AB Dick Co. v. Burroughs Corp.

• Citation: 617 F. Supp. 1382
• Decision Date: 10 September 1985
• Docket Number: No. 78 C 75.,78 C 75.
• Parties: A.B. DICK COMPANY, Plaintiff, v. BURROUGHS CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

617 F. Supp. 1382

A.B. DICK COMPANY, Plaintiff, v. BURROUGHS CORPORATION, Defendant.

No. 78 C 75.

United States District Court, N.D. Illinois.

September 10, 1985.

COPYRIGHT MATERIAL OMITTED

L. Michael Jarvis, Chicago, Ill., for plaintiff.

Dugald S. McDougall, Chicago, Ill., for defendant.

FINDINGS OF FACT, CONCLUSIONS OF LAW and JUDGMENT ORDER

SHADUR, District Judge.

A.B. Dick Company ("Dick") has sued Burroughs Corporation ("Burroughs") for patent infringement. After a bench trial (including the usual submission of voluminous documents), the parties have submitted post-trial cross-memoranda and responsive memoranda, as well as revised proposed findings of fact and conclusions of law (all of these also voluminous, though not needlessly so in light of the complex subject matter).

In accordance with Fed.R.Civ.P. ("Rule") 52(a), this Court finds the facts specially as set forth in the following Findings of Fact ("Findings") and states the following Conclusions of Law ("Conclusions"). To the extent if any the Findings as stated reflect legal conclusions, they shall be deemed Conclusions; to the extent if any the Conclusions as stated reflect factual findings, they shall be deemed Findings.

Findings of Fact

I. Parties and Proceedings

1. Dick is a Delaware corporation with its principal place of business in Chicago, Illinois. Dick is sole owner of United States Patent No. 3,596,275 (the "Sweet Patent") by written assignment from inventor Richard G. Sweet ("Sweet").

2. Burroughs is a Michigan corporation with its principal place of business at Burroughs Place, Detroit, Michigan. Burroughs has a regular and established place of business at 324 South Michigan Avenue, Chicago, Illinois.

3. This Court has jurisdiction over the parties and the subject matter of this action, and venue is properly in this District.

4. Gould, Inc. ("Gould"), originally a co-plaintiff in this action, was the owner of United States Patent No. 3,298,030 (the "Lewis-Brown Patent"), which has been held invalid in the Mead litigation (see Finding 6) before the trial in this case. By stipulation the Lewis-Brown Patent has been withdrawn from this case and Gould has been dismissed as a party.

5. Dick charges Burroughs with infringing the Sweet Patent by making and selling ink-jet recording equipment incorporated in its Non-Impact Endorser. Burroughs denies it has infringed the Sweet Patent and asserts the Sweet Patent is both invalid and unenforceable.

II. Mead Litigation

6. Two prior actions (collectively the "Mead litigation") have also involved the validity and claimed infringement of the Sweet Patent: A.B. Dick Company and Gould, Inc. v. The Mead Corporation, Civil Action No. C-3-78-287 and Mead Digital Systems, Inc. v. A.B. Dick Company and Gould, Inc., Civil Action No. C-3-78-177, both in the United States District Court for the Southern District of Ohio. After a November 1980 consolidated trial in those cases, Honorable Walter H. Rice issued an opinion and judgment, 521 F.Supp. 164 (S.D.Ohio 1981):

(a) holding the Sweet Patent valid but not infringed by Mead's apparatus and

(b) holding the Lewis-Brown Patent invalid.

On appeal that judgment was affirmed, 723 F.2d 455 (6th Cir.1983).

7. To the extent this Court (based of course on the record in this case) reaches the same Findings as did Judge Rice in the Mead litigation, it will—rather than repeating those findings verbatim—simply adopt them, citing them "Mead Finding—" with a reference to the relevant page in 521 F.Supp.

III. Sweet's Development and the Sweet Patent

A. Sweet's Development

8. Sweet developed his ink-jet recorder at Stanford University in the early 1960s. Funded by an Army Signal Corps contract, Sweet developed a technique for selective charging and deflection of individual ink droplets. In that respect, though the record in this action does not contain all the details referred to in Mead Findings 13-37, 521 F.Supp. 169-72, the substance of the record here is identical, and none of the differences is material to the issues in this case. This Court adopts Mead Findings 13-37.

9. Instead of charging his ink droplets uniformly and controlling their trajectories by varying the magnitude of a deflecting field (as had been done, for example, in the Inktronic machine produced by Teletype, based on United States Patent No. 3,060,429 (the "Winston Patent")), Sweet used a constant deflection field and controlled the droplet trajectories by selectively charging the droplets, one at a time, as they were formed. Each droplet, at its instant of formation, was given an electric charge proportional in magnitude to the instantaneous value of "signal" voltage at that precise moment.

10. Sweet's development made possible higher recording speed with an ink jet, because with Sweet's technique the limiting factor on recording speed became the rate at which droplets were formed and charged, rather than the rate at which the droplets moved through the deflection field. Sweet was able to generate and charge individually more than 100,000 ink droplets per second, each one of which carried a tiny increment of "intelligence." Each droplet was deflected by the constant electric field to the precise degree needed to make it "land" where the signal voltage "commanded" it to land—either at some particular position on the paper or in an intercepting receptacle, positioned to catch droplets not used for recording.

11. Though Dick was not forthright on this score at trial,¹ there is no question but that the purpose of Sweet's development was to produce a better direct-writing "oscillograph," as the latter term is defined by the McGraw-Hill Encyclopedia of Science and Technology:

A measurement device for determining waveform by recording the instantaneous values of a quantity such as voltage, as a function of time. It consists of three major components: (1) a primary detector for sensing the instantaneous values of the quantity, (2) the timing system for introducing a time scale on the record, and (3) some means for recording the waveform.

12. Finding 11 is both informed and compelled by a host of factors, including the following:

(a) Sweet's original proposal to the United States Signal Corps involved an operative model of the device, which Sweet called a "Hydraulic Oscillograph."

(b) Sweet's Signal Corps project was entitled "High Frequency Direct Writing Oscillograph." All the monthly and quarterly reports, and the final report, issued on the project were entitled in the same way.

(c) After the reduction of his device to practice, Sweet sought to interest various companies in the development of the device. He wrote to some eight companies, all of whom were suppliers of oscillographs or recorders.

(d) Honeywell's patent attorney Lockwood Burton ("Burton"), who had the responsibility for preparing the patent application pursuant to Sweet's exclusive license agreement with Honeywell, sent the draft application to Sweet with a May 6, 1963 letter entitled "Patent Application on High Frequency Direct Writing Oscillograph." Burton said in his letter:

I have prepared a draft for a patent application to cover the oscillograph which is the subject matter of your agreement with Honeywell.

As Burton testified via deposition in joint discovery in this and the Mead litigation:

Q. Did you consider that Mr. Sweet had developed an invention in the field of oscillography?

A. Yes.

Q. In any other field?

A. No other field was concerned.

(e) Sweet himself testified at the Mead trial:

Q. .... And the first object of the Sweet Patent, let's take the second paragraph. Which states, "This invention relates to signal apparatuses and more particularly to a direct writing signal recording system."

A. Yes.

Q. I take it from that that what you were disclosing in your patent was a system to record an electrical signal?

A. Yes.

Q. Now, in the first object, it says, "It is an object of the present invention to provide an improved recording system which is capable of recording a wide band of input signals which may vary in frequency from direct current signals to signals having frequencies in the kilocycle range."

A. Yes.

Q. Was that the primary object of your invention?

A. Yes.

Q. Doesn't that define an oscillograph?

A. Yes, I think so.

Q. All right. In the conclusion of the specification, in the last paragraph, in column 11 of the patent, you state that, "It may be seen that there has been provided in accordance with the present invention a graphic recorder for the direct writing of signal information which may cover a wide band of signal frequencies."

A. Yes.

Q. Now, isn't that description synonymous with oscillograph?

A. Yes.

And see Mead Finding 53, 521 F.Supp. at 173.

13. Sweet's device initially contained the following elements:

(a) means for supplying ink under pressure;

(b) a nozzle or orifice from which the ink could issue as a free jet;

(c) a means for causing the jet to break up into regularly-spaced droplets of uniform size;

(d) a charging electrode for independently charging the individual ink droplets in proportion to the instantaneous values (at the moments of droplet formation) of the varying voltage applied to the electrode;

(e) a pair of deflection plates carrying a uniform electric field to deflect the droplets;

(f) a recording surface; and

(g) a transport system for advancing the recording surface.

14. Thereafter, to eliminate the problem of "puddling" (the result of excess ink when the paper recording surface is moving slowly or when the waveform being recorded is not changing quickly), Sweet developed a means for deflecting unwanted or excess ink droplets to a catcher that intercepted them before they reached the recording surface. That deflection and nonrecording of some of the droplets would still give an apparently cursive representation of the incoming waveform, but one of lesser intensity and a cleaner appearance. As Burton testified:

Q. What was the purpose of the catcher or

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