Copease Manufacturing Co. v. Cormac Photocopy Corp.

• Decision Date: 27 July 1965
• Citation: 242 F. Supp. 993
• Parties: COPEASE MANUFACTURING CO., Inc. and American Photocopy Equipment Co., Plaintiffs, v. CORMAC PHOTOCOPY CORPORATION, Anken Chemical and Film Corporation, Ampto, Inc., Ampto Equipment Corporation, F. G. Ludwig, Inc., Transcopy, Inc., and Gull Manufacturing Co., Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

242 F. Supp. 993

COPEASE MANUFACTURING CO., Inc. and American Photocopy Equipment Co., Plaintiffs, v. CORMAC PHOTOCOPY CORPORATION, Anken Chemical and Film Corporation, Ampto, Inc., Ampto Equipment Corporation, F. G. Ludwig, Inc., Transcopy, Inc., and Gull Manufacturing Co., Inc., Defendants.

United States District Court S. D. New York.

June 25, 1965.

As Amended July 27, 1965.

William C. Conner, (of Curtis, Morris & Safford), New York City, for plaintiffs. Garo A. Partoyan, New York City, of counsel.

William K. Kerr (of Fish, Richardson & Neave), New York City, for defendants. Roger R. Phillips, New York City, of counsel.

GRAVEN, Senior District Judge (by assignment).

This action involves the validity of United States Patent No. 2,657,618 for a "Developing Apparatus" issued on November 3, 1953, to Walter Eisbein of Stuttgart, Germany, the claimed infringement of that patent, and questions connected therewith. The plaintiff American Photocopy Equipment Company is the present owner of the patent in suit. The plaintiff Copease Manufacturing Company, Inc., although a nominal party to the action, has no present interest in the patent and did not participate in the trial. The defendant Anken Chemical and Film Corporation is a New Jersey corporation. The defendants Ampto, Inc., Ampto Equipment Corporation, F. G. Ludwig, Inc., Transcopy, Inc., and Gull Manufacturing Company, Inc. are its affiliates. The defendant Anken Chemical and Film Corporation acquired certain of the assets of the defendant Cormac Photocopy Corporation, a New York corporation, on or about March 1, 1961. The defendant Cormac Photocopy Corporation, although a party to the action, did not participate in the trial of this action. The defense of this action was conducted entirely by the defendant Anken Chemical and Film Corporation.

The primary issues are whether the Eisbein patent is valid and whether it has been infringed by any of the defendants. A subsidiary issue is whether the defendant Anken Chemical and Film Corporation is liable for the claimed infringement of the patent by the defendant Cormac Photocopy Corporation prior to the time the former acquired certain assets of the latter.

This same patent has been the subject matter of other litigation. Copease Mfg. Co. v. American Photocopy Equipment Co. (D.C.N.D.Ill.1960), 189 F.Supp. 535, reversed on appeal (7th Cir., Dec. 26, 1961), 298 F.2d 772; American Photocopy Equipment Company v. Ampto, Inc. (Feb. 20, 1964), 82 N.J.Super. 531, 198 A.2d 469; petition for certification denied by New Jersey Supreme Court (1964), 42 N.J. 291, 200 A.2d 125; petition for certiorari denied (1964), 379 U.S. 842, 85 S.Ct. 80, 13 L.Ed.2d 47. The background of the patent is set forth in the opinions in the cases referred to.

The patent relates to the making of photocopies of documents for general office use. Prior to 1949 the best known method of making photocopies was the so-called wet process which, in essence, was conventional photography applied to documents. In the wet process a photosensitive sheet of negative paper was first exposed to the document to be copied and then it was successively introduced into three, or sometimes four, separate trays containing different solutions for developing, washing and fixing. It was preferable that equipment be available for drying. The process was such that photocopying was done mostly by professional service companies and was used very little in offices for general copy work. In about 1939 Dr. Edith Weyde of the German photograph firm of Aktiengesellschaft Fuer Fotoindusterie, commonly known and referred to as AGFA or Agfa, and Andre Rott of the Belgian firm Gevaert, each acting independently, invented what is known as the diffusion-transfer-reversal process and the DTR process. The DTR process involves two steps. The exposure step is the same as in the wet process and exposes the photo-sensitive emulsion on the negative sheet of the document to be copied. The second step is the development and transfer step in which the exposed negative is wetted in a processing liquid which contains developer and fixer. In the case of Copease Mfg. Co. v. American Photocopy Equipment Co. (7th Cir.), 298 F.2d 772, p. 774, footnote 4, the process is described more in detail as follows:

"In the usual method of effecting the first step the original sheet to be copied is placed in face-to-face contact with the photosensitive negative sheet coated on one side with an emulsion layer containing a dispersion of silver halide grains, with the `copy' side of the original in contact with the emulsion side of the negative. Light is directed through the back of the negative sheet against the `copy' side of the original. The light reflected from the original back onto the negative exposes the latter to form in its emulsion a latent image consisting of a pattern of exposed silver halide grains. This latent image or pattern of exposed silver halide grains is a reversed or `mirror' image of the original, due to the face-to-face relation of the two sheets during the time of the exposure to light.

"After this exposure operation, the original and negative are separated, the original having no further function in the process. The second step requires that the negative sheet be moistened with a processing liquid and pressed face-to-face against the positive sheet, which may also be moistened. This latter is coated on its face with a nonphotosentitive emulsion which contains specks of metallic silver or the like to serve as precipitation nuclei (in effect, catalysts) to induce reduction of unexposed silver halide grains on the negative sheet. The negative and positive sheets, when pressed together after moistening, tend to adhere one to the other. The sheets are left in contact for approximately ten to forty seconds. When peeled apart, a positive image formed by chemical action appears on the positive sheet. The quality of the positive image depends, among other things, on the quality and contents of the processing liquid, that of the chemical emulsions on the sheets, the exposure time, and the time during which the sheets remain in contact. A waiting period is necessary in order to develop a visible or patent transfer image on the positive sheet.

"The processing liquid contained within the developing machines contains both a developing agent and a silver halide solvent. When the negative sheet or both negative and positive sheets are immersed in the processing liquid, the developing agent reduces the silver halide grains in the exposed areas of the emulsion (corresponding to the light background areas of the original) while leaving the unexposed portions of the negative (corresponding to the dark printed matter of the original) unaffected. When the moistened sheets are pressed together in face-to-face relation, the silver halide solvent in the processing solution dissolves the unexposed grains of silver halide and causes them to be diffused from the emulsion of the negative into that of the positive, where the developer acts with the assistance of the `catalyst' to reduce these unexposed grains to metallic silver, producing blackened areas corresponding to the dark areas of the original and produce a positive copy of the original. The second `mirror' reversal produced by this face-to-face transfer operation makes this a `rectified' or readable copy."

Following her discovery of the process, Dr. Weyde did considerable experimental work for AGFA in connection with the process. In that connection she designed and caused to be constructed a large machine which employed a large drum with an endless belt extending around most of the periphery of the drum for holding the positive and negative sheets together under pressure throughout substantially their entire area during their movement beneath the developer liquid. Following the discovery of the process by Dr. Weyde, AGFA filed patent applications on the process in a number of countries. The first application was filed in Germany in 1941. The first AGFA patent to be issued was Norwegian Patent No. 66,994 which was published in October, 1943. Following the discovery of the process by Andre Rott, the Gevaert firm filed applications on the process in a number of countries. The first Gevaert patent was a French patent issued June 30, 1941. The corresponding United States Patent No. 2,352,014 was issued June 20, 1944. In years prior to 1949 the process was discussed in some technical journals. However, the process was not used commercially to any substantial extent until 1949. On December 10, 1942, the AGFA firm was issued French Patent No. 879,995 on its developing device. The AGFA firm did not regard the machine designed by it as being acceptable for general office use. AGFA was not particularly interested in going into the production of photocopy machines using the diffusion transfer process. Its primary interest and concern was in the production and sale of photographic paper and supplies. It was, therefore, willing that others would undertake the designing of a machine using the diffusion transfer process which would be acceptable for general office use in the photocopy field. To that end AGFA invited a number of German manufacturers of photographic equipment to meet at its plant in Leverkusen, Germany, on February 23, 1949. A considerable number of them accepted the invitation. At that meeting AGFA demonstrated the process using the large machine it had designed. Following the demonstration, AGFA asked the companies represented to undertake the designing of a developing machine which would make the diffusion transfer process available and acceptable for general office photocopy work. Dr. Walter Eisbein attended the meeting. He represented a comparatively new company named Trikop and later Develop. Four of the companies represented at the meeting indicated that they would undertake to design the kind of machine desired. One of those companies was Dr....