Potter Instrument Co., Inc. v. ODEC Computer Systems, Inc.

• Decision Date: 17 January 1974
• Docket Number: Civ. A. No. 4711.
• Parties: POTTER INSTRUMENT COMPANY, INC. v. ODEC COMPUTER SYSTEMS, INC.
• Court: U.S. District Court — District of Rhode Island

370 F. Supp. 198

181 USPQ 572

POTTER INSTRUMENT COMPANY, INC. v. ODEC COMPUTER SYSTEMS, INC.

Civ. A. No. 4711.

United States District Court, D. Rhode Island.

January 17, 1974.

COPYRIGHT MATERIAL OMITTED

Richard L. Aitken and Donald R. Dunner, Lane, Aitken, Dunner & Ziems, Washington, D. C., Deming E. Sherman, Edwards & Angell, Providence, R. I., for plaintiff.

Albert E. Fey and William J. Gilbreth, Fish & Neave, New York City, Thomas H. Quinn, Swan, Keeney, Jenckes & Asquith, Providence, R. I., for defendant.

OPINION

PETTINE, Chief Judge.

This is a patent infringement action in which the plaintiff has charged the defendant with infringement of two patents (Patent No. 26,240 "High Speed Printers with Column Spanning Hammers"; Patent No. 3,402,657 "High Speed Belt Printer with Printing Slug Supporting Means") relating to the details of mechanical devices employed with printing machines, called "line printers" used to print the output information from computers and similar data processing equipment. The plaintiff seeks an injunction and accounting.

Jurisdiction is based on 35 U.S.C., 28 U.S.C. § 1338(a) and § 1400(b) respectively.

Potter Instrument Company, Inc. is a New York corporation having a principal place of business in Plainview, Long Island, New York and ODEC Computer Systems, Inc. is a Rhode Island corporation with its principal place of business in Warwick, Rhode Island.

Patent No. 26,240 entitled "High Speed Printers with Column Spanning Hammers," hereinafter referred to as the "Wasserman Patent," dated July 18, 1967, is a reissue of original patent 3,220,343 which issued November 30, 1965, on an application filed November 25, 1960. Patent No. 3,402,657 entitled "High Speed Belt Printer with Printing Slug Supporting Means," hereinafter referred to as the "Potter Patent" issued September 24, 1968, on an application filed November 25, 1965. Both of these patents are owned by the plaintiff.

The issues framed by the pleadings involve claims 7, 12, and 13 of the "Wasserman Patent" all of which, however, stand or fall on claim 13.¹ Claims 14 and 15 are at issue in the "Potter Patent" and stand or fall on claim 15.²

As to the "Wasserman Patent," the defendant argues invalidity by reason of obviousness (35 U.S.C. § 103)³ and in confirmation thereof independent developments; prior invention (35 U.S.C. § 102(g))⁴, improper reissue (35 U.S.C. § 251)⁵ and non-infringement.

As to the "Potter Patent," the defendant argues the two conventional defenses of obviousness and non-infringement.

"Wasserman Patent"

The "Wasserman Patent" describes two different high speed printers. One is known as a drum printer and the other as a chain printer. The drum printer has three columns of staggered type faces on a rotating drum as the type carrier. This drum rotates past a row of hammers arranged parallel to the axis of the drum. The chain printer employs an endless belt or chain to carry the type past a row of hammers parallel to the print line. In both it is these hammers which carry out the printing as they are selectively activated to strike the type on the moving type carrier. Specifically, the heart of the issue is that these hammers span more than one column with a face wide enough to span and operate in conjunction with more than one character space or "column" on the print line. The type faces are arranged on the drum or belt so that in printing a character in one column, it will encounter voids in the other column and as a consequence not print in the other column it spans. This permits selective printing in all the columns it spans, thus dividing the number of hammers required by the number of columns it spans. These hammers work exactly the same whether it be a drum type or a belt carrier since all that is needed is a type array which provides a void in one column when the hammer is printing in another and a logic circuitry to selectively activate the hammers.

Though the patent describes a logic or closed circuitry, it is clear from the testimony of the experts that such circuitry is not important here and need not be considered. It can be said, and the court so finds, that the experts for both litigants agree to this fact. All printers require such control and logic circuitry which were, as stated by Dr. Beam, "well in the capabilities of a person skilled in the art before the filing of the applications for the patents in suit." To further quote witness testimony, Dr. Beam, the plaintiff's expert, stated that logic circuitry was a matter which "need not concern us, that is, it is required by the claim but its details need not concern us." The inventive concept, therefore, is as he stated and I so find, nothing more than ". . . the combination in the high-speed on-the-fly printer of specially arranged type with column spanning hammers" with a well understood conventional logic circuitry.

Obviousness

The Court will first consider the defense of anticipation or obviousness.

It seems to me that a review of the prior art to the "Wasserman Patent" leads to the conclusion that the concept and utilization of column spanning hammers dates back to the 18th century as is significantly shown in the C. J. Wiley, Printing Telegraph, patented November 22, 1887. Dr. Beam, the plaintiff's expert, testified that the Wiley printer used staggered type array that ". . . enabled that 1-3 column wide hammer to print the three columns . . ." and that ". . . conceptually that is the same way that Mr. Wasserman used a column-spanning hammer with a type array in three columns . . ." The plaintiff's argument that the Wiley patent being an 18th century indexing serial printer, was not in the art which would be looked to by a person with ordinary skill working in the high speed printer art in 1960 is not persuasive. To buttress this conclusion, the plaintiff points to the testimony of defendant's witness, Dr. Eng. I do not find such testimony supporting the plaintiff's position. Dr. Eng specifically stated he looked to literature of "the vintage of the 1880's." The other experts said the same thing. In substance, their testimony was that all relevant art on printing mechanisms is researched even to "designs in the ash heap to see if they could be put to good use."

Even as to on-the-fly printers before Wasserman, the wide hammer was used with different type arrays. As the defendant points out, "The Hoffman patent (part of the prior art cited by defendant) shows an on-the-fly printer having hammers two characters wide and spanning two `columns' transitionally with helically arrayed type faces. Adjacent each helix having type characters in it is a helix deliberately left vacant so that the wide hammers will not double print."

Indeed, in addition to Wiley and Hoffman, the prior art of Hilton and Miles offered by the defense show the use of column spanning members and in applying to such hammers the undisputed fact that logic or closed circuitry to selectively activate the hammers is not important since all printers require it and that it is routine and further that staggering or arranging type was no new trick, I must conclude the Wasserman invention lacks patentability. The way Wasserman reads on the prior art of Wiley and the contemporaneous independent developments, as will be discussed infra, further strengthens the Court's position.

The plaintiff cannot escape the simple fact that the only inventive concept at issue is that of column spanning hammers with a face wide enough to span and operate in conjunction with more than one character space or characters on the print line and that column spanning hammers are old in the art and that logic circuitry to selectively activate the hammers is of no consequence.

Wiley certainly shows cooperating hammers with type faces on type wheels printing impressions on paper being advanced through the machine. These are column spanning hammers as in Wasserman and the type faces are staggered so that in printing a character in one column there will be voids beneath the hammer in the other two columns.

Now while it is true that the Wiley patent as well as Miles and Hilton do not relate to chain printers and that the hammers in Wiley may operate somewhat differently, the fact remains it falls within the same general art, that is to say, column spanning hammers with a type array in multiple columns. This known device was merely put to a new use employing a well known and established circuitry system that need not concern us. American Tube and Controls, Inc. v. General Fittings Company, 407 F.2d 1291 (1st Cir. 1969).

What we have here is the end result of mechanical aptitude, combining old elements rather than an "inventive mind." A strict standard of obviousness must be applied. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950).

I find impressive Dr. Eng's testimony who stated that in December of 1959, while associated with Honeywell Company, he conceived the idea of eliminating half the hammers in a high speed printer without knowledge of Wasserman's doing. The plaintiff tried to discredit this testimony by showing the witness had expertise beyond that of one with ordinary skill in the art. However, he fails to recognize that the testimony shows that David F. Sweeney, as chief engineer of ANelex Corporation, with limited exposure to line printers conceived the idea of column spanning hammers with appropriate type array in high speed on the fly printers; together with one John Sims, his project engineer, they completed the design and construction of a high speed printer with column spanning hammers late in 1960. Likewise, Bjarne Jacobsen of UNivac Corporation had the same idea in 1969 though he had no experience in the design or operation of line printers. Mr. Jacobsen conceived using column spanning hammers with a helical type font as in the Hoffman patent. When he had this idea he was not aware of the Hoffman patent....