Max Daetwyler Corp. v. Input Graphics, Inc.

• Decision Date: 30 March 1984
• Docket Number: Civ. A. No. 81-1140.
• Citation: 583 F. Supp. 446
• Parties: MAX DAETWYLER CORP. and MDC Max Daetwyler, A.G. v. INPUT GRAPHICS, INC., Benton Graphics, Inc., Joseph Halbherr and Rufus Benton.
• Court: U.S. District Court — Eastern District of Pennsylvania

583 F. Supp. 446

MAX DAETWYLER CORP. and MDC Max Daetwyler, A.G. v. INPUT GRAPHICS, INC., Benton Graphics, Inc., Joseph Halbherr and Rufus Benton.

Civ. A. No. 81-1140.

United States District Court, E.D. Pennsylvania.

March 30, 1984.

COPYRIGHT MATERIAL OMITTED

Manny D. Pokotilow, George S. Seltzer, Caesar, Rivise, Bernstein & Cohen, Ltd., Philadelphia, Pa., for plaintiffs.

Robert C. Podwil, Wolf, Block, Schorr & Solis-Cohen, Philadelphia, Pa., Peter T. Cobrin, Stempler & Cobrin, New York City, for defendants Benton Graphics and Rufus Benton.

Karl Spivak, Eric Marzluf, Steele, Gould & Fried, Philadelphia, Pa., for defendants Input Graphics, Inc. and Joseph Halbherr.

OPINION

LOUIS H. POLLAK, District Judge.

In this action, plaintiffs seek injunctive relief and damages for alleged patent infringement and violations of § 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a). In July of 1982, I denied defendants' motions for summary judgment as to both the patent infringement and the Lanham Act claims of the amended complaint. Max Daetwyler Corp. v. Input Graphics, 545 F.Supp. 165. Following the submission of a second amended complaint by plaintiffs in December, 1982, which essentially realleged the two causes of action presented in the amended complaint, defendants filed two additional motions for summary judgment directed solely at the patent infringement claims. Those motions, which are the primary focus of the present Opinion, have been the subject of a series of briefs and two oral arguments before this court.

The essential facts surrounding this action and a description of the "doctor blade" which is the subject of this suit are fully reviewed in my 1982 opinion. Thus, only a relatively brief summary of the facts relevant to these motions will be presented in this Opinion.

Plaintiffs allege that defendants are infringing plaintiffs' patent for the Daetwyler doctor blade. A doctor blade is a blade-shaped device for wiping excess ink from the printing surface used in photogravure printing techniques. The doctor blade is a long thin strip of metal mounted so that the wiping edge will run very close to the surface of the printing cylinder. In the course of use, a doctor blade wears along the wiping surface. As the tip of a conventional doctor blade wears away, the thickness of the blade tip in contact with the printing cylinder gradually increases. At some point in the use of such a doctor blade the tip becomes so thick that streaking and unsatisfactory print quality result. At that point, the printer must stop the press and replace the doctor blade at a significant cost in lost printing time and, thus, lost productivity.

The Daetwyler doctor blade is designed to retain a useful contact surface over a longer period of use. This is achieved by creating a blade which has a forward section of a constant, reduced thickness. The drawing from the patent presented below shows the difference between the patented blade and a conventional doctor blade. The conventional blade (represented in the drawing by the broken lines) is much thicker than the patented blade (represented in the drawing by the solid lines). When a conventional blade is worn-in to the point where its thickness exceeds the thickness shown at (7) in the drawing, it soon produces unacceptable print quality. The Daetwyler blade, being of a constant, reduced thickness, retains a relatively even area of contact with the printing cylinder and does not exceed a useable thickness until it wears down to the hilt of the blade. Thus, while only the tip, or beveled portion, of the conventional doctor blade can be used for printing, the entire forward section of the Daetwyler blade is useable. As a result, the Daetwyler blade does not have to be replaced as often as a conventional doctor blade.

One of the motions for summary judgment currently before me argues that the patent infringement claims alleged by plaintiffs should not be presented to a jury because, as a matter of law, the Benton doctor blade (distributed by defendant Input Graphics) does not infringe the patent. The other motion for summary judgment argues that the patent infringement claims fail due to invalidity of the patent. For the reasons which follow, I will deny both motions.

As noted in my earlier opinion in this action, in order to grant summary judgment in a patent infringement case, the court must be satisfied that (a) no genuine issue of material fact remains; (b) the technical nature of the patented invention can be fully appreciated without the aid of expert testimony; and (c) the accused device does not contain all the elements set forth in the claims which define the patented device. See Scharmer v. Carrollton Mfg. Co., 525 F.2d 95, 103 (6th Cir.1975). Of course, as with any motion for summary judgment, a motion for summary judgment in a patent infringement case requires the court to view the evidence in the light most favorable to the opposing party and to resolve all doubts and inferences in favor of the opponent of the motion. Harold Friedman, Inc. v. Thorofare Markets, Inc., 587 F.2d 127, 131 (3d Cir.1978).

1. Defendants' motion for summary judgment on the basis of non-infringement

In this motion, defendants argue that the patent which plaintiffs seek to protect from infringement requires that the user of the blade engage in a process of "bevel matching." Defendants have submitted affidavits which state that "bevel matching" is not considered in the manufacture or sale of the Benton blade. Thus, defendants conclude, since one of the elements of the patent claims—"bevel matching"—is not part of the manufacture or sale of the allegedly infringing product, not every element of the patent claims can be found in the accused device and, therefore, the defendants cannot be found liable for patent infringement.

Defendants use the term "bevel matching" to describe a process by which the user of a doctor blade selects a particular Daetwyler doctor blade for use according to the thickness of the blade. The user must choose a blade of a thickness which will produce optimum tonal quality printing. More specifically, defendants argue that the patent states that the patented blade is chosen to be essentially identical in thickness to the thickness of a conventional doctor blade which has been worn or "run-in" to a point where the conventional blade would produce optimal print quality. Thus, in order to practice "bevel matching," a user would have to start by using a conventional blade. When that blade has been worn to the point where the printing quality it produces is "optimum," the conventional blade would be removed and its thickness measured along the wiping edge. Then a Daetwyler doctor blade of that thickness would be substituted.

Defendants' argument in support of their motion for summary judgment on the basis of noninfringement rests entirely upon their view that the patent claims should be interpreted to incorporate a requirement of "bevel matching." If the claims of the patent call for "bevel matching," then only a doctor blade which is selected by a process of "bevel matching" could infringe the patent. Since defendants have presented uncontradicted affidavits denying any use of "bevel matching" with their doctor blades, they could not be found liable for infringement of a patent which requires "bevel matching." However, if the patent does not require "bevel matching," then the statements in the affidavits presented by defendants are irrelevant to the question whether defendants have infringed plaintiffs' patent. Thus, the primary issue raised by this motion is whether the patent is properly interpreted to require "bevel matching."

It is generally said that patent infringement is a question of fact for the finder of fact. Hadco Products, Inc. v. Frank Dini Co., 401 F.2d 462 (3d Cir.1968). However, when the basic facts are undisputed, the existence of infringement is treated as an issue of law for resolution by the court, often at summary judgment. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S.Ct. 9, 74 L.Ed. 147 (1929); 4 D.S. Chisum, Patents § 18.062 (1983).

Although the question whether a patent has been infringed is an issue of fact, the construction of a patent is a question of law. See Coupe v. Royer, 155 U.S. 565, 15 S.Ct. 199, 39 L.Ed. 263 (1895); New Wrinkle, Inc. v. John L. Armitage & Co., 277 F.2d 409 (3d Cir.1960). The only exception to this rule is when extrinsic evidence is necessary to resolve a dispute about a term of art in the claim. See Singer Manufacturing Co. v. Cramer, 192 U.S. 265, 24 S.Ct. 291, 48 L.Ed. 437 (1904); Super Products Corp. v. D P Way Corp., 546 F.2d 748, 192 U.S.P.Q. 417 (7th Cir.1976).

Many individual canons of interpretation have been developed by courts in their struggles to decipher patents. See D.S. Chisum, Patents § 18.032 (1983). Although the value of such maxims has from time to time been questioned, there are certain principles which are widely accepted. First, the scope of an invention is measured by the claims of the patent. "Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth. No matter how great the temptations of fairness or policy making, courts do not rework claims. They only interpret them." Autogiro Co. of America v. United States, 384 F.2d 391, 188 Ct.Cl. 55 (1967). Second, the claims of a patent are to be interpreted with reference to the specifications and the drawings which make up the patent and in light of the prior art and file wrapper of the patent. "That is, a claim in a patent, like a clause in a contract, is to be construed in connection with the other terms of the instrument of which it forms a part and the whole instrument is to be interpreted with reference to the circumstances surrounding its inception." Doble Engineering Co. v. Leeds & Northrup Co., 134 F.2d 78 (1st Cir.1943). See Schmidinger v. Welsh, 383 F.2d 455 (...