Hewlett-Packard Co. v. Bausch & Lomb Inc.

• Decision Date: 13 September 1989
• Docket Number: No. C-86-20406 RPA.,C-86-20406 RPA.
• Citation: 722 F. Supp. 595
• Court: U.S. District Court — Northern District of California
• Parties: HEWLETT-PACKARD COMPANY, Plaintiff, v. BAUSCH & LOMB INCORPORATED, Defendant.

722 F. Supp. 595

HEWLETT-PACKARD COMPANY, Plaintiff, v. BAUSCH & LOMB INCORPORATED, Defendant.

No. C-86-20406 RPA.

United States District Court, N.D. California.

September 13, 1989.

S. Leslie Misrock, Jonathan A. Marshall, Pennie & Edmonds, New York City, James P. Kleinberg, McCutchen, Doyle, Brown & Enersen, San Jose, Cal., and William H. MacAllister, Hewlett-Packard Co., Boise, Idaho, for plaintiff.

Laurence H. Pretty, Gary A. Clark, Pretty, Schroeder, Brueggemann & Clark, Los Angeles, Cal., John M. Ottoboni, Anne L. Enea, Ferrari, Alvarez, Olsen & Ottoboni, San Jose, Cal., James W. Colbert, III, Holly E. Kendig, Richard W. Buckner, O'Melveny & Myers, Los Angeles, Cal., and Bernard D. Bogdon, Bausch & Lomb Inc., Rochester, N.Y., for defendant.

FIRST CORRECTED FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER THEREON

AGUILAR, District Judge.

I. INTRODUCTION

Plaintiff Hewlett-Packard Company ("HP") claims defendant Bausch & Lomb ("B & L") infringed United States Patent No. 4,384,298 issued to Lawrence LaBarre et al. (the "LaBarre patent"). H-P is the owner, by assignment, of the LaBarre patent. In its counterclaim, B & L asserts the invalidity of the patent as obvious from prior art and further asserts that the inventor failed to disclose the best mode of carrying out his invention.¹

After a six-week court trial, the parties submitted trial briefs and proposed findings of fact and conclusions of law. The Court has carefully reviewed the transcripts, its own copious notes and the parties' submissions. As discussed below, the Court finds the LaBarre patent to be valid and infringed.

II. FINDINGS OF FACT

(A) The LaBarre Invention

The LaBarre patent covers an x-y plotter which moves paper back and forth through the use of a grit wheel. The grit indents the paper on the first pass. As the paper is moved back and forth, these indentations mate with the rough surface of the drive wheel. This gearing effect minimizes slippage of the paper. HP Exhibit 1 (LaBarre Patent).

In the 1970's, prior to the LaBarre invention, HP made X-Y plotters of a "moving gantry" type, in which the paper remained stationary on a flat bed and a gantry or beam was driven along the bed above the paper in the X-direction. The marking pen was mounted in a carriage which traveled back and forth along the gantry across the paper in the Y-direction. TR. Vol 8-1231 (testimony of Lawrence J. LaBarre). Although the moving gantry plotter was accurate, it was slow.

Bill Hewlett assigned Lawrence LaBarre, an engineer at HP Labs in Palo Alto, California, the task of designing a plotter to overcome the complications and speed limitations inherent in the gantry plotter. After unsuccessfully experimenting with, among other things, a planchette that rolled around a stationary piece of paper, Mr. LaBarre began exploring ways of moving the paper, instead of the pen. Towards this end, he built a pocket plotter with pinch rollers. The power rollers were rubber coated to increase the friction, and hence accuracy, in the paper drive. Although the pocket plotters worked to move the paper, the plotter could not retrace a line in both directions. TR. Vol. 16-2529 (LaBarre); Plaintiffs' Exhibit 171 (LaBarre's notebook). Apparently, the varying compression of the rubber rolls hampered the plotter's ability to achieve accurate registration. Eventually, the idea of using rubber wheels was discarded as imperfect. Instead, LaBarre considered knurling metal rolls, spiraling sandpaper on the outside of them with the grit out, or impregnating epoxy coated wheels with grit particles. TR. Vol. 16-2534 (LaBarre).

Charles Tyler, Mr. LaBarre's boss, had suggested knurling the top roller. Based on his experience with knurling, Mr. LaBarre did not think much of this idea and instead began working on the use of grit wheels. Mr. LaBarre decided to make grit drive rollers by coating rollers with quick setting epoxy adhesive and then rolling them in carborundum powder. Using the materials available at his work station, he had some rollers made up this way the same day. On the following day, November 19, 1975, Mr. LaBarre tested the rollers with the directly adhered grit. In 40 passes across the paper, the cumulative error was less than .003 inches. Inspired, he wrote in his diary, "They work `Eureka'." TR. Vol. 8-1257 and Vol. XX-XXXX-XX (LaBarre); HP Ex. 171 (LaBarre notebook).

Although Mr. LaBarre did not consider the manner in which he created the wheels to be the best method of applying the grit, he knew they were on the right track. Mr. LaBarre believed that the made up grit wheels were not as accurate as expected because some of the grit kernels were insecurely mounted in the epoxy, or lying on their sides. Mr. LaBarre made two other grit wheels by wrapping sandpaper around the wheel. The use of sandpaper was desirable because the grit was already securely attached by the sandpaper manufacturer. TR. Vol. 8-1263 (LaBarre). During the entire time that LaBarre experimented with the design of the grit drive wheel plotter, he never had any trouble with the sandpaper, it never cracked in the process, and it performed satisfactorily at all times. TR. Vol. 8-1267 (LaBarre). Indeed, LaBarre testified that the sandpaper gave a better grip than the impregnated epoxy rolls and performed perfect and superior to the directly applied grit wheels. TR. Vol. XX-XXXX-XX (LaBarre).

On 11-9-76 LaBarre wrote in his notebook, "# 3 has the old power roll where we rolled in grit on epoxy coating and it won't drive good anymore." HP Ex. 171, H12465 "# 3" was the plotter Mr. LaBarre had made with the directly adhered grit. Mr. LaBarre testified that he gave up on the directly adhered grit because he never found a method for securing the kernels to the epoxy. He explained that the directly adhered grit was the first method used because he had the materials immediately available at his desk. "After I found that the rolled on sandpaper worked as successfully as it did, I certainly didn't want to go back to that method." TR. Vol. 16-2558 (LaBarre).

(B) H-P's Commercial Grit Wheel Plotters

Once LaBarre refined his invention, the next step at HP Labs was to transfer the technology to a manufacturing division interested in exploiting it commercially. Both the Andover, Massachusetts and the San Diego, California divisions adapted Mr. LaBarre's grit wheel invention for use in an electrocardiograph and an X-Y plotter, respectively.

The electrocardiograph manufactured and commercially sold by the Andover Division used sandpaper-covered drive wheels. Martin Mason, an engineer employed by HP's Andover Division, had visited H-P Labs in Palo Alto to familiarize himself with the new paper moving technology. TR. Vol. 16-2460. In October 1981, Mason co-authored an article appearing in the HP Journal detailing the development of the electrocardiograph. The article explained the benefits of using sandpaper-covered drive wheels versus those having directly-adhered grit particles. The article concluded that sandpaper-covered drive wheels provided the most reliable method for moving paper bi-directionally. TR. Vol. 2470-79 (Mason). The electrocardiograph which used sandpaper wheels was commercially introduced in 1981.

The San Diego Division chose to use directly adhered grit wheels in its X-Y plotter. The technology for grit drive wheels was first transferred to San Diego when Mr. LaBarre visited the facility in 1975. He took with him a pocket plotter with sandpaper wheels to demonstrate his grit wheel system. Later, based on the X-Y plotter project (the BERTHA project) at San Diego, Mr. LaBarre had a table top version of his plotter sent to the San Diego facility. TR. Vol. X-XXXX-XXXX (LaBarre).

In late 1977-early 1978, Terry Flower and Marv Patterson, engineers at HP's San Diego Division, visited HP Labs. The plotter LaBarre demonstrated to Flower and Patterson used sandpaper-covered drive wheels. TR. Vol. 9-1357 (Flower) Mr. Flower was assigned to develop a grit wheel drive for San Diego's ongoing X-Y plotter project. Mr. Flower found that the sandpaper wrapped grit wheels had problems with cracking and creasing. In addition, Mr. Flower was concerned that the grit particles on the sandpaper would not remain in their adhesive matrix in the production process. TR. Vol. X-XXXX-XX (Flower).

Mr. Kaplan, who took over for Mr. Flower, also visited H-P Labs in 1978 or 1979. Kaplan testified that although he met Mr. LaBarre during his visit, he did not discuss grit wheel technology with him. Mr. Kaplan never corresponded or exchanged information on the grit wheels used in the BERTHA project with Mr. LaBarre. TR. Vol. X-XXXX-XX (Kaplan). Because of the problems encountered with sandpaper wrapped grit wheels, the X-Y plotter was manufactured with grit directly affixed to an epoxy coated wheel. Mr. Kaplan co-authored an article outlining San Diego's development of its commercial drive system and expressing the preference for directly-adhered grit particles, in contrast to the Mason article. B & L Ex. 77 Mr. Kaplan also executed an H-P Invention Disclosure Form on an "Improved Grit Wheel for Graphics Devices" describing the grit wheel technique devised by himself and George Lynch. TR. Vol. 8-1208 (Kaplan). HP publicly announced the commercial X-Y plotter using directly adhered grit wheel technology on January 8, 1981.

(C) The Claims-In-Suit

HP did not file its patent application on the LaBarre invention until October 24, 1980. B & L Ex. 15 (Patent application). Claims 1 and 3 of the LaBarre patent are at issue in this case. HP has stipulated that if claim 1 should be held invalid, claim 3 should be invalid.

Claim 1 of the LaBarre patent is as follows:

1. An X-Y plotter system for forming images on a web comprising:

first means being coupled to at least one edge of said web for imparting motion thereto to provide a first degree of motion during plotting onto said web in response to a first applied signal;

second

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