Kemart Corp. v. Printing Arts Research Laboratories

• Decision Date: 26 January 1953
• Docket Number: No. 12948.,12948.
• Parties: KEMART CORP. v. PRINTING ARTS RESEARCH LABORATORIES, Inc.
• Court: U.S. Court of Appeals — Ninth Circuit

201 F.2d 624 (1953)

KEMART CORP. v. PRINTING ARTS RESEARCH LABORATORIES, Inc.

No. 12948.

United States Court of Appeals Ninth Circuit.

January 26, 1953.

Henry Gifford Hardy, Wm. M. Maxfield and Carl Hoppe, San Francisco, Cal., for appellant.

Lyon & Lyon, Leonard S. Lyon and Richard F. Lyon, Los Angeles, Cal., for appellee.

Before STEPHENS, HEALY and BONE, Circuit Judges.

BONE, Circuit Judge.

Appellant brought an action against appellee for a declaratory judgment establishing that appellee's Letters Patent No. 2,191,939 were invalid and not infringed by appellant.¹ Appellee filed a counterclaim charging infringement of all 12 claims of the patent except claims 5 and 7 and demanding an injunction and an accounting for profits and damages. On trial the lower court found that all claims of the patent were valid and infringed except claims 5 and 7, which were found to be not infringed. A declaratory judgment was entered accordingly and appellant was enjoined from further infringement. This appeal followed.

Appellee's patent relates to an improved process for making halftone printing plates for reproduction of wash drawings in printed matter. A wash drawing is an original art work prepared by an artist on drawing paper using black water color paint diluted with water to produce various tones of gray when applied to the paper with a brush. Those portions of the work where paint has been applied are called tone areas. The parts where the white paper has been left untouched are called the highlight areas. The finished wash drawing is called "copy."

The halftone method of reproducing wash drawings is old in the photoengraving art. In this process a halftone negative is first made by photographing the copy with a halftone screen placed in the camera a short distance in front of the negative. This screen is like an optically perfect window screen mounted in glass. The reflected light from the wash drawing passes through the lens of the camera and then through the screen openings. The screen blocks a certain amount of this light from reaching the negative. Where the light passes through the openings in the screen it exposes the negative so as to record black dots of opaque deposit thereon. Where the light reflected from the drawing is of relatively great intensity, the light which passes through an opening in the screen will tend to "spread out" when it strikes the negative, making a comparatively large black dot. Thus, the lighter tones of the wash drawing will be represented upon the negative by large black dots. These dots merge, forming small white dots between them. The black dots will be smaller on those portions of the negative corresponding to the darker tone sections of the copy, since less light is reflected from these areas. On a positive print it will be just the reverse; the lighter tones will be represented by black dots on a white background and the darker tones will show the screen pattern, with small white dots. It is this dot and screen pattern which creates the illusion of the various tones of gray in the reproduced drawing, with the relatively small and widely-spaced dots representing the lighter tones and the black screen pattern, with small white dots, giving the impression of darker tones.

After the negative is obtained it is developed and a positive print made on a zinc or other metal plate. This plate is then treated with acid which dissolves all of the surface of the plate except the resistant black portions. When ink is applied to the plate, only the raised black parts will be reproduced on the printing paper.

It is impossible to obtain a reproduction of a wash drawing with a clear white in the highlights by the halftone process alone. The obstruction by the halftone screen of light reflected from the highlights of the copy invariably results in small black dots appearing in the corresponding areas of the reproduction, giving the highlights a gray cast which is unattractive. In the prior art this dot pattern was eliminated by physically routing out the raised dots on the printing plates with a hand tool or machine, or by painting out the dots on the negative. Another method was masking the tone areas of the copy with a substance which made these areas relatively non-reflective of light, and then timing the halftone exposure with reference to these areas of weak actinic value so that the unmasked highlight areas would be overexposed and the dot pattern in the highlights obliterated. All of these methods required skilled labor and were expensive, time consuming and imperfect. Still another method involved making the usual halftone exposure, then displacing the screen and making a second exposure. This had the effect of exposing and thus eliminating the dots in the highlights, but it involved complicated lens and screen manipulation to avoid over-exposure of the tone areas, and the lighter tones were often lost in the process.

We come now to a consideration of appellee's patented process. This patent was issued to Walter S. Marx on January 27, 1940 and will hereafter be referred to as the Marx Patent. While there are 12 claims in the patent, they differ only in the inclusion or omission of steps in the process and in matters of detail and emphasis. A typical claim, covering the essentials of the entire process, is printed in the margin.²

The process consists of three steps, as follows:

Step 1. The wash drawing is made by an artist on white paper or an equivalent reflector of ultra-violet light with any of the customarily used black water-color pigments diluted in what appellee calls a "fluorographic solvent." This solvent consists of an ultra-violet absorbent substance, preferably fluorescent, dissolved in water. The description specifies quinine bisulphate as the preferred ultra-violet absorbent, though other substances might also be used. Appellee now uses a different absorbent in its process.

Step 2. The usual halftone exposure of the copy is then made, with the halftone screen in place. This step results in an ordinary halftone negative, which is left in the camera for Step 3.

Step 3. A second exposure is made with the halftone screen removed or displaced, using only ultra-violet light. Ultraviolet light is light having wave-lengths of between approximately 1500 and 4000 angstrom units³ and it is invisible to the naked eye. The light sources preferred are the ordinary white flame carbon arc or a high intensity mercury vapor argon-filled arc lamp, both of which are rich in ultra-violet light. An ultra-violet transmission filter, which filters out all visible light and transmits only ultra-violet light, must be interposed between the light source and the negative. The filter in practice is either in the form of a sleeve-like covering over the lamp itself or is placed inside the camera immediately behind the lens. If the filter is placed over the lamp the exposure must be made in total darkness so that the negative will be exposed only by ultra-violet light. The preferred procedure is to place the filter behind the lens of the camera, in which case the copy may be illuminated by the ordinary rays of the lamp, consisting of both visible and ultra-violet light, and only the reflected ultra-violet light will reach the negative. There is no functional difference between placing the filter in one place or the other. In this exposure the reflected ultra-violet light from the highlights of the copy exposes and thus eliminates the dot pattern in the corresponding areas of the negative. The tone areas of the copy, however, have been made ultra-violet light absorbent by the fluorographic solvent. No ultra-violet light is reflected from these areas and the corresponding sections of the negative are therefore not affected in any way.

Steps 2 and 3 may be reversed in the process. The process is complete when the two exposures have been made.

Since we are of the opinion that the Marx Patent is not infringed by appellant's process, we shall proceed immediately to discuss that question. Appellee urges that the trial court's finding of infringement was a finding of fact, not to be disturbed unless clearly erroneous.⁴ However, it is well settled that where, as here, there is no dispute as to the evidentiary facts, and the record and exhibits enable us to clearly comprehend the nature both of the process patented and the alleged infringing process, the question of infringement resolves itself into one of law, depending upon a comparison between the two processes and the correct application thereto of the rule of equivalency.⁵ The testimony in this case was largely expository and descriptive of the elements and operation of the two processes and was not disputed.

The alleged infringing process utilizes the phenomenon of fluorescence to eliminate the dot-pattern in the highlights of a wash drawing.⁶ This process, like the process of the Marx Patent, may be broken down into three steps.

Step 1. A wash drawing is made by an artist on "Kemart Illustration Board." This paper is treated in the process of manufacture with a special fluorescent material which causes the paper to fluoresce brilliantly with visible light when irradiated with ultra-violet light. The ordinary black pigment is used in making the drawing but a liquid called "Kemart Neutralizer" is used as a diluent for the pigment in place of water. This diluent contains quinine bisulphate, among other substances, and its function is to destroy the fluorescent quality of the Kemart Illustration Board when applied by the artist in making the drawing.

Step 2. The prepared copy is then photographed for the standard halftone exposure, and the negative is left in the camera for Step 3.

Step 3. A second exposure is then made with the halftone screen removed or displaced, using light radiated from "Kemart Purple Camera" lights. These are white lamps, rich in ultra-violet light, with sleeve-like ultra-violet transmission filters fitting over...