Paper Converting Machine Co. v. FMC Corporation

• Decision Date: 05 June 1967
• Docket Number: No. 59-C-152.,59-C-152.
• Citation: 274 F. Supp. 372
• Parties: PAPER CONVERTING MACHINE CO., Inc., Plaintiff, v. FMC CORPORATION, Defendant.
• Court: U.S. District Court — Eastern District of Wisconsin

274 F. Supp. 372

PAPER CONVERTING MACHINE CO., Inc., Plaintiff, v. FMC CORPORATION, Defendant.

No. 59-C-152.

United States District Court E. D. Wisconsin.

June 5, 1967.

Dawson, Tilton, Fallon & Lungmus, Chicago, Ill., Wheeler, Wheeler & Wheeler, Milwaukee, Wis., for plaintiff.

Lyon & Lyon, Los Angeles, Cal., Andrus & Starke, Milwaukee, Wis., for defendant.

OPINION

TEHAN, Chief Judge.

On July 24, 1959, the complaint in this action was filed by Paper Converting Machine Co., Inc., alleging that the defendant, Hudson-Sharp Machine Co. was infringing U. S. Letters Patent No. 2,870,840, which patent, covering a web cutting apparatus, was issued to plaintiff on January 27, 1959 on an application filed May 16, 1957. The defendant answered on August 17, 1959 denying infringement, alleging invalidity of the patent and setting forth a defense of file wrapper estoppel. The original defendant thereafter merged with Food Machinery and Chemical Corporation, now FMC Corporation, and FMC Corporation is the present defendant.

This case came on for trial by the court, post-trial briefs were filed, oral argument was heard and the court is prepared to render its decision.

The issues originally raised herein have been narrowed considerably since the complaint and answer were filed. Of the nine claims of the patent in suit only six, Claims 1, 2, 3, 4, 8 and 9 are now asserted to be infringed by the accused devices. The defendant has not pressed its defense of invalidity and on oral argument and in briefs did not argue it. And furthermore, the defendant's argument with respect to infringement has been restricted to one element only of the claims in suit, it being conceded, or at least uncontested, that all other elements are present in the accused devices.

The patent in suit describes an apparatus for perforating toilet paper or other thin paper webs. Prior to 1950, the perforating operation was accomplished on punch-type perforators which consisted generally of two rotating rolls one having teeth or knives and the other having slots. The paper web to be perforated was wrapped tightly around the roll equipped with slots and cut by the teeth engaging the slots as it passed between the rotating rolls. The paper used in this operation was coarser than that with which we are now familiar and the perforation less desirable in that a wide bond existed between slits, which was frequently difficult to tear evenly. In addition with Punch-type perforators, paper mills experienced difficulty in maintaining uniform perforation.

In approximately 1950 a new toilet tissue, Delsey, introduced by Kimberly-Clark, appeared on the market manufactured with a high-grade, softer paper perforated in such a manner as to permit a very neat tear-off. The manufacture of this product was achieved with a pinch-type perforator which also consisted of two rotating rolls, one carrying a hardened blade and the other having grooves, which perforated with a pressure cutting action. The Delsey product was superior and a product which competing paper mills wished to duplicate but the pinch-type perforator used in its production had substantial drawbacks. Although uniform perforation on high grade tissue was accomplished it was not possible to utilize pinch-type perforators on machines which were as wide as or operated at as high a speed as competing paper mills required and such perforators had very precise maintenance requirements.

The introduction of the Delsey product gave rise to a demand by Kimberly-Clark's competing paper mills for a perforator which would perform equivalent perforation on machines wider than those at Kimberly-Clark which could be operated at commercially acceptable speeds. Some paper mills unsuccessfully attempted to solve the problem themselves and plaintiff and Hudson-Sharp, both manufacturers of machinery for the paper industry, were pressed by their customers for a solution. The patent in suit represents the plaintiff's answer to its customers' demands.

Hudson-Sharp began experiments to manufacture a commercially acceptable perforator which would produce tissue competitive with the Delsey product in about 1953, but its efforts were sporadic and unsuccessful until late in 1956. At that time, Orrin Besserdich, a design engineer at Hudson-Sharp, was instructed to proceed with the experiments "as the number one project". As to the urgency of the project, it should be noted that on September 5, 1956, a Hudson-Sharp salesman had informed management that a customer, Crown-Zellerbach, was soon to view plaintiff's first perforator in operation at Charmin Paper Co. and, if it operated satisfactorily would replace all Hudson-Sharp winders, and would be lost to Hudson-Sharp as a customer.¹ Thereafter Hudson-Sharp stepped up its experimentation, but failed to produce a satisfactory perforator until it incorporated therein essential features of the plaintiff's perforator, which was already in customers' plants.

Since, as we have stated previously, only one element of the claims here involved is presently contended by the defendant not to exist in the accused devices, the Charmin and Ft. Howard machines, we see no need to discuss in detail the structure described in the patent. It is sufficient to say that the patent describes a perforating structure which has one rotating roll, the bedroll, around which the webb is partially wrapped, equipped with thin, flexible blades, and that the bedroll blades during operation contact skewed stationary blades, transversely perforating the web. The stationary blades are described in the claims as rigidly mounted or supported in a blade-supporting block or knife holder, which block or knife holder does not move or rotate during perforation. The sole question here presented is whether the stationary or anvil blades in the accused machines are rigidly mounted or supported as required by the claims in issue.

The only difference between the machine disclosed in the patent and the accused structures relied upon by the defendant as avoiding infringement has been succinctly described by the defendant as follows:

"In the patented structure, the anvil blades are solidly clamped against the beam portion of the machine frame, whereas in the accused structure a transverse shaft pivotally supports the blades through an anvil casting carried by the shaft, a spring being interposed between the anvil and the frame beam." (Emphasis ours)

It is the position of the defendant that since springs are interposed between the casting holding the stationary blades and the beam those blades are not rigidly supported or mounted. It is the position of the plaintiff that those springs due to pre-load, do not perform as springs during "normal operation"² but perform as ...