Directoplate Corp. v. Donaldson Lithographing Co.

• Decision Date: 02 July 1931
• Docket Number: No. 5630.,5630.
• Citation: 51 F.2d 199
• Parties: DIRECTOPLATE CORPORATION v. DONALDSON LITHOGRAPHING CO.
• Court: U.S. Court of Appeals — Sixth Circuit

51 F.2d 199 (1931)

DIRECTOPLATE CORPORATION v. DONALDSON LITHOGRAPHING CO.^*

No. 5630.

Circuit Court of Appeals, Sixth Circuit.

July 2, 1931.

Frank Parker Davis and Glen E. Smith, both of Chicago, Ill., for appellant.

Geo. I. Haight and Samuel W. Banning, both of Chicago, Ill., for appellee.

Before MOORMAN, HICKS, and HICKENLOOPER, Circuit Judges.

HICKENLOOPER, Circuit Judge.

Appellant brought its action in the court below alleging infringement of claims 1, 5, 8, and 12 of patent No. 1,396,962, and claims 4, 5, 7, 20, 23, 25, 41, 45, 46, 47, 48, 49, 50, 67, 68, and 69 of reissue patent No. 16,567. Both patents originated in applications filed by one Alexander T. Koppe and are hereinafter respectively referred to as Koppe's first and second patents. The first patent was for a "vacuum-pressure frame" designed and intended (according to the specification) as appropriate for use in "a machine for making offset press plates." The second patent was for such a "machine for making offset press plates." The first issued November 15, 1921. The application for the original second patent was filed June 30, 1922; the patent (No. 1,510,007) issued September 30, 1924; application for reissue was filed September 25, 1926; and the reissue was granted as of March 8, 1927. The defenses were invalidity and noninfringement. The bill was dismissed by the District Court on the ground that infringement had not been shown. Plaintiff appeals.

We are not impressed with the defendant's contentions of inutility, inoperability, anticipation or lack of invention as regards Koppe's first patent. It is true that Koppe was not a pioneer in the field of photographically producing offset press plates, but he was the first to utilize atmospheric pressure in holding the negative firmly against the sensitized surface of the press plate. Prior to him mechanical pressure only had been used for this purpose, and we think that whatever had been done by Huebner (the real pioneer in the field of mechanical pressure photo-composing machines) in the direction of substituting vacuum pressure for mechanical pressure before the filing of the application for the second patent, certainly before the application for the first one, cannot be said to have passed beyond the experimental stage. It is also true that the use of vacuum pressure in connection with photographic printing was old. See patents to Cope, No. 296,391, April 8, 1884; to Saltmann, No. 654,421, July 24, 1900; to McCaslin, No. 683,059, September 24, 1901; and to Levy, No. 1,246,620, November 13, 1917; and the German patent to Teppich, No. 245,915, May 4, 1911. But the devices of all of these patents operated to press the sensitized paper or plate against the negative by use of a flexible backing or cover, while the present device operates to press a rigid glass negative against a rigid sensitized plate, the required play being given, not by the flexibility of either, but by the organization of frames and sealing strips. We think that invention was displayed in the reorganization required, and that neither anticipation nor lack of utility was shown.

The underlying concept of Koppe's first patent was that atmospheric pressure should be exerted directly upon the glass negative and thus hold it firmly to the sensitized press plate. Obviously he could not obtain a machine or product patent upon this concept alone, but only upon the means disclosed for effectuating his purpose. Miller v. Eagle Mfg. Co., 151 U. S. 186, 201, 14 S. Ct. 310, 38 L. Ed. 121. Compare also: De Forest Radio Co. v. General Elec. Co., 283 U. S. 664, 51 S. Ct. 563, 75 L. Ed. 1339. A certain amount of vertical play was required to accommodate the device to negatives of different thickness, more, Koppe evidently thought, than would be supplied by the elasticity of the sealing strips, for the method practiced by his patent involved really three elements or steps. An outer or positioning frame was first located at the desired place upon the sensitized press plate. This positioning frame carried a rubber sealing strip around its outer edge and an extension or flange on its inner edge. When the positioning frame had been located, the negative was laid loosely within the inner opening. A seal was then required as between the outer edges of the negative and the inner edge of the flange of the positioning frame. This seal was provided by a rectangular frame of inverted U-shaped cross-section, called the inner or "bearing frame," carrying double rubber sealing strips, one of which rested upon and along the outer edge of the negative, and the other upon the flange of the positioning frame. Thus when the air was exhausted from beneath the positioning frame the pressure of the atmosphere operated, not only to hold the negative to the press plate, but also to strengthen the contact of the three sealing strips — between press plate and outer frame, between inner and outer frames, and between the inner frame and the negative. The inventive concept lay in the means devised for effecting this three-line seal which, supposedly, would accommodate itself to any thickness of negative and to any irregularity of thickness, of a gradual sort, as along the edge of the negative. This is clearly reflected in the claims. Claim 8 is typical and is alone here quoted.¹

In determining the question of infringement we are concerned with the matter of claim construction as well as with the nature of the defendant's device, the elements comprising it, the mode and manner of operation of both devices, and whether the elements of defendant's device are to be considered merely mechanical equivalents of the elements enumerated in the claim. Upon the present record it is clear that the claim above quoted, if read literally, does not cover the defendant's device, in which the negative is carried by clamps upon the inner and under portion of the outer frame and the inner frame is used solely for the purpose of hermetically sealing the negative within the outer frame, first by a sealing strip between the inner frame and the negative, and secondly by a flexible curtain seal between the inner and outer frames. The points of resemblance are that before assembly for use the defendant's device is made up of two frames, and that atmospheric pressure is used to seal these two frames together. The chief point of dissimilarity is that after assembly, and when in use, the negative and the two frames of defendant's device are practically and functionally integral, and the only vertical play of the negative (viewing the operation as upon a horizontal press plate) is afforded by and limited to the elasticity of the outer sealing strip.

The claim clearly calls for a frame consisting of two parts which, in use, are separate and distinct, and in which the elasticity of the sealing strips is of minor importance. The defendant's device, in use, does not comprise these two separate and functionally independent parts, and elasticity in the sealing strip of the outer or positioning frame is of prime importance. The question presented is whether the calls of the claim are to be treated as examples of a class only — as the preferred form — and are to be extended to cover the defendant's device under the doctrine of equivalents; or whether effect must be given to the apparent limitation of the claim, and the defendant's device be held not to infringe.

As so clearly pointed out by Judge Learned Hand in Claude Neon Lights, Inc., v. Machlett & Son (C. C. A.) 36 F.(2d) 574, there is an element of inconsistency between the doctrine of equivalents and the doctrine that it is the claim and that alone which measures the monopoly. In the ordinary case, the extent to which the court will follow the one doctrine to the exclusion of the other is largely controlled by the state of the art, the originality of the invention, and the disclosure of the specification. Koppe was not a pioneer in the field of vacuum-pressure frames for photographic printing. Like all improvers he was, and is, entitled only to a narrow range of equivalents. He has disclosed no broad, generic invention, unless it be in the use of the vacuum-pressure frame in a photo-composing machine, and this combination is not claimed. He has been specific in matters of number, form, structure, relationship, and function of the elements of his claim (as the condition of the art required him to be), and we do not think that he can now be permitted to depart from the plain meaning of the language he has adopted, or to claim for such language a broad and generic construction. Compare Lektophone Corp. v. Rola Co., 282 U. S. 168, 171, 51 S. Ct. 93, 75 L. Ed. 274.

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