by a patent does not avoid infringement of the patent.

Narrow limitations in some claims are not to be read into

broader claims.

Claims 1 through 5 and 14 through 16 read literally on the

accused binder strap tools manufactured by the Defendants,

and the Defendants, by their manufacture and sale of such tools,

have infringed such claims.

A35

Nov. 12, 1968 J. &. CAVENEY ETAL Re. 26,492

A34

BINDER STRAP TOOL

The accused binder strap tools are the structural and func- Original Filed March @. 1962 2 Sheets-Sheet 1

tional equivalent of Plaintiffs patented binder strap tool and ac-

complish substantially the same result in substantially the same 2

way as the binder strap tool set forth in claims 1 through 5

and 14 through 16 in suit. The Defendants, by their manufacture

and sale of binder strap tools that are the equivalent of the

tool set forth in the claims in issue, have infringed those claims

of the patent.

Plaintiff is entitled to an injunction against further infringe-

ment of Patent Re. 26,492, to an accounting for the damages

sustained by reason of such infringement not less than a

reasonable royalty, to a judgment on the damages so determined

and execution on such judgment. The questions of increasing

of damages under Title 35 U. S. C. Section 283, the amount

and period of interest and attorney’s fees pursuant to Title 35

U. S. C. Section 285 are hereby specifically reserved until the

accounting period.

Wherefore, Defendants Burndy Corporation and Burndy

Midwest, Inc. are enjoined from further infringing Patent Re.

26,492, and are ordered to account to the Plaintiff for infring- 4

ing products sold, and are entitled to damages not less than a

reasonable royalty. Cause set for Friday, October 12, 1973,

at 10 a.m. to schedule discovery and hearings on the ac-

counting.

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26 pp

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ENTER:

/s/ FRANK J. MCGARR

United States District Judge

Dated: September 11, 1973

Nov. 12, 1968

A36

J. E. CAVENEY ETAL

BINDER STRAP TOOL

Original Filed March 6, 1962

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Re. 26,492

2 Sheets—Sheet 2

A37

UNITED STATES PATENT OFFICE

Re. 26,492 Reissued Nov. 12, 1968

26,492

BINDER STRAP TOOL

Jack E. Caveney, Chicago, and Roy A. Moody, Flossmoor,

Ill., assignors to Panduit Corporation, Tinley Park, Ill., a

corporation of Ilinois

Original No. 3,169,560, dated Feb. 16, 1965, Ser. No. 178,332,

Mar. 8, 1962. Application for reissue Feb. 6, 1967, Ser.

No. 620,553

17 Claims. (CL. 140—93.2)

Matter enclosed in heavy brackets [ ] appears in the original

patent but forms no part of this reissue specification; matter

printed in italics indicates the additions made by reissue.

ABSTRACT OF THE DISCLOSURE

A hand tool is provided for tensioning a stretchable plastic

strap about a bundle, the tool including two jaw members to

which are attached handles and mounted to provide relative

movement therebetween, the first jaw member restraining move-

ment of one end of the strap and the second jaw member

pulling on the other end of the strap so that movement of the

jaw members away from each other causes the strap to be

longitudinally tensioned therebetween and around the asso-

ciated bundle, and a shear blade mounted adjacent the first

jaw member for relative movement therebetween to sever the

portion of the strap disposed between the restrained end of

the strap and the second jaw member, an actuator for the

Shear blade for producing strap-severing relative movement

A38

between the shear blade and the jaw member, and bias means

permitting actuation of the actuator only when a predetermined

tension is reached in the strap to sever the portion of the strap

disposed between the restrained end of the strap and the second

jaw member while the strap is under the predetermined tension

about the associated bundle, the bias means being adjustable

to vary the amount of tension required to be reached in the

strap before the shear blade is actuated.

This invention relates to the art of binder strap applying

tools and particularly to an improved tool for tensioning and

securing a flexible binder strap around a bundle of wires, or the

like.

When wiring complicated electrical and electronic installa-

tions as on electric control panels, automobiles, aircraft and

others where a plurality of electrical components are wired

together in different ways, it is customary to direct adjacent

wires along close parallel paths for neatness and for facility

of visual location by binding them together with string, straps,

tape or other forms of wiring binders. These are adjustable

binders which can accommodate a wide range of bundle sizes

and, although some are releasable for reuse, there is a type

which is not intended for reuse, once attached. It is the

principal object of this invention to provide an improved tool

which is particularly adapted to tension and secure the non-

reusable type of binder around a bundle of wires and there-

after immediately cut off any extending free length of strap

end left over. |

It is still another object of the invention to provide such

a tool which automatically severs the free length of strap end

when a pre-determined tension is reached in the binder strap

portion encircling the bundle.

It is another Object of the invention to provide such a tool

which can be adjusted to pre-set the pre-determined tension

A39

to be reached before severing the free length of strap end and

which is easily adjusted in a simple and quick manner.

Another object is to provide a tool of the type mentioned

which insures that the tension in the strap is substantially

uniformly the same from strap to strap regardless of the strength

and lack of skill of the tool operator.

It is still another object to provide a tool which is relatively

inexpensive to manufacture, and of simple yet durable con-

struction.

It is still another object of the invention to provide such

a tool which can be used with binder straps of different widths

and thicknesses and hardness of material without alteration

in the structure of the tool. This is primarily because of the

adjustment for the cutoff at any pre-determined strap tension.

It is another object to provide such a tool having a ten-

sioning gripper which is self energized to automatically grip

a strap when tensioning is to be started and which is auto-

matically caused to be released from the strap after tensioning

and cutoff is completed.

Other objects and advantages of the invention can be better

understood by referring to the drawings in which

FIG. 1 shows a perspective view of the hand of a worker

tensioning a binder strap onto a bundle of wires by means of

a tool embodying the features of this invention;

FIG. 2 shows a partially cutaway and partial sectional view

of the operating end portions of the tool shown in FIG. 1;

FIG. 3 shows a left side view of the tool portion shown

in FIG. 2;

FIG. 4 shows a right side view of the tool portion shown

in FIG. 2;

FIG. 5 shows a sectional view as viewed along the line

5-—5 of FIG 2;

A40

FIG. 6 shows a full view of the same portions of the tool

shown in FIG. 2 except with a binder strap in position in the

tool and the parts moved to an advanced relative position

during strap tensioning; and

FIG. 7 shows a right portion of the tool portion shown in

FIG. 6 except in partial cutaway end section and in still more

advanced relative position of the tool parts as the tool appears

as the free strap end is severed.

As shown in FIG. 1, a preferred embodiment of the tool

1 of this invention is used to tension and secure a binder

strap 2 around a bundle of closely positioned parallel extend-

ing wires 3. The binder straps can be of different construc-

tions, but the type indicated consists of a single length of

strap having an enlarged wedge shaped end and surrounded

by a sleeve 2a through which the free end of the strap is

passed after it is encircled about the bundle into a loop.

As the free strap end is drawn taut through the sleeve 2a, the

strap tension urges the enlarged wedge shaped strap end into

tighter engagement with the sleeve. Teeth can be provided on

both the strap end and the enlarged end which mate with

each other in order to check or retain the tension once reached.

A binder strap of the type mentioned is shown in our copend-

ing application entitled Binder Strap, Serial No. 178,331,

filed March 8, 1962 and now Patent No. 3,197,829.

The tool 1 consists essentially of two lower handles 4 and

5 pivoted together by means of a pin 6. Attached to the

upper ends of the handles are two jaw members 7 and 8

which carry the mechanism for causing the strap to be ten-

sioned and cut off.

In more detail, referring to FIGS. 2 to 7, the lower handles

are channel shaped in cross-section and covered with tight

fitting plastic or rubber covers for purposes of comfort and

appearance. The handle 4 is provided with two parallel and

spaced apart ears 4a and 4b which overlap corresponding

A4l

shaped ears 5a and Sb projecting from the handle 5. The

ears 4a and 4b are offset laterally by the thickness of the

ears Sa and 5b in order to allow the said overlap. The pivot

pin 6 extends through aligned holes 4c, 5c, 5d, 4d in the

ears 4a, 5a, Sb, 4b, respectively, in order to pivot the handles

4 and 5, together. The pin 6 is provided with two annular

recesses 6a and 6b which permit movement of the ears 5a

and Sb relative to the pin 6 and create an eccentricity between

the holes Sc and Sd and the pin 6.

The handle 4 has secured in a fixed position within its chan-

nel portion between its two parallel walls the jaw member 7

which is secured in place by means of a drive pin 9 and a screw

10, both of which extend through both walls of the handle 4

and the jaw member 7. The jaw member 7 is narrowed to ac-

commodate a shear blade 11 which is held in a slidable posi-

tion along the member 7 by means of a T-shaped stud 12 ex-

tending through a slot 13 provided in the shear blade 11. The

shear blade 11 is also positioned between the wall 4e of the

handle 4 and the member 7 to prevent pivotal movement of the

shear blade 11 on the stud 12. The lower portion of the shear

blade 11 is provided with a sharp sawtooth shaped teeth 11a,

which face in the direction toward the other handle 5. The

upper end of the jaw member 7 is provided with a passage 7a

formed between the lower wall of a projection 7b and another

wall on the jaw member 7. The projection 7b extends beyond

the main body of the jaw member 7 where it is in alignment

with the cutting edge 11b of the shear blade 11 where it can

act as a reaction surface for the shear blade 11.

The handle 5 has secured in a fixed position within its

channel portion between its two parallel walls the jaw member

8 which is secured in place by means of a drive pin 14 and a

screw 15, both of which extend through both walls of the

handle 5 and the jaw member 8. The jaw member 8 is provided

with a rectangular recess 16 which accommodates a strap gripper

17 pivoted to the jaw member 8 by means of a screw 18. The

A42

strap gripper 17 is recessed on its hidden side to accommodate

a spring 19 which reacts between the gripper 17 and the jaw

member 8 to urge the gripper 17 counterclockwise, as viewed

in FIGS. 2 and 6, toward the wall 20 of the recess 16. The

gripper 17 is provided with sharp sawtooth shaped teeth 17a

along its upper surface.

Keyed within a transverse recess 21 of the jaw 8, by means

of projections 22 and 23, is a shear blade actuator 24 which is

provided at its free end with sharp sawtooth shaped teeth 24a

positioned adjacent to the region of the teeth 11a on the shear

blade 11 and directed to mesh with the teeth 1la when engaged

with them, as later described. This shear blade actuator 24 is

provided with a hole 24c somewhat larger than the diameter of

the pin 6 which also passes through it. Alongside the free end

of the actuator 24 is a thinner portion 7c of the jaw member 7

which provides a recess for freely receiving the toothed or free

end portion of the actuator 24. The opposite end 24b of the

shear actuator 24 is threaded and projects through holes in

two yokes 25 and 26. The yokes are provided as carriers for

two outboard mounted springs 27 and 28. The yoke 25 is

pivoted onto the outer ends of the pin 6 and provided with two

laterally directed flanges 25a and 25b. The yoke 26 has two

arms 26a and 26b which carry the springs 27 and 28 around

them and extend freely through opening in the flanges 25a and

25b. In this manner, the springs 27 and 28 are held captive.

The threaded end 24b is engaged with a thumb nut 29 and

adjustment of the nut along the threaded end 24b adjusts the

‘compression of the spring 27 and 28. Movement of the nut

29 onto the threaded portion 24b causes the springs 27 and

28 to be compressed. The force of the springs urges the shear

blade actuator 24 away from the shear blade 11 in order to

keep the teeth 24a disengaged from the teeth 1la. The holes

5c, 24c and Sd of a diameter larger than that of the pin 6

allow this separated condition of the teeth, and the condition is

clearly shown in FIG. 5. At a time when the compressive force

A43

of the springs 27 and 28 is overcome, the shear blade actuator

24 is free to be moved toward the shear blade 11 so that the

teeth 24a can engage the teeth lla. The engaged condition

of the teeth is shown in Fig. 7.

In order to cause return of the handles 4 and 5 and the jaw

members 7 and 8 from their positions shown in FIG. 6 to those

shown in FIG. 2, a compression spring 30 may be mounted

between récesses in the jaw members 7 and 8.

In operation, the parts of the tool 1 are allowed to move to

their positions as shown in FIGS. 2, 3, 4 and 5 by force of the

compression spring 30. Then, the free end 2b of a binder strap

2 is inserted through the passage 7a of the jaw member 7 after

being encircled around a bundle of wires 3 and through the

connector sleeve 2a. The free end 2b is extended through the

recess 16 in the jaw member 8 and past the teeth 17a of the

strap gripper 17 which is then held rotated clockwise by means

of a projection 31 on the jaw member 7. The handles 4 and

5 are moved toward each other and, as they are, the projection

31 is separated from the strap gripper 17 to allow the teeth

17a of the strap gripper 17 to grip the strap end 2b as the

gripper is allowed to rotate against it. As the handles 4 and 5

continue to be moved toward each other, the gripper 17 causes

the strap end 2b to be pulled and thereby tensioned around

the bundle of wires 3.

As soon as a certain tension is reached corresponding to the

force of compression existing in the springs 27 and 28 deter-

mined by the setting of the thumb nut 29 on the threaded por-

tion 24b of the shear blade actuator 24, the actuator 24 is

caused to be moved toward the shear blade 11 upon continued

movement of the handles 4 and 5 toward each other. When the

teeth 24a engage the teeth lla, continued movement of the

handles 4 and 5 causes the actuator 24 to elevate the shear blade

11 from its position shown in FIG. 6 to that as shown in FIG. 7.

This action occurs because the actuator 24 pivots integrally with

the handle 5 since it is rigidly attached to it. As the shear blade

A44

11 reaches its final movement, its cutting edge 11b severs

through the strap end 2b to sever it from the remainder of the

binder strap 2 adjacent to the sleeve 2a. During the actual

severing of the strap, the inherent resilience of the tensioned

strap portion 2b between the jaws 7 and 8, and the yielding of

the blade engages and penetrates the strap, permits that final

increment of motion of the handle 5 and the actuator 24 with

respect to the handle 4 necessary to cause the final movement

of the shear blade 11 prior to the parting of the strap. In this

connection it may be noted that, because the strap is tensioned

between the jaws 7 and 8 during the severing action, the strap

will actually part before the blade 11 has passed entirely through

the strap.

The stroke of the handles 4 and 5 is limited by two stops 32

and 33 which are surrounded by the ends of the spring 30. In

case one full stroke or less does not cause enough tension to be

reached in the binder strap 2 to cause shearing, the handles can

be released and a new stroke taken.

Upon completion of the shearing of the strap end 2b, the

cutoff end is removed from the tool and, the handles are again

allowed to separate and the jaw members 7 and 8 are brought

together by force of the spring 30. As they go together, the

projection 31 again causes the strap gripper 17 to pivot clock-

wise to clear the upper portion of the recess 16 for the

reception of another strap end 2b during the next strapping

cycle.

To further understand the movement of the shear blade actua-

tor 24 toward the shear blade 11, an explanation of the forces

involved should be helpful. The forces tending to overcome the

compressive forces of the springs 27 and 28 are the tensional

force developed in the strap positioned between the two jaw

members 7 and 8 plus the force manually applied to the handles

4 and 5. It is when the sum of the tensioned force developed in

the strap plus the force applied to the handles exceeds the

A45

compressive forces of the springs that the actuator is moved

toward the shear blade 11 to actuate it.

It has been previously described that the holes 5c, 25 and

5d are of a diameter larger than that of the pin 6 to allow

movement of the shear blade aciuator 24 toward the shear

blade 11. Annular recesses 6a and 6b are provided in the pivot

pin 6 for aiding in this movement. Other constructions are

possible for the same purpose. The pin 6 can be made smooth

without annular recesses 6a and 6b provided holes 5c and 5d

are made of large diameter, or the holes 5c and 5d can be

made as oval or elongated slots with a width equal to the pivot

pin diameter.

Since the return spring 30 reacts in the same direction as

the springs 27 and 28, it should be as weak as possible so that

its force does not dominate to determine the time of actuation

of the shear blade 11. In fact, it can be entirely eliminated

without impairing the functioning of the tool other than by

requiring the handles 4 and 5 to be manually returned.

Although only a single embodiment of the invention has

been shown and described, it should be clearly understood that

the invention can be made in other different ways without de-

parting from the true scope of the invention as defined by the

appended claims.

We claim:

1. A hand tool for tensioning a strap, comprising two jaw

members [joined together] mounted to provide relative move-

ment between them, the first jaw member having means to

restrain longitudinal movement of one end of [said] the strap, the

second jaw member having means for [gripping] pulling on the

other end of [said] the strap, the relative movement in one

direction between the jaw members causing the strap to be

longitudinally tensioned therebetween, [a shear blade] strap

severing means mounted [for movement] adjacent said first jaw

member for strap-severing relative movement therebetween to

REORIE e Oe oee

A46

sever the portion of the strap disposed between the restrained end

of the strap and said second jaw member, {an actuator for

said shear blade] actuating means for producing said strap-

severing relative movement between said strap severing means

and said fst jaw member, and bias means [to prevent said

actuator from actuating said shear blade until] permitting activa-

tion of said actuating means only, when a [pre-determined] pre-

determined tension is reached in [said] the strap to sever the

portion of the strap disposed between the restrained end of the

strap and said second jaw member while the strap is under

tension.

2. A tool defined by claim 1 characterized by, said bias

means being adjustable to vary the amount of [pre-determined]

predetermined tension required to be reached in [said] the strap

before said [shear blade] strap severing means is actuated.

3. A manually portable hand tool for tensioning a strap com-

prising, two jaw members [joined together] mounted to per-

mit relative movement between them, the first jaw member hav-

ing means to restrain longitudinal movement of one end of

[said] the strap, the second jaw member having means for

[gripping] pulling on the other end of [said] the strap, jaw

operating means for applying force to said jaw members to pro-

vide relative movement therebetween to cause said strap to

be longitudinally tensioned therebetween, [a shear biade] strap

severing means mounted [for movement] adjacent said first

jaw member for strap-severing relative movement therebetween

to sever the portion of the strap disposed between said re-

strained strap end and said second jaw member, actuating means

for [said shear blade] producing said strap-severing relative

movement between said strap severing means and said first

jaw member, [said actuating means being movable by said

jaw operating means for actuating said shear blade] and

bias means [restraining] for permitting movement of sed

actuating means [to prevent said actuating me~ns from ac-

tuating said shear blade until] to produce said strap-severing

come when the effect thereon of the predetermined tension in

the strap and of the force required to be applied [to} by said

jaw operating means to produce said predetermined tension

L,] exceeds the force of said bias means.

nector end of binder strap loop encircled about an object

can be held, the second said jaw member having thereon a strap

sripper for gripping the free end of said binder strap loop

and the actuator to urge the actuator away from the shear

blade, the actuator engaging the shear blade when the bias

A48

means is overcome to allow the shear blade to be moved by

the actuator as said second jaw member is continued to be

pivotally moved in said one direction causing the strap to be

tensioned.

6. A tool defined by claim 5 characterized by, said shear blade

and said actuator having teeth which engage each other as the

actuator is caused to engage the shear blade, said teeth causing

the movement of said shear blade upon movement of said

actuator.

7. A tool for tensioning a strap comprising, two frames

pivotally joined together at a pivot to provide relative pivotal

movement between them, the upper end of the first frame having

means to restrain movement of one end of said strap, the

upper end of the second frame having means for gripping the

other end of said strap, the relative pivotal movement of the

two frames in one direction causing the strap to be tensioned,

the lower ends of the frames below said pivot having handles

which when moved toward each other cause said pivotal move-

ment tensioning the strap, a shear blade mounted for move-

ment toward the path of said strap positioned between the upper

ends of said two frames, an actuator for said shear blade mounted

to pivot with said second frame, bias means between the shear

blade and the actuator urging the actuator away from said

shear blade, the actuator engaging the shear blade when the

bias means is overcome to allow the shear blade to be moved by

the actuator, said hias means being overcome by continuing to

move the handles together when the maximum force of said bias

means is equal to the tensic. in the strap plus the force applied

to the handles so that the shear blade is moved by the actuator

when the maximum force of said bias means is overcome.

8. A tool defined by claim 7 characterized by, said bias

means being adjustable to vary the maximum force of said bias

means to thereby cause the shear blade to be actuated corre-

sponding to different tensions reached in the strap.

A49

9. A tool detined by claim 7 characterized by, said sheak

blade and said actuator having teeth which engage each other

as the actuator is engaged with the shear blade, said teeth

causing the movement of said shear blade upon movement of

said actuator.

10. A tool defined by claim 7 characterized by, said pivot

between the two frames being loose enough to allow free move-

ment between the handles in the region of the pivot in order

a OS OS Oe Gay weet oS oe

TL. A tool for tensioning a strap comprising, two frames

pivotally joined together on a pivot pin to provide relative

pivotal movement between them, the upper end of the first

frame having means to restrain movement of one end of the

strap and hold it stationary, the upper end of the second

frame having means for gripping the other end of said strap,

the relative pivotal movement of the two frames away from each

other causing the strap to be tensioned, the lower ends of the

frames below said pivot pin having handles which when moved

toward each other cause said pivotal movement of the two frames

away from each other to tension the strap, a shear blade with

a cutting edge mounted for movement along the upper end of

said first frame between a retracted position and an extended

position where its cutting edge is adapted to sever the strap

extending between the upper ends of the frames, an actuator

for said shear blade secured to said second frame in such a

spring bias means mounted to exert a force tending to urge

the actuator away from said shear blade, the fit of said pivot

pin in the region of where the two frames are pivotally joined

having clearance enough to allow the frames to move bodily

relative to each other by an amount sufficient to permit the

actuator to be moved with the second frame into contact with

the shear blade, the force of said spring bias means being

overcome upon continued movement of the handles toward

AS50

each other when the tension reached in the strap plus the

force applied between the handles exceeds the force of said

spring bias means to thereby allow the actuator to contact the

shear blade and extend the shear blade upon continued move-

ment of the handles toward each other to sever the tensioned

strap.

12. A tool defined by claim 11 characterized by, said

spring bias means being provided with adjustable means for

varying its force tending to urge the actuator away from the

shear blade in order to vary the strap tension required to be

reached before the tensioned strap is severed by the shear blade.

13. A tool defined by claim 11 characterized by, said spring

means including a compression spring reaching between a

first member on the second frame and a second member on

said pivot pin, said actuator having a threaded shaft extending

through said first member and provided with 2 threaded nut

which can be threadably moved along the threaded shaft in

order to vary the compression of said spring and thereby vary

the force of said spring means tending to urge the actuator

away from the shear blade in order to vary the strap tension

required to be reached before the tensioned strap is severed

by the shear blade.

14. A binder strap tool for tightening a binder strap loop

about a bundle by pulling a free strap end with respect to a

connector strap end and for cutting the free strap end extending

outwardly from the connector strap end, said tool comprising a

first jaw member having a strap engaging member thereon for

engaging an associated connector strap end during the tighten-

ing of the loop about the bundle, a second jaw member having

a strap pulling member thereon for pulling on the free strap

end during the tightening of the loop about the bundle, drive

structure interconnecting said jaw members for moving said

jaw members away from each other to pull the free strap end

away from the connector strap end to tighten the loop about

AS1

the bundle and to place under tension the strap including the

portion disposed between said engaged connector strap end

and said second jaw member, strap severing means positioned

to sever the portion of the free strap end between said en-

gaged connector strap end and said second jaw member, and

an actuator for said strap severing means responsive to the

placement of the strap under a predetermined tension for

actuating said strap severing means to sever the free strap

end between said engaged connector strap end and said second

jaw member.

15. A binder strap tool for tightening a binder strap about

a bundle, wherein the binder strap has a connector at one

end thereof and a portion forming a loop about the bundle

and a free end extending through the connector and movable

with respect thereto when under tension only in a strap ten-

sioning direction, said tool comprising a first jaw member hav-

ing @ connector engaging member thereon for engaging the

connector during the tightening of the loop about the bundle,

a second jaw member having a strap pulling member thereon

for pulling on the free strap end during the tightening of the

loop about the bundle, drive structure interconnecting said

jaw members for moving said jaw members away from each

other to pull the free strap end in the strap tightening direction

away from the connector to tighten the loop about the bundle

@nd to place under tension the strap including the portion

disposed between said jaw members, strap severing means

positioned adjacent to said first jaw member for strap-severing

relgtive movement therebetween to sever the portion of the

strap disposed between the connector and said second jaw mem-

ber, and an actuator for said strap severing means responsive

to the placement of the strap under a predetermined tension for

actuating said strap severing means to sever the free strap end

at a point disposed between the connector and said second jaw

member while the strap in the loop is under the predetermined

tension, the connector gripping the associated portion of the

A52

strap to hold the strap in the loop about the bundle under the

predetermined tension.

16. A binder strap tool for tightening a binder strap about

@ bundle, wherein the binder strap has a connector at one end

thereof and a portion forming a loan about the bundle and a

free end extending through the connector and movable with

respect thereto when under tension only in a strap tensioning

direction, said tool comprising a first jaw member having a

connector engaging member thereon for engaging the connector

during the tightening of the loop about the bundle, a second jaw

member having a strap pulling member thereon for pulling on

the free strap end during the tightening of the logp about the

bundle, drive structure interconnecting said jaw members for

moving said jaw members away from each other to pull the free

strap end in the strap tightening direction away from the connec-

tor to tighten the loop about the bundle and to place under

tension the strap including the portion disposed between said jaw

members, strap severing means positioned adjacent to said first

jaw member for strap-severing relative movement therebetween

to sever the portion of the strap disposed between the connector

and said second jaw member, actuating means for producing said

strap severing relative movement between said strap severing

means and said first jaw member, and bias means for permitting

movement of said actuating means to produce said strap severing

relative movement between said strap severing means and said

first jaw member only when a predetermined tension is reached in

the strap to sever the free strap end at a point disposed between

the connector and said second jaw member while the strap in the

loop is under the predetermined tension and the portion disposed

between said jaw members is under tension, the connector gripp-

ing the associated portion of the strap to hold the strap in the

loop about the bundle under a predetermined tension.

17. A binder strap tool for tightening a binder strap about

a bundle, wherein the binder strap has a connector at one end

A353

thereof and a portion forming a loop about the bundle and a

free end extending through the connector and movable with

respect thereto when under tension only in a strap tensioning

direction, said tool comprising a first jaw member having a

connector engaging member thereon for engaging the connector

during the tightening of the loop about the bundle, a second

jaw member having a strap pulling member therein for pulling

on the free strap end during the tightening of the loop about the

bundle, first drive structure interconnecting said jaw members

away from each other to pull the free strap end in the strap

tightening direction away from the connector to tighten the

loop about the bundle and to place under tension the strap

including the portion disposed between said jaw members, strap

severing means positioned adjacent to said first jaw member

for strap-severing relative movement therebetween to sever the

portion of the strap disposed between the connector and said

second jaw members, second drive structure for moving said

strap severing means relative to said first jaw member, and an

actuator operatively connectable both to said first drive struc-

ture and said second drive structure, said actuator being

initially connected to said first drive Structure for causing

said first drive structure to move said jaw members away from

each other to place the strap under a predetermined tension,

and bias means responsive to the placement of the strap under

@ predetermined tension for permitting interconnection of said

actuator and said second drive structure to produce said strap-

severing relative movement to sever the free strap end at a

point disposed between the connector and Said second jaw

member while the strap in the loop is under the predetermined

tension and the portion disposed between said jaw members

is under tension, the connector gripping the associated portion

of the strap to hold the strap in the loop about the bundle

under a predetermined tension.

AS54

References Cited

The following references, cited by the Examiner, are of rec-

ord in the patented file of this patent or the original patent.

UNITED STATES PATENTS

1,989,669 2/1935 + Harvey ........ . 140—123.6

1,463,869 8/1923 Campbell.

1,499,096 6/1924 Campbell.

2,569,623 10/1951 Wognum.

2,967,550 1/1961 Rosenberger.

CHARLES W. LANHAM, Primary Examiner.

LowELL A. Larson, Assistant Examiner.

‘ (Bea

rn s af

| NO 3 BG

Supreme Gourt, U.S,

—~

;

IN THE MICHAEL RODAK, 3R., CLERK |

Supreme Court of the Anited States

OcTOBER TERM, 1975.

No. 75-535

PANDUIT CORP.,

Petitioner,

vs.

BURNDY CORPORATION anp

BURNDY MIDWEST, INC.,

Respondents.

SUPPLEMENT TO PETITION

FOR WRIT OF CERTIORARL

CHARLES F. PiGoTrT, Jr.,

GEORGE H. GERSTMAN,

LETTVIN, PIGOTT & GERSTMAN,

135 South LaSalle Street,

Chicago, Illinois 60603,

Counsel for Petitioner.

Of Counsel:

CHARLES R. WENTZEL,

RICHARD B. WAKELY,

17301 Ridgeland Avenue,

Tinley Park, Illinois 60477.

Gunthorp-Warren Printing Company, Chicago e Financial 6-6565

Supreme Court of the Anited States

) OcToBER TERM, 1975.

No. 75-535

PANDUIT CORP.,

Petitioner,

vs.

BURNDY CORPORATION anp

BURNDY MIDWEST, INC.,

Respondents.

SUPPLEMENT TO PETITION

FOR WRIT OF CERTIORARL

This is supplemental to Panduit Corp.’s Petition for a Writ of

Certiorari filed October 7, 1975.

The attention of this Court is respectfully directed to this

Court's granting of Certiorari on October 14, 1975 in Sakraida

v. AG Pro, Inc., No. 75-110.

In Sakraida, this Court has agreed to review the Fifth Circuit’s

holding that a patent relating to a dairy barn flushing system is

valid, while in the instant case this Court is asked to review the

Seventh Circuit’s holding that a patent relating to a binder strap

tool is invalid. The common significant issue in both cases is

the tests of patentability under 35 U. S. C. § 103 for a

combination patent. Further, in both cases it is contended that

the court of appeals set aside the district court’s findings without

regard to Rule 52(a) of the Federal Rules of Civil Procedure.

It is submitted that a more balanced and clear decision

regarding the tests of patentability under 35 U. S. C. § 103 will

result if this Court combines the instant case with the Sakraida

case. Such combination will permit review of cases in which two

courts of appeal reached different conclusions. Thus Petitioner .

requests that Certiorari be granted and that the instant case be

combined with the Sakraida case, 75-110.

Respectfully submitted,

CHARLES F. PIGoTT, Jr.,

GEORGE H. GERSTMAN,

LETTVIN, PIGOTT & GERSTMAN,

135 South LaSalle Street,

Chicago, Illinois 60603,

Counsel for Petitioner.

Of Counsel:

CHARLES R. WENTZEL,

RICHARD B. WAKELY,

17301 Ridgeland Avenue,

Tinley Park, Illinois 60477.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.