National Business Systems, Inc. v. AM Intern., Inc.
| Decision Date | 26 August 1982 |
| Docket Number | No. 80 C 4915,81 C 6227.,80 C 4915 |
| Citation | 546 F. Supp. 340 |
| Parties | NATIONAL BUSINESS SYSTEMS, INC., et al., Plaintiffs, v. AM INTERNATIONAL, INC., Defendant. NATIONAL BUSINESS SYSTEMS, INC., et al., Plaintiffs, v. AM INTERNATIONAL, INC., et al., Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
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Edward S. Irons, Mary Helen Sears, Irons & Sears, Washington, D. C., for plaintiff.
Granger Cook, Jr., John R. Crossan, Cook, Wetzel & Egan, Ltd., and Robert C. Curfiss, Chicago, Ill., for defendant.
This is a declaratory judgment action seeking to have letters patent Nos. 3,272,120 ("120 patent"), 3,340,800 ("800 patent"), and 3,763,777 ("777 patent") held invalid, unenforceable and/or not infringed by the manufacture and sale of NBS imprinter Models 710 and 750 and of NBS imprinter Models 305 and 2025. The defendants have counterclaimed alleging willful infringement of the same patents and imprinters. This action was tried to the Court between April 13, 1982 and April 28, 1982.
The '120 patent discloses and claims a data recorder using a two platen roller, two stroke (forward-return) method for imprinting forms from embossed printing plates or cards, such as are used in credit transactions in department stores and gas stations and in finance institutions with bank cards. The data recorder disclosed in the '120 patent has a dual platen roller arranged on a double eccentric shaft constituting a platen assembly which allows for selective imprinting of characters from the embossed plates or cards. A first platen roller is lowered and imprints on the form the first portion of characters as it rolls along the embossed plate or card, which is on the bed of the data recorder, in a left-to-right stroke of the platen carriage, which houses the platen assembly and is operated by hand. The first platen roller is then raised and a second platen roller is lowered to imprint the remaining portion of the characters as it rolls along the embossed plate or card in a right-to-left return stroke.
The '800 patent discloses and claims a data recorder using a two-platen, multiple (four) stroke method for selective imprinting of paper from an embossed printing device, such as is used in finance institutions for printing checks. The data recorder disclosed in the '800 patent has a dual platen roller arranged on a double eccentric shaft constituting a platen assembly which allows for high quality imprinting of MICR characters ("Machine Ink Character Recognition") when printing checks in accordance with American Bankers Association specifications for E-13B magnetic code. A first platen roller is lowered and imprints only one row of characters, the MICR characters, and then is raised for an idling return stroke. The second platen roller is lowered and imprints other than the one row of characters imprinted by the first platen roller, and then is raised for an idling return stroke.
The '777 patent discloses and claims a two-platen roller, two stroke method for imprinting forms from embossed printing plates or cards, with independent means for adjusting the pressure applied by the two platen rollers. The data recorder disclosed in the '777 patent has two platen rollers mounted on separate shafts swinging independently, constituting a platen assembly which allows for selective imprinting of characters from a plastic credit card and a metal station or merchant plate. The first platen roller is lowered and imprints from the metal station or merchant plate in the right-to-left return stroke. This data recorder allows for each platen roller to print with different pressure, which is desirable since one roller imprints from a plastic credit card and the second roller imprints from a metal plate.
Patent No. 3,272,120 entitled "Address Printing Machines with Roller Platens" was issued on September 13, 1966, from an application filed October 22, 1964. It is assigned to the Addressograph-Multigraph Company, predecessor (by change of name) to AM International ("AM") in the name of Dean W. Johnson. An application for reissue of the '120 patent was filed on April 27, 1978, which was to mature as reissue Patent No. 30,470. The Patent Office rejected the 30,470 reissue application and the continuation application, Serial No. 275,764, was finally rejected on April 6, 1982. The rejection has been appealed to the Board of Appeals, by a paper filed April 12, 1981.
Patent No. 3,340,800 entitled "Dual Roller Platens in Address Printing Machines" was issued on September 12, 1967, from a continuation application whose parent original application was filed April 25, 1963. It is assigned to Addressograph-Multigraph Company in the names of John H. Gruver, Dean W. Johnson, and Lyle W. Seifried.
Patent No. 3,763,777 entitled "Independently Adjustable Multiple Data Recorder" was issued on October 9, 1973, from an application filed November 17, 1971. It is assigned to Addressograph-Multigraph Company in the name of Albert C. Brown.
The plaintiff, National Business Systems, Inc., a corporation of Ontario, Canada (NBS/Canada), has a principal office and place of business in Mississauga, Ontario, Canada.
Plaintiff, National Business Systems, Inc., a Delaware corporation (NBS/U.S.), is a wholly-owned subsidiary of NBS/Canada, having a principal office and place of business in Elmsford, New York, and, in addition, a place of business in Elk Grove Village, Illinois.
Plaintiff, Heinrich Marketing, Inc., is a Colorado corporation, having a place of business in Arvada, Colorado. Plaintiff George Heinrich is an individual residing in Arvada, Colorado, and is the sole owner of plaintiff Heinrich Marketing, Inc.
The defendant, AM International, Inc., is a Delaware corporation, having a principal place of business in Chicago, Illinois.
Defendant, Bartizan Corporation, is a New York corporation, having a principal place of business in Yonkers, New York, and is doing business within this judicial district.
Defendant, Lewis Hoff, is the president of the defendant Bartizan Corporation, residing in New York, New York.
Jurisdiction exists by virtue of 28 U.S.C. § 1338(a) and 35 U.S.C. § 281, and venue is proper in this judicial district under 28 U.S.C. § 1391(c).
The following facts are undisputed regarding the accused NBS imprinter Models 710, 750, 305 and 2025:
1. Each of the accused models has two platen rollers.
2. The dimensions, including the width, of each of the two platen rollers in the accused models are substantially identical.
3. On the left-to-right stroke, the first platen roller of the accused models imprints all of the lines of embossing from a plastic credit card.
4. Most plastic credit cards have at least three lines of embossed characters, only one line of which is in a machine readable font.
5. On a return right-to-left stroke, the second platen roller of the accused models imprints all of the lines of embossing from a metal merchant plate.
Plaintiffs contend that the '120 patent is not infringed by NBS accused imprinters under either A) literal infringement or B) the doctrine of equivalents.
Plaintiffs argue no literal infringement by pointing out that the accused NBS imprinters have platen rollers of substantially the same width, whereas the drawings in the '120 patent show one narrow platen and one wide platen in an assembly designed to selectively imprint MICR characters, as specifically described in the specifications of the '120 patent. Plaintiffs also argue, according to the undisputed facts, that accused NBS imprinters use two embossed printing devices, namely a credit card and a metal merchant plate, while Claim 7 of the '120 patent describes a singular embossed printing device.
Defendants contend that plaintiffs suggest an improper reading of the '120 patent's Claim 7, which defendants argue describes a device which can print more than one line of MICR characters with one of the platen rollers, and that the claim mentions nothing about the width of the rollers in the two platen roller assembly. In addition, defendants point out that the reference to MICR characters in the specification explicitly mentions other types of machine readable characters. Through their expert witness, John A. Maul, defendants also argue that embossed printing "device" is used interchangeably with "devices" (R 1472-73) and in the alternative such description does not limit the operation or adaptability of the machine described in Claim 7.
Plaintiffs' argument is based on their assertion that this Court must read the language of the claim in light of the specification and the file wrapper, Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 701, 15 L.Ed.2d 545 (1966); United States v. Adams, 383 U.S. 39, 48-49, 86 S.Ct. 708, 712-713, 15 L.Ed.2d 572 (1966). This argument is erroneous in the context of this case. The approach suggested by plaintiffs is proper to define the scope of the patent only when the claim itself is ambiguous. Deere & Co. v. International Harvester Co., 658 F.2d 1137, 1141 (7th Cir. 1981). Since there is no ambiguity on the face of Claim 7 of the '120 patent, defendants correctly argue that the Court is to read the claim alone as the measure of the invention. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600, 5 L.Ed.2d 592 (1965); Laser Alignment, Inc., et al. v. Woodruff & Sons, Inc., et al., 491 F.2d 866, 872, (7th Cir. 1974), cert. denied, 419 U.S. 874, 95 S.Ct. 135, 42 L.Ed.2d 113 (1974).
Claim 7 of the '120 patent read alone defines the platen roller assembly in the accused NBS imprinters and is infringed with respect to the platen assembly. But,...
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