American Photocopy Equipment Company v. Rovico, Inc., 15905.

Decision Date11 October 1967
Docket NumberNo. 15905.,15905.
Citation384 F.2d 813
PartiesAMERICAN PHOTOCOPY EQUIPMENT COMPANY, Plaintiff-Appellee, v. ROVICO, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Seventh Circuit

COPYRIGHT MATERIAL OMITTED

Samuel J. Stoll and Robert S. Stoll, New York City, Sidney Wallenstein, Chicago, Ill., for appellant.

Albert E. Jenner, Jr., Edwin M. Luedeka, Chicago, Ill., William C. Conner, New York City, Robert A. Curley, Evanston, Ill., for appellee.

Before SCHNACKENBERG, KNOCH and KILEY, Circuit Judges.

Rehearing Denied October 11, 1967, en banc.

KILEY, Circuit Judge.

Defendant Rovico appeals from a decision holding American Photocopy Equipment Company's (Apeco) Eisbein patent1 valid and infringed, and rejecting Rovico's misuse defense and antitrust counterclaim. We affirm.2

The Eisbein patent No. 2,657,618, issued November 3, 1953, covering a device for developing photocopies by means of the "diffusion-transfer-reversal" process known as DTR. The patent is now owned by Apeco, an Illinois corporation engaged in the manufacture and sale of office photocopying machines. Rovico is a New Jersey competitor of Apeco. The patent was before this court previously in Copease Mfg. Co. v. American Photocopy Equip. Co., 298 F.2d 772 (7th Cir. 1961). After that decision Apeco acquired the patent from Copease.

The DTR process begins by making a negative copy of the original sheet by exposing the photosensitive emulsion on the negative sheet to the original sheet. In the second step the negative is moistened with a chemical "developer" liquid and pressed face-to-face against a coated positive sheet. When the sheets are separated, an image of the original remains on the positive sheet.3

The patent in suit involves a device to implement the second step of the DTR process. The three basic elements of the device are (1) a casing containing the developer liquid with an opening above the liquid for insertion of the negative and positive sheets, (2) guides for keeping the sheets apart and conveying them through the liquid and up to (3) a pair of contacting rollers above the liquid that cause the chemical transfer from the negative to the positive sheet, press excess liquid from the sheets and convey the sheets out of the casing.

Validity

The district court decided the patent was valid under the court's decision in Copease Mfg. Co. v. American Photocopy Equip. Co., 298 F.2d 772 (7th Cir. 1961), in the absence of "persuasive new evidence" of invalidity not before the court in that case. Rovico contends that the record and issues here materially distinguish Copease and would have compelled a finding of invalidity if the district court had not excluded new and "crucial" evidence offered by it, ignored evidence admitted, and denied it the right of cross-examination with respect to the Copease record. It has the burden of persuading us of the material distinction between this case and Copease, and it has not done so.

There is evidence in this record which is not in the Copease record including twenty-two exhibits, but we do not regard it as "persuasive."

Rovico claims error in the district court's exclusion of three depositions taken for the Copease trial but not used there. Rovico contends that they should have been admitted here because the deponents were Apeco's witnesses or cross-examined by Apeco in Copease. It relies upon Insul-Wool Insulation Corp. v. Home Insulation, Inc., 176 F.2d 502 (10th Cir. 1949), where the district court permitted defendant Home to introduce depositions taken for other defendants in other infringement suits. The Tenth Circuit approved the ruling as in accord with Fed.R.Civ.P. 26(d) because Insul-Wool had the same interest and motive for cross-examining the deponents in the previous cases. The court held that the determination of that interest and motive "ought to be left entirely to the trial judge." 176 F.2d at 503. See 5 Wigmore, Evidence §§ 1360-1366, 1371 (3d ed. 1940).

Here, however, Apeco's interest is the reverse of what it was in Copease, and the district court excluded the deposition. We find no reason to disturb the ruling as to Apeco's two witnesses in Copease. The deposition of the Copease witness was introduced in evidence and relied upon by this court to support validity in Copease. Thus, it cannot be relied on as "new evidence" to overturn the Copease decision.

We disagree with Rovico's contention that "admissions" and stipulations here distinguish Copease. The district court's function here was to determine whether there was an "admission" with respect to language in claim 1. and if so its effect in the light of all of expert Hill's testimony. The same is true of the significance of the stipulation that if the word "slideways" as used in the claim has the same meaning as in the specifications it "would make the claim meaningless."

We see no merit in the claim of error in the court's refusal to strike testimony of Apeco's expert because his knowledge of the operation of the Agfa machine was based on testimony of witnesses in the Copease trial. 2 Wigmore, Evidence § 665b (3d ed. 1940). There is no merit in Rovico's claim of error because the court would not permit impeachment by a deposition which expert Hill did not read and did not use in reaching his opinion. We have read the transcript references and find nothing in the rulings but the district court's rightful concern to keep the examination and record relevant.

We conclude that the district court did not err in the rulings on admissibility of evidence or ignore or disregard evidence that was admitted.

Rovico contends the Eisbein patent is invalid because he did not invent contacting rollers and the device is a combination of old elements, obvious to those skilled in the art. Apeco concedes that Eisbein did not invent contacting rollers. We agree that the Eisbein patent is a combination of elements in the prior art, including contacting rollers. But the elements were inventively arranged to achieve an unobvious result. Copease Mfg. Co. v. American Photocopy Equip. Co., 7 Cir., 298 F.2d at 781-782.

Nor is the patent invalid because originally the claims called for separation of the negative and positive sheets in the liquid and amendments changed this to require separation only until they enter the liquid. The nub of this contention is that before the amendment which introduced short separator guides, the industry thought it essential to use separator guides which kept the sheets apart until they left the liquid, and that the amendment broadened the claims to include devices in which the sheets were in contact during immersion. The district court found that this argument "cannot stand" because the broadening of the claims per se did not invalidate the patent, that under 35 U.S.C. § 112 the inventor is required to set out in the specification the best mode of his invention and not all modes, and that there was no inconsistency in the claims and specification. 257 F.Supp. at 196.

We are not persuaded that the court should have decided the contrary because of representations to the Patent Office by Apeco's employees in connection with its patent No. 2,786,401 or a 1951 letter of Agfa or because of the decision in American Infra-Red Radiant Co. v. Lambert Indus., Inc., 360 F.2d 977 (8th Cir.), cert. denied, 385 U.S. 920, 87 S.Ct. 233, 17 L.Ed.2d 144 (1966). The amendment did not introduce a new element but modified the description of the center separator to clarify the original claims so as not to require the separator to extend all the way to the rollers.

There is no merit in Rovico's contention that the patent is invalid because the claims in suit were broadened by amendment to cover "single sheet wetting." Apeco concedes that claim 1 is broad enough to cover both single sheet and two sheet wetting. During the prosecution of the patent application it was explained to the Patent Office that generally wetting one sheet was sufficient since the essential was a layer of liquid between the two sheets when pressed together. Moreover, the accused devices here involve wetting of two sheets.

We conclude on the validity point that Rovico has not shown that the district court's findings of fact are clearly erroneous, or its conclusions from the findings are erroneous. The court did not err in ruling that there was no persuasive new evidence to remove this issue from this court's holding of validity in Copease.

Infringement

The district court found that there was ample evidence to demonstrate that Rovico's accused devices fell within Eisbein's claims 1, 5 and 11; that the guidemeans in the accused devices did not extend to a point adjacent the rollers but that devices with guides even shorter than Rovico's had been held to read literally on the claims, Copease Mfg. Co. v. Cormac Photocopy Corp., 242 F.Supp. 993 (S.D.N.Y.1965); that in American Photocopy Equip. Co. v. Ampto, Inc., 82 N.J.Super. 531, 198 A.2d 469 (App.Div. 1964), shorter guides were held to infringe under the doctrine of equivalents; and that file wrapper estoppel had no application here since the amendment was not filed to overcome a rejection based on the prior art.

The only expert who testified on infringement was plaintiff's witness Hill. He testified that the accused devices have the same three elements — casing, guides and rollers — as plaintiff...

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