Azoplate Corporation v. Silverlith, Inc.
| Decision Date | 09 November 1973 |
| Docket Number | Civ. A. No. 3235. |
| Parties | AZOPLATE CORPORATION, Plaintiff, v. SILVERLITH, INC., Defendant. |
| Court | U.S. District Court — District of Delaware |
COPYRIGHT MATERIAL OMITTED
Arthur G. Connolly, Jr., and John R. Bowman of Connolly, Bove & Lodge, Wilmington, Del., and James E. Bryan, Arlington, Va., of counsel, for plaintiff.
Max S. Bell, Jr., of Richards, Layton & Finger, Wilmington, Del., Eugene F. Buell, of Blenko, Leonard & Buell, Pittsburgh, Pa., and Donald A. Gardiner, Jr., of Smith, Michael, Bradford and Gardiner, Arlington, Va., of counsel, for defendant.
This is a suit for infringement of United States Patent No. 3,046,110 (110) issued to Maximilian P. Schmidt and assigned to plaintiff. The pleadings present issues of the validity and enforceability of the patent, infringement and an antitrust counterclaim based on alleged monopolization of the presensitized positive printing plate industry.1 The case has been tried before this Court and the following opinion constitutes its findings of fact and conclusions of law.
The subject invention is an improvement in the art of printing plates used to make copies of photographs and other printed material. These plates, which consist of a substrate covered with a photosensitive material (sensitizer), are covered with an original and exposed to light. The image is then developed and the plate can then be inked to print numerous reproductions of the original. Positive working printing plates, such as those of the patent, are developed after exposure to light through the original by removing the light struck portions of the photosensitive material thus leaving behind a positive image of the original.
Prior to the present invention the predominant type of printing plate was the "deep-etch" plate. To prepare the sensitized plate a skilled craftsman would first clean and grain the surface of a sheet of rolled zinc or aluminum, then wash the surface and carefully and evenly apply a sensitizer such as a dichromate sensitized gum or albumin solution. The resulting plate was light sensitive in that where light struck the plate the colloid would harden and would be more difficult to remove than the unexposed portions. After exposure the non-hardened sensitizer would be removed, the plate then washed and etched with an acid solution, and a number of other steps taken before the plate would be finally ready for printing.
Two serious drawbacks to these plates were evident. First, the preparation of the sensitized plates and their development after exposure required time and skill. Secondly, because of the brief shelf life of the plates after they were sensitized, the plates had to be prepared not more than thirty-six hours prior to their use.
The present invention relates to presensitized printing plates which can be prepared in a simple process adaptable to continuous assembly line manufacture and which have a shelf life of about two years. The plates can be manufactured, packaged and transported to the location where they are to be used and, when they are needed, unwrapped, exposed and developed. Thus, the printer need not worry about the production of the sensitized plate. He merely orders the appropriate size presensitized plate and stores it until needed. Moreover, the development of an exposed presensitized printing plate is easily accomplished by washing with an alkaline solution and then wiping with ink.
The essence of the invention was the discovery that certain light sensitive diazo compounds when coated on a grained substrate such as aluminum produce printing plates with these desirable properties. Claim 1 is illustrative of the claims to the printing plate:
1. A presensitized printing plate comprising a base material having a coating thereon comprising a compound having the formula
in which X and X1 are selected from the group consisting of N2 and O, those attached to the same ring being different, Y is selected from the group consisting of alkylene and arylene groups, Z is selected from the group consisting of oxygen and —NR1— groups, and R and R1 are selected from the group consisting of hydrogen, lower alkyl groups, and aryl groups.
Claim 33 is illustrative of the claims drawn to the method of developing these plates:
33. A process for developing a printing plate which comprises exposing to light under a master a base material having a compound thereon of the formula in which X and X1 are selected from the group consisting of N2 and O, those attached to the same ring being different, Y is selected from the group consisting of alkylene and arylene groups, Z is selected from the group consisting of oxygen and —NR1— groups and R and R1 are selected from the group consisting of hydrogen, lower alkyl groups, and aryl groups, to thereby form a decomposition product in the light struck areas and removing the decomposition product by treatment with a weakly alkaline solution.
The specific diazo compound which is used in the alleged infringing plates is identified in Formula 21 listed in the patent and specifically covered by claim 28 relating to a printing plate and by claim 60 relating to the development of such a plate. Azoplate also alleges infringement of generic claims 1, 3, 4, 6, 33, 35, 36 and 38.
The invention was discovered by Maximilian Schmidt in Germany while employed by Kalle A. G. The invention was conveyed by an exclusive license to Keuffel and Esser Corporation, which in turn sold it to plaintiff. Azoplate, the plaintiff, is a newly formed corporation, primarily interested in developing this invention and several others originating at Kalle relating to presensitized printing plates. (Tr. 23-25) Because Azoplate was in its formative stages, responsibility for prosecuting the patent applications remained with Keuffel and Esser. Later this responsibility was shifted to Engelhard Industries, which owned a substantial share of Azoplate and, finally, to Azoplate itself. (Tr. 25-26) Numerous people employed by the several different corporations prosecuted the patent applications and for this reason the record includes considerable correspondence among these companies, particularly between Azoplate and Kalle A. G.
The ancestry of the patent in suit is schematically represented in the figure attached to this opinion as Appendix A. Beginning with Serial Number 174,556 by Schmidt, plaintiff filed a series of patent applications relating to presensitized printing plates.2 In this group of applications was Serial Number 208,055 also by Schmidt, which was filed in January, 1951 (the '51 application) but claimed priority in a German application filed on February 1, 1950. The '51 application was rejected on several occasions because of prior art and none of the claims were allowed.
On June 21, 1955, plaintiff filed an application designated as Serial Number 517,086 (the '55 application) which claimed to be a continuation-in-part of eight of the original applications including the two previously mentioned. This application, filed in the names of Schmidt and five other persons, was rejected as unpatentable over certain corresponding Belgian patents whose effective dates as references were subsequent to the '51 and 174,556 applications but prior to the '55 case. The patent examiner denied plaintiff the benefit of the filing date of the earlier patent applications because the cases were not filed in the name of the same inventors as required by 35 U.S.C. § 120. The Belgian patents, therefore, were effective references against the '55 application.
To correct this problem plaintiff filed a continuation-in-part application, Serial Number 718,4533 (the '58 application) in the name of Schmidt corresponding to the '51 application. In an attempt to obtain the earlier filing date, plaintiff petitioned the Patent Office to revive the original '51 application to make it copending with the '58 case. This request was refused. Plaintiff then filed affidavits in the '58 case by all six inventors named in the '55 application. The affiants claimed that they were German nationals and that they had relied on the advice of their American patent counsel that they were properly joined as inventors in the oath of that application. In addition, the five inventors other than Schmidt disclaimed any interest in the subject matter of the '58 application. The patent examiner still refused to grant this application the benefit of an earlier filing date, and his decision was affirmed by the Patent Office Board of Appeals. However, the Court of Customs and Patent Appeals reached a different conclusion. It found that the inventors named in the oath of the '55 case had been misjoined through error without deceptive intention and, accordingly, that this mistake could be corrected pursuant to 35 U.S.C. § 116. The Belgian patents, therefore, were not effective references. After reviewing certain other issues the Court of Customs and Patent Appeals allowed claims to both the presensitized printing plate and the method of developing it. In re Schmidt, 293 F.2d 274, 48 C.C.P.A. 1140 (1961).
On January 2, 1962, plaintiff filed Serial Number 163,874 (the '62 application), a continuation-in-part of the application allowed by the Court of Customs and Patent Appeals. After a few formal corrections, this application issued as the patent in suit.
Silverlith raises the defense that the 110 patent is invalid because the claimed subject matter would have been obvious to one of ordinary skill in the art with knowledge of the teachings of three references available more than one year prior to the earliest filing date upon which patent 110 can rely. These references are French Patent No. 904,255 issued February 19, 1945, an article written by Rudolph Zahn which was available as PB 25,781 prior to February 1, 1950, and German application K169,065 an abstract of which appeared as PB 17547-S3 also publicly...
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