Fromson v. Advance Offset Plate, Inc.
| Decision Date | 08 November 1983 |
| Docket Number | 83-914 and 83-915,83-913,Nos. 83-850,s. 83-850 |
| Citation | 720 F.2d 1565,219 USPQ 1137 |
| Parties | Howard A. FROMSON, Appellant, v. ADVANCE OFFSET PLATE, INC., Graphcoat, Inc., News Publishing Company of Framingham, Newspapers of New England, Inc., Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
John E. Lynch, New York City, for appellant.
Arthur F. Dionne, Windsor, Conn., for appellees.
Before MARKEY, Chief Judge, DAVIS, Circuit Judge, and NICHOLS, Senior Circuit Judge. *
Appeal from four judgments of the U.S. District Court for the District of Massachusetts holding that claims 1, 4, 6, 7, 12 and 16 of U.S. Patent 3,181,461 issued to Fromson are not infringed or contributorily infringed. We vacate and remand.
The Fromson patent involves a process for making a photographic printing plate for use in the art of lithography. The art involves creation on a printing surface of certain areas that are hydrophilic (water attracting) and organophobic (ink repelling) and other areas that are organophilic (ink attracting) and hydrophobic (water repelling).
At the time of the Fromson invention, the state of the art was depicted generally by U.S. Patent 2,714,006, issued on July 26, 1955 to Jewett and Case (Jewett). Jewett teaches the preparation of a presensitized lithographic plate by: first treating the surface of an aluminum sheet with an aqueous solution of an alkali metal silicate to form a water insoluble, hydrophilic, siliceous, organophobic surface layer; treating that layer with a diazo compound to form a light-sensitive, water soluble, diazo coating; and exposing portions of the coated plate to light through a negative or stencil, thus causing the exposed portions to become water insoluble, hydrophobic, organophilic image areas. The plate is then washed
with water to remove the water soluble diazo portions that were not exposed to light, thereby exposing the water insoluble, hydrophilic, organophobic, siliceous surfaces in their place (non-image areas). An image developer or printer's developing ink is poured on the plate and the excess wiped off, making the image areas plainly visible. The plate is then ready for mounting on a press, successive treatments with water and ink, and printing. In this process, the image areas absorb ink while the non-image areas repel it.
In the 1950's, Fromson was in the business of selling metals and began, through Ano-Coil Corporation, to manufacture and sell anodized aluminum. In anodization, aluminum is coated with oxide while it is the anode in an electrolytic bath wherein it is subjected to an electric current, whence the term "anodized". The anodized aluminum was used in articles such as television antennas, furniture tubing, and nameplates.
Fromson, with no background in lithography, conceived of using anodized aluminum as a replacement for non-anodized aluminum in the plate taught by Jewett. His invention according to the Fromson patent improves the Jewett plate in a number of ways. It enables use in preparation of the plate of light-sensitive compounds other than diazo compounds. It enables the coating to absorb nitrogen-containing materials released by the light-sensitive compounds when exposed to light. Also, as the district court found, the Fromson plate enjoys improved corrosion resistance and a longer press life.
Fromson filed his application for patent in May, 1963, and the patent issued in May, 1965, containing eleven product and five process claims. Claim 1 is representative of the product claims:
1. A sensitized photographic printing plate comprising an aluminum sheet having a surface which has been treated to form an aluminum oxide coating on said surface, a water-insoluble, hydrophilic, organophobic layer on said sheet resulting from the reaction of the aluminum oxide coating and an alkali metal silicate applied to said coating, and a light-sensitive coating over said layer [e.g., diazo resin] having one solubility in relation to a solvent in a state before exposure to light and another solubility in relation to said solvent in another state after exposure to light, said light-sensitive material being soluble in said solvent in one of said states and being insoluble in said solvent and in water, hydrophobic and organophilic in its other state.
Claim 12 is the sole independent process claim:
12. The process of making a sensitized photographic plate comprising the steps of applying to an aluminum sheet having a coating of aluminum oxide, a water-solution of an alkali metal silicate to cause the silicate to react with the aluminum oxide to form a water-insoluble, hydrophilic, organophobic layer on said sheet, drying the layer, and applying over the dry layer a light-sensitive coating having one solubility in relation to a solvent in a state before exposure to light and another solubility in relation to said solvent in another state after exposure to light, said light-sensitive material being soluble in said solvent in one of said states and being insoluble in said solvent and in water, hydrophobic and organophilic in its other state.
After issuance of his patent, Fromson's invention enjoyed extensive commercial success and was the subject of licensing agreements with several companies. Fromson sued Advance Offset Plate, Inc. ("Advance"), charging it with infringement and contributory infringement of product claims 1, 4, 6 and 7, and process claims 12 and 16. He also sued three Advance customers for direct infringement in actions consolidated with that against Advance and now consolidated on appeal. We assume for purposes of this appeal that the claims at issue in those three cases are the same as those asserted against Advance.
It is undisputed that Advance manufactured and sold "wipe-on" plates comprising Though preparation of the Advance plate involves treatment of anodized aluminum with an aqueous solution of alkali metal silicate to yield a water-insoluble, hydrophilic layer, as set forth in the claims, Advance and its customers deny infringement on the sole ground that there is no "reaction" between the aluminum oxide and sodium silicate. It is undisputed that Advance and its customers do what the claims say, i.e., apply a water solution of an alkali metal silicate to an oxide coated aluminum sheet to produce a layer, but it is argued that the layer does not result from a "reaction" as we are asked by Advance to define that term.
an anodized aluminum sheet that had been treated with an aqueous solution of sodium silicate, and that its customers applied a diazo coating to those plates. Because the claims include the application of a diazo coating or other light sensitive layer and because Advance's customers, not Advance, applied the diazo coating, Advance cannot be liable for direct infringement with respect to those plates but could be liable for contributory infringement. It is also undisputed that Advance, not its customers, applied the diazo resin to certain "presensitized" plates. For those presensitized plates, Advance could be liable for direct infringement.
During oral argument on appeal, Advance suggested that its process involves different conditions (e.g., temperature, time) than the Fromson process, an argument neither raised in the brief nor addressed by the district court. Though the argument cannot therefore be considered here, we caution that the asserted claims contain no temperature or time limitations, and that no basis appears on this record for limiting the claimed inventions to preferred embodiments or specific examples in the specification. See, Smith v. Snow, 294 U.S. 1, 11, 55 S.Ct. 279, 283, 79 L.Ed. 721 (1935).
By Memorandum and Order dated May 30, 1980, the district court separated the issues of infringement and invalidity from other defenses and counterclaims. On February 11, 1983, after trial without a jury, the district court found no infringement of "the patent". Because the finding could apply properly only to the six claims at issue, we review the decision as if only the six claims were involved. 219 USPQ 83 (D.Mass.1983). The district court did not resolve the validity issue, noting that the patent had expired. If infringement during the period before expiration be found, the validity issue would of course become viable.
The district court held that the claims of the Fromson patent, when read in light of the specification and prosecution history, must be interpreted as requiring that the water-insoluble, hydrophilic, organophobic layer be the product of a chemical reaction between the aluminum oxide coating and the alkali metal silicate, and that that product be a compound having physical properties different from those of its constituents. Finding no such reaction in preparation of Advance's plates, the district court entered a judgment of noninfringement in the four consolidated actions.
The district court considered unpersuasive three laboratory tests and testimony of Fromson's expert, based on those tests, that Advance's plate had a surface layer resulting from reaction of sodium silicate and anodized aluminum. It considered persuasive the tests and testimony of Advance's expert, who concluded that there is no reaction product of aluminum oxide and silicate on Advance's plate, but that the surface is coated with silica, an insoluble, hydrophilic material. Resolution of that conflicting testimony is not necessary, however, where, as here, a legal conclusion establishes its irrelevance. Indeed, we accept for this opinion that the Advance plate involves the formation of silica.
The district court made no finding on whether silica is organophobic. In response to request for admission number 29, Advance stated that it employs a sodium silicate coating believed hydrophilic and organophobic. The district court found that silica (not sodium silicate) is formed...
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