Mead Digital Systems, Inc. v. AB Dick Co.

• Decision Date: 07 August 1981
• Docket Number: C-3-78-287.,No. C-3-78-177,C-3-78-177
• Citation: 213 USPQ 328,521 F. Supp. 164
• Parties: MEAD DIGITAL SYSTEMS, INC., Plaintiff, v. A. B. DICK COMPANY and Gould, Inc., Defendants. A. B. DICK COMPANY and Gould, Inc., Plaintiffs, v. The MEAD CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of Ohio

521 F. Supp. 164

213 USPQ 328

MEAD DIGITAL SYSTEMS, INC., Plaintiff, v. A. B. DICK COMPANY and Gould, Inc., Defendants.

A. B. DICK COMPANY and Gould, Inc., Plaintiffs, v. The MEAD CORPORATION, Defendant.

Nos. C-3-78-177, C-3-78-287.

United States District Court, S. D. Ohio, W. D.

August 7, 1981.

COPYRIGHT MATERIAL OMITTED

David C. Greer, Howard P. Krisher, Dayton, Ohio, Dugald S. McDougall, Keith V. Rockey, Chicago, Ill., for A. B. Dick Company & Gould, Inc.

Armistead W. Gilliam, Jr., Dayton, Ohio, Bill Durkee, Edward W. Goldstein, Ben D. Tobor, Houston, Tex., for Mead Corp.

OPINION

PRELIMINARY MATTERS DISPOSED OF; A. B. DICK NOT PRECLUDED FROM PROSECUTING INFRINGEMENT ACTION BY LACHES; MEAD DIJIT PRINTER HELD NOT TO INFRINGE, LITERALLY OR AS AN EQUIVALENT, ON CLAIMS 1 OR 33 OF SWEET PATENT OR ON CLAIM 2 OF LEWIS-BROWN PATENT; SWEET PATENT DEEMED VALID; LEWIS-BROWN PATENT DEEMED INVALID; DEFENDANT TO PREPARE JUDGMENT ENTRY WITHIN STATED PERIOD OF TIME IN ACCORDANCE WITH THIS OPINION

RICE, District Judge.

I.

This case brings before the Court two patents in the field of ink jet printing and a device, the Mead DIJIT printer, which is alleged to infringe on those patents. The case came on for trial before the Court sitting as the trier of fact. Certain preliminary matters are addressed immediately below. The Court's findings of fact and conclusions of law, as required by Fed.R.Civ.P. 52(a), are set forth further below.

II.

Because one of the patents in suit (the Sweet patent) was developed in the course of a research project sponsored by the United States Government, Mead says that the Government has equitable title thereto under the common law and pursuant to federal regulations. Since the Government is not a party to this action in infringement, and since the law requires that every owner of a patent must be joined before an infringement suit can be maintained, Mead contends that this action in infringement of that patent cannot be maintained.

Although, as Mead points out, there is a conflict among reported decisions on this matter, this Court must conclude, in accord with the great weight of authority, that the equitable interest of a third party in a patent may not be asserted as a defense in an action for infringement brought by the owner of legal title to the patent. See Mercantile Nat'l Bank of Chicago v. Howmet Corp., 524 F.2d 1031, 1034 (7th Cir. 1975), cert. denied, 424 U.S. 957, 96 S.Ct. 1435, 47 L.Ed.2d 364 (1976), and cases cited therein. The Court also notes that Mead raised and then abandoned the idea of joining the Government as a party, herein, in order to determine the extent of the Government's interest in the patent. This Court concludes that it is without jurisdiction to consider Mead's claim that title is in the government. See also Mead Corporation and Mead Digital Systems, Inc. v. United States of America, et al., 652 F.2d 1050 (D.C.Cir.1981).

Accordingly, the Court does not consider the question of the Government's interest in the Sweet patent in the findings and conclusions set forth below.

After the close of the evidence in this case, plaintiffs^* moved for an order enlarging the record by the addition of two exhibits. Mead does not object to the addition of the first exhibit, the Donahue deposition, and accordingly, it will be added to the record as plaintiffs' exhibit A-237. The Court notes, in passing, that plaintiffs rely on this exhibit as evidence of Mead's interest in acquiring a license under one of the patents in suit (Lewis-Brown), and to challenge Mead's assertion in its brief that plaintiffs proposed findings were incorrect on this matter. Since the Court finds and concludes below that the accused device does not literally infringe, nor infringe as an equivalent of that patent, the question of Mead's interest in the patent during the development of the accused device is wholly irrelevant.

Mead does object to the second exhibit which plaintiffs seek to have added to the record. Plaintiffs seek to have the second exhibit added on grounds that the failure to offer it at trial was "inadvertent." The exhibit in question was originally marked as a Mead exhibit but was withdrawn by Mead at the trial's end. Plaintiffs were given the opportunity to adopt the exhibit but declined to do so. Plaintiffs now seek to rely on the exhibit to defend against Mead's assertion that one of the patents in suit (Sweet) is invalid.

Under the circumstances, the Court is not satisfied that Plaintiffs' failure to offer the exhibit at the close of trial was inadvertent. Accordingly, the exhibit will not now be added to the record. However, while the Court notes that the exhibit is relevant to the issue of one of the inventor's disclosures to the patent office, the Court further notes that the exclusion of the exhibit does not prejudice plaintiffs since the Court finds and concludes below that the particular disclosure in question (or, more correctly, failure to disclose) does not affect the validity of the inventor's patent.

Finally, it will be noted that the Court finds and concludes below that the accused device does not infringe either of the patents in suit. Although it is not necessary to address the validity of the patents in suit under such circumstances, the Court is of the opinion that the public importance of and public interest in the validity of the patents in suit, as well as the substantial cost borne by the parties in litigating the matter, dictate that the Court determine the validity issues presented to it. The Court notes that such comprehensive disposition of infringement suits has been approved in this Circuit as "the better procedure." Tappan Co. v. General Motors Corp., 380 F.2d 888, 890 (6th Cir. 1967).

III. Findings of Fact

A. The Parties, Patents in Suit, and Proceedings

1. A. B. Dick Company (hereafter "A. B. Dick") is a Delaware corporation, having its principal place of business in Chicago, Illinois. Gould, Inc. (hereafter "Gould") is also a Delaware corporation, and has its principal place of business in Rolling Meadows, Illinois.

2. The Mead Corporation is an Ohio corporation, having its principal place of business in Dayton, Ohio. Mead Digital Systems, Inc., also an Ohio corporation, is a wholly-owned subsidiary of The Mead Corporation. For sake of brevity, The Mead Corporation and Mead Digital Systems, Inc., will be referred to collectively as "Mead."

3. All the parties have a regular and established place of business in the Southern District of Ohio. No issue as to jurisdiction or venue is involved.

4. United States Patent No. 3,596,275 (the "Sweet patent") issued on July 27, 1971, on an application filed on March 25, 1964. That application was called a continuation-in-part of an earlier application filed July 31, 1963. On September 19, 1972, the inventor named in that patent, Richard G. Sweet, executed an assignment conveying his entire right, title and interest in U. S. Patent No. 3,596,275 to A. B. Dick.

5. United States Patent No. 3,298,030 (the "Lewis-Brown patent") issued on January 10, 1967, on an application filed July 12, 1965, and names Arthur M. Lewis and Arling Dix Brown as the inventors. That application was called a continuation-in-part of an earlier application filed on January 13, 1965, which in turn was called a continuation-in-part of yet an earlier application filed September 25, 1964. Gould is the owner of that patent, and A. B. Dick is the exclusive licensee under it.

6. A. B. Dick and Gould first filed suit in Chicago against The Mead Corporation for infringement of the Sweet patent and the Lewis-Brown patent, based upon Mead's development and use of a printing system called the DIJIT printer. Mead Digital Systems, Inc., thereafter filed an action for declaratory judgment before this Court, seeking a declaration that Mead Digital Systems, Inc., has not infringed either of the patents in suit. (Case No. C-3-78-177). The Chicago case was, with the consent of all the parties, transferred to this Court where it was consolidated with the declaratory judgment action brought here by Mead Digital Systems, Inc. (Case No. C-3-78-287).

B. The Art Prior to Sweet

7. In the 19th century, Lord Rayleigh investigated the scientific phenomenon that a stream of liquid drops issuing from a nozzle could be made uniform in size and spacing by imparting cyclic energy (vibrations) to the liquid as the drops formed at the nozzle tip.

8. The basic concept of recording electric signals on paper with a controlled jet of ink has been known for some years. In claim 4 of the Schroter Patent, No. 1,882,043, which issued in 1932, one aspect of the Schroter invention is described as follows:

The method of recording signals on a recording surface in accordance with received signal energy impulses which includes continuously projecting a jet of recording fluid along a predetermined path toward the recording surface, electrically deflecting the path of the recording jet in accordance with received signal energy impulses, producing markings by the recording jet upon the recording surface during periods of deflection, and interrupting the marking action during the absence of electrical effects producing deflections in the jet.

The Schroter patent also discloses the concept of moving the paper past the jet to effect recording (e. g., claim 8). The Schroter patent does not discuss use of a jet consisting of a succession of uniform ink droplets, but it does disclose that electric signals for recording can be used either to control the instantaneous intensity of charge of the jet or to control the intensity of the deflecting electric field.

9. The Jacob patent, No. 2,577,894, issued in 1951, discloses an ink jet system operated in a binary or on-off manner in which ink or other marking medium is directed to a recording surface with one charge value, or is intercepted before recording by another charge value at a different level. Jacob's device contemplates...