LaSalle Street Press, Inc. v. McCormick & Henderson, Inc.

• Decision Date: 29 May 1968
• Docket Number: No. 67 C 1565.,67 C 1565.
• Citation: 292 F. Supp. 276
• Parties: LaSALLE STREET PRESS, INC. v. McCORMICK & HENDERSON, INC.
• Court: U.S. District Court — Northern District of Illinois

292 F. Supp. 276

LaSALLE STREET PRESS, INC. v. McCORMICK & HENDERSON, INC.

No. 67 C 1565.

United States District Court N. D. Illinois.

May 29, 1968.

Howard Clement, Melvin Jager and Robert Cummins, Hume, Clement, Hume & Lee, Chicago, Ill., for plaintiff.

Anthony Zummer and Wilfred Stone, Stone, Zummer & Livingston, Chicago, Ill., for defendant.

MAROVITZ, District Judge.

Cross-Motions for Summary Judgment

Plaintiff, LaSalle Street Press, Inc., charges defendant, McCormick & Henderson, Inc., with infringement of the former's United States Letters Patent No. 3,136,248, entitled "Process and Apparatus for Temporarily Indicating Corrections in Text of Printed Matter". Defendant has filed a counterclaim charging that the patent is invalid and/or not infringed.

Defendant now has moved for summary judgment on the infringement issue alone, and plaintiff has submitted a cross-motion for summary judgment thereon. Both parties apparently believe there are no contested issues of material fact remaining as to infringement, and that the Court is in a position to determine that issue as a matter of law. The parties have filed extensive briefs, documentary and physical exhibits, affidavits, and numerous depositions in connection with their cross motions.

In issue are process claims 1, 2, & 3 of the patent.¹ Essentially, the patent describes a printing process which allows one reading proofs (or "galley sheets") to readily check corrections made in succeeding proofs without re-reading the entire document. The system is of greatest utility for proofreading complex legal or financial documents. It involves temporarily identifying only the corrected lines of printed matter contained on successive proofs. This is done by casting a "readily removable" printing projection on the type slug containing the corrected type face, integral therewith and in addition thereto, so that a proof sheet prepared from such a type slug will have an identifying symbol in the margin, in the form of a short vertical line, to indicate those lines of the proof sheet that have been corrected. A "type slug" constitutes a single line of type, which, combined with other slugs, comprises a page of type. After the corrections have been approved, the printing projection is removed, and final copies are prepared using the same type slug with the projection removed.

Defendant uses essentially the same process to achieve the same purpose.² In the briefs, its process is referred to as a Sequential Proof Alteration Identification Process. It posits its claim of noninfringement upon two asserted distinctions from the claims of the patent in suit, as construed in light of the specifications thereof. Primarily, defendant argues that its process does not have a "readily removable printing projection", as called for by claims 1-3. Secondly, defendant contends, it achieves a different result. That is because its printing projection consists of sequential numerals indicating upon which of the various proofs corrections were made, rather than consisting of mere identifying symbols in the form of a short vertical line, which indicate that corrections were made, but do not reveal upon which proof each specific correction was effected. This is the so-called "sequential" feature of defendant's process.

Since there is no argument to the contrary, defendant apparently acquiesces in plaintiff's contention that it practices the remainder of claims 1-3, relating to the process of casting slugs into a line of type, assembling the slugs into a page of type, preparing a printed proof of said page, removing at least one of the original slugs, recasting and substituting a replacement slug for each one removed (which includes the disputed temporary printing projection), preparing a second proof with the substituted slug, and removing the printing projection from the substituted slug prior to additional printing. Except for the inclusion and removal of the temporary printing projection, which is the crux of the invention, the other steps are normal constitutents of a regular printing process. From an examination of the documentary evidence available, it is evident to the Court, aside from defendant's acquiescence, that defendant practices these steps.

The three process claims in issue call for a "readily removable printing projection". Defendant claims that it does not practice or infringe that aspect of the claims. In reaching that conclusion, defendant apparently limits the quoted portion of the claims by the terms of the specifications. Specifically, it contends that "readily removable" means the printing projection is one which does not have a base or pedestal, and which is more readily removable than the type face on the slug which constitutes the regular line of type. It cites lines 36-52 of Column 2 of the specifications as support therefor:

"As shown in FIGURE 2, the type 14 is normally cast with a base portion 18 forming what might be termed a pedestal for the type characters. This base or pedestal is formed integrally with each type character, and contiguous characters preferably have their bases united to form a common base portion. The printing projection 16, on the other hand, is not provided (sic) with any such base or pedestal portion. The absence of such a base portion in the printing projection 16 makes it more readily removable from the face of the slug 12. Fortunately, it has been found to be unnecessary to have such a base portion in the printing projection, since a relatively small number of printed copies are normally made while the projection is still in place. On the other hand, the type characters must have a construction firm enough to insure repeated use in the process of printing." (emphasis added).

It is undisputed that defendant's printing projection, in the form of sequential numerals, is precisely as removable as the letters used in the type slug. Indeed, if the printed material should require numerals, the same numerals used in the removable printing projection are utilized. The defendant's printing projection has a base identical to that of the letters used for the printed matter — their basic construction is identical. Thus, if the patent is limited by the above quoted portion of the specification, it appears that defendant's process would not infringe, since its printing projection is not "more readily removable" than the type face of the slug.

Plaintiff contends that the specification merely sets forth the preferred embodiment of the patented process, and asserts that the claims are not limited thereby. In lines 11-19 of column 3 of the patent, it is provided:

"In the drawing and specification, there has been set forth a preferred embodiment of the invention, and although specific terms are employed, they are used in a generic and descriptive sense only and not for purposes of limitation. Changes in form and in the proportion of parts, as well as the substitution of equivalents are contemplated, as circumstances may suggest or render expedient, without departing from the spirit or scope of this invention as further defined in the following claims."

Section 112 of Title 35, United States Code, requires the inventor to set forth in the specifications the best mode of carrying out his invention. The specifications contained in the instant patent begin by setting forth the general nature of the invention, and then broadly describe the function of the printing projection as follows: (col. 1, lines 18-24)

"* * * The printing projection provides a temporary identifying symbol for the altered line in the succeeding proof of the printed page, which symbol, in turn, can be readily eliminated prior to the next printing operation by bodily removal of the printing projection from the slug, without otherwise disturbing the set type." (emphasis added).

The removal of the projection is further described in the following general terms: (col. 1, lines 28-35)

"When the corrected or changed portions of the type have been approved by examination of such a proof, the printing projections which produce the identifying symbols can be bodily removed from the printing face of the type slugs so that subsequent proofs, or final copy, prepared from the same type will not contain any of the identifying symbols which appeared in the preceding proof." (emphasis added).

Then the preferred embodiment of the printing projection is described, and it includes the following paragraph (col. 2 lines 20-35) not quoted by defendant, which immediately precedes the portion quoted by defendant (col. 2, lines 36-52):

"As shown in FIGURE 1, the type slug 10 is also provided on the face 12 with a printing projection 16 disposed in spaced relation to the end of the line of type characters 14. This projection 16 preferably is in the form of very narrow upstanding bar of type metal formed integrally with the slug 10, so that in the printing operation it forms a symbol in the form of a short vertical line disposed in spaced relation to the main body of the line of print produced by the type 14 on the slug. Obviously the projection 16 could take any other suitable form, insofar as the nature of the printed symbol produced thereby is concerned. However, it should have a configuration such that it is readily removable from the face of the slug by the use of a simple tool having an edge capable of cutting off the metal forming the projection 16 from the body of the slug when manually applied thereto." (emphasis added).

The specification continues by stating that the preferred embodiment of the printing projection "makes it more readily removable from the face of the slug 12." (Col. 2, lines 44-45).

It appears, as plaintiff asserts, that defendant is attempting to limit the claim language, calling for a "readily removable printing projection," with the language of the specification describing the preferred embodiment. The claim, of course, does not require the printing projection to...