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

• Decision Date: 30 July 1990
• Docket Number: HEWLETT-PACKARD,90-1017,Nos. 90-1016,s. 90-1016
• Citation: 909 F.2d 1464,15 USPQ2d 1525
• Parties: , 15 U.S.P.Q.2d 1525 COMPANY, Plaintiff/Cross-Appellant, v. BAUSCH & LOMB INCORPORATED, Defendant/Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1464

909 F.2d 1464

59 USLW 2119, 15 U.S.P.Q.2d 1525

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

Nos. 90-1016, 90-1017.

United States Court of Appeals, Federal Circuit.

July 30, 1990.

Jonathan A. Marshall, Pennie & Edmonds, New York City, argued, for plaintiff/cross-appellant. Of counsel, were Brian D. Coggio, Jon R. Stark, Steven I. Wallach and John J. Normile, Pennie & Edmonds, and William H. MacAllister, Hewlett-Packard Co., Boise, Idaho.

Laurence H. Pretty, Pretty, Schroeder, Brueggemann & Clark, Los Angeles, Cal., argued, for defendant/appellant. With him on the brief, were Mary Ann Tucker, and Bernard D. Bogdon, of Bausch & Lomb Inc., Rochester, N.Y. Of counsel, were Gary A. Clark and John T. Wiedemann, Pretty, Schroeder, Brueggemann & Clark, Los Angeles, Cal.

Before RICH and NEWMAN, Circuit Judges, and COWEN, Senior Circuit Judge.

RICH, Circuit Judge.

Bausch & Lomb Incorporated (B & L) appeals from the September 13, 1989 Judgment of the United States District Court for the Northern District of California, holding U.S. Pat. No. 4,384,298 (LaBarre) valid and infringed by B & L. Hewlett-Packard Co. v. Bausch & Lomb Inc., 722 F.Supp. 595, 13 USPQ2d 1105 (N.D.Cal.1989).

Hewlett-Packard Company (HP) cross-appeals from that portion of the Judgment holding that B & L had not actively induced infringement of the LaBarre patent subsequent to September of 1985. We affirm.

BACKGROUND

Two patents are discussed extensively throughout this opinion. The first is the patent in suit, LaBarre, which is assigned to HP. The second is U.S. Pat. No. Re 31,684 (Yeiser), which is assigned to B & L and which is the sole piece of prior art argued by B & L to invalidate the LaBarre patent. Both patents relate to X-Y plotters used to create a two-dimensional plot, such as a chart or a graph, on a sheet of paper. Such plotters can be broadly divided into two categories: one in which the paper is held stationary and a pen is attached to a gantry movable in one direction (the Y-direction) and a carriage movable in a second, orthogonal direction (the X-direction); and another in which the paper is moved in the Y-direction, while the pen is attached to a carriage movable in the X-direction. Both LaBarre and Yeiser relate to this second type of plotter, and both show that the movement of the paper in the Y-direction can be effectuated by one or more pairs of pinch rollers between which the paper is placed.

In order to draw accurate plots, it is critical in devices like those disclosed in Yeiser and LaBarre that the paper be moved back and forth without slippage between the paper and the pinch rollers. With this in mind, Yeiser teaches that at least one of the pinch wheels should have a surface with a high coefficient of friction formed "by knurling or by a layer of rubber or the like." LaBarre, on the other hand, teaches that an efficient way to effectively eliminate slippage between the rollers and the paper is to simply cover one of the pinch wheels with silicon carbide grit. ¹ The grit not only increases the friction between the pinch wheels and the paper, but also causes small indentations to be formed in the paper. These indentations repeatedly mate with the grit as the paper is moved back and forth in the Y-direction, thus further inhibiting slippage between the pinch wheels and the paper. Due to this mating effect between the grit and the indentations in the paper, HP urges that the LaBarre printer should be considered to be a "positive drive" plotter, wherein the paper is drawn along using "teeth" (i.e., the grit) which engage in "holes" (i.e., the indentations) in the paper, as opposed to a "friction drive" plotter, wherein the moving force on the paper is caused simply by the friction between the wheels and the paper.

Claims 1 and 3 of the LaBarre patent are asserted against B & L, but only claim 1 is relevant to this opinion. It reads 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 means for forming selected visual images on said web and being movable to provide a second degree of motion in response to a second applied signal; and

third means responsive to a third applied signal for imparting motion to said second means;

said first means including first drive means having at least one powered drive wheel contacting the web, and an idle wheel opposite to each of said drive wheels to form a pinch roller assembly with the web between the drive and idler wheels, one of said at least one drive and idler wheels having a rough surface, and said drive and idler wheels additionally being spring biased together to cause the rough surface to make a series of indentations along the driven edge of the web to minimize slippage with these indentations Claim 1 of LaBarre was specifically allowed by the Patent and Trademark Office (PTO) over the Yeiser patent. In particular, Yeiser was brought to the PTO examiner's attention by HP after the LaBarre application had been filed. A telephone interview was subsequently held between the examiner and HP's attorney during which the Yeiser patent was discussed. As a result of this discussion, the last phrase of claim 1, "wherein the rough surface ... has a random pattern, size, and height of rough spots," was added by amendment. Claim 1 was subsequently allowed.

repeatedly mating with the rough surface of the drive wheel as the web is driven back and forth, wherein the rough surface on one of said at least one powered drive and idler wheels of the first drive means has a random pattern, size, and height of rough spots.

B & L, through a division called Houston Instruments, began selling plotters having grit-covered pinch wheels ("grit wheel plotters") sometime in late 1982 or early 1983. However, in September of 1985, B & L entered into a "PURCHASE AGREEMENT" with Ametek, Inc. (Ametek) pursuant to which B & L sold the Houston Instruments division (including all "assets, properties, rights and business") to Ametek for a total purchase price of $43,000,000. Concurrent with execution of the PURCHASE AGREEMENT, B & L and Ametek also entered into an "AGREEMENT WITH RESPECT TO PATENTS," in which the parties agreed that, among other things, (1) B & L would grant Ametek a license under the Yeiser patent; (2) B & L would indemnify Ametek against liability for infringing the LaBarre patent up to a cap of $4.6 million; (3) B & L and Ametek would jointly work toward developing a plotter which would not infringe the LaBarre patent; and (4) Ametek would comply with a so-called "gag order;" (i.e., would not communicate with HP concerning the LaBarre patent).

HP brought the present suit against B & L in May of 1986, accusing B & L of direct infringement of the LaBarre patent for the time period prior to the sale of Houston Instruments to Ametek, and of active inducement of infringement under 35 U.S.C. Sec. 271(b) for the period subsequent to the sale of Houston Instruments. As to the charge of direct infringement, B & L admitted infringement, but defended on the grounds that, among other things, the asserted claims of LaBarre were invalid for obviousness under 35 U.S.C. Sec. 103 in view of the Yeiser patent. In particular, B & L argued that the knurled wheel taught by Yeiser would inherently create indentations which would mate with the rough surface of the knurled wheel, as required by the claims of LaBarre. As to the charge of inducing infringement, B & L denied that its activities surrounding the sale of Houston Instruments to Ametek in September of 1985 constituted active inducement of infringement.

The district court, in an extensive Findings of Fact, Conclusions of Law and Order Thereon, found claim 1 of LaBarre would not have been obvious in view of Yeiser and that B & L was liable for infringement prior to the sale of Houston Instruments in September of 1985. However, the district court further found that B & L did not actively induce infringement of the LaBarre patent by Ametek under 35 U.S.C. Sec. 271(b), and so found no liability subsequent to the 1985 sale. These appeals followed.

OPINION

A. Obviousness--35 U.S.C. Sec. 103

First of all, we note that the claims of LaBarre are entitled to a presumption of validity, and that B & L faces the burden of showing, by clear and convincing evidence, the invalidity of the claims. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359, 220 USPQ 763, 770 (Fed. Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984). This burden is especially difficult when the prior art was before the PTO examiner during prosecution of the application. Id.

The district court found three differences between the device of LaBarre claim 1 and the Yeiser device: one, the application of a spring bias at a force sufficient to cause indentations; two, the creation of a "positive drive" system as opposed to a "friction drive" system; and three, the use of a random pattern of rough spots to create the indentations. We, however, feel that it is only necessary to focus on the third limitation and that this limitation is sufficient to render claim 1 unobvious in view of Yeiser.

The critical language is the last clause of claim 1: "wherein the rough surface ... has a random pattern, size, and height of rough spots." B & L agrees that the use of grit provides great advantages over a knurled wheel. In particular, grit is much harder and sharper than the points of a knurled wheel, and so is especially effective in creating indentations in the paper. However, B & L maintains that claim 1 does not specifically recite "grit," that it is improper to read the limitation of "grit" into the claims, and that therefore whatever unobvious advantages may be realized...