National Connector Corp. v. Malco Manufacturing Co.

392 F.2d 766, 157 U.S.P.Q. (BNA) 401
CourtCourt of Appeals for the Eighth Circuit
DecidedApril 11, 1968
DocketNos. 18705, 18706
StatusPublished
Cited by7 cases

This text of 392 F.2d 766 (National Connector Corp. v. Malco Manufacturing Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eighth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
National Connector Corp. v. Malco Manufacturing Co., 392 F.2d 766, 157 U.S.P.Q. (BNA) 401 (8th Cir. 1968).

Opinion

LAY, Circuit Judge.

The defendant National Connector Corporation (hereinafter called National) is charged by the plaintiffs (although more than one, hereinafter called Maleo) with infringement of two United States Letters Patent Nos. 2,995,617 and 3,086,074, relating to electrical connectors.1 The district court held patent ’617 valid as to certain claims and found that National had infringed this patent in its types A and B series connectors, but not with its type C connector. In No. 18,705, National appeals the judgment of validity of patent ’617, as well as the finding of infringement. In No. 18,706, Maleo has cross-appealed the rejection of its claim of infringement by National’s type C and likewise complains of the court’s finding that patent ’074 was invalid and additionally, of the finding that it was not infringed by National. In the judgment below Maleo was awarded an accounting to ascertain damages. This action was stayed pending this appeal.

[768]*768We find it unnecessary to discuss the claim of patent misuse and the various claims of infringement. We affirm the trial court’s finding of invalidity on the ’074 patent, and reverse as to the ’617 patent, finding as a matter of law both patents obvious under 35 U.S.C. § 103.

MAXIMOFF ’617 PATENT.

This patent is basically described by its title as a “Self-Locking Terminal.” It consists of a metal contact or pin, inserted in a base plate (metallic) through a hole, held by a sleeve, sometimes called a bushing. It is described as a “feed through” terminal, which allows the flow of electrical impulses into multiple connections. The function of a very simple terminal connector may be visualized with the ordinary light plug. The utility of multi-contact terminal connectors becomes readily apparent in the twentieth century world of electronics. A means is thus provided for thousands of individual electrical connections through the use of a unitary terminal. As plaintiffs urge, the multi-contact terminal connector is the “heart” of the modern day computer, telecommunications systems and similar advanced electronic technology. For illustration, plaintiffs’ plate-type connectors have been adopted by the United States Navy for the Polaris Missile program.

Maleo first developed its “self-locking terminal” in 1957. It urges that it made possible the later development of its large “plate-type” terminal connectors, now used in the Polaris program. Contemporaneously, in 1960, Gardner-Denver Company developed a machine for automatically wiring a large, plate-type panel of terminal connectors. Thereafter, commercial success and utility were found for the plate-type connectors. The fabrication of these plates is considered by Maleo to be a “trade secret.”

Prior to the development of Malco’s plate, molded block terminal connectors enjoyed exclusive commercial utility by computer manufacturers. It is pointed out that these blocks present many deficiencies which make them inferior to Malco’s plate-type connectors. Efficiency, utility, flexibility and economy summarize the detailed arguments of improvement. Maleo contends the rapid commercial acceptance of the plate-type connector demonstrates the obvious superiority between the two. These facts are deemed relevant by Maleo since they argue that the plate-type connectors were made possible by development of the ’617 self-locking terminals. Malco’s evidence relates that the specific advantages of the “self-locking” terminal are rigidity of retention, low insertion forces, inherent straightening, elimination of manufacturing tolerances upon final assembly, inherent axial resiliency, capacity for extreme density of terminal contact pattern, flexibility for circuitry changes and versatility for prototype design of complex electronic systems.

It is urged that the novelty of the ’617 terminal is in the “self-locking” concept. Maleo claims that prior art employed locking barbs or other locking means of the contact pin within the plate. Maleo urges that the “uniqueness” of the ’617 patent is that it incorporates a flat or rectangular pin larger than the “aperture of the sleeve.” When the pin is driven into the sleeve a “laterally opposed pressure locking force is imparted at laterally opposed positions.” Thus the sleeve grips the two opposite sides of the plate aperture which rigidly holds the contact pin. This is referred to as an “opposed pressure interference fit.”

In simplification, we quote from Malco’s opening statement to the trial court, “ * * * so what we are talking about here is driving a square peg in a round hole. * * * ” And as counsel added, the essential difference is that the prior art “ * * * shows round terminals in round sleeves in round holes.”

The trial court found the ’617 patent not anticipated by the prior art, and held the patent valid under § 103 relying upon (1) the immediate “phenomenal” commercial acceptance with the country, (2) the long-felt need and (3) the unexpected advantages and results flowing from its development. Cf. United States [769]*769v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

The basic issue, assuming novelty and utility established, concerns “obviousness” under § 103. This necessitates inquiry into (1) the determination of the scope and content of the prior art, (2) the ascertainment of the difference between the prior art and the claims under ’617, (3) “the background skill of the calling,” and (4) the existence of so-called “subtests” or collateral indicia of “nonobviousness.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). However, “subtests” cannot become persuasive if prior art anticipates or otherwise makes obvious the attributes of the improvement involved.

Thus, in Calmar, Inc. v. Cook Chemical Co., decided together with Graham, supra at 26, 86 S.Ct. 684, 15 L.Ed.2d 545, although the patented device fulfilled a long-felt need and found great commercial success, nevertheless, these factors did not tip the scales of patentability where the improved art was found to be a “nontechnical” difference. See also Kell-Dot Industries, Inc. v. Graves, 361 F.2d 25 (8 Cir. 1966).

The prior art in the present case included electrical connectors described as the British, No. 641,917, Carlson, No. 2,919,300 and Clark, No. 2,744,812 patents. All of these utilized round pins in round sleeves, providing hermetic seals. Maleo distinguishes the British patent as having a “conventional circumferential press-fit.” In the Clark and Carlson patents there is no gripping effect involved, since the pin is the same size as the aperture. It is further argued that none of these patents features the non-round pin of the '617 patent.

And, Maleo urges that ’617 involves a different technique. The claim is made that all of the many advantages of the self-locking terminal flow from the new concept of “opposed pressure interference fit.” Maleo contends this is necessarily distinguishable from the prior art and any of its obvious potentialities. It is contended that this is made possible by the novel use of a flat terminal pin, called a “non-round gripping shank” in a sleeve and aperture of smaller dimension.

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392 F.2d 766, 157 U.S.P.Q. (BNA) 401, Counsel Stack Legal Research, https://law.counselstack.com/opinion/national-connector-corp-v-malco-manufacturing-co-ca8-1968.