Petition — Kearney-National, Inc. v. Burndy Corp.

OEE Me th a

Buprome Court, U.

FILED

APR 21 1980

AK, JR., CLERW

IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

No. 79-1664

KEARNEY-NATIONAL, INC.,

Petitioner,

VS.

BURNDY CORPORATION,

Respondent.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF

APPEALS FOR THE SECOND CIRCUIT

PAuL M. DENK

763 South New Ballas Road

St. Louis, Missouri 63141

(314) 872-8136

Attorney for Petitioner

Of Counsel:

RICHARD S. CLARK

BRUMBAUGH, GRAVES, DONOHUE & RAYMOND

30 Rockefeller Plaza

New York, New York 10020

AES AEA STIR aR RA UES IED ee SOMES NESE SMS

St. Louis Law Printing Co., Inc., 411 No. Tenth Street 63101 314-231-4477

TABLE OF CONTENTS

COORG NOW 5. o.05is Sao de Wide +e eee

be PPE TTT eee rer ee fee

GCuscstiens PYONUIEEG. 3... 26 46 50c05 004s eeeewe ees

Constitutional and Statutory Provisions Involved......

Statement of the Case:

PROTON os i deen vac tde neue bee sae

Statement of the Proceedings .........cccceeees

Sreseween OE UE FE i. ca . octave eke

Reasons For Granting the Writ:

I. Nowhere Does the Constitution Permit the

Federal Court To Ignore the Statutory Presump-

tion of Patent Validity When Holding the Claims

of a United States Patent To Be Invalid, Nor Even

More So To Rely Solely Upon the Same Prior Art

Patents That Were Reviewed and Considered By

the Patent Office Examiner During the Prosecu-

tion of the Patent In Suit To Hold It Invalid. .....

II. Does the Constitution Permit the Federal

Courts To Ignore the Standards of Invention As

Adjudicated By This Court In Holding a Patent In-

valid Even Though the Court Found the Invention

Involved To Provide a Combination That Resulted

In Significant Improvements In the Subject

Pi. Pe rE a ny ee Rd

COOMORINION ook kk 0 oka eee vacvaweeee

11

16

21

ii

Appendix A - Judgment of United States Court of

Na ere gre arr E rea ey ye ey A-1

Appendix B - Order Denying Petition for Rehearing ... A-3

Appendix C - Opinion of United States District Court. . A-4

Appendix D - Patent No. 3,322,888 ................. A-40

TABLE OF AUTHORITIES

Cases: Page

Blonder-Tongue Laboratories, Inc. v. University of Il-

linois Foundation, et al., 402 U.S. 313 (1971) ..... 13

Chicago Rawhide Mfg. Co. v. Crane Packing Co. (C.A.

7, 1975) 523 F.2d 452, cert. denied, 423 U.S. 1091 . 15

Cutler Mail Chute Co. v. Capito! Mail Chute Corp., 118

F.2d 63, (2d Cir.), cert. den. 313 U.S. 580 (1941) .. 12

Diamond International Corp. v. Maryland Fresh Eggs,

oe Re be ee 8 |) ees | 14

Eltra Corporation v. Basic Incorporated (C.A. 6, 1979)

EE x. v's'c oo bob ek ba es ohio a 15

Ever-Wear, Inc. v. Weibolt Stores, Inc. (C.A. 7, 1970)

EI <> ¢:0:6-05 aN 0a kOe ooh eee ans eee een 14

Graham v. John Deere Co., 383 U.S. 1 (1965) ......... 16

Hildreth v. Mastoras, 257 U.S. 27 (1921) ............. 13

Ingersoll-Rand Co. v. Brunner & Lay, Inc. (C.A. 5,

1973) 474 F.2d 491, cert. denied 414 U.S. 865 ..... 14

L. & A. Products, Inc. v. Britt Tech. Corp. (C.A. 8,

Te GD. 5 xd od ko k0d ba kode aber e a can 15

ill

Ling-Temco-Vought, Inc. v. Kollsman_ Instrument

Core. (CA. 2; 1967) 372 FBO BOO ev cvs ceetucss

Lyon v. Bausch & Lomb Optical Co., 119 F.Supp. 42

(S.D.N.Y., 1953), aff’d. 224 F.2d 530 (2d Cir.),

CONE ORT. Doe sees PEE LA POD w a vivre cicecceoean

Moore v. Shultz (C.A. 10, 1974) 491 F.2d 294, cert.

I. aes ae Perera

Mumm v. Decker, 301 U.S. 168 (1937) ............08.

Plantronics, Inc. v. Roanwell Corporation, (D.C.,S.D.

PAD 5 STP ee Se, OO oko wae ve éscccdcuecns

Rich Products Corporation v. Mitchell Foods, Inc., et

ee ae ee, UL 8b ee

Saf-Gard Products, Inc. v. Service Parts, Inc. (C.A. 9,

1976) 532 F.2d 1266, cert. denied 429 U.S. 896....

Trio Process Corp. v. L. Goldstein’s Sons, Inc. (C.A. 3,

1972) 461 F.2d, 66, cert. den. 409 U.S. 997 .......

Constitutional and Statutory Provisions

i.m. Cometieteen, Art. 1, 20608, Ci. © nsec ce cccses

aes TE hoo ke 45 bb AS eae ss eo aa eee ON

Pee eC ee: an

ee ETL E ob 40s CAR hrn ew inswad’s

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:

IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

No.

KEARNEY-NATIONAL, INC.,

Petitioner,

VS.

BURNDY CORPORATION,

Respondent.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF

APPEALS FOR THE SECOND CIRCUIT

To the Honorable, the Chief Justice, and the Associate Justices

of the Supreme Court of the United States:

Kearney-National, Inc., your petitioner, prays that a Writ of

Certiorari issue to review the decision of the United States Court

of Appeals for the Second Circuit entered in this case upon

November 13, 1979, rehearing denied on January 22, 1980.

OPINIONS BELOW

The opinion of the United States Court of Appeals for the

Second Circuit (Appendix A, infra, p. A-1) remains unreported.

Rehearing was denied on January 22, 1980 (Appendix B, p.

A-3). These affirmed the opinion of the United States District

wariwie

Court for the Southern District of New York (Appendix C, in-

fra, p. A-23, A-32) with that opinion being reported at 466 F.

Supp. 80.

JURISDICTION

The judgment of the Court of Appeals for the Second Circuit

was entered on November 13, 1979, rehearing denied on

January 22, 1980, and this Court’s jurisdiction is invoked under

28 U.S.C. §1254(1). Jurisdiction in the District Court was

founded on Title 28, U.S.C. §§1338, 2201, and 2202.

QUESTIONS PRESENTED

1. Does the Constitution permit the Federal Court to ignore

the statutory presumption of patent validity when holding the

claims of a United States patent to be invalid, when the Court

relies solely upon the same prior art patents that were reviewed

and considered by the Patent Office examiner during the pros-

ecution of the patent and continuation-in-part applications that

led to the patent in suit?

2. Does the Constitution permit the Federal Court to ignore

the standards of invention as adjudicated by this Court and

hold a patent invalid even though the Court found the patented

invention in suit to provide a combination that resulted in

‘*significant improvements”’ in the subject technology?

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

Constitution of the United States

Article I, Section 8, Cl. 8:

*‘The Congress shall have power . . . To promoie the

progress of science and useful arts, by securing for limited

times to...inventors the exclusive right to their

discoveries.”’

ae ee

Statutes

35 U.S.C. §103:

‘‘A patent may not be obtained .. . if the difference

between the subject matters 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 the subject

matter pertains.’’

25 U.S.C. §282:

‘*A patent shall be presumed to be valid. Each Claim of

a patent . . . shall be presumed valid independently of the

validity of other claims; dependent on multiple dependent

claims shall be presumed valid even though dependent

upon an invalid claim. The burden of establishing the

validity of a patent or any claim thereof shall rest on the

party asserting such invalidity.”’

STATEMENT OF THE CASE

Preface

This case involves a patent upon an electrical connector hav-

ing utility for holding a pair of electrical conducting lines

together. The United States District Court, and the Second Cir-

cuit Court of Appeals through its affirmance with its summary

opinion, found that the patented invention did combine the

elements of its electrical connector in new ways, that the com-

bination resulted in significant improvements in H-frame con-

nector technology; and, the Courts then proceeded to give a

broader construction to the very same prior art patents applied

by the Patent Office examiner in holding the said patent invalid,

totally ignoring that presumption of validity that prevails in

favor of an issued patent. With regard to the fact that such

statutory presumption should be strengthened when the prior

ea

art is the same as that applied by the examiner in the United

States Patent Office, the Court only said that all such presump-

tion requires is that a reasonably doubt on the question of

validity shall be resolved in favor of the patent holder, but such

a holding is not in accordance with other similar decisions in the

Second Circuit, and totally contrary to decisions relative this

issue in the other Circuits. In addition, since the statutory

presumption of validity should have been strengthened, rather

than weakened and ignored, and since the Court found the in-

vention to comprise a new and significantly improved combina-

tion, then the Court, in its analysis under Title 35, U.S.C. §103,

should have recognized the invention as containing patentable

subject matter, and should have further given consideration to

the other various secondary considerations, such as long felt

need, the fact that the Kearney-National patent was a well

licensed patent, and a highly commercial success, then such ad-

ditional considerations should have tipped the scale in favor of

the patent’s validity, rather than otherwise. It is submitted,

therefore, that the opinion advanced by the District Court, and

as routinely affirmed without opinion by the Court of Appeals,

contains obvious reversible error.

Statement of the Proceedings

This lawsuit was initiated on July 2, 1975, by Burndy Cor-

poration, the Respondent herein, against Kearney-National,

Inc., Petitioner herein, by way of declaratory judgment for pa-

tent invalidity and noninfringement of the latter’s United States

patent No. 3,322,888, which issued on May 30, 1967, upon the

invention of C. G. Zemels pertaining to a compression connec-

tor. (Copy of patent in Appendix D, p. A-40, A-41). By way of

counterclaim, Kearney accused Burndy of patent infringement

of its aforesaid patent, and sought the District Court’s holding

that the said Zemel’s patent was valid, and that particular of its

claims were infringed by certain of the equivalent electrical con-

nectors being manufactured and sold by Burndy since around

slic. onl

the year 1973. In a trial of this cause of action conducted in the

United States District Court for the Southern district of New

York, a bench trial was conducted during the time of April 11

through April 18, 1977, resulting in the Court’s opinion dated

January 2, 1979, that the Kearney patent was invalid. The Court

did not undertake to investigate the existence of infringement of

any of the claims of the Kearney patent by the Burndy connec-

tors in evidence, but did recognize that Burndy had conceded at

trial that its compression connectors infringed at least claim | of

the Kearney-Zemels patent

Statement of the Facts

In the early 1940’s, Kearney originated the first H-frame elec-

trical connector for use in connecting tap off and other wires to

electrical lines through a crimping of the connector, and such

was protected in its United States patent No. 2,707,216. This

particular Kearney patented connector was improved upon and

protected in a subsequent United States patent No. 2,707,775,

which provided means in the nature of extended portions, or

tabs, that are useful for initially holding the electrical line or tap

within their respective channels pending the initial crimping ac-

tion. The Kearney connector generally formed from this latter

patent was identified in the trade as its 81 Series connectors, and

there were twelve connectors in number required to accom-

modate the seventy-eight electrical wires generally making up

the list of electrical lines from which the line connectors and tap

wires were selected for use by the utilities. These style of connec-

tors were sold by Kearney during the 1950’s, and into the

1960’s. These connectors worked well for their intended pur-

poses, but Kearney was experiencing problems with two of the

twelve connectors, which could only be crimped about their

designated conductors through the use of the hydraulic tool,

because the use of the manual tool required too great of a

physical or manually applied force to perfect a full closure of

the handles of the tool during crimping, which generally

resulted in poor electrical transfer and faulty conduct of charge

ce, 3

from the conductor to its tap when one of these two connectors

was installed. As a result of the problems with these two

specified connectors of the 81 Series, Kearney was receiving

many complaints from the field about these connectors, and

even one of the co-inventors of the Kearney patent No.

2,707,775, and which patent covers these two problem connec-

tors, and which employee by this time had transferred from the

engineering department into sales, would call in his objection

from the field with these two problem connectors.

Many of the personnel at Kearney gave consideration to the

problem, many minds worked upon ways to find a solution to

the same, including its chief engineer, and even the immediate

engineering supervisor to Mr. Zemels, the inventor of the patent

involved in this lawsuit, but none could find a solution to the

same. Mr. Zemels, the inventor, began to look for a solution to

this problem on his own, because he felt that if the two problem

connectors could not be properly crimped by a mechanical tool,

but rather required the use of the hydraulic tool, that there must

be a good reason for that deficiency, and he was curious to see if

he could find a solution to this problem. A number of weeks

later he approached his superior with very rough sketches in-

dicating his thoughts as to a possible solution to the problem,

and his solution was to provide a formation of some type of

void or channels, located at the sides of the connector, and ar-

ranged at a specifically spaced relation with respect to the upper

and lower line receiving sockets of the connector. And, he con-

sidered it essential that any resolution of the problem give con-

sideration to the various tap and line conductors located in the

respective sockets of the connector so that proper wrap around

and electrical conducting characteristics could be achieved

through connector crimping. In general, the Zemels’ design, as

finally arrived at, provided for a controlled wrap around of the

various lips of the connector about the lines and tap conductors,

and to achieve such through the use of a reduced handle load or

manual force on the crimping tool, so that the lesser expensive

oie ae

manual tool, as distinct from the much more expensive

hydraulic tool, could be used by the linemen for crimping all of

the connectors about the various lines.

After Mr. Zemels completed his work in designing the

replacements for the two problem connectors of the old 81

Series, the Company was so enthused with his findings that it

had him undertake the project of redesigning its entire 81 Series

of electrical connectors, and bring them into conformance with

the teachings of his invention, and, as a result of this further ef-

fort, he was able to reduce the previous twelve connectors of the

series down to only seven, which became known as the Ultra

Squeezon 500 Series of connectors for Karney, and which seven

conenctors could still accommodate the entire range of seventy-

eight conductors normally used by the utilities when selecting

the line and tap connectors for electrical connections. And, the

hand loads required to accomplish such were significantly

reduced so that only the manual tool, and not the hydraulic

tool, would suffice. The seven connector series was introduced

to the market by Kearney during the mid-1960’s, and became a

marketing success. In addition, a patent application, which was

eventually refiled as a continuation-in-part application, was

filed in the United States Patent Office, and resulted in the is-

suance of the patent involved in this lawsuit, that being the

Zemels’ United States patent No. 3,322,888. (Appendix D).

Burndy Corporation, the Respondent, presented during the

trial a brief history of its involvement in the compression con-

nector business, and more specifically through a vice president,

explained the derivation of its various style of connectors that it

had been selling to the trade during the 1950’s, generally iden-

tified as a C-shaped connector, as distinct from the H-shaped

connector of Kearney. And, as the vice president states, its C

connector program had very good growth throughout the entire

1960’s. The vice president also stated that while the Company

was happy with its C-connector program, and its sales, that

= ee

anybody who has been involved in sales and marketing generally

becomes unsatisfied with not having more of the business, and

therefore, his Company decided that it should consider offering

an H-frame connector to the marketplace. The vice president

further commented that the reason why Burndy felt it must

undertake the manufacture of an H-frame connector is that the

utilities were moving towards a standardization program, and as

a result, the sales of their C-connector business had flattened.

In fact, what really occurred during the latter part of the

1960’s, and during the early 1970’s, as the evidence in this case

indicated, this vice president for Burndy actually wrote a

memorandum to himself wherein he analyzed the serious prob-

lems that Burndy was having with its C-connector program, and

how so many of the utilities were dropping its C-connector for

the H-frame connector as developed and sold by Kearney and

its licensees. As the vice president stated in his memorandum,

‘*The main reason for my concern is the evident increase

in opposition to the Cabelok Crimpit which appears to

have accelerated in recent months. In addition to the old

problems with which we are ali familiar, I have noted that

we have just been removed from the standards of Public

Service of Colorado on Cabeloks as a result of the linnmen

complaints and here we have good friends who have stalled

this off as long as possible. Similarly, the letter from John

Shaffer of Pacific Power & Light indicates that Harry

Pearson, a very good Burndy friend, is being forced to add

the H-frame to the standards because of the pressure from

the line department and it is very clear that if both are

available to the line crews, they will not use the Cabelok.

And, this vice president for Burndy exercised his business judg-

ment as to how to meet the strong competition from the

Kearney H-frame connector which was causing Burndy to lose

sales, by expressing the following:

**Suppose we were to proceed and introduce an H-frame

which is an exact duplicate to the present Kearney ap-

proach, step the tide of people switching away from

Burndy to H-frame by our ability to deal with them on

the H-frame where the problem arises, and giving our

sales organization a chance to go after 70% of the com-

pression tab connector market that we do not now enjoy

by being able to offer an immediate and direct substitute

for the Kearney line.’’

When the facts are reviewed regarding the problems facing

this Burndy vice president in the sales of their C-connector, and

how the Kearney H-frame connector sales were seriously

damaging Burndy’s marketing program, one can readily under-

stand the reason for Burney’s reaction to the new Kearney pro-

duct as being something comparable to that expressed in Plan-

tronics, Inc. v. Roanwell Corporation (D.C., S.D. N.Y., 1975)

403 F.Sup. 138, 147, wherein the Court recognized the impres-

sion of the infringer therein as:

**It’s reaction was favorable to the point of envy.”’

Actually the evidence in this case clearly shows what occurred

corcerning the Burndy project to develop an H-frame connec-

tor, wherein various meetings were conducted at Burndy in an

effort to determine what should be done with respect to the

deteriorating market for their C-connector business, and that

the only alternative was to make a directly infringing copy of the

H-frame connector of Kearney, since that particular product

was directly in competition with the Burndy established connec-

tor. It was decided in the early 1970's, by the Burndy personnel,

that they should ‘‘Go with Kearney’’ in copying the Kearney

patented connector. In addition, Burndy acquired one of each

of the seven sizes of the Kearney patented connector, from the

marketplace, and had an engineer in its engineering department

take measurements from each of these connectors by producing

their original production drawings. The engineer took one of

ar weet

each of the Kearney patented connectors, of the type explained

in its patent No. 3,322,888, and cut a slice of each connector, of

each size, and measured them upon an optical comparitor.

From the optical comparitor he acquired tracings, and from

these tracings Burndy attained precise measurements of the

Kearney connectors, from which it made its original production

drawings. Burndy did not even make any development drawings

of the traced Kearney connectors, but rather, it made its original

production drawings, since in this manner it was able to save a

lot of time and effort in getting its competing connector onto

the market.

Kearney filed a United States patent application upon its im-

proved H-frame connector, and prosecution proceeded upon

the application upon this connector, and then, in accordance

with the patent laws, and Patent Office rules, Kearney filed a

continuation-in-part application to add further clarification

upon this invention to the Patent Office. During the prosecu-

tion of this application in the United States Patent Office, in

both the parent and continuation-in-part applications, some ten

Unite 4 States patents were relied upon by the Patent Office ex-

aminer prosecuting this application. After some period of time

of prosecution, the said United States patent issued, on May 30,

1967, upon this invention by Mr. C. G. Zemels. And, in the opi-

nion of the District Court in holding this United States patent

invalid, the judge relied upon the very same United States prior

art patents that were given thorough consideration and reviewed

by the Patent Office examiner during the prosecution of this

parent and continuation-in-part application in the Patent Of-

fice. No additional patents were reviewed or given consideration

by the Judge in his opinion.

—

REASONS FOR GRANTING THE WRIT

as

Nowhere Does the Constitution Permit the Federal Court to

Ignore the Statutory Presumption of Patent Validity When

Holding the Claims of a United States Patent to be Invalid, Nor

Even More So to Rely Solely Upon the Same Prior Art Patents

That Were Reviewed and Considered by the Patent Office Ex-

aminer During the Prosecution of the Patent in Suit to Hold It

Invalid.

Title 35, United States Code, §282, entitled Presumption of

Validity, clearly states that:

‘*A patent shall be presumed valid . . . The burden of

establishing invalidity of a patent or any claim thereof shall

rest on the part asserting such invalidity.”’ .

The respondent, Burndy Corporation, initially brought this

lawsuit itself by way of declaratory judgment, specifically seek-

ing a declaration that the patent No. 3,322,888, is invalid under

various sections of Title 35, United States Code. Thus, by law,

there is a clear burden upon the respondent to prove by way of

some degree of evidence that the patent in suit is invalid, and

such proof must by law be sufficient to overcome that statutory

presumption of validity that prevails in favor of an issued

United States patent.

Contrary to the law as stated above, the District Court, in its

opinion, gave no recognition to the presumption of validity that

prevails in the current lawsuit, and in fact, stated, in a footnote

31 of its opinion:

‘*For the most that can be said of the presumption is

that it requires that reasonable doubt on the question of

validity be resolved in favor of the patent hoider.’”’

= ii

Thus, not only did the Court fail to give any recognition to the

presumption of validity, as required by law, but to the contrary,

it relegated the presumption to the status of a footnote state-

ment that such presumption simply can be ignored, and in fact,

as can be seen from the text of the opinion from which the foot-

note derives, the court ignored the presumption and assigned no

more status than it does in the handling of the various secondary

considerations that a Cert may in its discretion review when

analyzing a patent for its validity. Thus, for all practical pur-

poses, there was no presumption of validity that prevailed in

this case at all with respect to the subject United States patent.

To place the handling by the district Court of this presump-

tion of validity into its proper perspective, and how erroneous

the Court was in its holding on this point, it must be restated

that all of the prior art patents introduced into evidence by the

respondent, during the trial of this cause of action, in addition

to that prior art relied upon by the District Court in its opinion,

had been thoroughly reviewed by the Patent Office examiner

during the prosecution of the patent in the United States Patent

Office. Thus, under these circumstances, the Courts normally

hold that where all of the prior art before the Court is the same

as that reviewed by the Patent Office, then the presumption of

validity is heightened, and should not be ignored as performed

by the District Court in this case. See Lyon v. Bausch & Lomb

Optical Co., 119 F.Supp. 42 (S.D.N.Y., 1953), aff’d 224 F.2d

530 (2d Cir.), cert. den. 350 U.S. 911, (1955); Cutler Mail Chute

Co. v. Capitol Mail Chute Corp., 118 F.2d 63, (2d Cir.), cert.

den. 313 U.S. 580, (1941).

There is a clear conflict among the Circuits regarding the

handling of this statutory presumption of validity, and in addi-

tion, there appears to even be a conflict in the Second Circuit

itself with respect to this issue. The Second Circuit Court of Ap-

peals, as previously alluded to, merely summarily affirmed the

District Court. And, in doing so, simply adopted the reasoning

of the District Court judge, even with respect to his totally ig-

noring of the statutory presumption of validity.

mo Tee

The Supreme Court has well recognized the substantial

weight that the statutory presumption affords the patentee in in-

fringement litigation, in stating that:

‘* ., patentees are heavily favored as a class of litigants

by the patent statute. Section 282 of the Patent Code pro-

vides, in pertinent part: ‘A patent shall be presumed valid.

The burden of establishing invalidity of a patent shall rest

on a party asserting it.’”’

See Blonder-Tongue Laboratories, Inc. v. University of Illinois

Foundation, et al., 402 U.S. 313, 335 (1971). In addition, as the

Court stated in Hildreth v. Mastoras, 257 U.S. 27, 32 (1921):

‘‘The presumption of priority and novelty which arises

from the granting of a patent must have greatly increased

weight when the claim of the inventor was subjected to

close and careful scrutiny in the Patent Office under the

stimulus of a heated contest.”’

Such a condition prevails in the current case, with the examiner

forcing the applicant into a continuation-in-part application in

its efforts to attain a United States patent, with all the very same

prior art relied upon by the Court in holding this patent invalid

having been previously thoroughly reviewed by the same Patent

Office examiner who presecuted both the said parent and

continuation-in-part applications leading to this patent in suit.

As previously alluded to, the District Court Judge simply held

that only in the circumstance of reasonable doubt regarding

the validity of a patent need the presumption be given considera-

tion. This relegates the presumption to after the fact. It is sub-

mitted that the District Court is in conflict with other decisions

within its own Circuit, and in addition, is also in conflict with

decisions from all the other Circuits. For example, this holding

is contary to the established law in the Second Circuit, wherein

it has frequently been held that not only does the presumption

of validity prevail in a patent caes, but,

oe ee

‘*...this presumption is heightened by a showing that

the prior art was adequately considered.’’

Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp. (C.A.

2, 1967) 372 F.2d 263. See also, Rich Products Corporation v.

Mitchell Foods, Inc. et al. (C.A. 2, 1966) 357 F.2d 176, wherein

the Court stated that:

‘‘The presumption is strengthened, in a case such as

this, where the same questions were raised in prosecuting

the patent in the Patent Office and there successfully

met.”’

Numerous other cases in the Second Circuit hold similarly to the

above stated comments of the Court with respect to the applica-

tion of this presumption of validity.

While the Second Circuit, in this case, states that the

presumption need only be considered in case of reasonable

doubt regarding the validity of the patent, other circuits are

quite different in their approach as to what proof is required to

overcome this statutory presumption of validity. For example in

the Third Circuit, in the case of Ever-Wear Inc. v. Weibolt

Stores, Inc. (C.A. 7, 1970) 427 F.2d 373, it was stated that:

**Indeed, invalidity must be demonstrated by clear and

convincing proof.”’

See also Trio Process Corp. v. L. Goldstein’s Sons, Inc. (C.A.

3, 1972) 461 F.2d 66, cert. denied 409 U.S. 997.

The Fourth Circuit requires evidence greater than a mere

preponderance in order to rebut the presumption of patent

validity accorded by 35 U.S.C. §282. See Diamond Interna-

tional Corp. v. Maryland Fresh Eggs, Inc. (C.A. 4, 1975) 523

F.2d 113.

In the case of /ngersoll-Rand Co. v. Brunner & Lay, Inc.

(C.A. 5, 1973) 474 F.2d 491, cert. denied 414 U.S. 865, the

Court stated:

a ee

‘‘One otherwise an infringer who assails the validity of

a regularly issued patent bears a heavy burden of persua-

sion. We have variously recognized this burden to be akin

to the fraud standard of clear and convincing evidence and

to the criminal law standard of proof beyond a reasonable

doubt, but, at a minimum, greater than a mere

preponderance of the evidence.”’

The Sixth Circuit requires a preponderance of the evidence to

overcome the statutory presumption. E/tra Corporation v. Basic

Incorporated (C.A. 6, 1979) 202 USPQ 630.

The Seventh Circuit requires a clear and convincing showing

of the invalidity of a patent in order to overcome the presump-

tion of patent validity. Chicago Rawhide Mfg. Co. v. Crane

Packing Co. (C.A. 7, 1975) 523 F.2d 452, cert. denied 423 U.S.

1091.

The Eighth Circuit has stated:

‘*,. presumption is rebuttable and may be overcome by

substantial evidence negating anyone of the three essen-

tials for patentabilty.’’

L. & A. Products, Inc. v. Britt Tech Corp. (C.A. 8, 1966) 365

F.2d 83.

Both the Ninth and Tenth Circuits require clear and convinc-

ing evidence, just as in the Seventh Circuit, in order to over-

come the statutory presumption of validity. Saf-Gard Products,

Inc. v. Service Parts, Inc. (C.A. 9, 1976) 532 F.2d 1266, cert.

denied 429 U.S. 896; and Moore v. Shultz (C.A. 10, 1974) 491

F.2d 294, cert. denied 419 U.S. 930.

Thus conflicting rulings and holdings prevail throughout the

various Circuits, and even exist within the confines of the Sec-

ond Circuit itself, as to just how this presumption of validity

should be handled. But, regardless whether this presumption

shall prevail unless overcome by clear and convincing evidence,

a preponderance of the evidence, or any related type of stan-

dard, it is certainly clear that the District Court in this current

case was Clearly in error in refusing to even give any recognition

to the presumption of validity, even though all of the prior

patents had already been analyzed by the Patent Office ex-

aminer, and with the Court stating that only in the case of

reasonable doubt must it give any recognition to this presump-

tion. Thus, in reality, to the District Court in this case, there is

no presumption at all. Such a holding is totally adverse to the

dictates of the statutory law, as set forth in said Title 35, U.S.C.

§282. Furthermore, this Court has long held that the defense of

patent invalidity is upon the one setting it up, his burden is a

heavy one, and it has been held that every reasonable doubt

should be resolved against him. See, Mumm v. Decker, 301

U.S.168 (1937).

II.

Does the Constitution Permit the Federal Courts to Ignore

the Standards of Invention as Adjudicated by This Court in

Holding a Patent Invalid Even Though the Court Found the In-

vention Involved to Provide a Combination That Resulted in

Significant Improvements in the Subject Technology?

In Graham v. John Deere Co., 383 U.S. 1 (1965), this Court

gave recognition to the fact that the federal patent power stems

from the constitutional provision set forth in Article 1, Section

8, Clause 8. In view of this, and recognizing the standards of the

patent statute, that patentable invention must contain novelty,

utility, and be nonobvious to one skilled in the art, Title 35,

U.S.C. §103, this Court then went on to set the various

guidelines for determining the existence of patentable invention

under this statute, in holding that three conditions must be

reviewed and be made the subject of basic factual inquiries. The

Court stated:

=.

‘‘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 or-

dinary skill in the pertinent art resolved. Against this

background, the obviousness or nonobviousness of the

subject matter is determined. Such secondary considera-

tions as commercial success, long felt but unsolved needs,

failure of others, etc., might be utilized to give light to the

circumstances surrounding the origin of the subject matter

sought to be patented. As indicia of obviousness or nonob-

viousness, these inquiries may have relevancy.”’

In view of the foregoing, the District Court then undertook to

review the scope and content of the prior art. In doing so, the

Court simply looked at the same prior patents that had been

thoroughly reviewed by the Patent Office examiner during the

prosecution of the patent in suit, and rendered its opinion of ob-

viousness based solely upon those patents. This is so even

though clear evidence was admitted during the trial that the

prior art devices could not attain the mechanical advantages at-

tained by the patented connector, and in addition, all of the

prior art connectors shown in the earlier patents failed to ac-

quire the proper electrical characteristics needed when subjected

to the type of testing conducted by the testing laboratories and

as required by the utilities before they will undertake to use such

an electrical connector in its business. Thus, not only was each

connector shown in the prior art structured in a manner dif-

ferent from that of the current invention, particularly as

delineated in the patent claims, but said connectors could not

attain the mechanical and electrical characteristics sought for

and acquired from the patented invention.

And, even in view of this analysis made by the District Judge

himself, of these various prior art patents, he recognized that

the invention of ihe Zemels’ patent:

—

‘*’.. resulted insignificant improvements in H-frame

connector technology, including the obtaining of a more

desirable fit between the connector and the conductors by

the exertion of less force than had been necessary in the

past; the ability to effect such a fit on all models of con-

ductors by means of a hand compressor (rather than a

hydraulic compressor); and the reduction of 11 [12] to 7 in

the number of models of connectors necessary to connect

all sizes of conductors then in use.’’

Thus, by the Court’s own analysis, the current invention

presented a combination that added significant improvements

to the connector technology art. And, such observation was

made in view of the prior art patents reviewed by the District

Court, and which art as previously stated, were the same prior

art patents that were given consideration by the Patent Office

examiner during prosecution of the patent in suit.

The Graham test further suggests that the difference between

the prior art and the claims that issue are to be ascertained. The

main claim 1 of the Zemels’ patent called for a pressure connec-

tor having oppositely disposed sockets, one socket being larger

than the other, and having a ductile body of metal extending

between said sockets, and with the crosswise body of metal hav-

ing a void therein for accommodating compression and to

shorten the distance between sockets, with the void being

located substantially closer to the smaller than the larger socket.

After reciting this claim, the Court simply held that there are no

differences between this claim and the prior art, but, as

previously analyzed, and by the Court’s own remarks, the com-

bination of the Zemels patent provided significant im-

provements, over such prior art, and, the critical feature of the

subject invention was just not shown in the prior art, and that

which affords these enhanced results to the connector’s opera-

tion, and that is the locating of a void within that crosswise duc-

tile body of metal and being arranged closer to the smaller than

the larger socket. This clearly is just not shown in the prior art,

=

even though the Court simply glossed over this essential fact in

holding that there are no structural differences between the

Zemels’ connector and said prior art. The Patent Office ex-

aminer was certainly cognizant of these structural differences,

and issued the patent, after having reviewed the same prior art

patents that were later to be reconsidered by the District Court

Judge in holding the patent invalid.

The third test as taught by Graham is that the level of or-

dinary skill in the pertinent art shall be resolved. The Court

stated that the level of ordinary skill in the related art belongs to

that reasonable person who possesses ordinary skill in design,

mechanical, and electrical engineering. This was an accurate

observation on the part of the Court since the Zemels connector

to function properly had to possess both these good mechanical

and electrical characteristics, as stated in his patent. But, the

Court then went on in its opinion to find the actual level of or-

dinary skill in this case to be one who is thoroughly educated in

mathematics, physics, and mechanics. Hence, the Court totally

ignored the electrical engineering aspects of this case, that it had

previously alluded to, and then focused its attention upon the

expert for Burndy, who possessed mechanical skill, but

presented no testimony about his having expertise in electrical

engineering. Thus, the Court totally deviated from its own set

standard and the standards set by this Court, as to what con-

stitutes the level of ordinary skill in the pertinent art, in what it

finally recognized as the skill of one who could testify about the

validity of the patented invention at issue.

The foregoing evidences that while the Court gave the

semblance of adhering to the Graham standards in analyzing a

patent for its validity, in actual practice, the Court simply

substituted its own hindsight and observations in total deroga-

tion of any interpreted statutory provisions and guidelines

established by this Court with respect to the review of this pa-

tent, in addition to then adopting findings not in accordance

with any established guidelines in order to hold the patent in-

valid by whatever means available.

—

Even regardless of how the District Court handled the various

tests set forth by the Supreme Court in Graham, the Supreme

Court in said case also went on to state that various secondary

considerations, as previously referred to, might be utilized by

the Court upon reviewing the subject matter of the patent.

Thus, in the current case, the Court failed to give any recogni-

tion to the so-called secondary considerations as introduced into

evidence during the taking of the testimony in this lawsuit. The

Court stated, as previously explained, that it need not give any

recognition to the presumption of validity of the patent in suit,

and that such needs only be done in the case of reasonable

doubt. But then, the Court went on to recognize that the com-

bination of Mr. Zemels provided significant improvements in

H-frame technology. At this stage, certainly the findings of the

Court with respect to how significant improvements were made

by the Zemels’ connector to this art should have diminished any

element of doubt regarding the validity of the Kearney patent,

and at this stage, the presumption of validity should have been

given recognition, and the various secondary considerations

should have been investigated to determine the existence of the

patent’s validity. The fact that the Kearney connector has sold

rather significantly over the past ten years, accumulating sales

of from four to five million dollars ($4,000,000.00 to

$5,000,000.00); the fact that it has been licensed to others and

has resulted in the payment of royalties to Kearney in the

amount of two hundred forty thousand dollars ($240,000.00);

and the fact that a long felt need had been overcome by this im-

proved connector, since Kearney was receiving complaints from

the field about the deficiencies of its earlier H-frame style con-

nector, of the type shown in its earlier patents, all should have

been given recognition by the District court, and should have

tipped the scales in favor of the validity of this Zemels patent,

and not simply have been ignored, as done so by the District and

Appellate Courts, in simply holding the invention obvious and

the patent invalid, a decision that is totally contrary to the

evidence presented in this case.

—

CONCLUSION

In view of the foregoing, it is submitted that both the District

Court, and the Court of Appeals, have significantly errored as a

matter of law in holding the patent in suit invalid, that the

Court’s total disregard for the statutory presumption of validity

is a clear error of law and that right to due process in the review

of one’s patent in a lawsuit; that the Second Circuit, at least

with respect to this District Court’s holding, is in conflict with

the other Circuits regarding what weight is to be given to the

presumption of validity, and the Court’s analysis under the

Graham guidelines while properly stated, were then bypassed in

its legal conclusion.

Petitioner respectfully submits that this petition is with merit

and should be granted by this Court.

Respectfully submitted,

Paul M. Denk

763 South New Ballas Road

St. Louis, Missouri 63141

(314)872-8136

Attorney for Petitioner

Of Counsel:

Richard S. Clark

Brumbaugh, Graves, Donohue & Raymond

30 Rockefeller Plaza

New York, New York 10020

APPENDIX

— * eo

APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE

SECOND CIRCUIT

79-7160

Filed November 13, 1979

Corrected

At a stated Term of the United States Court of Appeals for

the Second Circuit, held at the United States Courthouse in the

City of New York, on the 13th day of November, one thousand

nine hundred and seventy-nine.

Present:

HONORABLE WILFRED FEINBERG

HONORABLE WALTER R. MANSFIELD

Circuit Judges

HONORABLE JACOB MISHLER

Ch. District Judge

Burndy Corporation,

Plaintiff-Appellee,

- against - >

Kearney-National, Inc.,

Defendant-Appellant.

ae eo

Appeal from the United States District Court for the

Southern District of New York.

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

from the United States District Court for the Southern District

of New York, and was argued by counsel.

ON CONSIDERATION WHEREOF, it is now hereby

ordered, adjudged, and decreea that the judgment of said

District Court be and it hereby is AFFIRMED on the opinion of

Judge Broderick, dated January 2, 1979.

/s/ WILFRED FEINBERG

/s/ WALTER R. MANSFIELD

Circuit Judges

/s/ JACOB MISHLER,

Ch. District Judge

aay ee

APPENDIX B

UNITED STATES COURT OF APPEALS

SECOND CIRCUIT

79-7160

Filed January 22, 1980

At a Stated Term of the United States Court of Appeals, in

and for the Second Circuit, held at the United States Court

House, in the City of New York, on the twenty-second day of

January, one thousand nine hundred and eighty.

Present: HON. WILFRED FEINBERG

HON. WALTER R. MANSFIELD

Circuit Judges

HON. JACOB MISHLER

District Judge

Burndy Corporation,

Plaintiff-Appellee-Cross-Appellant,

- against - . 79-7160

Kearney-National, Inc.,

Defendant-Appellant-Cross-Appellees.

A petition for a rehearing having been filed herein by counsel

for the defendant-appellant-cross-appellee, Kearney-National,

Inc.,

Upon consideration thereof, it is

Ordered that said petition be and hereby is denied.

A. DANIEL FUSARO,

Clerk

won ici oe

APPENDIX C

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

75 Civ. 3248 (VLB)

Burndy Corporation,

Plaintiff,

- against -

Kearney-National, Inc.,

Defendant.

VINCENT L. BRODERICK, U.S.D.J.

OPINION

Introduction

This is a declaratory judgment action. The subject matter of

the action is a patent (‘‘the Zemels patent’’) that has been

assigned to defendant, Kearney National, Inc. (‘‘Kearney’’).

The Zemels patent covers items known as ‘‘compression con-

nectors.’”'

Plaintiff, Burndy Corporation (‘‘Burndy’’) seeks a judgment

declaring that the Zemels patent is invalid and that the manufac-

ture, use, or sale by Burndy or its privies of compression con-

nectors made and sold by Burndy does not constitute an in-

fringement of any valid claim of the Zemels patent or an in-

fringement of any other rights of Kearney. Burndy also seeks an

injunction restraining Kearney and Kearney’s privies from

asserting infringement, and from bringing or threatening any in-

'* All footnotes appear at end of this Opinion, pages A-4 - A-22,

the same as in the original document.

— =

fringement actions against Burndy and its privies based on the

Zemel patent or any other patent under which defendant now

has the power to assert a claim of infringement. Burndy also

seeks attorneys’ fees.

Kearney asserts the validity of the Zemels patent and, by

counterclaim, seeks an injunction restraining Burndy from in-

fringing the patent; compensatory damages for Burndy’s

alleged past infringements of the patent; and attorneys’ fees.

Burndy is incorporated in the State of New York, and

Kearney, incorporated in Delaware, has a place of business in

New York City. Both companies are engaged in the manufac-

ture and sale of electrical products, including electrical compres-

sion connectors.

Burndy bases its claims in this action on 35 U.S.C. §§101,

102, 103, 112, and 285.’ Kearney bases its claims on 35 U.S.C.

§271.°

This court has personal jurisdiction of the parties. Subject

matter jurisdiction is based on 28 U.S.C. §1338, 2201, and 2202.

Venue is proper under 28 U.S.C. §1391(c).

A bench trial was had herein. This opinion contains my find-

ings of fact and conclusions of law pursuant to Rule 52(a),

Fed.R.Civ.P.

HM.

Conclusion

Burndy advances several arguments in support of its conten-

tion that the Zemels patent is invalid,* but principally relies on

the argument under 35 U.S.C. §103 that the patent is invalid on

the grounds of obviousness. °*

For the reasons stated below, I find that the Zemels patent is

invalid on the grounds of obviousness. 35 U.S.C. $103.

=< ao

Therefore, Burndy is entitled to the declaratory judgment and

injunction sought herein.°

Because I agree that the Zemels patent is invalid under Sec-

tion 103, and because this conclusion is dispositive, I do not

reach Burndy’s other arguments.’

I find that this is not an ‘‘exceptional’’ case within the mean-

ing of 35 U.S.C. §285 and conclude that Burndy is not entitled

to attorneys’ fees.

Ill.

Background and Development of the Zemels Patent

The Zemels patent,* originally issued to Carl G. Zemels, per-

tains to an electrical compression connector that is made of

dead-soft aluminum and is formed in the shape of an ‘‘H’’. The

compression connector is generally used in overhead installa-

tions, and its purpose is to connect a power-carrying conductor

(called a ‘‘line conductor’’) to a ‘‘tap conductor’’ that carries

the electrical power from the line conductor into a particular

building. Thus power may be tapped from a line conductor and

transferred, via a tap conductor, into the building of an elec-

trical power consumer.

The electrical compression connector convered by the Zemels

patent is known as an H-frame connector. The connector has a

pair of upper arms (called ‘‘lips’’ in the patent) and a pair of

lower arms (also called ‘‘lips’’ in the patent). Each pair of arms

defines a space, which space is termed a ‘‘socket’’ in the patent.

The H-frame connector thus has an upper socket and a lower

socket. The upper socket generally is larger than the lower

socket, and the upper socket is used to hold the line conductor

while the lower socket is used to hold the tap conductor.

The process of installing an H-frame connector proceeds

roughly as follows. A lip of the lower socket and a lip of the up-

per socket each has an extension or ‘‘tab.’’ (See Numbers 11

eS, oo

and 12 of Figures 1, 2, 3, 5, Appendix A). These tabs, which are

made of a weaker metal than the metal that composes the rest of

the connector, are designed to be bent over into each socket by

the finger of a lineman. Thus, the lineman takes the connector

to the conductor; places the line conductor in the upper socket;

and bends the tab into the socket over the line conductor so that

the line conductor is at least loosely secured in the upper socket.

The lineman then places the tap conductor into the lower socket

of the H-frame connector and bends the tab of that socket over

the tap conductor so that the tap conductor is at least loosely

secured in the lower socket. Having thus loosely secured both

the line conductor and the tap conductor in the connector, the

lineman next takes a compression tool, which has dies at one of

its ends, and places the dies around the opposite ends of the

connector. Finally, he closes the handles of the compression

tool, thereby crimping and shaping the sockets of the connector

around the line conductor and the tap conductor. The H-frame

connector has now been installed.

Two important goals in developing processes in this area are

1) to achieve the snuggest possible fit between the connector and

the power lines, and 2) to minimize the amount of energy and

effort necessary to obtain a snug fit.

In the application that led to the patent in suit, Zemels stated

both of these goals as objects cf his invention. The key to at-

taining these goals, according to Zemels, was the presence of

**channels’’ or ‘‘voids’’ of a particular size and in a particular

position in the body of the compression connector. (See

Numbers 14 and 16 in Figures 1-6, Appendix A). These channels

or voids, and the details regarding their size and position, are

essential to all the claims of the Zemels patent.’

The Zemels patent must be considered against a background

in which various compression connectors were developed.

Kearney began to manufacture and sell H-frame connectors in

iiic early 1940’s. Kearney’s original H-frame connector, which

—— ee

was covered by the Graham patent,'® had no channels in its

sides. The original H-frame connector was improved upon by

the Hoffman patent,'' which was issued in 1955 and which was,

like the Graham patent, assigned to Kearney. The Hoffman pa-

tent taught the addition of tabs to two of the arms of the con-

nector. Kearney developed a series of connectors based on the

Hoffman patent known as the 81 series connectors, which re-

quired twelve different sizes of connectors to accommodate the

78 different sizes of conductors that were then in use. The Series

81 connectors were manufactured and sold during the 1950’s

and 1960’s.

Ten of the 12 sizes of Series 81 connectors could be properly

crimped around the conductors by means of a hand com-

pressor, but two models could be properly crimped only by

means of a hydraulic compressor. This fact made the latter two

models less desirable; a hydraulic compressor is more expensive

and heavier than the hand tool and is not well regarded by the

utility companies, which are the major consumers of compres-

sion connectors.

Kearney realized that these two models of connectors were

less marketable than they would have been if they had been

crimpable by a hand tool. Several Kearney employees, including

William Olive, the Chief Engineer, and John Thornton,

Zemels’ supervisor, considered the problem.

In November, 1963 Zemels, a Kearney design engineer, began

to consider the problem. Zemels had been graduated with the

title of mechanical engineer from a university in the Soviet

Union. After coming to the United States in 1949, he had

worked as a design engineer for almost 14 years.

In January, 1964 Zemels developed sketches of an H-frame

compression connector with channels, which he showed to

Thornton. He was authorized by Thornton and Olive to do for-

mal work on the matter. Zemels then considered the details of

the proper size and location of the channels that would be

rag eye

necessary to attain the optimal fit in the crimping process. He

concluded, inter alia, that in connectors with different sized

sockets, the smaller socket should have thicker arms (or ‘‘lips’’)

than the larger socket so that the crimping process, which had to

close both sockets at once, would result in a snug fit around

both the larger line conductor and the smaller tap conductor.

Zemels concluded further that this thickening of the arms of the

tap socket in connectors with different sized sockets should be

accompanied by a shifting of the channels from the midpoint of

the connector to a point closer to the tap socket.

In March, 1964 Zemels conducted his first tests on his pro-

totypes. His superiors at Kearney were favorably impressed with

his progress, and he continued to work on the project of finding

suitable replacements for the two problematic models in

Kearney’s Series 81 connectors. By early 1965, Zemels had

finished the basic work on the two connectors that were later to

replace the two troublesome models in Series 81. Between

November, 1966 and November, 1967, Zemels redesigned

Kearney’s entire Series 81 on the basis of his insights. In the pro-

cess he reduced the number of models from 12 to seven, which

comprise Kearney’s Ultra Squeezon 500 series of connectors.

In June, 1964 Zemels, through Kearney’s patent attorney,

filed an application with the Patent Office. This application was

rejected.'? The application that ultimately led to the Zemels pa-

tent was not filed until May, 1966, and the patent was not

granted until May 30, 1967.

IV.

The guidelines for analysis under Section 103 are set forth in

Graham v. John Deere Co., 383 U.S. 1 (1966):

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 or-

dinary skill in the pertinent art resolved. Against this

A

background, the obviousness or nonobviousness of the

subject matter is determined. Such secondary considera-

tions as commercial success, long felt but unsolved needs,

failure of others, etc., might be utilized to give light to the

circumstances surrounding the origin of the subject matter

sought to be patented. As indicia of obviousness or nonob-

viousness, these inquiries may have relevancy.

Id. at 17-18. Accord, Sakraidav. Ag Pro Inc., 425 U.S. 273, 280

(1976), rehearing denied, 426 U.S. 955 (1976); Danns v.

Johnston, 425 U.S. 219 (1976); U.S. Philips Corp. v. National

Micronetics, Inc., 550 F.2d 716, 719 (2d Cir.), cert. denied, 434

U.S. 859 (1977).

The Scope and Content of the Prior Art

In determining the relevant scope of the prior art, a court is to

look, ‘‘in light of both the training of the patentee and the

elements in the claimed invention which give it its novel quality,

at what arts the patentee could reasonably be expected to con-

sult in doing the inventing [citations omitted]’’ Digitronics

Corp. v. New York Racing Association, Inc., 553 F.2d 740, 745

(2d Cir.), cert. denied, 434 U.S. 860 (1977).

The elements in the claimed invention that give it its novel

quality relate to the size and location of the channels in the

H-frame connector, and these elements in context relate to

design, mechanical, and electrical engineering. In light of these

facts, I find that the relevant scope of the prior art is design,

mechanical, and electrical engineering.'’

The content of the prior art consists of the patents and other

learning that were extant at the time of the development of the

purported invention in the areas of design, mechanical, and

electrical engineering, as those arts pertain to the problems of

electrical compression connectors and related problems. See,

e.g., Preuss v. General Electric Co., 392 F.2d 29, 32 (2d Cir.),

cert. denied, 393 U.S. 834 (1968). Relevant to this case are five

— A-ll —

patents that covered electrical compression connectors and that

were extant at the time Zemels was working on his H-frame con-

nector.

(1) The Graham Patent.'* This patent, which was applied for

in 1941 and granted in 1943, pertains to a basic H-frame connec-

tor without channels. Graham teaches that this basic H-frame

connector is to be composed of a malleable material that is a

good conductor of electricity; that there be in the connector a

pair of parallel passages (the ‘‘sockets’’) to receive the conduc-

tors that are to be connected; and that the connector is to be

subjected to compressive force exerted by a tool so that the con-

nector will be crimped and will securely grip the conductors that

have been placed in the passages.

(2) The Hoffman Patent.'* This patent, which was applied for

in 1951 and was granted in 1955, improved on the connector

covered by the Graham patent by adding to the connector the

bendable tabs, which are extensions of the socket arms and

which allow a lineman to make a temporary fitting of the con-

nector on the conductors by using his fingers to bend the tabs

down into the sockets. Hoffman also teaches, although it does

not claim, the addition of channels in the body of the connec-

tor. This teaching is present both in Figures 8 and 9 of the Hoff-

man drawings (see Appendix C) and in the application itself,

which states in part:

Figs. 8 and 9 illustrate a form of the invention according to

which each side face of the body portion 1b of the connec-

tor Ab has formed therein a groove 11 that preferably

though not necessarily, is V-shaped, as is shown in Fig. 8.

The grooves 11 preferably extend in the direction of the

diameter of the body portion of the connector, from one

side of said body portion to the opposite side thereof, and

by applying portions of a suitable tool T to the grooves, as

is shown in Figs. 8 and 9 and causing said tool portions to

move toward each other, a compressed connector will be

— A-12 —

forced open, as is shown in Fig. 9, for removal of the con-

nector.

U.S. Patent No. 2,707,775.

Thus Hoffman expressly discloses channels between the sockets.

Under the Hoffman patent the purpose of such channels is to

facilitate opening an already crimped connector.

(3) The Toedtman ’069 Patent.'* This patent, which was ap-

plied for in 1957 and granted in 1960, discloses an electrical

compression connector in the shape of a ‘‘6’’. This patent

discloses the use of channels in the external sides of the connec-

tor body. (See Numbers 11 and 12 of Figures 1 and 4, Appendix

D). The patent also discloses sockets of different sizes. The

channels, which are expressly claimed by the patent, are dis-

closed to be closer to the'smaller socket than they are to the

larger socket. The stated object of the channels is to facilitate a

better fit of the connector around the conductor:

The described provisions allow the parts to yield and be

formed about the wire and reduce the pressure re-

quirements to accomplish this result, and, importantly,

when compression is applied, function to induce an inward

collapse of the said neck portion. Such is desirable to

eliminate gaps and to produce a strong, full surface con-

tact between the connector and the wire.

U.S. Patent No. 2,938,069.

(4) The Toedtman ’764 Patent.'’ This patent, which was ap-

plied for in 1962 and granted in 1964, pertains to an H-frame

connector and discloses the use of channels on the interior of

the sockets. (See Numbers 17 and 22 of Figure 2, Appendix E).

The patent claims the objects of such channels to be to accom-

modate a wide range of sizes of conductors in the sockets and to

facilitate a snugger fit between the sockets and the conductors.

— A-13 —

(5) The Lynch Patent.'* This patent, which was applied for in

1963 and granted in 1965, while Zemels himself was working on

his invention, pertains to an H-frame connector and a means for

temporarily holding the conductors. The patent discloses the

use of channels in the outside of the body of the connector. (See

Numbers 25 and 26 of Figure 2, Appendix F). The channels are

expressly claimed; their purpose is stated to be to hold bars that

run through the channels and through holes in the ‘‘temporary

cable [/.e., connector] holding means.’’ The ‘‘temporary cable

holding means’’ are plates (see Figure 1, Appendix F) that are

temporarily placed on the ends of the connector to hold the con-

ductors in place in the sockets while the lineman prepares to

crimp the connector. The ‘‘temporary cable holding means’’

thus take the place of the tabs, which have been seeii in the

Hoffman patent, the Toedtman ’069 patent, and the Zemels

patent.

Differences Between the Prior Art and the Claims at Issue

The principal claim in the Zemels patent is claim 1, which

reads as follows:

1. In a compression connector of the character

described having oppositely disposed conductor-receiving

sockets, one of said sockets being of larger cross-sectional

dimension than the other, and a body of ductile metal ex-

tending crosswise of said connector between said sockets,

the improvement which comprises, said crosswise extend-

ing body of metal having a void therein for accommodat-

ing compression of said body to shorten the distance

between said sockets, said void being located in spaced

relation with both sockets and substantially closer to the

smaller socket than to the larger socket.

U.S. Patent Number 3,322,888.

There are no differences between this claim and the prior art.

The H-frame connector was taught by Graham. The use of

a eit

sockcis of different sizes in a connector was disclosed by the

Toedtman ’069 patent. The use of a body of ductile metal be-

tween the sockets was taught by Graham. The use of a channel

in the body of the connector was disclosed by Hoffman. The use

of such a channel to accommodate the compression of the body

was taught by the Toedtman ‘069 patent'® and was also clearly

foreshadowed by the Toedtman ’764 patent.”° Thus, the claim

of using the channels to accommodate the compression of the

body does not distinguish claim 1 of the Zemels patent from the

prior art.?' Nor does the final portion of claim 1, that the chan-

nel is located substantially closer to the smaller socket than to

the larger socket, distinguish claim 1 from the prior art. That

relation of channel to sockets was taught by the Toedtman ’069

patent. (See Figure 1, Appendix D).

Claims 2 and 3 of the Zemels patent,?? which give specific

mathematical information about the connector described in

claim 1, differ from the prior art only in the greater specificity

with which they describe the spatial relations between various

components of the connector.”?

Claim 4,?‘ besides repeating many of the claims made in claim

1 and the mathematical information stated in claim 2, states that

the channel extends the full length of the body of the connector.

This does not distinguish claim 4 from the prior art because ex-

tending the channel the full length of the connector was dis-

closed by both the Toedtman ’069 patent (see Number 11 of

Figures 1 and 2, Appendix D) and the Lynch patent. (See

Number 26 of Figure 2, Appendix F).

Claim 5? is not different from the prior art because the place-

ment of the channel on the exterior of the connector was taught

by Hoffman, Toedtman (the ’069 patent), and Lynch. Claim 67°

is not different from the prior art for the same reason that claim

5 is not.

Claims 7 and 8,?’ which give specific mathematical informa-

tion about the connector of claim 6, differ from the prior art

— A-l$ —

only in the greater specificity with which they describe the

spatial relations of various components of the connector.

Claim 9?* does not differ from the prior art by claiming that

the connector is compressible to the cross-section of the sockets

because the idea of such compression was taught by others as

far back as: Hoffman. (See Figure 3, Appendix B). However,

claim 9 does differ from the prior art by stating the

mathematical proposition that such compression may be attain-

ed around a set of conductors whose outside diameters vary be-

tween 100% (minus clearance) and 60% of the width of the

sockets.

The Level of Ordinary Skill in the Pertinent Art

**35 U.S.C. §103 provides for a specialized reasonable man

test for obviousness.’’ Preuss v. General Electric Co., supra,

392 F.2d at 32. In this case the reasonable person is the person

with ordinary skill in design, mechanical, and electrical

engineering. See id.

I find that the level of ordinary skill in those arts is such that a

reasonable engineer engaged in those arts would have at least a

college education and would be thoroughly educated in

mathematics, physics, and mechanics. Cf. Lerner v. Child

Guidance Products, Inc., 406 F.Supp. 560, 565 (S.D.N.Y. 1975)

(‘‘In determining the issue of obviousness we must assume that

the patentee was aware of all of this prior art when he made the

invention. [citation omitted]’’), aff’d, 547 F.2d 29 (2d Cir.

1976) (per curiam).

Thus the question becomes, ‘‘what would have been obvious

to a reasonable [engineer] who, among other things, had the

{Graham, Hoffman, Toedtman, and lynch] patents in mind

when he endeavored to solve the problem’’ of the Kearney

Series 81 connectors? Preuss v. General Electric Co., supra, 392

F.2d at 32-33. This question is to be answered in light of the fac-

— A-16 —

tual background that has been provided above pursuant to the

guidelines of Graham v. John Deere Co., supra, 383 U.S. at 17.

Obviousness and Patent Validity

All of the physical elements of the connector covered by the

Zemels patent were known in the prior art. Therefore, the ques-

tion is ‘‘whether the combination of the old elements created a

valid combination patent.’’ Anderson’s-Black Rock v. Pave-

ment Co., 396 U.S. 57, 59 (1969).

In answering this question, I heed the admonition that

‘**fcjourts should scrutinize combination patent claims with a

care proportional to the difficulty and improbability of finding

invention in an assembly of old elements. ...’ ’’ Sakraida v. Ag

Pro Co., 425 U.S. 273, 281 (1976) (quoting Great A & P Tea

Co. v. Supermarket Corp., 340 U.S. 147, 152 (1950)). See Julie

Research Laboratories, Inc. v. Guidelines Institute, Inc., 501

F.2d 1131, 1136 (2d Cir. 1974) (a combination patent must be

scrutinized with special care).

A useful test to be applied in cases involving the question of

the obviousness of combination patents was stated by Mr.

Justice Stevens while he was still a Circuit Judge. He stated that

in such cases a court ought to ask:

[FJirst, whether each element of the invention was obvious;

second, if so, whether the combination is obvious, and

third, if the combination seems obvious in itself, whether

the rejection of the contrary teaching in the prior art re-

quires a different conclusion [than that the combination is

obvious].

E-T Industries, Inc. v. Whittaker Corp., 523 F.2d 636, 641 (7th

Cir. 1975), ceri. denied, 429 U.S. 870 (1976). Accord, Autex

Corp. v. Shelley Radiant Ceiling Co., 536 F.2d 145, 150 (7th

Cir. 1976). See Julie Research Laboratories, Inc. v. Guideline

Institute Inc., 501 F.2d 1131, 1134 (2d Cir. 1974).

aes Ash?

Applying the E-7 Jndustries test to the instant case, I find,

first, that each element of the claimed invention was obvious.

As stated above, the H-frame connector itself, the use of

sockets of different sizes, the use of a body of ductile metal, the

use of channels in the body, and the placement of the channels

closer to the smaller socket than to the larger socket were all

elements that had been developed in the prior art. They must be

deemed to have been obvious to a reasonable engineer.

Second, I find that the combination of the elements in

Zemels’ invention was obvious. Zemels did combine the

elements of the connector in new ways, at least in the sense that

he described, in his claims 2, 3, 7-9, the relationships of the

elements with greater mathematical specificity than had been

done before. However, the fact that these combinations were

new does not mean that they were not obvious. To the contrary,

I find that a reasonable engineer, with the relevant prior art

before him and with a thorough knowledge of mathematics,

physics, and mechanics, would have found these new combina-

tions obvious.’°

Nor is this a case in which the combination must be found to

be nonobvious because the combination produced a

“*synergistic’’ result. See Sakraida v. Ag Pro Inc., supra, 425

U.S. at 282. That is, the combination did not ‘‘result in an ef-

fect greater than the sum of the several effects [of the elements]

taken separately.’’ /d. (citing Anderson’s-Black Rock, supra,

396 U.S. at 57). It may be granted that the combination resulted

in significant improvements in H-frame connector technology,

including the obtaining of a more desirable fit between the con-

nector and the conductors by the exertion of less force than had

been necessary in the past; the ability to effect such a fit on all

models of conductors by means of a hand compressor (rather

than a hydraulic compressor); and the reduction from 11 to

seven in the number of models of connectors necessary to con-

nect all the sizes of conductors then in use. However, these im-

— A-18 —

provements are not sufficient to negate the finding of ob-

viousness under Section 103:

Rather, this patent simply arranges old elements with each

performing the same function it had been known to per-

form, although perhaps producing a more striking result

than in previous combinations. Such combinations are not

patentable under standards appropriate for a combination

patent. ... Exploitation of the principle[s] of [mathematics]

adds nothing to the sum of useful knowledge where there is

no change in the respective functions of the elements of the

combination; this particular use of the assembly of old

elements would be obvious to any person skilled in the art

of mechanical application. See Dann v. Johnston, ante,

[425 U.S.] at 229-230.

Though doubtless a matter of great convenience, produc-

ing a desired result in a cheaper and faster way, and enjoy-

ing commercial success, [this connector] ‘‘did not produce

a ‘new or different function’ ... within the test of validity

of combination patents.’’ Anderson’s-Black Rock v. Pave-

ment Co., supra, [396 U.S.] at 60. These desirable benefits

‘without invention will not make patentability.’’ Great A.

& P. Tea Co. v. Supermarket Corp., 340 U.S., at 153. See

Dann v. Johnston, ante, at 230 n.4.

Sakraida, supra, 425 U.S. at 282-83.°° 4

Further applying the test of E-7 /ndustries, I find, third, that

a conclusion different than that the combination was obvious is

not required by ‘‘the rejection of the contrary teaching in the

prior art. ...’’ E-7 Industries, Inc., supra, 523 F.2d at 641. The

question to be asked here is, is there ‘‘evidence that long ac-

cepted factors would deter any investigation into the combina-

tion used by [Zemels]’’? Jd. at 642. See United States v. Adams,

383 U.S. 39, 52 (1966) (‘‘known disadvantages in old devices

that would naturally discourage the search for new inventions

may be taken into account in determining obviousness.’’). The

— A-19 —

record here reveals no evidence of factors that would have

deterred Zemels’ investigation into the combination he finally

used. To the contrary, the combination that he finally used was

clearly foreshadowed by several developments in the prior art,

and these developments occurred in a fairly regular and

unimpeded manner beginning with the Graham patent in 1943.

There were no deterrents to an investigation of the mathematics

and mechanics involved in the use of the H-frame connector. In

fact it is likely that many of Zemels’ predecessors themselves in-

vestigated the relevant mathematics and mechanics and that the

only difference between those predecessors and Zemels himself

was that he chose to rely on mathematical formlae and

specifications in his patent application claims.

’ ee

I conclude, therefore, that the Zemels patent’s ‘‘subject mat-

ter as a whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art. ...’’ 35

U.S.C. §103. Because this conclusion seems to me to be clear, I

find it inappropriate to consider the ‘‘secondary

considerations,’’ Graham, supra, 383 U.S. at 17, that Kearney

urges upon me. Kearney advances a sizeable number of such

considerations, including acceptance of the invention by others,

the commercial success of the patented conductor, and the

copying of the invention by others, including Burndy. However,

when the finding of obviousness is mandated by other factors,

such secondary considerations do not change that finding.

Graham, supra, 383 U.S. at 36 (‘‘these [secondary] factors do

not, in the circumstances of this case, tip the scales of paten-

tability.”’). Accord, Roanwell Corp. v. Plantronics, Inc., 429

U.S. 1004, 1009 (1976) (White, J., joined by Brennan, J.,

dissenting from denial of writ of certiorari); Danns v. Johnston,

supra, 425 U.S. at 230 n.4; Anderson’s-Black Rock, supra, 396

U.S. at 61; Digitronics Corp. v. New York Racing Association,

Inc., 553 F.2d 740, 748 (2d Cir.) (‘‘Only in a close case, in which

application of the subjective criterion of nonobviousness in 35

U.S.C. §103 does not produce a firm conclusion, can those ob-

— A-20 —

jective or secondary considerations be used to ‘tip the scales in

favor of patentability’ [citations omitted]. Because we hold that

the claims here are clearly obvious, we need not examine secon-

dary considerations. [citations omitted]’’, cert. denied, 434 U.S.

860 (1977).*'

vi

Attorneys’ Fees

Burndy contends that it is entitled to attorneys’ fees because

Kearney’s conduct in prosecuting the Zemels patent’? makes

this an ‘‘exceptional case’’ within the meaning of 35 U.S.C.

§285.°3

Burndy’s claim for attorneys’ fees must be analyzed in light

of the general rule that each party is to bear its own attorneys’

fees:

In patent suits, no less than other types of suits in the

federal courts, it is the general rule that awarding at-

torneys’ fees to the prevailing party is not favored absent a

specific statute providing therefor. Here we have such a

statute, but the relief it provides is not usually granted. The

patent suit involved must qualify as an ‘‘exceptional’’ case.

It is obvious from the language of 35 U.S.C. §285 that

Congress intended the trial court to exercise its sound

discretion in deciding whether a case was sufficiently ex-

ceptional to vitiate the normal rule that each party bear his

own attorneys’ fees.

Kahn v. Dynamics Corp. of America, 508 F.2d 939, 945 (2d

Cir.), cert. denied, 421 U.S. 930 (1975).

The recognized categories of exceptional cases under Section

285 include cases involving fraud on the patent office,

Digitronics, Inc. v. New York Racing Association, Inc., supra,

553 F.2d at 749; gross negligence or bad faith in the prosecution

of a patent, Kahn v. Dynamics Corp. of America, supra, 508

— A-21 —

F.2d at 945; and unclean hands in the prosecution of a patent.

Timely Products Corp. v. Arron, 523 F.2d 288, 305 (2d Cir.

1975), cert. denied, 429 U S. 870 (1976); Trans-World Display

World Corp. v. Mechtronics Corp., 437 F.Supp. 692, 703

(S.D.N.Y. 1977) (dictum). I find that Kearney’s conduct does

not fall into any of these categories.

The Zemels patent is based on a continuation in part applica-

tion. The first application, filed in June, 1964, was abandoned

after it had been rejected by the examiner. In the original ap-

plication, Zemels stated that ‘‘[p]referably, but not necessarily’’

the distance from the channel to the bottom of the smaller

socket is slightly less than the distance from the channel to the

larger socket. This language suggested that the relative spacing

of the channels to the sockets was not critical. Thus the original

application would have permitted the channels, if placed on the

outside of the connector body, to be spaced equidistant from

the two sockets. The original application also stated that the

channels could be located inside the sockets.

The examiner rejected all claims of the original application.

He found that the Hoffman patent and the Toedtman ’746 pa-

tent anticipated Zemels’ claims.

Zemels then amended his claims by specifying that the chan-

nels be located on the outside of the connector body. The ex-

aminer, citing the Lynch patent, again rejected Zemels’ claims.

Soon thereafter Zemels abandoned his original application,

but, before doing so, he filed the continuation in part applica-

tion, in which there appeared mathematical formulae expressing

the spatial relations among various of the connectcr’s elements.

The examiner rejected the claims in the second application on

the basis of, inter alia, the Lynch patent, and the examiner

stated that he did not understand the mathematics formulae

that appeared in the second application. Zemels and Kearney

sought to explain the formulae and stated that the formulae

yielded a ‘‘dividing line’’ between compression connectors that

— A-22 —

could be expected to perform well in certain respects and con-

nectors that could not so perform. Zemels’ trial testimony on

this matter was somewhat unclear and equivocal, but he ap-

peared to admit that the formulae did not yield a dividing line of

such a critical nature that it could never be crossed or altered,

and that he himself sometimes purposely designed connectors

that fell outside the claimed range in order to obtain certain im-

provements.

It may be that the claims asserting the formulae would never

have been made if the examiner had not rejected Zemels’ first

application. It may be, too, that the examiner did not fully

understand the mathematical formulae that appeared in Zemels’

second application and that Zemels and the other Kearney

agents were unsuccessful in explaining to the examiner the pur-

pose of the formulae. However, the mere fact that Kearney

undertook the usual jockeying that occurs in the prosecution of

a patent and that Zemels and the other Kearney agents may

have been less than successful in their efforts to instruct the ex-

aminer on the details of mathematics contained in the second

application does not mean that Kearney has abused the patent

office in such a way as to require that an award of attorneys’

fees be made to Burndy.

On the basis of the testimony that I have heard and the papers

before me, I cannot conclude that Kearney was guilty of fraud,

bad faith, gross negligence, or unclean hands in its prosecution

of the Zemels patent. Burndy’s request for an award of at-

torneys’ fees under 35 U.S.C. §285 is denied.

Settle Judgment on Notice.

/s/Vincent L. Broderick, U.S.D.J.

Dated: New York, New York

January 2, 1979

©

— A-23 —

' Compression connectors will be discussed in detail infra.

> 35 U.S.C. §101 provides:

§101. Inventions patentable

35

Whoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new

and useful improvement thereof, may obtain a patent therefor,

subject to the conditions and requirements of this title. July 19,

1952, c. 950, §1, 66 Stat. 797.

U.S.C. §102 provides:

§102. Conditions for patentability; novelty and loss of right to

patent

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this country,

or patented or described in a printed publication in this or a

foreign country, before the invention thereof by the applicant

for patent, or

(b) the invention was patented or described in a printed pub-

lication in this or a foreign country or in public use or on sale in

this country, more than one year prior to the date of the applica-

tion for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented,

or was the subject of a1 inventor’s certificate, by the applicant

or his legal representatives or assigns in a foreign country prior

to the date of the application for patent in this country on an ap-

plication for patent or inventor’s certificate filed more than

twelve months before the filing of the application in the United

States, or

(e) the invention was described in a patent granted on an

application for patent by another filed in the United States

before the invention thereof by the applicant for patent, or on

an international application by another who has fulfilled the re-

quirements of paragraphs (1), (2), and (4) of section 371(c) of

this title before the invention thereof by the applicant for patent,

or

— A-24 —

(f) he did not himself invent the subject matter sought to be

patented, or

(g) before the applicant’s invention thereof the invention was

made in this country by another who had not abandoned, sup-

pressed, or concealed it. In determining priority of invention

there shall be considered not only the respective dates of concep-

tion and reduction to practice of the invention, but also the

reasonable diligence of one who was first to conceive and last to

reduce to practice, from a time prior to conception by the other.

July 19, 1952, c. 950, §1, 66 Stat. 797.

35 U.S.C. §103 provides:

§103. Conditions for patentability; non-obvious subject 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.

35 U.S.C. §112 provides:

§112 Specification

The specification shall contain a written description of the

invention, and of the manner and process of making and using

it, in such full, clear, concise and exact terms as to enable any

person skilled in the art to which it pertains, or with which it is

most nearly connected, to make and use the same, and shall set

forth the best mode contemplated by the inventor of carrying

out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject mat-

ter which the appellant regards as his invention.

A claim may be written in independent or, of the nature of the

case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent

form shall contain a reference to a claim previously set forth and

then specify a further limitation of the subject matter claimed. A

— A-25 —

claim in dependent form shall be construed to incorporate by

reference all the limitations of the claim to which it refers.

A claim in multiple dependent form shall contain a reference,

in the alternative only, to more than one claim previously set

forth and then specify a further limitation of the subject matter

claimed. A multiple dependent claim shall not serve as a basis

for any other multiple dependent claim. A multiple dependent

claim shall be construed to incorporate by reference all the

limitations of the particular claim in relation to which it is being

considered.

An element in a claim for a combination may be expressed as

a means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and

such claim shall be construed to cover the corresponding struc-

ture, material, or acts described in the specification and

equivalents thereof.

As amended July 24, 1965, Pub.L. 89-83, §9, 79 Stat. 261; Nov.

14, 1975, Pub.L. 94-131, §7, 89 Stat. 691.

35 U.S.C. §285 provides:

§285. Attorney fees

The court in exceptional cases may award reasonable attorney

fees to the prevailing party. July 19, 1952, c. 950, §1, 66 Stat.

813.

> 35 U.S.C. §271(a) and (b) provide:

§271. Infringement of patent

(a) Except as otherwise provided in this title, whoever without

authority makes, uses or sells any patented invention, within the

United States during the term of the patent therefor, infringes

the patent.

(b) Whoever actively induces infringement of a patent shall be

liable as an infringer.

* Burndy concedes that its compression connectors infringe at least

claim 1 of the Zemels patent. Trial Transcript (‘‘Tr.’’) at 14.

Therefore, if Burndy failed to establish that the Zemels patent is in-

— A-26 —

valid under any of the statutory sections cited, see supra n.2, Burndy

would be liable for infringement. Because of this fact, I find it un-

necessary in this case to follow ‘‘the approved procedure of deciding

the question of alleged infringement.’’ Ling-Temco-Voight, Inc. v.

Kollsman Instrument Corp., 372 F.2d 263, 265 (2d Cir. 1967).

* See supra n.2.

* The injunction to be issued herein will not restrain Kearney and its

privies from seeking to enforce patents other than the Zemels patent

against Burndy. The issue of the validity of such other patents is not

before me, and in this action I decide nothing about their validity.

’ Burndy has also argued that the Zemels patent is invalid for lack

of utility, 35 U.S.C. §101; for anticipation, 35 U.S.C. §102; and for

lack of specificity; 35 U.S.C. §112.

* U.S. Patent No. 3,322,888. The six drawings that Zemels submit-

ted with his patent application are appended to this Opinion as Ap-

pendix A.

* The nine claims of the Zemels patent are as follows:

1. In a compression connector of the character described

having oppositely disposed conductor-receiving sockets, one of

said sockets being of larger cross-sectional dimension than the

other, and a body of ductile metal extending crosswise of said

connector between said sockets, the improvement which com-

prises said crosswise extending body of metal having a void

therein for accommodating compression of said body to shorten

the distance between said sockets, said void being located in

spaced relation with both sockets and substantially closer to the

smaller socket than to the larger socket.

2. The connector of claim 1 wherein the cross-sectional area

of the void is between 0.034 and 0.046 of the cross-sectional area

of the connector including the void but excluding the socket

space.

nn Met =

3. The connector of claim | wherein the void delineates con-

strictions in said crosswise extending body, said constrictions ex-

tending from said void to each of said sockets, and the constric-

tions extending to the larger socket are of greater length than the

constrictions extending to the smaller socket.

4. In a compression connector of the character described

having oppositely disposed conductor receiving sockets, each of

said sockets being proportioned to receive conductors whose

outside diameters vary between a maximum and a minimum,

and a body of ductile metal extending crosswise of said connec-

tor between said sockets, the improvement which comprises:

said body having a void substantially spaced from said sockets

and extending for the full length of said body, and said void hav-

ing a cross-sectional area of between 0.034 and 0.046 times the

cross-sectional area of the connector including the void but ex-

cluding the socket space.

5. The improvement of claim 4 wherein said void is open to

the exterior of said connector.

6. The improvement of claim 4 wherein said void is deline-

ated by channels on the exterior of said body at opposite sides of

the connector.

7. The connector of claim 6 wherein the average dimension h

of said channels in the direction parallel to a plane including the

axes of both socket is

0.0200 + 15% (C/B)

and the average dimension b thereof in the direction perpen-

dicular to said plane is

0.1500 + 15% (W)

where W is the dimension of the connector parallel to b and C is

the cross-sectional area of the connector including the channels

but excluding the socket space.

8. The connector of claim 7 wherein the shortest distance d

between each channel and the smaller socket is related to the

shortest distance d' between each channel and the larger socket

according to the formula:

a’ Di, (Pi-Ds Ax) - Di—Ds cw)

a =i t( tele Mae vo. “KW

— A-28 —

where K is a coeffecient having a value of 0.33 + 0.05, where t is

the distance between the bottoms of opposite sockets, where Di

and D, are the widths of the larger and smaller sockets respec-

tively, and where the other values are as indicated in claim 7.

9. An H-frame compression connector having opposite

sockets for the reception respectively of line conductors and tap

conductors, said sockets having smooth concave bottom sur-

faces intervened by a crossbar of metal, said crossbar having in-

dentations at the opposite sides of said crossbar, said indenta-

tions extending lengthwise of the connector and each having a

cross-sectional area of between 4% and 12% of the sum of the

cross-sectional areas of the sockets, whereby said connector is

compressible to the same ultimate cross-section, in the same

compression dies, about conductors whose outside diameters

vary between 100% (minus clearance) and 60% of the width of

said sockets.

U.S. Patent No. 3,322,888.

'© U.S. Patent No. 2,307,216. See Scope and Content of the Prior

Art, infra.

'' U.S. Patent No. 2,707,775. See Scope and Content of the Prior

Art, Infra.

'2 For the details of the prosecution of the Zemels patent, see Al-

torneys’ Fees, infra.

') This finding does not entail that the scope of the prior art is

restricted to design, mechanical, and electrical engineering as those

arts pertain to the problems of electrical compression connectors. The

scope also includes those arts as they pertain to other reasonably

related problems. See Danns v. Johnston, supra, 425 U.S. at 228 (in

determining obviousness issue in case involving data processing

system used in banking industry, Court looked to, inter alia, data pro-

cessing system used in a large business organization); Graham v. John

Deere Co., supra, 383 U.S. at 35 (‘‘[t]he problems confronting [the

— A-29 —

patentee] . . . were not insecticide problems; they were mechanical

closure problems. Closure devices in such a closely related art as pour-

ing spouts for liquid containers are at the very least pertinent

references.’’

'* The drawings that were filed with the application for this patent

are found in Appendix B to this Opinion.

'S The drawings that were filed with the application for this patent

are appended hereto in Appendix C.

'€ U.S. Patent No. 2,938,069. The drawings that were filed with the

application for this patent are appended hereto in Appendix D.

'’ U.S. Patent Number 3,156,764. The drawings that accompanied

the application for this patent are found in Appendix E.

'*§ U.S. Patent Number 3,183,025. The drawings that accompanied

the application for this patent are found in Appendix F.

'? The Toedtman ‘069 patent does not expressly claim the use of a

channel to accommodate the compression of the connector’s body.

However Figure 4 of the drawings that accompanied the application

that led to Toedtman ‘069 discloses that the use of a channel produces

this result. (See Appendix D). Thus, the claim of using the channel to

accommodate the compression of the connector’s body does not

distinguish claim 1 of the Zemels patent from the prior art. Graham v.

John Deere Co., supra, 383 U.S. at 31 n.17 (‘‘While the sealing

feature was not specifically claimed in the [prior art] patent, it was

disclosed in the drawings and specifications. Under long-settled law

the feature became public property. [citation ommitted]’’).

—

20 The Toedtman ‘764 patent placed the channels inside of the

sockets. (See Numbers 16 and 21 of Figure 2, Appendix E). The patent

claimed one of the purposes of such channel to be to ‘‘caus[e] the arms

to bend inwardly at the [socket] bottom and [to] preclud[e] bulging of

said arms in this region.’’ Thus, the idea of the Toedtman ‘764 chan-

nel is to attain the snuggest possible fit between the connector’s socket

and the conductor, and doing so would have entailed accommodating

the compression of the body of the connector.

7! Even if this claimed use of the channel did distinguish claim 1

from the prior art, that use of the channel would not render the

Zemels patent valid. See General Electric Co. v. Jewel Co., 326 U.S.

242, 247 (if A patents x without realizing virtues v of x, B cannot ob-

tain a patent on x on the basis of B’s being the first one to perceive vir-

ture v in x).

22 See supra n.9.

?> Whether or not this difference and the differences to be noted

between claims 4 through 9 and the prior art render the Zemels

patent’s subject matter sufficiently different under Section 103 re-

mains to be discussed. See infra.

24 See supra n.9.

5 See supra n.9.

26 See supra n.9.

2? See supra n.9.

— A-31 —

8 See supra n.9.

?? Plaintiff has argued vigorously that the mathematical formulae

and specifications in Zemels’ claims are inaccurate, misleading, and

useless. I need not consider plaintiff’s argument at this point because I

find that those formulae and specifications, even if they are correct

and helpful, would have been obvious to a reasonable engineer who

set Out to solve the problem of improving the H-frame connector. But

see Attorneys’ Fees, infra.

°° Kearney has argued that another significant effect of the com-

bination in Zemels’ invention is that connectors that comply with

Zemels’ invention are able to pass a particular heat cycle test, allegedly

deemed of critical importance by the utility companies, while no con-

nectors that do not comply with Zemels’ invention can pass that test.

There is record evidence to cast doubt on that claim; however, even if

the claim were conceded, it would be of no help to Kearney. First, the

fact that a Zemels conductor can pass such a test is not a ‘‘synergistic’’

result within the meaning of Sakraida. Second, the claim is not even

available to Kearney at this point in the proceedings because it was not

made in the specifications of the patent. Lincoln Co. v. Stewart-

Warner Corp., 303 U.S. 545, 550 (‘‘No such function . . . is hinted at

in the specifications of the patent. If this were so vital an element in

the functioning of the apparatus it is strange that all mention of it was

omitted.’’) (footnote omitted).

*' The result reached here is not contrary to the doctrine, heavily

relied on by Kearney, that a patent, once issued, is presumed to be

valid. For ‘‘ ‘the most that can be said of the presumption is that it re-

quires that reasonable doubt on the question of validity be resolved in

favor of the patent holder.’’’ Lemelson v. Topper Corp., 450 F.2d

845, 849 (2d Cir. 1971) (quoting Lorenz v. F. W. Woolworth Co., 305

F.2d 102, 105 (2d Cir. 1962)), cert. denied, 405 U.S. 989 (1972). Ac-

cord, Ken Wire & Metal Products, Inc. v. Columbia Broadcasting

System, 338 F.Supp. 624, 629 (S.D.N.Y. 1971), aff'd, 464 F.2d 1393

(2d Cir. 1972) (per curiam). There is no such reasonable doubt here.

Moreover, Kearney’s heavy reliance on the district court opinion in

Plantronics, Inc. v. Roanwell Corp., 403 F.Supp. 138 (S.D.N.Y.

— A-32 —

1975), aff’d, 535 F.2d 1397 (2d Cir.) (per curiam), cert. denied, 429

U.S. 1004 (1976) rehearing denied, 429 U.S. 1079 (1977), is misplaced.

In their dissent from the denial of certiorari, Justices White and Bren-

nan criticized the district court opinion for failing to follow the

Graham guidelines and for relying instead on ‘‘secondary considera-

tions’’ as to the issue of obviousness. 429 U.S. at 1009. More recently,

the Second Circuit, in a case in which it found no need even to reach

the secondary considerations, recognized the importance of the dis-

sent from the denial of certiorari in Plantronics and stated that the

Second Circuit rule is in accord with that dissent. Digitronics, Inc.,

supra, 553 F.2d at 748-49 n.5.

>? The Zemels patent was granted to Carl G. Zemels, who assigned

it to Kearney. The patent was prosecuted by Kearney’s legal staff.

Therefore, although the patent was granted to Zemels, Kearney is

responsible for the conduct that occurred in the prosecution of the

patent.

*> See supra n.2.

— A-33 —

APPENDIX A

al

Mry 30, 1967 - €.G.ZEMELS 3,322,858

. “ COaPRTSSION CONNECTOR .

iied Nay 12, 195€ Sheets-Srtet ?

INVENTOR

CARL G. ZEMELS

2 te

— -- -_

As ae

—

APPENDIX A

May 30, 1$67 C. G. ZEMELS 3,322,888

COMPRESSION Cc SNECTOR

Filed May 12, 1956 2 Sheets-Sheet 2

FIG.3.

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FIG.6.

INVENTOR

CARL G. ZEVELS

"fe A Sct AeaS-

AT TCANEY

— A-35 —

APPENDIX B

Jan. 5, 1943. R. GRAHAM 2,307,216

CONNECTOR

Filed April 21, 1941

MWVVENT OR

Rov C.GHAHAM

a Externe,

ATTORNEY

— A-36 —

APPENDIX C —

idzy 3, 1955 J. D. HOFFMAN ST AL _2,707,773

ELECTRICAL “OMECTORS

Filed Jen. <2, 195}

FiG.?!. FIG. 2

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APPENDIX E

Nov. 10, 1964 J. A. TO OTMAN 3,156,764

: COMPAFSS.RALE FiLccleiCal CONNECTOR

WITH INTERNAL CEPSRNABLE RIBS

Filed March 26, 1962

7A Fema = mm 7

pane Sam! 2 eemmn nt gam :

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-- + ee 6 se oe eee ee

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INVENTOR

JOHN A. TOODTMAN

Sr CoB 2m Fea ell

ATTORNEYS

en

APPENDIX F

May 11, 1965 . Ls. LYNCH, YR. ETAL 3,183,025

" ° CONNECTOR WITH TLMPCRARY CAELE MOLDING MEANS

- * * Filed May 16, 1553 |

ee) PEs oo oo o S wcecdral™

NWVEINTCOUS

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ELCPIOGE

PTR

ATTORNEY

May 30, 1967

Filed May 12, 1966

yan

APPENDIX D

Cc. G. ZEMELS

COMPRESSION COKNECTOR

4,

3,322,888

2 Sheets-Shcet }

ree.

INVENTOR

CARL G. ZEMELS

"fle A

AT TORNEY

Res ae

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fe 0”

—

May 30, 1967 Cc. G. ZEMELS 3,322,888

COMPRESSION CONNECTOR

Filed May 12, 1966 2 Sheets-Sheet 2

INVENTOR

CARL G. ZEMELS

“cM Suastata

ATTORNEY

— .

UNITED STATES PATENT OFFICE

CERTIFICATE OF CORRECTION

Patent No. 3,322,888 May 30, 1967

Carl G. Zemels

It is hereby certified that error appears in the above numbered

patent requiring correction and that the said Letters Patent

should read as corrected below.

Column 4, line 5, for ‘‘.025 + 15% C/b’’ read—.020 + 15%

(C/b)—; column 5, line 10, strike out ‘‘with the width of the da-

jacent socket. The lips 6 and 8’’ and insert instead—Socket 2

has lips 5 and 6. Socket 3 has lips 7 and 8.—; line 14, for ‘‘lines’’

read—lips—; column 6, line 4, for ‘‘requirements’’ read—re-

quirements—.

Signed and sealed this 27th day of February 1968.

(SEAL)

Attest:

Edward M. Fletcher, Jr. - EDWARD J. BRENNER

Attesting Officer Commissioner of Patents

— A-43 —

UNITED STATES PATENT OFFICE

3,322,888

Patented May 30, 1967

3,322,888

Compression Connector

Carl G. Zemels, St. Louis, Mo., assignor to Kearney-Na-

tional Inc., St. Louis, Mo., a corporation of Delaware

Filed May 12, 1966, Ser. No. 549,667

9 Claims. (Cl. 174—94)

This application is a continuation-in-part of my co-pending

application Ser. No. 378,919, filed June 29, 1964, now aban-

doned.

This invention relates to compression fittings used on electric

overhead conductors for making a connection between a line

conductor and a tap, and particularly to such fittings which are

adapted to accommodate a range of conductor sizes.

Compression type connector fittings of the general type refer-

red to are disclosed in the patent to Hoffman et al., 2,707,775,

and are commonly termed ‘‘H-frame’’ connectors, and are

made of ductile metal such as ‘‘dead soft’’ aluminum (i.e., no

harder than about Rockwell H 25) or Electrolytic ‘‘tough pitch’’

copper (99.9% pure) having a hardness no greater than about

Rockwell F 45. Such fittings have a generally oval cross-

sectional shape with two conductor receiving sockets located,

respectively, at the opposite ends of the major axis of the oval.

At least one, and usually both, of the sockets is U-shaped, and

opens outwardly for ready reception of a conductor inserted

radially. The U-shaped sockets have a curved bottom wall, and

relatively parallel side walls spaced sufficiently to easily receive a

conductor of the maximum diameter intended to be used in that

particular socket. Usually, one of the sockets is larger than the

other—the larger one for accommodation of the ‘‘line’’ conduc-

tor, and the smaller one for the tap conductor (which is seldom

.as large as the line conductor).

— oo

In practice, a connector is placed on a line conductor in-

termediate its length, with the larger socket astride the line con-

ductor, and the smaller socket astride the tap conductor. The

conductors are caged in the respective sockets by a suitable

means, such as bendable members which may be bent over the

open mouth of each socket. A compression tool with opposite

relatively movable jaws is used to compress the metal of the fit-

ting onto each conductor simultaneously. This tool is operated

either manually or from a suitable power source, and carries a

pair of reversely oriented, but usually identical, die pieces, one

in each of a pair of movable jaws. In the common hydraulically

powered tool, the respective die pieces are forced toward each

other in parallel (and colliding) paths, while in the common

manually powered tool, the die pieces are forced toward each

other on arcuate (and colliding) paths which, during the com-

pression stage, depart from parallel but slightly. The tool is

placed on the fitting so that the respective die pieces embrace

opposite sockets of the connector (and encaged conductors).

The die pieces are then forcibly brought together to compress

the fitting about the conductors, and into conformity with the

composite internal contour of the die pieces when they have

reached the limit of their movement toward each other. When

the tool is manually operated, there is a practical limit to the

force for operating the handles. It may take several separate ap-

plications of the manual tool at different positions along the fit-

ting to complete the compression operation, but at each applica-

tion, the increment of fitting embraced by the die pieces is con-

formed to an exterior profile corresponding with the composite

internal contour of the die pieces when they have reached the

limit of their movement.

The compression fitting is usually made of a ductile metal

(aluminum or copper alloy), which metal will flow under the

pressure developed between the die pieces so as to conform the

sockets with the outside shape of the conductors in the sockets

when the dies are fully closed, i.e., when nearly brought into

— |

abutment with each other. The die compression changes the

shape of the fitting, and during this change in shape, the metal,

in excess of that necessary to fill the die cavity (at the limit of the

compression stroke), flows into the sockets and elsewhere.

Bearing in mind that, for practical purposes, each connector

socket must be adapted to accommodate conductors whose out-

side diameters vary a few percent, it will be understood that the

amount of socket lip metal which must be moved into a socket

by the die compression depends upon the size of the conductor

in that socket at the time of compression. With a given fitting,

smaller conductors require the movement of more lip metal into

the socket than do larger conductors, in order to obtain good

mechanical and electric characteristics; and larger conductors

require the movement of more metal than do smaller conduc-

tors, but the excess must go somewhere other than into the socket

if, as is desirable, particularly with manually powered tools, the

dies be closed to the limit of their movement, regardless whether

the conductors in the sockets are at maximum or at minimum

size. Otherwise, with a manually operated tool, there is no

assurance that the requisite compression has been applied.

Now it can be readily appreciated that if the conductor is

smaller in diameter than the socket is intended to accommodate,

it is likely that such under-size conductor will not be gripped

tightly when the fitting is compressed. With such an under-size

conductor, in order to produce enough metal flow in the fitting

to force the metal completely around the conductor, either the

die cavities have to be smaller to produce a greater reduction

and a greater metal flow, or the socket in the compression fit-

ting has to be made smaller so that less metal is required to flow

into surrounding relation with the conductor which requires

that smaller die pieces be used. If the die is made smaller, then,

of course, this die would be unsuitable for use on the fitting

when a larger conductor is in the socket. On the other hand, it is

impractical to require the use of more than one size die on a

given size connector, and if the cavity in a given die is large

— A-46 —

enough to close about its corresponding connector with the

maximum intended size conductor in its socket, it may not move

enough metal into the socket when occupied by the minimum

intended size conductor. Thus, there has been a rather narrow

limit to the range of conductor sizes which can be accom-

modated in a given H-frame connector or fitting without

mutilating the socket interiors or breaking away surplus metal.

It is one of the objects of this invention to provide an

H-frame compression type fitting for use in connecting conduc-

tors in electric line installations, which fitting may be com-

pressed, without requiring unreasonable effort, to the final con-

tour of the same die set about any of a relatively wide range of

sizes of conductors.

In previous efforts to increase the conductor accommodation

range of H-frame conductors, the ‘‘wrap-around’”’ of the socket

lips about the conductors in the sockets—particularly the

smaller socket—has been erratic unless removable parts were

resorted to. Hence, it is a further object of the invention to

assure adequate wrap-around of both conductors during the

stages of compression (at a given cross-section) prior to the

movement (at that cross-section) of a substantial part of the

connector metal elsewhere than into the sockets.

Generally stated, the invention achieves both of the aforesaid

objectives by the provision of a void in the body of metal which

intervenes opposite conductor receiving sockets; and regulating

the location and magnitude of such void to control and accom-

modate the movement of connector metal sequentially during

the compression operation, so that wrap-around of the conduc-

tors by the lips of both sockets is assured before cold-flow oc-

curs, to any appreciable extent, between other increments of the

connector cross-section under compression. The contemplated

location of the void within said intervening body of metal is

essentially such as to create a greater constriction in the connec-

tor metal at the root ends of their thicker socket lips than at the

— Ye

root ends of their thinner socket lips—it being understood that

to maintain uniformity of profile about the socket lips, the

larger socket customarily has thicker lips than does the smaller

socket. For connector fittings of conventional design, the loca-

tion of the void, in accordance with the present invention, may

be more simple expressed as: d is less than a’, where d is the

shortest distance between the void and the smooth interior wall

of the smaller socket; and d’ is the shortest distance between the

void and the smooth interior wall of the larger socket.

The void contemplated by the present invention may be either

on the inside or the outside of the body of metal which in-

tervenes the opposite conductor receiving sockets, and can be

formed during the process of extruding the stock from which

the individual fittings are subsequently to be cut. Whether the

void is in the form of opposite external indentations or in the

form of one or more internal holes, it preferably extends from

end to end of the fitting substantially parallel to the axes of the

respective conductor receiving sockets, but substantially spaced

from the concave surfaces of the sockets which are ultimately to

be continguous with conductors. Such voids provide a major

constriction in the body of metal which intervenes the sockets,

and such major constriction delineates two pairs of minor con-

strictions located, respectively, between the body of the metal

which intervenes the sockets and the several bodies of metal

which constitute socket lips.

The magnitude of the void, or voids, which produce the

aforesaid major constriction does not affect the function or

operation of the constrictions, save to the extent that finite

dimensions of the void determine the terminl (at one end) of the

constrictions, ‘but the magnitude of the voids must be main-

tained sufficiently low that a void does not defeat the purpose

of adjacent minor constrictions by permitting cold-flow of

metal from socket lips before metal from the same socket lips

has wrapped around the conductors in the sockets. On the other

hand, it will be understood that when each conductor receiving

—

socket of a given connector is being occupied by conductors of

the maximum size which they will accommodate respectively,

the maximum amount of metal is required to be moved by cold-

flow from the socket lips to other portions of the connector. A

substantial amount of this cold-flow will take place endwise of

the connector, but the balance of it must be accommodated by

the aforementioned voids if, as is desired, the ultimate profile to

which a connector is compressed is the same when occupied by

conductors at either end of its size range of accommodation.

For example, the cross-sectional area of the void (e.g., the sum

of the cross-sectional area of two exterior indentations) is

preferably between 15 and 35% of (A-A’ + B-B’), where A and

A’ are, respectively, the cross-sectional areas of the maximum

and minimum size conductors usable in one socket, and B and

B’ are, respectively, the cross-sectional areas of the maximum

and minimum size conductors usable in the other socket.

Substantially the same finite cross-sectional area of the void can

be arrived at, without specifically involving conductor size

range, if it be assumed that the connector is designed to accom-

modate, in each socket, conductors whose diameter is as small

as about 60% of the socket diameter. Given that assumption,

and the additional assumption that the interior surface of

neither socket is undulated, the preferred cross-sectional

magnitude of the void is the sum of the cross-sectional areas of

two exterior indentations or side channels, and may be arrived

at by using the following equations for calculating the cross-

sectional area (b xh) of each side channel:

h=.020 + 15% (C/B)

b=.150 + 15% (W)

where C is the cross-sectional area of the connector including

the side channel areas (but not including the socket areas),

said cross-section being normal to the axes of the sockets;

where W is the width (i.e., the dimension perpendicular to a

plane including the axes of both sockets);

— Ado —

where b is the average depth (i.e., in the dimension parallel to

W) of a side channel;

and where #/ is the average height (i.e., in the dimension perpen-

dicular to b in the plane of the cross-section) of a side

channel.

More empirically, when the conductor is of the general design

shown in the accompanying drawing, and it is desired to accom-

modate conductors which vary in outside diameter from 100%

(minus clearance) of the socket width to about 60% thereof, the

cross-sectional area of the void can be determined, for practical

purposes, as between about 4% and about 12% of the sum of

socket areas, the percentage being toward the upper limit as the

difference between the respective socket areas becomes greater,

and as the difference between the maximum and minimum size

conductors to be accommodated in a socket becomes greater.

The embodiment of the invention hereinafter described has

the usual H-frame construction with conductor receiving

sockets at opposite ends of the major diameter, and is provided,

at the crossbar area, with voids in the form of exterior channels

whose combined cross-section approximates twice the product

of b times A aforesaid. These channels are preferably so de-

signed and located in the body of the fitting as to resist compres-

sion by the dies until after the conductor receiving sockets have

completely closed about the respective conductors. Any subse-

quent further movement of the dies to completely close, then

closes the side channels to the degree necessary to compensate

for size (above minimum) of the conductors in the respective

sockets. When the channels, or other form of void, are located

in the crossbar zone between the bottoms of the sockets, then

the spacing of the conductor receiving sockets will be decreased,

during compression of the channels, in a degree determined by

the size of the conductors above minimum within the range for

which the connector is intended.

— <n

Other objects and advantages of this invention will appear

from the following detailed description which is in such full,

clear and concise terms as to enable any person skilled in the art

to make and use the same when taken in conjunction with the

accompanying drawings, forming a part thereof, and in which:

FIGURE 1 is a view in perspective showing one end and one

side of a compression type electric fitting constructed in accor-

dance with this invention;

FIGURE 2 is an end view in full lines of the fitting shown in

FIGURE 1, with broken lines indicating a fitting of the same

size which is of standard configuration for comparison

purposes;

FIGURE 3 is a view similar to FIGURE 1 illustrating the

relative position of the parts of the fitting when applied to con-

ductors of minimum size in the range of diameters to which the

fitting is applicable;

FIGURE 4 is a view of the fitting shown in FIGURE 3 after

being compressed by full closing of the dies;

FIGURE 5 is a view similar to FIGURE 1 illustrating the

relative position of the parts when the fitting is applied to con-

ductors of larger size in the range of diameters to which the fit-

ting is applicable; and

FIGURE 6 is an end view of the fitting shown in FIGURE 5

after being compressed by closing the dies of the same size as

shown in FIGURE 4.

One embodiment of this invention and how it operates is

schematically illustrated in the accompanying drawings. With

reference to FIGURE 1, the H-frame type compression type

electric fitting therein shown has a body 1 of ductile metal, such

as aluminum or copper. Preferably, the body is part of an extru-

sion of indefinite length cut at spaced intervals into fittings of

suitable length. The body 1 is extruded with oppositely opening

— A-51 —

conductor receiving sockets 2 and 3 formed between opposed

lips, with the width of the dajacent socket. The lips 6 and 8

These sockets are usually of different width and depth to ac-

commodate a different size range of conductor diameters, and

the thickness of the lips varies inversely with the width of the ad-

jacent socket. The lines 6 and 8 carry bendable tabs 11 and 12,

respectively. The fitting is constructed externally so as to be

generally rounded, but preferably not of exactly the same con-

tour as the dies with which it is to used, on the lips 5 and 6, as

well as 7 and 8. Between the lips 5 and 7, and 6 and 8, the exter-

nal sides of the body 1 are generally flat and have the channels

14 and 16 formed therein. Only one pair of channels is shown,

but it should be understood that several narrow channels are

regarded as the equivalent of one wide channel.

FIGURE 2 shows, in full lines, the outline of a fitting, such as

that in FIGURE 1, and, in dotted lines, a standard fitting of

comparable size. The difference intended to be emphasized here

is not only the presence of outside channels 14 and 16, but also

the difference in depth of the sockets 2 and 3 as compared with

those of a standard fitting of the same size. It will be readily ap-

parent that, absent the channels 14 and 16, there is more metal

in the body 1 shown in full lines than in the body outlined by

broken lines. Comparison also will reveal that the open channels

14 and 16 reduce the amount of metal in the body 1 so that it is

roughly comparable to the amount of metal in a standard fitting

of the same size.

The ‘‘socket area’’ herein referred to is the C-shaped space

embraced by the lips § and 6 for socket 2, and embraced by lips

7 and 8 for socket 3. The outward extremity of each ‘‘socket

area’ is a straight line tangent with the tip of lip 5 or 7 and

parallel with dimension W.

FIGURE 2 also shows the location of dimensions herein-

before designated b, h and W, as well as indicating that the

shortest distance d’ from a channel 14 or 16, to the bottom of a

— A-52 —

socket 2 is greater than the shortest distances d from either

channel to the smaller socket 3. FIGURE 2 also identifies the

dimensions D:, Ds and ¢, which are involved in arriving at the

optimum finite ratios of d’/d according to the equation:

a’ Di, (Pr—Ps

De’ x

KW) (Di—Da,, ¢ )

da t t Ww —t

xKW

where K is a coeffecient having a value of 0.33 (+0.05).

It should be understood that the usual compression dies used

on fittings of this type have part cylindrical cavities of constant

radius. These dies are usually used in the jaws of a hand

operated tool which is constructed with stops to limit closing so

that the dies do not come into contact with each other at fully

closed position.

Since a fitting of standard size has a certain amount of metal,

it will be obvious that to fully close the dies on fittings by a

manual operated tool using the same size dies will require more

effort as the size of the conductors in the sockets is increased.

Conversely, full closing of the dies will produce less total flow in

the metal of the fitting as the size of the conductors in the

sockets is decreased, because more of the socket lip metal comes

to rest as ‘‘wrap-around’’ of the conductor in the socket than

the same socket can accommodate when it is occupied by a

substantially larger conductor.

Smaller conductors require the movement of more metal into

the socket than do larger conductors, in order to obtain good

mechanical and and electric characteristics. These conflicting re-

quirements have effectively blocked full realization of versatility

in the respects mentioned. As illustrated in the succeeding views

of the drawings, however, a fitting based upon the concept here

disclosed meets all of the requirements, and, at the same time,

extends the size range of conductor diameters accommodated

by the fitting without using a variety of different sized dies.

— A-53 —

In FIGURE 3, a fitting is shown applied to conductors of the

minimum intended diameter. The diameters of the conductors

19 and 20 are much smaller than the width of the sockets 2 and

3, respectively. Tabs 11 and 12 are next bent over by finger

pressure to hold the conductors 19 and 20 in place. Thereafter,

the fitting 1 is compressed in a pair of dies 22 and 24 with

cavities of constant radius, as above described. During the com-

pression, lips 5 and 6, 7 and 8, fold inwardly, and there is a flow

of metal due to the fact that the dies fill during closing. This

flow of metal causes the metal of the fitting to enter between

wires of the conductors 19 and 20 to form the desired joint or

connection between conductors. It will be observed that there is

sufficient metal to fill the dies 22 and 24, and that no ap-

preciable contraction of channels 14 and 16 has taken place.

In FIGURE 5, the same size fitting as in FIGURE 3 is shown

applied to conductors in the maximum intended diameter. In

other words, conductors 26 and 28 have a diameter correspond-

ing to socket width, and, of course, conductors 26 and 28,

because of their larger diameter, have much more metal than

conductors 19 and 20. After tabs 11 and 12 are pushed in by

finger pressure to hold the conductors 26 and 28, then the com-

pression tool is applied, and the fitting 1 compressed by fully

closing the same dies 22 and 24. During this operation, lips 5, 6,

7 and 8 are wrapped around the conductors—the wrap-around

of lips 5 and 6 proceeding faster than the wrap-around of lips 7

and 8. After the wrap-around phase of the operation is com-

pleted, or substantially so, further die pressure causes the metal

of the fitting to flow into and between the exterior strands of

conductors 26 and 28, and also—because conductors 26 and 28

are at or near the maximum within the size range accom-

modatable by the connector—causes flow from the lips into the

strut-like crossbar of body 1 between channels 14 and 16, and

when the dies are fully closed, channels 14 and 16 have closed

almost fully as shown in FIGURE 6. This decreases the spacing

between conductors 26 and 28. Thus, as the size of the conduc-

—

tors increases from the minimum toward the maximum within

the accommodatable size range, channels 14 and 16 are closed

increasing amounts, but, at each cross-section under compres-

sion, the flow of metal is sequential first to wrap the lips around

the conductors, and then otherwise, e.g., from the lips toward

the socket intervening crossbar, from the latter into the side

channels, and endwise out of the increments undergoing

compression.

The relationship of d’ ®d tends to restrain the flow of metal

from the lips into the socket intervening crossbar until after the

lips of both sockets have wrapped around their respective con-

ductors. Otherwise, once the thin lips (about the larger socket)

have wrapped about their conductor, the void (formed, for ex-

ample, by the side channels) is likely to collapse before the thick

lips (about the smaller socket) have sufficiently wrapped around

their conductor to assure an efficient connection. It is the loca-

tion rather than the finite magnitude of the void which so con-

trols the sequence of metal flow.

On the other hand, the finite magnitude of the void controls

the facility with which the connectors can be compressed to the

limit of their appropriate die set without regard to whether the

encaged conductors are at one extreme or the other of the range

of sizes accommodatable by the connector.

An illustrative example of the finite dimensions of the various

parts of a typical connector made in accordance with the present

invention is as follows:

Bs bck ns ken ee he ee ee een ae 0.58

BP ch kn kee SERS Seek eA eer ere 0.39

MPT ETE PRET ere eres tere ee waeves 0.40

MES vie ain oh RE ale eae he es Oe. Svsecess 0.885

oad alae pata eer ee cane ie ees ee ee 0.255

60a a ER Ce eA ET Ce ere 0.35

MRCOG E CO OC OCS E OE ae 0.14

OTE CEES EE CoC Ee BL Eee re 0.11

POM CP Tee TE EET Teter” square inches ........ 0.705

Such a connector is efficiently usable with line conductor in

socket 2 varying from an outside diameter of 0.461 inch up to

within a few thousandths (clearance) of 0.58 inch; and with tap

conductor in socket 3 varying from an outside diameter of 0.25

inch up to within a few thousandths (clearance) of 0.39 inch.

The improvement in size versatility or range of conductor

sizes obtained by redistribution of metal in a fitting as above

described is not the only advantage of this invention. For in-

stance, the fitting would have little sales appeal or utility if the

die pressure needed exceeded the strength of the lineman

operating the manual tool. In this respect, this invention also ex-

ceeds expectations because comparative tests have shown that a

standard H-frame connector (Kearney 348-81) requires over

eighty pounds of manual force on the tool handles in order to

fully close the dies during each tool application to the fitting

with a 4/0 ACSR conductor in one socket, and 1/0 str. com-

pressed conductor in the other. These are the largest conductor

sizes for the fitting which is shown outlined in broken lines in

FIGURE 2. Tests of the fitting shown in full lines have shown

that during each tool application to the fitting with the same size

conductors, the manual force on the tool handles required never

exceeded seventy pounds. In fact, the force required for the first

stroke of the tool was about sixty-eight pounds, and thereafter

it decreased for subsequent strokes to about fifty-one pounds.

—.

Changes in and modifications of the constructions described

may be made without departing from the spirit of my invention,

or sacrificing its advantages.

Having thus described the invention, what is claimed and

desired to be secured by Letter Patent is:

1. In a compression connector of the character described

having oppositely disposed conductor-receiving sockets, one of

said sockets being of larger cross-sectional dimension than the

other, and a body of ductile metal extending crosswise of said

connector between said sockets, the improvement which com-

prises, said crosswise extending body of metal having a void

therein for accommodating compression of said body to shorten

the distance between said sockets, said void being located in

spaced relation with both sockets and substantially closer to the

smaller socket than to the larger socket.

2. The connector of claim 1 wherein the cross-sectional area

of the void is between 0.034 and 0.046 of the cross-sectional

area of the connector including the void but excluding the

socket space.

3. The connector of claim 1 wherein the void delineates con-

strictions in said crosswise extending body, said constrictions

extending from said void to each of said sockets, and the con-

strictions extending to the larger socket are of greater length

than the constrictions extending to the smaller socket.

4. In a compression connector of the character described

having oppositely disposed conductor receiving sockets, each of

said sockets being proportioned to receive conductors whose

outside diameters vary between a maximum and a minimum,

and a body of ductile metal extending crosswise of said connec-

tor between said sockets, the improvement which comprises:

said body having a void substantially spaced from said sockets

and extending for the full length of said body, and said void

having a cross-sectional area of between 0.034 and 0.046 times

—*

the cross-sectional area of the connector including the void but

excluding the socket space.

5. The improvement of claim 4 wherein said void is open to

the exterior of said connector.

6. The improvement of claim 4 wherein said void is

delineated by channels on the exterior of said body at opposite

sides of the connector.

7. The connector of claim 6 wherein the average dimension h

of said channels in the direction parallel to a plane including the

axes of both sockets is

0.0200 + 15% (C/B)

and the average dimension b thereof in the direction perpen-

dicular to said plane is

0.1500 + 15% (W)

where W is the dimension of the connector parallel to b and C is

the cross-sectional area of the connector including the channels

but excluding the socket space.

8. The connector of claim 7 wherein the shortest distance d

between each channel and the smaller socket is related to the

shortest distance d’ between each channel and the larger socket

according to the formula:

fo De (Pe Po, & KW" — (Pass ge)

ad Ds =r * KW

where K is a coefficient having a value of 0.33 +0.05, where ¢ is

the distance between the bottoms of opposite sockets, where Di

and Ds are the widths of the larger and smaller sockets respec-

tively, and where the other values are as indicated in claim 7.

— A-58 —

9. An H-frame compression connector having opposite

sockets for the reception respectively of line conductors and tap

conductors, said sockets having smooth concave bottom sur-

faces intervened by a crossbar of metal, said crossbar having in-

dentations at the opposite sides of said crossbar, said indenta-

tions extending lengthwise of the connector and each having a

cross-sectional area of between 4% and 12% of the sum of the

cross-sectional areas of the sockets, whereby said connector is

compressible to the same ultimate cross-section, in the same

compression dies, about conductors whose outside diameters

vary between 100% (minus clearance) and 60% of the width of

said sockets.

References Cited

| UNITED STATES PATENTS

3,156,764 Hi/ISG4 =Toediman = ......5...... 174—94

3,183,025 ee. ee ee 174—94 X

LEWIS H. MYERS, Primary Examiner.

D. L. CLAY, Examiner.