Paper Converting Mach. Co. v. Magna-Graphics Corp.

• Decision Date: 26 April 1982
• Docket Number: Nos. 81-1487,81-1766,MAGNA-GRAPHICS,s. 81-1487
• Citation: 680 F.2d 483
• Parties: PAPER CONVERTING MACHINE COMPANY, Plaintiff-Appellee, v.CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 483

680 F.2d 483

PAPER CONVERTING MACHINE COMPANY, Plaintiff-Appellee, v. MAGNA-GRAPHICS CORPORATION, Defendant-Appellant.

Nos. 81-1487, 81-1766.

United States Court of Appeals Seventh Circuit.

Argued Feb. 24, 1982.

Decided April 26, 1982.

Jerome F. Fallon, Tilton, Fallon, Lungmus & Chestnut, Chicago, Ill., for plaintiff-appellee.

James R. Custin, Nilles & Custin, S.C., Milwaukee, Wis., for defendant-appellant.

Before SWYGERT, Senior Circuit Judge, POSNER, Circuit Judge, and BARTELS, District Judge. ^*

PER CURIAM.

This is an appeal from a judgment in favor of appellee, Paper Converting Machine Company, and against appellant, Magna-Graphics Corporation, entered in the District Court for the Eastern District of Wisconsin, holding valid appellee's patent covering a machine that rewinds toilet paper stock and paper towel stock from a After examination of the briefs and careful review of the record, and based upon the oral argument before this Court, we conclude that the district court in entering its order thoroughly and carefully analyzed all the issues raised in this appeal. Accordingly, we affirm the district court's order and judgment and hereby adopt its opinion entered on February 26, 1981, attached hereto as an appendix.

parent roll onto small consumer rolls, and also finding the same infringed by appellant's machine; in the same order and judgment the court awarded treble damages and injunctive relief against the appellant.

APPENDIX

FINDINGS OF FACT, CONCLUSIONS OF LAW, AND ORDER

This is an action for patent infringement arising under the patent laws of the United States, Title 35 U.S.C. The court has jurisdiction under 28 U.S.C. § 1338 and venue lies in this district under 28 U.S.C. § 1400(b).

A court trial was held in the action from November 3 through November 7, 1980. At issue is whether or not the defendant Magna-Graphics Corporation has infringed plaintiff Paper Converting Machine Company's United States Patent Reissue No. 28,353 which is entitled "Web-Winding Apparatus and Method" and which was reissued on March 4, 1975, based upon original Patent No. 3,179,348 dated April 20, 1965. The parties have agreed that:

"8. Representative claims in suit are nos. 1, 4, 5 and 13. If any of said claims is held to be valid and infringed by the accused machine, plaintiff shall be entitled to an injunction restraining defendant from infringement of such claim and all other claims of the patent in suit that are generally similar to it; whereas if none of claims 1, 4, 5 and 13 is held valid and infringed, then plaintiff will not assert that any other claim of the patent in suit is infringed." (Statement of uncontroverted facts filed October 31, 1980.)

Upon review of the evidence presented at trial, the Court finds that claims 1, 4, 5 and 13 are valid and infringed. ^* The plaintiff With regard to the issue of the validity of claims 1, 4, 5 and 13 of the patent-in-suit, the subject matter of those claims was not obvious to a person with ordinary skill in the art at the time plaintiff applied for its patent. While each single element of the claims had precedent in the prior art, the combination of elements set forth in the patent-in-suit was novel, and it provided a workable solution to a recognized problem in the industry, that being the existing limitations on the speed of the rewinding process. Secondarily, the patent-in-suit provided a superior method for cutting and transferring two-ply web, but the primary benefit of the patent was speed.

is therefore also entitled, in addition to injunctive relief, to compensation for the infringement pursuant to 35 U.S.C. § 284.

The defendant designed the accused machine for use in winding single-ply hardwound rolls of toweling at high speeds. To achieve a hardwound roll for industrial use, the paper must be rewound under high tension. The defendant claims that the accused machine achieves higher tensions than the patented machine is capable of, that the primary purpose of the accused machine is to wind under high tension rather than at high speed, that the higher tension is made possible by the novel arrangement and design of the cutting and transfer mechanism in the accused machine, and, therefore, that the accused machine is noninfringing.

The Court finds, however, that there is no evidence that the accused machine achieves higher tensions than the patented mechanism is capable of, but on the contrary that the evidence supports findings that the patented machine, in addition to providing a superior method for rewinding double-ply paper, is capable of rewinding hardwound rolls under high tension at high speed, and also that with minor modification the defendant's machine could be adapted for creating a reverse fold instead of merely an "incipient curl" in the leading edge of the paper, which fold would enable the machine to rewind double-ply paper. Further, the evidence supports a finding that the arrangement and design of the cutting and transfer element in the accused machine was devised by the defendant for the purposes of avoiding the plaintiff's patent, and that in both function and design the mechanism is the substantial equivalent of the mechanism in the patented machine, and the Court is persuaded that in substance what the defendant did was to reverse the severing means, i.e., the knife and the pin means.

A patent claim is infringed if the accused device has a substantial identity of function, manner of operation, and results. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). With respect to claim 1 of the patent-in-suit, all of the elements described in the claim are present in the accused machine except that the pins are not "extensibly" mounted in the bedroll in the accused machine. The function of the pins in both machines is to impale the web for subsequent transfer to the new core. Defendant claims as an advantage of its retracted and immovable pins that the arrangement maintains the tension of the web against the bedroll and prevents the leading edge from being affected by wind. Since wind tension is not a problem in the patented machine, and since the patented machine is also capable of achieving high tension rewinding, the purported advantage is delusive, and, in fact, the apparatus in As for claims 4 and 5, which are dependent claims, defendant's major point of distinction is in the mounting of the shaft to which the pusher is attached. The defendant argues that under the language of the claims, the shaft is a part of the pusher; that in the patented machine, the pusher is mounted rearward of the knife element in the bedroll; that in the accused machine the pusher is mounted forward of the knife element in the bedroll; that the structure of the machines is therefore different and defendant's is noninfringing; and that the advantage of the defendant's design for its purposes is to provide an increased forward motion of the web at the moment of transfer to maintain the tension of the web. First, however, the purported advantage is in fact not a real advantage since the forward impetus given to the web by the forward mounting of the shaft is de minimus. More importantly, a patent claim includes both the written language and the diagrammatic representations in the claim. Viewing together the writings; Figures 1, 2, 3, 4, 5, 7, 15, 16, 20, 21, 22, and 23 which are attached as Appendix A; and the representations in claims 4 and 5 of the patent-in-suit, a fair interpretation is that the pusher does not include the shaft upon which it is mounted. That being so, the pushers are mounted rearward of the knife element in the bedroll, and the defendant's arrangement is literally equivalent and is infringing.

the defendant's machine performs an equivalent function to the apparatus in the patented machine. Pursuant to 35 U.S.C. § 112, an element in a claim for a combination patent may be expressed "as a means or step for performing a specified function"-in this case, the impalement and transfer of the leading edge to the new core-"and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."

Finally, with regard to claim 13 of the patent-in-suit, at issue is whether or not the accused machine makes a folded free leading edge. As previously stated, the Court finds that the "incipient curl" on the defendant's free leading edge can with minor modification to the accused machine be made into a folded free leading edge, and, therefore, it also finds that claim 13 of the patent-in-suit reads literally on the accused machine.

At the trial of this action, the Court examined with care the patent applications and diagrams submitted by the parties, and it also examined in detail the working models furnished by the parties of the cutting and transfer mechanism from the plaintiff's machine and from the accused machine. This decision is based upon the Court's examination of all of those items and upon all of the other evidence introduced and the testimony at trial.

Pursuant to Rule 52(a) of the Federal Rules of Civil Procedure, the discussion above shall constitute a portion of the Court's findings of fact and conclusion of law. In addition, the Court makes the following specific findings of fact and conclusions of law which are adapted with minor modifications from those submitted by the plaintiff.

FINDINGS OF FACT

I. Parties and Jurisdiction

1. Plaintiff Paper Converting Machine Company is a corporation of the State of Wisconsin and has its principal place of business at Green Bay, Wisconsin.

2. Defendant Magna-Graphics Corporation is a corporation of the State of Wisconsin and has a regular and established place of business in this district at Van Buren Street Industrial Park, Oconto Falls, Wisconsin.

3. This is an action for patent infringement arising under the patent laws of the United States, Title 35...