Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Limited
[2001] FCA 1359
•26 SEPTEMBER 2001
FEDERAL COURT OF AUSTRALIA
Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Limited [2001] FCA 1359
PATENTS – claimed invention relating to electrical connector – principles of construction applicable to the claims – “tongues … formed on opposite walls of passageway in a plane approximately perpendicular to the axis of the passageway” – “means for affording deflection of tongues”.
PATENTS – alleged infringement of claims in patent by respondent’s electrical connector – whether respondent’s connector possessed all essential integers of the claim – significance of copying of aspects of patentee’s product.
PATENTS – invalidity – want of inventive step – uninventive skilled worker – whether such a worker can be a team – nature and extent of common general knowledge – whether idea of combining wire retention and strain relief was obvious – whether combination of integers for electrical connector was obvious.
Patents Act 1952 (Cth), ss 40, 100(1).
Patents Act 1990 (Cth), ss 7, 13(1), 18(1), 40, 138(3), 230, 233, 234.NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, followed.
Aktiebolaget Hassle v Alphapharm Pty Ltd [2000] AIPC 91-636, followed.
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, cited.
Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, followed.
Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385, cited.
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, cited.
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588, cited.
Catnic Components Ltd v Hill & Smith Ltd (1981) 7 FSR 60, cited.
Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460, cited.
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461, cited.
Fellows v Thomas William Leech Ltd (1917) 34 RPC 45, cited.
Walker v Alemite Corporation (1933) 49 CLR 643, cited.
Electrical and Musical Industries Ltd v Lissen (1939) 56 RPC 23, cited.
Dudgeon v Thomson (1877) 3 App Cas 34, cited.
Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd (1988) 81 ALR 79, cited.
Rodi and Wienenberger AG v Henry Showell Limited [1969] RPC 367, cited.
Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079, cited.
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160, cited.
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, cited.
Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961) 35 ALJR 212, at 218, cited.
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225, cited.
Allsop Inc v Bintang Ltd (1989) 15 IPR 686, cited.
Cooper Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 6 IPR 545, cited.
The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457, cited.
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491, cited.
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253, cited.
Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd (1977) 141 CLR 305, cited.
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171, cited.
Acme Bedstead Co Ltd v Newlands Brothers Ltd (1937) 58 CLR 689, cited.
Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co (1928) 45 RPC 413, cited.
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, cited.
Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205, cited.
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252, cited.
Vickers, Sons & Co Ltd v Siddell (1890) 15 App Cas 496, cited.
RD Werner & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679, cited.
Blakey & Co v Latham & Co (1889) 6 RPC 184, cited.
Beecham Group Limited’s (Amoxycillin) Application [1980] RPC 261, cited.
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173, cited.
Morgan & Co v Windover & Co (1890) 7 RPC 131, cited.
Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels plc (1993) 26 IPR 565, cited.MINNESOTA MINING & MANUFACTURING COMPANY v TYCO ELECTRONICS PTY LIMITED
N 723 of 1999SACKVILLE J
SYDNEY
26 SEPTEMBER 2001
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 723 OF 1999
BETWEEN:
MINNESOTA MINING & MANUFACTURING COMPANY
APPLICANTAND:
BETWEEN:
AND:
TYCO ELECTRONICS PTY LIMITED
RESPONDENTTYCO ELECTRONICS PTY LIMITED
CROSS-CLAIMANTMINNESOTA MINING & MANUFACTURING COMPANY
CROSS-RESPONDENTJUDGE:
SACKVILLE J
DATE OF ORDER:
26 SEPTEMBER 2001
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The respondent/cross-claimant bring in short minutes of order within fourteen days to give effect to these reasons for Judgment.
2.The respondent/cross-claimant file and serve written submissions as to costs within fourteen days.
3.The applicant/cross-respondent file and serve its written submissions as to the form of orders and costs within fourteen days of the filing and service of the respondent/cross-claimant’s short minutes of order and submissions.
4.The matter be re-listed on a date to be notified to the parties.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 723 OF 1999
BETWEEN:
MINNESOTA MINING & MANUFACTURING COMPANY
APPLICANTAND:
BETWEEN:
AND:
TYCO ELECTRONICS PTY LIMITED
RESPONDENTTYCO ELECTRONICS PTY LIMITED
CROSS-CLAIMANTMINNESOTA MINING & MANUFACTURING COMPANY
CROSS-RESPONDENT
JUDGE:
SACKVILLE J
DATE:
26 SEPTEMBER 2001
PLACE:
SYDNEY
REASONS FOR JUDGMENT
THE PROCEEDINGS
The applicant (“3M”), a corporation incorporated in Minnesota in the United States of America, is the registered proprietor of Australian Letters Patent No 624486 (the “Patent”) for an invention entitled “A Connector for Cables”. 3M is part of a group of companies (“3M Corporate”) operating throughout many areas of the world. The Patent is related to a connector for insulated conductors such as cables, particularly electrical communication cables. It was applied for on 14 March 1990, laid open to public inspection on 18 October 1990 and granted on 11 June 1992. The priority date of the Patent is 14 April 1989, by reason of a patent application filed in Germany on that date.
The respondent (“Tyco”) is a distributor in Australia of a product known as the AMP Stack Mark IV 10-Pair Connector Module (the “Tyco connector”). 3M claims that Tyco has infringed its Patent, in particular claims 1, 4, 6, 8 and 9. Tyco admits doing and threatening to do acts which would constitute infringement of 3M’s exclusive right to exploit the invention if the Tyco connector is held to infringe any of the claims of the Patent. In particular, Tyco has sold or disposed of, or offered to sell or dispose of, the Tyco connector by successfully tendering to supply connector modules to Telstra Corporation Ltd (“Telstra”).
Tyco says, however, that the Tyco connector lacks several of the essential integers of claim 1 of the Patent. Since it is common ground that claims 4, 6 and 8 are dependent on claim 1, Tyco says that none of claims 4, 6 or 8 has been infringed, regardless of whether the Tyco connector has the additional integers introduced by those claims. Claim 9 is an omnibus claim and Tyco contends that the Tyco connector lacks a number of the distinctive features of the claim 9 connector.
Tyco, by its amended cross-claim, seeks orders for revocation of the Patent. Its amended particulars of invalidity contend that the claimed invention is not a patentable invention and is liable to be revoked, on the following grounds:
(i)The invention as claimed in each of claims 1, 4, 6, 8 and 9 was obvious in the light of the common general knowledge as it existed at the priority date.
(ii)Claims 1, 6 and 8 were not novel, compared with the prior art base.
(iii)The claims in the Patent did not define the invention. Further, they were not fairly based on the matter described in the specification, in that they are too broad and travel beyond the alleged advance over the prior art.
Mr Yates SC, who appeared with Ms Bowne for Tyco, made it clear that the lack of novelty claim only arises if I reject Tyco’s arguments on the construction of the key integers of claim 1 of the Patent, in particular integer 6. The obviousness issue must be addressed regardless of the outcome of 3M’s contention that Tyco infringed the Patent.
THE LEGISLATION
3M lodged the application for the Patent under the Patents Act 1952 (Cth) (the “1952 Act”). The application had not, however, been finally dealt with when the 1952 Act was repealed by s 230 of the Patents Act 1990 (Cth) (the “1990 Act”), which came into force on 30 April 1991. In these circumstances, the 1990 Act applied to the application as if it were a complete application under that Act: 1990 Act s 234(2). Section 234(5) of the 1990 Act provides as follows:
“(5) Objection cannot be taken to:
(a)an application mentioned in subsection (2); or
(b)a patent granted on such an application;
and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the application or patent, as the case may be, under the 1952 Act.”
The effect of s 233(4) of the 1990 Act, which is in similar terms to s 234(5), was explained by Lockhart J, with whom Northrop and Burchett JJ agreed, in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, at 253-254:
“[T]he evident intent of s 233(4) is to ensure that the grounds of revocation under the 1990 Act (which, though in some cases are expressed in different terms, are essentially the same as the grounds previously available under s 100 of the 1952 Act) apply as the grounds for revocation of a 1952 Act patent; but with this important qualification, namely, that the elements of each ground of revocation under the 1990 Act apply only to the extent that they replicate in substance the elements that previously constituted a ground of revocation under the 1952 Act. Hence, if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it. On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent. In short, a 1952 Act patentee is not to be worse off than he would have been if the 1952 Act had continued to operate, but he may be better off if the 1990 Act treats a former element of a ground of revocation as being no longer necessary.”
See also Aktiebolaget Hassle v Alphapharm Pty Ltd [2000] AIPC 91-636, at 38,164.
Section 13(1) of the 1990 Act provides that a patent gives the patentee exclusive rights, during the term of the patent, to exploit the invention. “Exploit”, in relation to an invention which is a product, includes making, hiring, selling or otherwise disposing of the product, and using or importing it: see Schedule 1 (definition of “exploit”).
Section 138(1) of the 1990 Act permits a person to apply to a prescribed court, including the Federal Court, for an order revoking a patent. Section 138(3) of the 1990 Act provides that the Court may revoke the patent, either wholly or so far as it relates to a claim, on one or more of a number of grounds including the following:
“(b) that the invention is not a patentable invention;
…(f) that the specification does not comply with subsection 40(2) or (3).”
Section 18(1)(b) of the 1990 Act provides as follows:
“(1)…a patentable invention is an invention that, so far as claimed in any claim:
(a) …; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step…”.
Section 40(2) requires the complete specification to:
“(a)describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)where it relates to an application for a standard patent – end with a claim or claims defining the invention….
Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification. It was not suggested that there was any relevant difference between the terms of s 40(2) and (3) of the 1990 Act and the equivalent provisions in the 1952 Act, namely s 40(1) and (2).
So far as novelty is concerned, the parties accepted that s 7(1) of the 1990 Act, which specifies when an invention is novel, in effect codifies the law under the 1952 Act and therefore continues to apply, subject to one qualification. The qualification is that the prior art is to be determined in accordance with the principles applicable under the 1952 Act, since these are more favourable to a patentee than the definition of “prior art base” in Schedule 1 of the 1990 Act.
The parties agreed that the position governing want of an inventive step was formally governed by ss 18(1)(b)(ii) and s 7(2) of the 1990 Act. Since, however, s 7(2) of the 1990 Act, read with s 7(3), expands the prior art information that can be taken into account in determining whether an invention involves an inventive step, the practical position is that the question of obviousness is to be determined under the principles applicable to s 100(1)(e) of the 1952 Act. That provision is as follows:
“100(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification…, on one or more of the following grounds, but on no other ground:
…(e)that the invention so far as claimed in any claim of the complete specification…was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim…”.
THE PRINCIPAL WITNESSES
The principal witnesses for 3M were the following:
· Mr Udo Seidel, a co-inventor named in the Patent. Mr Seidel at the time of the hearing was a Technical Manager in the Telecom System laboratory of 3M Laboratories (Europe) (“3M Laboratories”), a subsidiary of Minnesota Mining and Manufacturing Inc (“3M (US)”). Both 3M Laboratories and 3M (US) are part of 3M Corporate. In the late 1980s, Mr Seidel was a Senior Engineer employed by 3M Laboratories in Germany as a Project Leader. His background was in engineering design and his responsibilities at the time the claimed invention was developed included modifying telecommunications products to meet European requirements.
· Dr Hugh Stark, a Senior Lecturer in Mechanical Engineering and a consultant to private industry. Dr Stark specialised in the mechanical design of products, including plastic products, with particular reference to the strength and stiffness of such products. His experience included the design of plastic electrical fittings.
· Mr Ian Douglas, an engineer who, until his retirement in 1998, had for many years been employed by Telstra and its predecessors, Telecom Australia (“Telecom”) and the Post-Master General’s Department. As Mr Douglas acknowledged in cross-examination, his experience during the period 1986 to 1991 was limited to the External Plant Subdivision of Telecom. (The nature of the external plant is referred to later (see [29] below)). Mr Douglas’ principal responsibility at the relevant times was to supervise the technical aspects of the contracts entered into by Telecom for the purchase of equipment for the “jointing” of large-size telecommunications cables.
The principal witnesses for Tyco were the following:
· Mr John Weir, a Lecturer in Mechanical Engineering. Mr Weir had academic qualifications in mechanical and electrical engineering and was nearing completion of the requirements for a Doctorate of Philosophy. He had experience as a designer of products which feature electrical connectors and cabling systems. Although 3M’s written submissions described Mr Weir as an “academic mechanical engineer” he had undertaken significant consulting work as a design engineer. Mr Weir acknowledged that, although he had some hands-on experience of wiring systems, electrical connectors and telecommunications cabling, the primary focus of his professional experience had been elsewhere. However, he claimed to have (and, in my opinion, did have) a thorough understanding of the physical principles involved in beam theory, stresses, bending, displacement, wire retention and strain relief.
· Professor Andrew Samuel, an Associate Professor of Mechanical Engineering. Professor Samuel had extremely impressive engineering qualifications and extensive experience as a consultant professional engineer, specialising in engineering design, technology, manufacture and robotics. Professor Samuel was the author of five provisional patent applications. He accepted that his knowledge and experience of electrical connectors had been gained by reason of his work in robotics. One of the “criticisms” levelled at Professor Samuel’s evidence by 3M was that he was over-qualified and therefore could not be regarded as a non-inventive skilled worker in electrical connectors.
· Mr William Hunter, a professional engineer with over fifteen years experience mostly as a mechanical engineer in the field of design of injection moulded plastic products. Mr Hunter had some experience in connection with the design of electrical connectors, although his experience was relatively limited. He had extensive experience, however, in the design of plastic products, including those involving flexible retaining elements.
· Mr George Georgevits, a practising electronics and communications engineer with a degree in Electrical Engineering (Communications). Mr Georgevits had a thorough working knowledge of a wide range of connectors in the course of 26 years hands-on experience. A key aspect of his work included testing the electrical performance of connectors. This involved terminating, dismantling and reterminating connectors both old and new. Mr Georgevits, as a hobby, collected electrical connectors and communication equipment, comprising tens of thousands of items.
· Mr Lionel Lyneham, a retired technician who worked for thirty-seven years for Telstra and its predecessors. Although Mr Lyneham had no professional qualifications in either industrial design or engineering, he had extensive practical experience in maintaining telecommunications plant and equipment, including electrical connectors, principally in relation to the “internal” plant. There was a limited challenge to Mr Lyneham’s evidence, but in my view the challenge did not succeed.
3M criticised the evidence of Mr Weir and Mr Georgevits as partisan, because they were too ready to tailor their evidence to suit Tyco’s case. In the case of Mr Georgevits I do not accept this criticism. To the minor extent that Mr Georgevits qualified his affidavit evidence, he did so in an open and fair fashion. In my opinion, his evidence was not tainted by partisanship.
Mr Weir’s evidence was slightly more difficult to assess. There were some inconsistencies in his approach to different issues, although I do not regard them as major. Mr Weir also became a little defensive at one or two points in his cross-examination, although he readily enough acknowledged the inconsistencies when they were pointed out. I did not form the view, however, that Mr Weir’s evidence was affected by partisanship. Moreover, he carried out careful and detailed comparisons of the fluted embodiment of the Patent and the Tyco connector, as well as carefully examining other products discussed in the evidence. In general I found Mr Weir’s evidence reliable and helpful.
3M submitted that Mr Hunter’s evidence should be discounted to a significant extent because his experience with connectors was limited. In my opinion, this submission was heavily influenced by the contention, in essence ultimately abandoned by Mr Catterns QC, who appeared with Ms Howard for 3M, that the non-inventive skilled addressee or worker in this case should be regarded simply as a user of connectors, rather than as a team which included a person skilled in the design and development of plastics. I address the question of the skilled addressee later and explain that the notional addressee should be regarded as a team (see [172] below). As I later explain, a person of Mr Hunter’s skill and experience should be regarded as a member of the team comprising the notional skilled addressee or worker regardless of the fact that his experience with connectors was relatively limited. I found Mr Hunter’s evidence to be both useful and persuasive.
For his part, Mr Yates submitted that Mr Douglas’ evidence was tainted by partisanship. I agree that Mr Douglas displayed some obstinacy in aspects of his evidence. I do not, however, attribute this to partisanship but to the fact that Mr Douglas’ knowledge was relatively limited (by comparison with other witnesses). That, in turn, was a product of his rather narrow professional experience. Mr Douglas had not practised as a mechanical engineer and had not designed connectors. As already noted, Mr Douglas’ work was confined to the external plant of Telstra and its predecessors (see [13] above). The evidence revealed the limitations of his knowledge in a number of important respects. For example, he was unaware of the use of particular modular connectors in Australia prior to 1989, notwithstanding that they had been quite widely used, including uses within the internal plant of Telecom. It is fair to say, as Tyco submitted, that Mr Douglas possessed some of the knowledge of the hypothetical skilled addressee or worker, but lacked the expertise and experience that would be at the disposal of a team of persons skilled in the relevant art.
No criticism was made of Dr Stark’s objectivity. His evidence was mainly concerned with the question of infringement. As is explained later, I did not find all Dr Stark’s opinions on this question to be convincing. I should note that Dr Stark gave only limited evidence directly relevant to the question of obviousness, his affidavit evidence on this issue being largely confined to some observations in reply to Mr Hunter’s affidavit on invalidity.
BACKGROUND TO THE INVENTION
An electrical connector is defined in a technical dictionary to mean
“a coupling device employed to connect conductors of one circuit or transmission element with those of another circuit or transmission element.”
(IEEE, Standard Dictionary of Electrical and Electrician Terms (2nd ed 1978)). In simpler terms, it is a device which contains a metal element designed to connect two wires together so as to enable an electric current to pass from one wire to another. Electrical connectors are used in industries where it is necessary to join two wires. Many devices which are or include electrical connectors have distinctive names such as terminals, plugs, sockets, jacks and printed circuit boards.
The quality of the connection is affected by a number of factors, including corrosion, aging and the manner in which the connection is made (for example, twisting of wires together is generally less effective than soldering). Once the connection is made, the wires must remain in place in order to maintain the connection. It is therefore necessary to incorporate into the electrical connector a means for retaining the wires in place and to prevent withdrawal from the passageway in which the wire is located, for example in a radial direction. This feature is known as wire retention. After the insertion of the wire into the connector, the function of the retainer is to secure the wire so that the electrical connection is maintained and, if the connector is a multiwire connector with a cover, to secure the other wires in place when the cover is removed and the connector is the subject of maintenance. A means of wire retention is also needed to retain a wire in the connector during the assembly process.
The connector may also be affected by physical stress on the connection point (that is, the contact element). The greater the physical stress at the connection point, the greater the loss in consistency of the electrical connection. In the telecommunications industry, “strain relief” generally refers to a feature designed to minimise force transmitted to the connection point. More specifically, it refers to a feature incorporated in a connector which is designed to minimise the effect of tensile forces applied to the conductor in a longitudinal direction away from the connection point. Such a force occurs when a wire or conductor is strained or pulled axially or laterally. The strain relief feature is designed to move the point of tension created by that force away from the contact element to the point where the feature is located. The means of affording wire retention does not necessarily afford strain relief. Indeed, 3M says that one inventive feature of its invention is that it provides a means both for wire retention (by a slot of a particular shape into which the wire is inserted) and strain relief (by means of tongues which grip the conductor and deflect towards the connection or contact point).
According to Mr Weir, a number of forms of strain relief can be incorporated into a connector. These include the following approaches:
· The wire is enclosed in an immobilising long passageway extending axially back from the contact element. The length of the passageway should ensure that any flexure of the wire outside the corridor occurs at a remote distance from the contact point. The longer the passageway the greater the strain relief.
· The wire is threaded along a tortuous path towards the contact element. Such a path ensures that the wire experiences strong frictional contact with the walls or posts of the enclosing passageway. This frictional contact resists any axial tension applied externally to the wire and prevents such tension from being transmitted along the wire to the contact element. The more tortuous the path the greater the strain relief.
· The wire is gripped, squeezed or pressed by contact forces acting perpendicular to its axis and at a location along the wire some way removed from the point of electrical contact. The gripping force is usually imparted by a surface or surfaces acting on the wire insulator and leads to strong frictional contact between the insulator and the gripping surface. This frictional contact resists any axial tension applied externally to the wire, and prevents such tension from being transmitted along the wire conductor to the electrical contact element. The stronger the gripping force, the greater the strain relief.
· An axially compressed insulation tip is used, whereby the wire insulation is compressed axially by contact forces acting along the wire close to the point of electrical contact. The axial force is usually imparted by frictional contact from surfaces acting on the wire insulator, when those surfaces are displaced axially towards the electrical contact element. The axial compression so imparted will oppose any axial tension applied externally to the wire, and therefore reduce the extent to which the electrical contact element will experience tensile forces. The stronger the axial compressive force, the greater the strain relief.
Mr Weir’s view, which I accept, was that the connector claimed in the Patent displays both gripped wire and axially compressed insulation tip strain relief. The connector does not utilise long passages or tortuous path strain relief.
In the course of the hearing, the claimed invention was quite often referred to as having a “self-locking action”. Mr Weir said that the concept of a self-locking action effected by means of an oblique member hinged at one end to a supporting body and placed into compression when it presses against a counteracting surface at the other end, is universally known and is exemplified by door stops, deck chairs and sailing cleats. He also said that it was not correct to suggest (as Mr Douglas had) that the claimed invention exclusively relies on a self-locking action. Rather, strain relief is achieved (aside from any gripping effect) by the axially compressed insulation tip, which overcomes the slight initial movement in the conductor that would be characteristic of a purely self-locking action. In re-examination he said that there is a self-locking action on the tongues as they start to do their job, but that the axially compressed insulation tip phenomenon reduces the extent to which harmful forces are transmitted to the joint with the electrical contact.
I do not think that anything of substance turns on the use by witnesses and indeed counsel of the expression “self-locking mechanism” in relation to the claimed invention. I accept Mr Weir’s analysis, but I did not understand other witnesses (except perhaps Mr Douglas) to challenge his analysis. Rather, they adopted the expression “self-locking” as convenient shorthand to refer to the functioning of the claimed invention.
The design of connectors has to take into account the requirements of particular industries. In the electrical industry standard wires are typically used. Standard wires are not themselves insulated, but are twisted together. The bundles of twisted wires are twisted together and placed in an insulation sheet. Because the wires are flexible they are less sensitive to physical stress than solid wires. Wires used at the priority date in the electricity industry were generally relatively large. Wires were placed into a connective element and pressed into the wall of the housing, so that they were locked into position. Typically strain relief was achieved by routing the wires around an S-bend. Since a force travels only in a straight line, the S-bend minimised the tension that reached the contact element. Sometimes clamps were used for additional strain relief.
Wires used in the telecommunications industry are generally solid copper wires. Each single copper wire, or conductor, is insulated with material such as paper, pulp or plastic. Usually wires are placed in a configuration of bundles of 10 or 25 pairs of wires. The wire gauge (that is, the diameter of the solid copper wire without insulation) used in the telecommunications industry in Australia prior to 1989 ranged from 0.32 mm to 1.2 mm, although most commonly conductors were between 0.32 and 0.64 mm in diameter.
Cables in the telecommunications industry consist of multiple pairs of conductors. Generally speaking, as Mr Douglas explained, telecommunications cables are built up, commencing with 10-pair conductor groups which are then arranged in 50 or 100 pair bundles. The bundles may be combined to make even larger bundles. The physical mass of large size cables is such that they can only be handled in relatively short lengths. Paired conductors may therefore have many joints along their length.
A distinction is drawn in the telecommunications industry between internal and external plant. “Internal plant” refers to equipment within telephone exchange buildings that is concerned with telephone circuit switching. “External plant” commences from the point at which cables are attached to what is known as the Main Distribution Frame (“MDF”) in the telephone exchange building and extends to the entire telecommunications network outside that building, including customers’ premises. Conductors used in the external plant are generally subject to greater stress than those used in the internal plant.
Cables are divided into two types: main cables and distribution cables. The main cable goes from the exchange to the first distribution pillar in the street. From that point, the cables are part of the distribution network. From the MDF, large size main cables (each containing up to 3,500 pairs of wires) are carried in protective conduits along the streets to the distribution pillars. At the distribution pillars, the large size main cables are connected to smaller branching distribution cables. At each distribution pillar the cable size is progressively reduced to a size appropriate for that type of premise. At business premises, the cable entering the premises may contain 50 pairs or 100 pairs or more, depending on the size of the building.
Depending on the pair count, the length of cable between connections in the telecommunications industry can vary from about 100 to 2000 metres. If cables have to be restored, for example because of construction activity, they may have to be cut and reconnected. A telecommunications network therefore generates a need for many connectors. In 1989, the typical industry standard required a connection to last from 20 to 25 years. The quality of connection accordingly had to be maintained throughout this period.
The Patent involves the use of what is known as insulation displacement contact technology (“IDC technology”). Prior to the introduction of that technology in the late 1970s or perhaps somewhat earlier, the usual techniques for connecting individual or standard wires to a connector required the insulation to be stripped from the end of the wire (or conductor). The exposed conductor end was then crimped or soldered to the connector. Crimping required metal to be compressed around the conductor end to make the connection, while soldering required the wires to be twisted together and soldered, thereby enabling the current to pass between the two wires. Other techniques such as the use of “screw type” connectors and “twist and sleeve” connectors were also employed but these, too, required the insulation to be stripped from the conductor.
IDC technology is designed to provide a means whereby:
(i)individual wires, or strands of wire, can be inserted into a housing so as to make reliable contact with the contact element, thereby ensuring that a complete electrical circuit is created;
(ii)the insulation surrounding the wire, or strands of wire, can easily be penetrated or displaced without breaking the wire, thereby achieving good electrical contact between the contact element and the wire (that is, the electrical conductor); and
(iii)the wire is held firmly in place with some form of strain relief, thereby ensuring a reliable long term electrical connection even when tension or other force is applied to the conductor.
IDC technology involves the use of a metal contact element, with a U-formed slot (usually known as a “U-contact element”). The insulated wire is placed over the U-contact element and then pressed into it. The U-slot is narrower than the diameter of the copper conductor contained inside the insulated wire. When the insulated wire is pressed into the U-contact element, the protruding legs of the U-slot pierce the insulation surrounding the conductor. This splicing, as it is known, enables the electrical connection between the U-contact element and the conductor to be made. The U-contact element does not pierce the conductor itself.
In order for a reliable connection to be made, some force must be applied between the conductor and the U-contact element. This force is supplied in two ways:
(i)the deformation of the conductor; and
(ii)the deflection, within the limits of its elasticity, of the U-contact element.
When the conductor is pressed into the slot of the U-contact element, the conductor is forced to deform in order to “press fit” within the contact area. “Press fit” refers to the conductor and the contact element fitting together in a manner that prevents air gaining access to the contact area. If air does pass between the contact element and conductor corrosion may occur.
As the conductor deforms to press fit into the contact area, the U-contact element deflects sideways away from the conductor but within its elastic limits. (All materials have a capacity for deformation when force is applied. When the force is removed the material returns nearly to its previous form. This property is known as elasticity.) The elastic limits of the U-contact element depend on the nature of the material used to make the element. While the U-contact element is deformed, it applies a constant force towards the deforming element, namely the conductor.
Because of the interrelationship between the conductor and the contact element, and the need for the U-contact element always to deform within the limits of its elasticity, it is important in designing a connector to understand the physical properties of both the conductor and the metal contact element. If, for example, the element is too rigid it may cut the wire; if it is too soft it may deflect beyond its elastic limits and may not create a sufficient force on the conductor to maintain a reliable connection.
development of the invention
3M adduced evidence without objection from Mr Seidel, one of the co-inventors named in the Patent, as to the development of the claimed invention. The view was apparently taken that the evidence was within the principle stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, at 287:
“I have concluded that evidence of research and experiments (if any) of a patentee leading up to his claimed invention is generally admissible [on the question of inventiveness] though not always likely to be helpful.”
3M recognised that the opinion of Mr Seidel as the inventor was not admissible on the question of whether the invention was obvious: Wellcome, at 287. But 3M relied on the process leading to the claimed invention as supporting the conclusion that an inventive step was involved. Tyco also relied on the process to support its contention that the hypothetical skilled addressee, both for the purposes of construing the claims in the Patent and for assessing obviousness, should be regarded as a team comprising persons experienced in a variety of fields.
Mr Seidel’s evidence of the events leading to the filing of the patent application in Germany, the priority date for the Patent, was unchallenged. The following account is based on that evidence.
In 1987, 3M Corporate mainly manufactured 20 and 25 pair module splicing connectors. A module splicing connector is one that can connect, with one action, multiple pairs of wires and that has a cover on each side of the connector body. In order to use modular connectors, the wires are placed into the channels of the connector, the cover is placed over the main body of the connector, and a tool is then used to press the cover onto the main body. When the components are pressed together, the electrical connections are made for all the wires simultaneously.
The range of 20 and 25 pair module connectors was known as the “MS² range”. The 25 pair connector module achieved strain relief by a feature moulded into the cover so that the cover, when in place, clamped the wires. The 20 pair connector module did not employ that form of strain relief.
3M Corporate concentrated on 20 and 25 pair module connectors because the distribution systems in most countries used cables consisting of 20 or 25 pair bundles of wires. Several countries did, however, use cables consisting of 10 and 20 pair bundles of wires. 3M Corporate manufactured 10 pair module connectors for Deutsche Telekom, for example, simply by cutting 20 pair modules in half.
On 2 November 1987, Mr Seidel received a written request from the then technical manager of 3M Laboratories Telecomm Department to develop a 10 pair module splicing system. The request was made shortly after a group of senior managers attended the International Telecommunications Union (“ITU”) trade show in October 1987. The request was prompted by a recognition that an increase in the use of computers and the volume of data transmission would create greater demands on telecommunications distribution networks. These developments were thought likely to generate greater use of larger wire gauges in order to facilitate faster transmission of data and a need for smaller wire counts. There was also likely to be an increased incidence of wire handling in distribution networks and a need to upgrade connections, as well as the maintenance requirements of existing but aging networks.
At the time he received the request, Mr Seidel was a Senior Engineer involved in the development of network accessories, that is products necessary to protect electrical connections, specifically copper cables. Mr Seidel led a team which included a development engineer responsible for the contact element development and a mechanical engineer responsible for testing. Mr Seidel himself was responsible for the overall design of the connector module. Other than the request for a module to cover larger wire gauges and a smaller wire count, the development of the new module was left entirely to the project team.
The multiple modular splicing systems available in 1987 were designed for a wire gauge of between 0.32 and 0.65 mm. In order to accommodate greater wire gauges of up to 0.9 mm it was necessary to take into account the fact that larger wires tend to be more rigid. Mr Seidel recognised that the increased rigidity of the larger wires potentially increased the tension on electrical connectors during handling. The greater frequency of wire handling also increased the risk that wires would fall out of connectors during handling. It was therefore apparent to him that there was a need for additional methods of wire retention and strain relief than had previously been incorporated in connectors.
In January 1988, the team developed target specifications. Mr Seidel in his evidence described the goal as being to design a 10-pair modular connector that could be used with existing 3M tools. The project team took as its starting point the MS² connector modules. They did so mainly because the MS² connector modules were known to the market and customers would be able to use existing application tooling (comprising a splicing head and a hydraulic crimping unit). Since the idea was to use the existing application tooling the height and length of the connector module was predetermined. There was some flexibility as to width, but it was decided to make the width as close as possible to the existing 25-pair modular connector. This was to ensure that the new product could fit within existing enclosures (that is, devices used to house connectors and protect them when placed in a manhole or buried in the ground).
The first task undertaken by the project team was to design a contact element small but effective enough to be used in a modular connector of the size contemplated. The contact element also had to be able to cope with more varied wire gauges than the MS² range. This task was duly completed.
The project team then discussed various means of wire retention and strain relief known to them. According to Mr Seidel, the conventional means could not be employed within the size constraints under which the team was operating. At a “brainstorming meeting” on 5 April 1988, which lasted for five or six hours, many methods of strain relief and wire retention were discussed. Mr Seidel formed the view that the solution might be what he described as “a single multi-functional design feature”. By this he meant a single feature which provided effective strain relief and wire retention across a range of wire gauges and which was sufficiently small so as to fit within the proposed dimensions of the modular connector.
The meeting concluded that the solution lay in the use of “flexible arms”. The use of rigid arms was rejected because they would cut into the insulation surrounding the wire and would strip the insulation if the wire were pulled. To prevent wires being dislodged from the module, the team decided to adopt a tapered slot which was narrow at the top and wide at the bottom to keep the wire inside the wire channel. It was also decided that the flexible arms had to be designed so that they would move, on insertion of the wire, in a direction opposite to the direction in which the wire might be pulled. This required the arms to move towards the U-contact element during the insertion of the wire.
After the meeting, Mr Seidel spent the bulk of his time over the next two weeks developing the details of the proposed solution including the shape of the flexible arms. He prepared drawings using a computerised design tool. He explored a variety of shapes for the slot between the flexible arms. Details of his solution were recorded in a laboratory notebook entry. The three members of the team signed the entry to show that they “had thought about and had agreed with” the entry.
the patent
The specification identifies the invention as one related to insulated conductors such as cables, particularly for electrical communication cables.
description of the prior art
The description of the prior art commences with this statement:
“Connectors of the kind mentioned typically include insulation-penetrating cutting terminals within at least one passageway. Further, suitable retaining means are provided retaining the cable in position and restrict removal of the cable from the passageway if the normally attached cover is removed. In case the cable is urged out of the passageway, the danger is encountered that electrical contact will be interrupted. Particularly for telecommunication cables it is undesired that the transfer of data is interrupted if work is undertaken at the connectors.”
Reference is then made to five examples of the prior art. The first is to German Patent 36 22 164 (the “Seidel Patent”). This is said to disclose a retaining means for connection wires in a connector wherein the side walls of an entrance slot include flexible barbs such that cables of different diameters can be introduced and secured against outward movement. The specification acknowledges that the problem of retention is satisfactorily resolved by the Seidel Patent, but continues as follows:
“However, the known retaining means do not enable a strain relief which normally is additionally required. Strain relief means that a tension force at the cable is not immediately transmitted to the contact area, rather, a structural feature is necessary to maintain the electrical contact by forming a sufficient resistance against the cable being pulled out of the connector.”
The specification next refers to United States Patent 4 262 985 (the “Muelhausen Patent”) which Mr Catterns described in opening as Tyco’s “best documentary piece of prior art” (T7). (The Muelhausen Patent was relied on by Tyco to support its want of novelty claim. Tyco did not suggest, however, that the Muelhausen Patent was part of the common general knowledge for the purpose of obviousness as a ground of invalidity. However, Tyco did submit that a commercial embodiment of the Muelhausen Patent, the AT&T 110 connector, did constitute an example of the prior art.) According to the specification, the Muelhausen Patent discloses a connector for connecting wires “wherein retaining means and means for a strain relief are integrally formed with a housing of plastic material”. The specification makes these observations about the Muelhausen Patent:
“The retaining means is defined by a slot with an entrance portion thereof having a smaller width than below the entrance portion so that movement of the cable out of the slot is restricted. The strain relief means are defined by tongues extending at an angle with respect to the longitudinal axis of the cable, the tongues being resiliently deformed if the cable is inserted. It is a disadvantage with the known connector that the overall dimensions of the connector are relatively large due to separate means for the retaining and the strain relief purposes, respectively. It is further disadvantageous that the strain relief effect decreases with increasing diameter of the wires.”
The specification then makes brief mention of German Patents 24 56 977 (the “McKee Patent”) and 26 37 378 (the “Mathe Patent”) each of which is said to disclose separate retaining and strain relief means.
Finally, the specification refers to German Patent 24 46 670 (the Shoemaker Patent”) which is said to disclose an electrical connector terminal integrally formed of sheet metal. It is said that the contact terminals embodied in this invention are not adapted for use in connection with telecommunication connectors structured as modules and that the invention has other disadvantages.
The description of the prior art in the specification concludes as follows:
“The present invention provides a connector for insulated conductors, particularly for electrical telecommunication wherein the retaining means for the conductor is simply combined with a strain relief.”
summary of the invention
The summary of the invention is as follows:
“The invention includes an integrally molded basic body of plastic material having one or a plurality of passageways adapted to receive insulated conductors. In the connector according to the invention, flexible tongues are formed at opposing walls. The tongues, extend in a plane approximately perpendicular to the longitudinal axis of the passageway. At the free ends of the tongues, a relatively narrow slot is formed, the most narrow portion of the slot being adjacent the open upper side of the passageway and it has a width smaller than the diameter of the smallest cable to be placed in the connector. The lower portion of the slot having a larger width so that by this, a movement of the cable out of the passageway is resisted. It is further essential to the invention that the tongues are shaped or are connected to the walls of the passageway such that the tongues are uni-directionally resiliently deformed toward one end of the passageway and toward the contacting element within the passageway. In other words, the ends of the tongues face toward the free end of the cable or opposite to the extraction direction so that an effective strain relief is achieved.
With the known connectors it may occur that the cables move out of the passageway as soon as the cover on the passageway is opened. This danger increases with increasing diameter of the cable. With the connector according to the invention, however, the strain relief increases with increasing diameter, the flexibility of the tongues being adapted to retain cables within a large diameter range. Depending on the elasticity and the strength of the insulating material, the tongues mold into the insulating material more or less whereby the cable is effectively secured against displacement out of the connector. The deformation of the tongues and the embedding into the insulation are such that a cutting into the insulation and thus an elimination of the strain relief is avoided.
As already mentioned, it has to be assured that the tongues are deformed in a predetermined manner when the cable is pressed into the slot. In this connection, an embodiment of the invention provides that deflecting surfaces are formed on the tongues adjacent the slot which cause the tongues to be deformed resiliently by a cable such that the ends of the tongues face toward the cable end within the passageway. Different modifications for the deflecting surfaces can be used. According to an embodiment of the invention, the deflecting surfaces can be defined by chamfers formed at the side of the tongues oppositely located of the cable end. The chamfers form oblique surfaces which converge toward the cable end. They assure that both tongues are deflected toward the cable end.
According to a further embodiment of the invention, the width of the slot between the tongues continuously increases toward the bottom of the passageway. According to a further embodiment of the invention, the edges of the slot can include saw-tooth-like projections by which a movement of the cable out of the slot is effectively restricted.
If possible, the tongues should be deflected in total upon an insertion of the cable into the slot. An embodiment of the invention provides that the wall of the tongues facing away from the cable end merge into the wall of the passageway through a radius while the opposite wall of the tongues have a relieving flute adjacent to the wall of the passageway. By such a hinging of the tongues to the passageway walls, the tongues can be relatively simply and uni-directionally deflected toward the cable end as the cable is pressed into the slot.
The entrance portion of the slot is funnel-like enlarged in an upward direction in order to facilitate the insertion of the cable.” (Emphasis added.)
the claims
The Patent makes nine claims, as follows:
“1.A connector for an electrical cable, particularly for electrical telecommunication, comprising a housing of plastic material including a basic body, at least one transverse passageway having an axis being formed in said basic body, a contact element disposed in said passageway, and flexible retaining elements integrally formed with said basic body are positioned in said passageway, said retaining elements being resiliently deformed when a said cable is introduced into said passageway to retain said cable against outward movement, said retaining elements comprising tongues being formed on opposite walls of said passageway in a plane approximately perpendicular to said axis of said passageway, the free opposing ends of said tongues forming a narrow slot having the most narrow portion of said slot adjacent the open upper side of the passageway and having a larger width than the upper portion of said slot, and said tongues being joined to the walls of said passageway by means for affording deflection of said tongues such that said tongues are resiliently deformed toward one end of said passageway and toward the contact element within said passageway when a wire is inserted into said passageway.
2.The connector according to claim 1, wherein said tongues have predetermined surface portions adjacent said slot adapted to aid in deforming the tongues when a said cable is inserted into said passageway.
3.The connector according to claim 2, wherein said surface portions are defined by chamfers which are formed at the sides of said tongues facing away from said contact element.
4.The connector according to claim 1, wherein said slot continuously enlarges toward the bottom of said passageway.
5.The connector according to claim 1 or 4, wherein said tongues merge into the passageway wall through a radius on the side facing away from said contact element while a relieving flute is formed into the tongue adjacent said passageway wall on the side of said tongues facing said contact element.
6.The connector according to claim 1 or 4, wherein said free opposing ends of said tongues include smoothly diverging terminal portions defining a wire accepting opening leading to said slot at its narrowest portion.
7.The connector according to claim 1 or 4, wherein saw-tooth-like projections are formed on the ends of the tongues defining the edges of said slot.
8.The connector according to claim 1, wherein the tongues are at least partially free to move relative to the bottom of said passageway.
9.A connector for electrical cables, substantially as described herein with reference to the accompanying drawings.”
It will be seen that claims 2 to 8 are expressed to be dependent on claim 1.
The experts expressed different views as to the number of integers comprised in Claim 1 of the Patent. Nothing turns on this, as the experts expressed their opinions by reference to ten integers identified by Dr Stark, as follows:
Integer
No.
Integer 1 A connector for an electrical cable, particularly for electrical telecommunication, comprising a housing of plastic material including a basic body, 2 at least one transverse passageway having an axis being formed in said basic body, 3 a contact element disposed in said passageway, 4 and flexible retaining elements integrally formed with said basic body are positioned in said passageway, 5 said retaining elements being resiliently deformed when a said cable is introduced into said passageway to retain said cable against outward movement, 6 said retaining elements comprising tongues being formed on opposite walls of said passageway in a plane approximately perpendicular to said axis of said passageway, 7 the free opposing ends of said tongues forming a narrow slot 8 having the most narrow portion of said slot adjacent the open upper side of the passageway and having a width smaller than the diameter of the smallest cable to be placed in the connector 9 the portion of said slot adjacent the bottom of said passageway having a larger width than the upper portion of said slot, 10 And said tongues being joined to the walls of said passageway by means for affording deflection of said tongues such that said tongues are resiliently deformed toward one end of said passageway and toward the contact element within said passageway when a wire is inserted into said passageway.
the drawings
The specification includes a number of drawings, described as follows:
· Figure 1 is a perspective view of a corridor according to the invention.
· Figure 2 is a cross-sectional view of the tongues and passageway. (The specification refers to a cross-sectional view along line 2-2 of Figure 1, but there is no such line.) The shaded area in Figure 2 shows the tongues and the walls of what the specification describes as the passageway. Although Figure 2 falls with claim 1 it more particularly describes claim 3 which specifically refers to surface portions defined by chamfers.
· Figure 3 is similar to Figure 2, but includes a “pressed-in cable” as can be seen also in the right-hand section of Figure 1.
· Figure 4 is a front view of the illustration of Figure 2.
The detailed description of the drawings includes the following passages:
“Figure 1 shows a basic body 10 of a connector for electrical telecommunication cables. The basic body 10 is integrally molded of plastic material and shaped as a module. It includes two transverse passageways 11, 12 extending parallel at a distance from each other throughout the width of the basic body 10. It is understood that the basic body 10 could have a greater length for the receipt of a plurality of cables. Furthermore, it can be combined with a cover which closes the passageways 11, 12 from above. Further, a plurality of such basic bodies 10 could be stacked with each upper basic body defining a cover for the lower one. Connectors of the kind described are generally known.
Know[n] U-shaped contact elements 14 and 15 and knives 16 and 17 of metal are positioned in the passageways 11 and 12. An insulated conductor or cable 20 is introduced in the right passageway 12 from above with its front end being cut off by knife 17 while the contact element 15 cuts into the insulation cable 20 contacting the conductor of cable 20 in a manner known per se to establish an electrical contact.
Tongues 21, 22 and 23, 24, respectively, are formed at the walls of the passageways 11, 12 in front of the contact elements 14, 15. As can be particularly seen in Figures 1 and 2, passageways 11, 12, respectively, have recesses 25, 26 which are formed in the area of the tongues 21, 22 and 23, 24, respectively, whereby the joints of the tongues have a larger distance from each other so that they have a relatively large length. In the following, only tongues 21, 22 are described since the tongues 23, 24 are identically formed.
The tongues, 21, 22 merge into the passageway wall through a radius 27, 28 or radiused surface at the side facing away from the contact element 14. A flute 29, 30 is formed in the tongues 21, 22 adjacent the wall of the passageway on the side facing the contact element 14, whereby the thickness of the tongues 21, 22 is reduced. A slot 31 is formed between the free ends of tongues 21, 22 which continuously enlarges from the top to the bottom as can be seen in Figure 4. The most narrow width of the slot 31 is such that it is smaller than the diameter of the smallest cable to be inserted in passageway 11.
Oblique surfaces or chamfers 32, 33 are formed on the side of the tongues 21, 22 facing away from the contact element 14. The cham[f]ers 32, 33 are reduced in width toward the bottom of the passageway as can be seen in Figure 1. As can be particularly seen in Figure 4, the entrance portion of slot 31 is funnel-like, enlarged in its upward direction as shown at 34.
In Figure 3 a cable 40 can be seen including a conductor wire 41 and an insulation 42 which is pressed into passageway 11. The chamfers 32, 33 on the tongues 21, 22 cause the tongues to be deformed toward one end of the passageway 11 upon insertion of the cable 40 from above the passageway and the free end of the tongues 21, 22 being engaged by the insulation cause the insulation to be deformed and indentations are formed in the insulation by which a retraction of cable 40 in direction of arrow F is restricted. A force on the cable 20 in the direction of the arrow F causes the tongues to bite deeper into the cable insulation. The cable 20 within passageway 12 deforms the tongues 23, 24 in a corresponding manner. It can be seen in Figure 3 that the tongues 21, 22 are deflected in total by their hinging to the walls of the passageway toward the contact element. It is understood that by a corresponding shape of the tongues 21, 22 or by a corresponding hardness of the insulation 42, the tongues themselves could be deformed or bent in order to achieve a strain relief. It can be recognised moreover that the strain relief increases with increasing diameter of cable 40. The cable 40 is retained within the passageway in that the slot 30 narrows upwardly whereby movement of the cable upward out of the slot is also resisted.
commercial embodiment
3M Corporate has marketed a commercial embodiment of the Patent in a product known as the “3M 10 pair Modular Connector” (the “3M connector”). The 3M connector is made in three versions: pluggable, splice and half-tap. In this context, “splice” is a term that describes a connector which permanently connects two or more wires. “Half-tap” describes a connector which allows tapping onto an existing wire within the connector so that an external wire can be T-spliced to it (thereby enabling cable rearrangements to take place without interruption to services). “Pluggable” is a term used in relation to a connector which allows the wires to be connected and disconnected without removing the wires from the connector (like a plug-socket connection).
THE OFFSET PRINCIPLE
The claimed invention is a connector for insulated conductors, particularly (but not exclusively) for electrical communications in which the retaining means for the conductor is simply combined with strain relief (Specification p 3, lines 1-4). The summary states that it is essential to the invention that the tongues are shaped or are connected to the walls of the passageway
“such that the tongues are uni-directionally resiliently deformed towards one end of the passageway and toward the contacting element within the passageway.”
Dr Stark’s evidence, which I accept on this point, was that the key geometrical feature required of the tongues is that the tip at the point of contact with the conductor or wire be closer to the contact element than the centroid of the base of the tongues to the side walls of the passageway. Mr Weir said in evidence that the “centroid” is simply the central joining point of the tongue, although the evidence did not explain precisely how the central point is to be ascertained. It is this geometrical feature which causes each tongue, as required by Claim 1, to deflect towards the electrical contact when the conductor is inserted. This in turn produces what was generally described in evidence as the “self-locking action” that provides strain relief when an axial force is applied (as shown in Figure 3 of the specification). If the tongues were to deflect away from the contact element they would fail to grip the wire if, for example, the wire was pulled out along the axis of the passageway.
Dr Stark explained this geometric feature by means of a diagram which exemplified the embodiment illustrated in Figures 2 and 3 of the Patent.
The diagram shows that the point of the tongue that contacts the conductor is closer to the electrical contact than the centroid of the base of the tongue. Dr Stark’s evidence was that the centroid is placed further away from the contact element by reason of the flute, but the diagram does not place the flute precisely at the point of joinder of the tongue to the wall. This contrasts with Figure 2 in the Patent which shows the flute thinning the tongue at its point of contact with the wall. Although I do not think that Dr Stark’s diagram accurately reproduces the position of the flute, nothing turns on this for the purposes of explaining the offset principle.
The point of contact of the tongue with the conductor is placed closer to the contact element by the shape of the tongue, in particular the chamfer. The force “F” applied to the tongue on insertion of the cable (at a right angle to the cable), combined with the offset “d” (that is, the offset between the line of force and the centroid), causes a bending moment to be applied to the tongue. Accordingly, the tongue inevitably flexes and rotates towards the electrical contact. The greater the value of “d”, the greater the propensity for the tongue to move in the one direction as the result of the force “F”. If “d” were zero, the tongue could deflect either way, or simply buckle.
An offset can be created by a variety of means. The embodiment illustrated in Figures 2 and 3 uses a combination of a flute and chamfer. An offset can also be created, for example, by the shape of the tongue alone, or by the angle of the tongue from its base at the wall to the point of contact with the cable. The value of “d” will vary according to the particular mechanism.
I should note that Mr Weir challenged Dr Stark’s view that a tongue can be deflected in the required direction only if there is an offset. He said that Dr Stark had incorrectly assumed that contact forces between the tip of the tongue and the conductor’s insulation will only ever act in a lateral direction (that is, at right angles to the passageway axis). Mr Weir agreed that in order to achieve uniaxial deflection of the tongue towards the electrical contact there must be some asymmetrical contact between the tongue and the wire. He said, however, that there could be cases where the offset “d” is zero, yet uniaxial deflection can be achieved.
I did not understand 3M to challenge Mr Weir’s qualification to Dr Stark’s analysis. Rather, Mr Catterns approached the case on the basis that if the offset were present the required uniaxial deflection could be obtained. The parties’ final submissions did not suggest that anything of substance turned on whether Dr Stark had been too absolute in his approach.
mechanism of deflection
Mr Weir explained that the fluted embodiment of the claimed invention incorporated the flute in order to weaken the tongues, thereby promoting uni-axial deflection. He undertook a comparison of the flexural characteristics of the fluted embodiment and that of the Tyco product. He considered that the fluted embodiment of the claimed invention deformed in a manner similar to a hinged door, with most flexure occurring in the region of the flute and little deformation occurring along the length of the tongue. Mr Weir’s measurements showed that, in the case of that embodiment, about 75 per cent of the total curvature is attributable to the fluted region. The degree of curvature of the tongue of the fluted embodiment drops off sharply at a point about twenty per cent of the length of the tongue away from the wall. There is, however, some slight curvature over the whole remaining length of the tongue (other experts suggested that all of the flexure of the tongue takes place at the flute but they had not carried out Mr Weir’s analysis). It follows that although Figure 3 in the Patent seems to show no curvature of the parallel sides of the tongue after insertion of the cable, there is a slight curvature as the result of the transverse force applied to it. I accept Mr Weir’s evidence on this point.
The body of the specification refers to an embodiment of the invention providing that the wall of the tongues facing away from the cable merge into the wall of the passageway through a radius (27 in Figure 2). As Professor Frost explained, the radius is a structural necessity to avoid a stress concentration at the junction of the tongue and the wall. If there were no radius there would be what he described as a “sharp corner”. In the absence of a means of avoiding stress concentration, the tongues could break off from their attachment points. The stress concentration occurs upon the application of a load to the tongue, which in the case of embodiment produces a deflection of the tongue.
THE TYCO CONNECTOR
The Tyco connector consists of a double sided plastic body (integer 1 in the Patent) having provision for the attachment of 10 wires per side. There are two clear plastic covers, one for each side, that are clipped to the body after attachment of the conductors. An internal Tyco publication describes the three components, respectively, as a cover, a body and a base (or protector).
Mr Weir described the Tyco connector as an electrical connector of the IDC type. He accepted that the Tyco connector, like the invention described in the Patent, has a resiliently deformable retaining element that simultaneously provides transverse retaining means and axial strain relief (although Mr Weir considered the form of the retaining element to be distinct from that disclosed in the Patent). The IDC contact element, together with a wire-cutting blade and the resiliently deformable tongues that provide wire retention and strain relief, are located within a rectangular box-like structure. The walls of the box are in a recess when compared with the width of the passageway leading to it.
A number of magnified photographs of the Tyco connector were in evidence. They are not easy to reproduce, but Figure HS3 (part of an Exhibit to Dr Stark’s affidavit) shows a portion of the body of the Tyco connector. Each “box” contains the blade, contact element and resiliently deformable tongues. The box at the right has a wire or cable inserted from above, with the consequence that the tongues are deflected towards the contact element. The dotted line shows the axis of the passageway leading to the box on the left. (There was a dispute as to whether the passageway should be regarded as continuing into the box.) The numbers superimposed in the photograph refer to the integers of claim 1 of the Patent said by Dr Stark to be present in the Tyco connector. (There was no dispute that integer 1 is present.)
Mr Weir prepared a sketch showing the arrangement of the strain relief and wire retention features of the Tyco connector. The sketch shows the general lay-out of the supporting box and the blade, contact element and tongues within the box. Some of the dimensions are, however, approximate.
(The text of Mr Weir’s notes has not been reproduced.)
Dr Stark exhibited a magnified photograph of a frontal view of the resiliently deformable tongues (the retaining elements) in the Tyco connector. The photograph has superimposed on it measurements taken by Dr Stark. These show, inter alia, that the slot between the tongues widens from the narrowest point (0.28 mm), at first rapidly (to 0.5 mm), then more gradually towards a point near the base (to 0.58 mm) and finally more rapidly again to the base. The narrowest width of the slot between the retaining elements is less than the diameter of any wire to be inserted. The single numbers superimposed on the photograph record the integers of claim 1 of the Patent said by Dr Stark to be present in this portion of the Tyco connector.
The expert witnesses offered somewhat varying descriptions of the characteristics of the Tyco connector, although there was a good deal of common ground. Dr Stark described each Tyco tongue as curved in shape and as having “two thick planar pieces with a buttressed connection to the passageway wall”. In cross-examination he agreed that each tongue essentially comprises two pieces at different angles, together with a buttressed portion located at the point where the underside of the tongue joins the wall. Dr Stark said that the buttressing is achieved by filling in the acute angle that would be created if the planar portion further from the slot continued to the wall.
Mr Weir, in his affidavit, said that the Tyco tongues are each angular in shape and consist of three sections lying in three distinct planes either inclined to or offset from one another. The first, described by Mr Weir as lying in the base plane, projects from the wall of the supporting box. The second is inclined at an angle of 35° to the base plane. The third is angled towards the electrical contact at an angle of 10° by reference to the base plane. Mr Catterns submitted that Mr Weir modified his view in cross-examination by drawing a sketch (Exhibit 5) which showed the largest part of the tongue extending to the wall at an angle of 35°, with a triangular buttress added on the base of the triangle being at right angles to the wall. Exhibit 5 was drawn in the context of a discussion of Mr Weir’s concept of a “base feature” as applied to the Tyco connector. He was concerned to argue that the “base feature” of the Tyco tongue was a rectangular shape, a view that requires the triangular buttress to be regarded as a subsidiary feature. I do not regard that part of Mr Weir’s evidence as detracting from his view that each of the Tyco tongues has three distinct sections.
Professor Frost said that neither tongue could be regarded as planar. He meant (as Mr Catterns accepted) that each tongue is curved and therefore cannot lie in a particular plane. Professor Samuel rejected the notion that each tongue could be said to be in a single plane. He described the tongues or fingers of the Tyco connector as forming a shallow “U” shape in plan view.
Each of the tongues of the Tyco connector is buttressed where the tongue joins the walls of the recessed box. The “buttress” (a word used by all the expert witnesses who addressed the point) is located at the point where the side of the tongue facing the contact element joins the wall. This corresponds to the region shown in the diagrams in the Patent where the relieving flute is provided. It was common ground that the tongue thins at a point about 15 to 20 per cent of the total length of the tongue away from the wall. That is, to use Mr Catterns’ phrase, the point of thinning is about 15 to 20 per cent “offshore” from the wall. From that point to its free tip the tongue is of uniform cross-section and thickness.
The buttress performs two functions. First, it resists deflection of the tongue in the region where it is joined to the wall. It therefore forces the remainder of the tongue to carry the bending force when it is applied. Secondly, it reduces the bending stresses at the wall and thus diminishes the risk of fracture. In the latter sense it performs a function similar to that of the radius depicted in Figure 2 of the Patent.
It follows that the buttress is the least likely area of the Tyco tongue to experience curvature. As Mr Weir explained, little deformation occurs in the buttressed area, but significant curvature occurs along the further length of the tongue. Mr Weir’s measurements showed that the maximum point of curvature on the Tyco tongue occurs at the point where the buttress ends (that is, the point about 15 to 20 per cent offshore). Mr Weir estimated that at a point about 40 per cent along the length of the Tyco tongue, the net rotation of that tongue was about the same as at a point about 20 per cent along the length of the fluted embodiment of the Patent. Mr Weir also pointed out that the maximum bending stress experienced by the Tyco connector occurs at the point of greatest curvature. However, the degree of stress is significantly lower than that experienced by the fluted embodiment.
Tyco’s experts used different language to describe the action of the tongues in the Tyco connector, although the substance of their descriptions did not differ materially. Mr Hunter, whose evidence I accept, described the Tyco tongues as a pair of “flexible cantilevered arms which bend forwards in a parabolic manner”. He distinguished this from the “hinged approach”, whereby the flexure happens at the base of the hinge and the retaining element is closed rather like a pair of gates or swing doors. He regarded the approaches as completely different from an engineering design perspective. He expressed the view that the cantilever approach is superior because “the strength of the cantilever is engendered by its join to the wall” while the hinged approach relies on a structural weakness resulting from thinness at the fluted point of attachment. Mr Hunter explained that the portion of the cantilever joined to the wall contributes to its strength because it is made sufficiently thick and of the right shape to resist the binding stresses placed on it.
Mr Weir said that the tongues in the Tyco connector experience uniformly increasing flexure and stress all along their length, increasing from negligible levels at their free end to a maximum near the supporting wall. He likened their behaviour to a flexible diving board, as distinct from the action of a door hinge. In cross-examination he accepted that the force applied to the Tyco tongues by the insertion of a cable causes them to “bend like a bough”. Mr Weir also gave evidence, which I accept, that the “gripping effect” of the tongue in the Tyco connector is more than thirty per cent greater than the gripping effect of a comparably proportioned tongue designed in accordance with the claims in the Patent. Contrary to a submission made by Mr Catterns, I do not regard Mr Weir’s evidence as limited to the “initial” gripping effect.
It was common ground that the Tyco connector does not have tongues with “deflecting surfaces” adjacent to the slot. In particular, it does not have chamfers.
The Tyco connector also has features that, according to Dr Stark’s unchallenged evidence, are similar to those of the 3M connector. These features include the following:
· the dimensions of the Tyco connector, including height, length and width;
· the distance between the channels or passageways for the wires;
· the angle of the corner cut;
· the centring grooves at the longitudinal ends of the connector (which in the case of the 3M connector are used to co-align the bodies and the covers of the connector in the application tool); and
· the colour.
principles of construction
The first task of the Court in infringement proceedings is to construe the patent in suit in order to determine the precise nature and extent of the rights claimed by the patentee. The principles of construction of patent claims were helpfully summarised by Hely J in Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, at 347-350. I do not think it necessary to set out that passage in full. It is enough to say that I agree with the principles stated by his Honour. In particular, I agree with Hely J’s observation that the specification must be read as a whole to see how words have been used and as part of the process of determining whether the terms of the claim are clear and unambiguous. This is consistent with a passage from the judgment of Lockhart J in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385, at 391 put at the forefront of 3M’s submissions:
“It is well established that there are no special rules for the interpretation of patent specifications, which are to be interpreted in the same way as any other document upon ordinary principles of interpretation. The words used in a specification are to be given the meaning which the normal person skilled in the art would attach to those words, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification.”
I would add four comments. First, as Hely J notes (at 349), the hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. Accordingly, as the Full Court said in Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, at 476-477:
“The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood…. The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge. As Lord Diplock (with whom the other members of the House of Lords agreed) commented in Catnic Components Ltd v Hill & Smith Ltd (1981) 7 FSR 60 at 65-6:
‘…a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (ie ‘skilled in the art’), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called ‘pith and marrow’ of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge…’.”
There was a dispute as to whether the 3M² modular connector formed part of the common general knowledge in Australia in 1989 and whether modular connectors in general were known. Mr Douglas, for example, said that the 3M² modular connector was not commonly used or widely known in the Australian telecommunications network in 1989. Yet Mr Lyneham gave evidence, which I accept, that the 3M² connector had been readily available in Australia since 1968. Mr Lyneham’s evidence was challenged in cross-examination, but was supported by a 1973 article in The Telecommunications Journal of Australia which discussed the 3M² connector. That journal was widely read by telecommunications field technicians. I also accept Mr Lyneham’s evidence that the Krone 10-pair connecting module (the “Krone module”) had been adopted by Telecom Australia in 1980 as its standard system for cabling. I infer from that and other evidence that it formed part of the common general knowledge available to the non-inventive skilled addressee.
The Krone module is a modular, mass terminating system which allows up to 40 wires (ten pairs in and ten pairs out) to be connected. The range of conductors that can be connected extends from 0.4 mm to 0.65 mm (that is, it can handle conductors of varying diameters). It has wire retention detents that project laterally from the side walls of the passageway into which the conductors are placed. Flanges project from the opposite walls and form a parallel-sided slot. These retaining elements perform both wire retention and strain relief functions after connection, although the flanges are not the only means of performing such functions. The flanges are not flexible but comprise rigid plastic edges (a description advanced by Mr Douglas and accepted by Mr Weir). The strain relief occurs because the plastic edges bite into and deform the insulation around the conductor.
Brief reference was made in argument to the Panduit 10-wire connector, which incorporated what Mr Weir described as downwards-angled barbs, which are symmetrically opposed and provide the accepting passageway for each wire. Mr Douglas could not recall having seen connectors incorporating downward facing barbs prior to 1989. Mr Weir gave unchallenged evidence that the Panduit connector product had been advertised in 1980 and that a similar Panduit MAS-CON 12-wire connector had been used in a dot matrix printer in 1985 or 1986. I think it likely that a non-inventive but skilled team, with an interest in the design of connectors, would have known in 1989 of the Panduit connector and of its use of downward facing barbs. I did not understand Mr Catterns to argue against this conclusion.
Mr Weir said that the barbs in the Panduit connectors provided a retaining means against outward movement of the wire and “some degree of strain relief for suitably sized wires”. Mr Douglas disagreed with this opinion on the ground that the barbs faced the wrong way to provide strain relief. He also said that for a conductor to make contact with the barbs it would have to be so large as to be unable to fit into the contact element. Neither Mr Weir nor Mr Douglas was cross-examined on this issue. Without further elucidation I am not satisfied that Mr Douglas’ opinion was incorrect.
The AT&T 110 Connector
There was also a dispute as to whether a connector known as the AT&T 110 connector formed part of common general knowledge at the priority date. The AT&T 110 connector was developed by AT&T’s research arm, Bell Telephone Laboratory. Mr Yates maintained that Tyco could make out its case on obviousness without reference to the AT&T 110 connector, but contended that the case became even stronger if the connector formed part of common general knowledge.
Mr Weir was familiar with the AT&T 110 connector and had examined it under magnification. In his affidavit, he said that the 110 connector system
“is designed to accommodate a multitude of insulated wires by means of wire restraining clamps which provide wire retention and strain relief. Each wire-restraining clamp consists of a set of four resiliently deformable flanges, arranged in two opposed pairs such that an inserted wire is gripped laterally at two distinct locations along its length (one for each pair of flanges).”
Mr Weir identified the features of the AT&T 110 connector that it had in common with the claimed invention. These were the following:
“(a) an integrally formed basic body made of injection moulded plastic;
(b)a plurality of wire-restraining clamps, each consisting of a set of four resiliently deformable flanges arranged in two opposed pairs;
(c)a wire-receiving slot between each pair of resiliently deformable flanges;
(d)wire-receiving passageway lying between the two wire-receiving slots in each wire-restraining clamp, defining an axis;
(e)strain-relief flanges project from the side walls, in a plane perpendicular to the axis;
(f)metal blades for establishing electrical contact by insulation displacement are disposed in the passageway in a vertical plane, perpendicular to the wire axis;
(g)wire retention and strain-relief are both provided by the resiliently deformable flanges;
(h)“scallops” are provided in the free ends of the resiliently deformable flanges, on the inner edges of those flanges, in order to facilitate wire-retention.”
Of course, these features do not make the AT&T 110 connector identical to the claimed invention. For example, the slot in the AT&T 110 connector is essentially straight and parallel-sided. There are two opposed pairs of resiliently deformable flanges acting as wire restraining clamps, rather than a single pair. Furthermore, the AT&T 110 connector includes a connecting block which contains contact elements and is attached to the wiring block.
In cross-examination, Mr Weir qualified his affidavit evidence. He agreed that the strain relief flanges do not project from the walls in a plane perpendicular to the axis, in the same sense as used in claim 1 of the Patent. He also agreed that the connecting block ensures vertical retention of the cable, once the block is attached. Further, the connecting block contributes to the resistance to any axial forces placed on the conductor. Nonetheless, Mr Weir stated that the deformable flanges contribute significantly to the resistance to axial forces. Taking account of these qualifications, I accept Mr Weir’s evidence. To the extent that Mr Weir’s analysis conflicts with that of Mr Douglas on this issue, I prefer Mr Weir’s evidence.
I should add that Mr Weir’s evidence in relation to the AT&T 110 connector was consistent with that of Mr Georgevits, subject to one exception. Mr Georgevits had said in his affidavit in reply on invalidity that the tongues of the AT&T 110 connector were not joined to the wall by means for affording deflection (and therefore the AT&T 110 connector was different in that respect from the Patent). In cross-examination, based on a visual inspection of the connector, he said that he had been mistaken and that the tongues appeared to narrow at the wall, so that the joinder provided a means for deflection of the tongues. Mr Weir, however, had made a sketch of the AT&T 110 connector and his unchallenged evidence was that he was very familiar with the AT&T 110 connector system. In the witness box, Mr Georgevits found it difficult to tell whether there were any differences in design between the AT&T 110 connector inspected by Mr Weir (which was said by Mr Freestone, an electrical engineer, to be identical to one he had seen in 1987) and the one he (Mr Georgevits) had exhibited to his affidavit. Mr Douglas had compared the two connectors but did not identify in his affidavit any differences in the means by which they were joined to the wall. In these circumstances, I prefer Mr Weir’s view, reflected in his sketch, that the tongues of the AT&T 110 connector did not narrow at the point of joinder to the walls.
The affidavit evidence initially read on behalf of Tyco did not establish that the AT&T 110 connector was available in Australia before the priority date. I permitted Tyco to read an affidavit by Mr Freestone relatively late in the hearing. I did so after giving 3M an opportunity to make inquiries concerning Mr Freestone’s proposed evidence. 3M made diligent inquiries, but did not seek to cross-examine Mr Freestone or to adduce evidence at odds with his. Nor did it seek an adjournment to take its inquiries further.
Mr Freestone attended the annual meeting of the Australian Telecommunications Users Group in Sydney in 1987. This was the major cabling and trade show for those working in the telecommunications and data communications industry. At that time, new cabling standards were being developed for commercial building cabling, and there was considerable interest in cabling systems on the market.
Mr Freestone estimated that 600 to 1000 people attended the meeting on each of the three days it was held. The AT&T 110 connector was prominently displayed on a stand organised by AT&T and Honeywell. The stand was well attended. Mr Freestone was able to identify the AT&T connector exhibited to Mr Georgevits’ affidavit as identical to the one he had seen at the meeting (although the particular connector exhibited to Mr Georgevits’ affidavit was apparently manufactured in 1992).
Mr Freestone also gave evidence that from late 1987 MOD-TAP System Corporation (“MOD-TAP”) had begun to manufacture products that would enable its system to interface and be compatible with other products. MOD-TAP was purchasing the AT&T 110 connector from AT&T in the United States, and incorporating the IDC unit into a base it manufactured as part of its system.
Mr Ward, formerly a Project Manager for the Commonwealth Bank of Australia, gave evidence that he became aware in 1988 that Honeywell Pty Ltd was using the AT&T 110 connector as part of its Premises Distribution System (“PDS”). He was given a demonstration at that time of how the PDS worked. Mr Ward incorporated the PDS system, including the AT&T 110 connector, into a draft plan for the Commonwealth Bank’s Burwood Computer Centre. It was installed there before the end of 1988.
In my opinion, this evidence supports an inference that the AT&T 110 connector formed part of the background knowledge and experience available to all in the relevant field considering the making of new electrical connectors or the making of improvements to old electrical connectors: cf Elconnex (No 1), at 509, per Burchett J. I think that inference is reinforced by the composition of the hypothetical skilled worker in this case. It is further reinforced by evidence that the AT&T 110 connector was widely known shortly after the priority date. It is a fair inference that the promotional activities of Honeywell Pty Ltd before the priority date were by no means insignificant. Having regard to Mr Douglas’ limited experience, I do not regard the fact that he could not recall seeing the AT&T 110 connector prior to 1989 as being of significant weight on this issue.
The Idea of Combining Wire Retention and Strain Relief as a Single Feature
In his final oral submissions, Mr Catterns placed considerable emphasis on the inventiveness of the idea of combining the features of superior strain relief and wire retention as a single feature within a connector. Mr Catterns accepted that there was no direct evidence that such an idea should be characterised as inventive having regard to the common general knowledge in Australia. Neither Dr Stark nor Mr Douglas, for example, addressed this question.
Mr Catterns relied in part on the failure (as he argued) of Tyco, as the party bearing the onus of proof, to demonstrate that the notional skilled worker would or could have come up with the idea. He further submitted that, in any event, it is a matter of inference from the evidence that the idea was inventive. He contended that the commercial imperative that motivated 3M to set in motion the work undertaken by Mr Seidel and his team had not been shown to exist in Australia. Moreover, so he argued, modular connectors were not well-known in this country.
If there were no evidence on the question of the inventiveness of the idea, Tyco would have failed to have discharged its onus. But the evidence, although perhaps somewhat sparse on this issue, was not quite as bare as Mr Catterns suggested.
As I followed Mr Catterns’ submissions, he contended that a skilled worker in Australia before the priority date would not have been prompted to seek additional means for retaining conductors against both vertical and axial forces. I think this submission tended to overlook the evidence given, for example, by Mr Douglas, that the need for effective strain relief was a constant problem that had to be addressed by all users of conductors, and that that need was fulfilled in a variety of ways before 1989. Mr Lyneham expressed a different view but the scope of his experience in relation to this question was limited. It is not as though the need for improved forms of strain relief was not acknowledged or understood in Australia.
Moreover, in my view, Mr Catterns’ submissions require Australia to be regarded as more of a technological backwater in 1989 than the evidence suggested. Dr Stark suggested that in 1989 and earlier the general standard of engineering education in Australia was of a high quality and was comparable to that in the United States. Mr Seidel said that the ITU trade show held in 1987 (that provided the impetus for the invention claimed in the Patent) was the largest trade show of its kind in the world, attended by all of the largest corporations and governmental authorities working in the telecommunications field. There is no reason to think that representatives from Telecom, and others from the Australian telecommunications industry, did not attend the ITU Trade Show. No evidence was led to negate the obvious inference from Mr Seidel’s evidence. It is difficult to accept that the uninventive but skilled worker in Australia would not have appreciated that an increase in the use of computers and the volume of data transmission would create greater demands on telecommunications distribution networks. Similarly, it is difficult to believe that the skilled addressee would not have thought that these developments were likely to generate greater use of larger wire gauges in order to facilitate faster transmission of data and a need for smaller wire counts. The evidence showed that larger wire gauges were in use in Australia before 1989.
Mr Catterns’ submissions also tended to overlook the evidence relating to the Krone module. The evidence established, in my opinion, that this module included flanges that performed both wire retention and strain relief functions, albeit not exclusively. The flanges were not flexible in the sense described in the Patent, since they comprised rigid plastic edges, but they performed both functions in the one module.
Mr Hunter’s evidence was helpful on this point. He pointed out that the typical design of the U-shaped contact element in an IDC connector of itself provided some resistance to longitudinal forces applied to a conductor, as well as operating as a retaining means for the conductor (although Mr Yates accepted that the resistance could not properly be described as strain relief). He went on to consider what would occur if one wished to provide additional means for holding the conductor in place and for resisting the forces that might then be applied to the conductor. He said that a number of different means could be considered. If, however, size was a constraining factor (for example, if one were concerned to arrive at a modular product of approximately the same size and dimensions as an existing product), this would tend to militate against the use of additional componentry to provide the additional means of resisting vertical and axial forces. Moreover, the design principle that the number of components in an assembly should be minimised, would favour the use of an integrally moulded feature which could be incorporated at almost zero incremental cost. Since in an IDC the conductor is loaded into the connector from above, it was logical that an integrally formed retaining element should be in the vertical plane so it could be loaded in the same way. Commonsense dictated that, if it were desired to improve the capacity of the slot to resist axial forces applied to the conductor, the sides of the slot would have to flex in a direction which resulted in resistance to the force. A method where co-planar resilient tongues or fingers hinge was merely one well-known way of achieving the required flexure.
Mr Hunter was cross-examined as to whether his views were influenced by the tasks he was asked to perform in preparing his affidavit. His response was that his views would have been the same independently of the task he was asked to perform. I accept his evidence.
The question of whether the development of an idea can be regarded as inventive is particularly difficult, especially when little of the evidence has been directed specifically to this question. The need to guard against ex post facto reasoning is particularly acute in relation to an issue of this kind. It is also necessary to bear in mind the small degree of inventiveness that is required. Nonetheless, I infer from Mr Hunter’s evidence that if a team comprising the skilled persons I have identified were concerned to provide additional means for retaining conductors against both vertical and axial forces, then the idea of combining strain relief and wire retention as a single feature within a module was one that would simply be a logical product of known engineering and design principles. The process might involve some thought (it took Mr Seidel some five hours to come up with the idea) and it would be necessary to consider a number of different approaches. Some of these are exemplified in products forming part of the common general knowledge in 1989. I have referred to the Krone ten-pair module. Other examples include the outer V-shaped slots in the Mini Picabond connector and the resiliently deformable flanges in the AT&T 110 connector.
It seems to me that all of these factors created an environment where the skilled worker would have appreciated the need for improved strain relief and wire retention. The skilled worker would have appreciated that there were a number of possible approaches to the problem. The choice of combining strain relief and wire retention in a single feature in a modular connector was one of the choices which would have been apparent, albeit after some inquiry and consideration, to a non-inventive skilled addressee comprising a team of the kind I have identified.
Mr Catterns relied on evidence given by Mr Weir, to the effect that the use of a tapered slot might, to some extent, reduce the effectiveness of the slot in performing strain relief functions because of the need to force the wire through the narrow opening of the slot. But that possible design difficulty does not, in my view, produce the result that the idea of combining strain relief and wire retention involved an inventive step. Mr Weir rejected the suggestion that the intuitive response to the difficulty would have been to provide two separate mechanisms for strain relief and wire retention. Combining the two functions in a single mechanism, in my view, was an idea that an uninventive but skilled worker would have appreciated was well worth trying.
It follows that notwithstanding the generous approach to the concept of an inventive step established by the authorities, the idea of combining wire retention and strain relief as a single feature did not involve an inventive step in the relevant sense. It was merely a choice among a number of options that would have been apparent to the notional skilled worker concerned to seek additional means for retaining conductors against both vertical and axial forces.
the combination of integers
Mr Yates first submitted that, independently of any consideration of the AT&T 110 connector, the combination embodied in the Patent would have been obvious to the notional non-inventive skilled addressee having the characteristics that I have identified. (Mr Yates took this approach in case a finding was made, against his contention, that the AT&T 110 connector did not form part of common general knowledge in 1989.) Mr Yates characterised the critical features of the combination as the use of flexible retaining elements within a module connector, where the elements form a slot to retain an insulated conductor against outward movement, whether the force be radial or axial, and where the elements deflect towards the contact element on insertion of the conductor.
The starting point is that each of the components of the combination formed part of common general knowledge prior to 1989. In particular, it was known that:
· multi-pair electrical connectors were in use;
· multi-pair connectors could be used to accommodate conductors of different diameters;
· both strain relief and wire retention could be provided by a slot;
· moulded plastics could be used to construct flexible retaining elements, including those operating by a hinge mechanism;
· flexible retaining elements could be used to retain tubular items;
· flexible retaining elements could be designed as an integral feature of a small object such as a connector; and
· flexible retaining elements could be used to provide a locking or gripping function on objects.
The question is whether the combination of integers in the Patent involved an inventive step. Tyco’s position that it did not was supported by the evidence of Mr Hunter. As I have noted, Mr Hunter, unlike Mr Douglas and Dr Stark, approached the question from the perspective of a design team. I have already referred to Mr Hunter’s evidence bearing on the inventiveness of the idea of combining strain relief and wire retention in a single feature (see [210]-[211] above).
Mr Hunter expressed the view that, given that a design team had been asked to implement such an idea, it was logical to employ integrally formed retaining elements in the same plane in which the contact slot is located. He also said that the use of a slot which narrows towards the top in order to impede vertical movement of the wire conductor was a common design practice before 1989. Mr Hunter’s affidavit continued as follows:
“The slot may itself provide some, but perhaps insufficient, resistance to force applied to the conductor in the axial direction away from the point of contact between the conductor and the contact element. If one wished to improve on this then, to a designer, common sense would suggest that the sides of the slot should flex in a direction which results in resistance to such a force. Such flexing can only really be in a way where the flexure occurs in a direction towards the IDC contact when the wire is inserted. If the flexure were in the opposite direction then this would not resist the conductor pulling away from the contact element and would defeat the object for which the flexure is sought….
[T]here are well known ways of achieving such flexure. The Patent describes a method where co-planar resilient fingers hinge. This is brought about by deliberate design choice. On the other hand, the Tyco product brings about flexure through the use of resilient fingers which are not co-planar and which have a cantilever action. This is an alternative and deliberate design choice.
Each of these design choices…were in 1989 logical and routine choices for a designer having regard to the object to be achieved (ie, given size constraints, and the desire to provide additional means of resistance to forces which might operate on the conductor in the vertical direction, and in the axial direction, to disrupt the electrical contact). The need for the connector to accommodate conductors of varying diameters is simply a question of using compliant fingers.”
Mr Hunter’s opinion is, of course, not determinative of the issue to be resolved. It is necessary to take account of the possibility that Mr Hunter, in referring to “logical and routine” choices for a designer, may not have a precise understanding of the legal criteria to be applied. It is also necessary to guard against the dangers of hindsight.
Nonetheless, I think that Mr Hunter’s opinion, when considered in the context of all the evidence, supports the proposition that it would have been apparent to the non-inventive skilled worker (comprising the team I have identified) that it was worthwhile to try the combination of the integers ultimately embodied in claim 1 of the Patent (see Aktiebologet Hassle v Alphapharm [165] above). I do not think that the cross-examination of Mr Hunter casts doubt on his analysis, notwithstanding that he had access to material that did not form part of common general knowledge in 1989. Mr Hunter also dealt satisfactorily, in my opinion, with criticisms made by Dr Stark of his reasoning in relation to the Tinnerman clip as an example of the use of flexible fingers as retaining elements. Moreover, Mr Hunter fell squarely within the notional team, notwithstanding that his own experience with electrical connectors was relatively limited. As I have already noted, much of the criticism directed at Mr Hunter’s evidence was heavily influenced by the contention, ultimately abandoned by 3M, that the non-inventive skilled worker should be seen as a user of connectors rather than as a team including a person skilled in the design and development of plastics.
Mr Hunter’s evidence was consistent with the findings I have made as to the nature and extent of common general knowledge before the priority date. In particular, the use of a slot in a connector to provide strain relief and wire retention was, as Mr Yates submitted, an old combination. Mr Hunter’s view that it was a purely routine step for the design team to consider creating the slot by using flexible retaining elements which deform in the direction of the contact element seems to me to be consistent with the knowledge and experience that would be attributed to the members of the team, especially those skilled in the design and development of plastics and injection moulded components.
The tapering of the slot was an obvious measure to improve wire retention, even though it may have presented some routine design problems in ensuring that the single feature was effective in providing both wire retention and strain relief.
I do not think that Professor Samuel’s evidence, of itself, would have warranted the conclusion that the combination embodied in the Patent required no inventive ingenuity, even of a small order. Professor Samuel, perhaps too readily, characterised as self-evident the use of a “toggle action clamping means” in an electrical connector. (Professor Samuel used that expression to refer to the technique by which the relative movement of two bodies is restricted by the incorporation of a suitable diagonal element which exploits (primarily) frictional forces.) There is some force in Mr Catterns’ submission that Professor Samuel’s high qualifications and ingenuity may have led him to overstate the extent to which basic principles can yield solutions in particular contexts. Nonetheless, his evidence provides some support for Mr Hunter’s more down to earth approach.
I have not found Mr Douglas’ evidence on the obviousness issue to be particularly helpful. That is largely because his perspective was very much narrower than that of the non-inventive skilled worker constituted by a design team. Moreover, in his affidavit evidence Mr Douglas expressed the view that the Patent was “an elegant solution to the problems posed [in the specifications]”. When asked in cross-examination what he understood by the word elegant, he replied:
“Simple, effective and efficient.”
As Mr Yates submitted, this response does not suggest that the “solution” embodied in the claims provided inventive subject matter.
As I have noted, Dr Stark gave only limited evidence on the question of obviousness. I consider that Mr Hunter adequately answered Dr Stark’s criticisms of his (Mr Hunter’s) reasoning. Dr Stark also gave evidence that if he had been asked in 1989 to provide strain relief to prevent withdrawal of an insulated conductor he would have considered using a cap in combination with the body of the connector to clamp the conductor. He thought it “unlikely” that he would have used or employed the solution in the Patent, in particular the use of flexible retaining elements, because clamping was a more reliable solution. But on any view clamping was not the only “solution” adopted in the prior art. Moreover, I do not regard Dr Stark’s preference for clamping, which plainly informed his evidence, as warranting the conclusion that it would not have been apparent to a non-inventive skilled worker to try the combination of integers ultimately used in the invention as claimed in the Patent.
Thus far I have considered the question of obviousness independently of the AT&T 110 connector. I have, however, found that the AT&T 110 connector formed part of the prior art at the priority date for the purposes of obviousness. That finding, in my view, strongly reinforces Tyco’s case. The AT&T 110 connector, although not having all the features of the patent in suit had many of them. In particular, it had resiliently deformable flanges that, as I have found provided both strain relief and wire retention (although they were not the exclusive sources of strain relief). Each pair of flanges constituted a slot into which the conductor was placed.
Given these characteristics and having regard to the evidence to which I have referred, it seems to me a very short step for the non-inventive skilled worker to consider it worthwhile to consider the combination of integers embodied in the Patent. Making the slot narrower at the top so as to resist vertical forces was, as Mr Yates suggested, self-evident. Using one pair of resiliently deformable flanges or tongues instead of two can hardly be regarded as anything other than an unimaginative modification of an established technique in the same field. Dispensing with the connecting block falls into the same category.
I did not understand 3M to contend that, if Tyco made out its case on obviousness in relation to claim 1, it nonetheless should not succeed in relation to claims 4, 6, 8 and 9. Mr Catterns did not say anything in opposition to Mr Yates’ submission that none of any additional features referred to in claims 4, 6 and 8 could transform the claimed invention into one involving an inventive step. In any event, I regard the evidence to which I have referred as satisfying me that claims 4, 6 and 8 involve no inventive step. Claim 9, the omnibus claim, stands in the same position as claim 1.
In my opinion, Tyco has made out its case on obviousness and is entitled to succeed on its cross-claim.
THE SECTION 40 GROUNDS
There is no need to address Tyco’s submission, which was not fully developed in argument, that the claims in the Patent did not properly define the invention.
orders
I direct Tyco to bring in short minutes of order consistent with these reasons for Judgment. I shall also direct the parties to make written submissions as to costs.
I certify that the preceding two hundred and thirty two (232) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice SACKVILLE. Associate:
Dated: 26 September 2001
Counsel for 3M: Mr D K Catterns QC with Ms K Howard Solicitor for 3M: Freehill Hollingale & Page Counsel for the Respondent: Mr D M Yates SC with Ms A Bowne Solicitor for the Respondent: Mallesons Stephen Jaques Dates of Hearing: 2, 3, 4, 5, 6, 9, 10, 23, 24 & 25 July 2001 Date of Judgment: 26 September 2001
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