Printing Plate Supply Co. v. Crescent Engraving Co.

• Decision Date: 30 September 1965
• Docket Number: No. 4103.,4103.
• Citation: 246 F. Supp. 654
• Parties: PRINTING PLATE SUPPLY COMPANY and Robert R. Myers, Jr., Plaintiffs, v. The CRESCENT ENGRAVING COMPANY, Kalamat Company, and Ben R. Preston, Defendants.
• Court: U.S. District Court — Western District of Michigan

246 F. Supp. 654

PRINTING PLATE SUPPLY COMPANY and Robert R. Myers, Jr., Plaintiffs, v. The CRESCENT ENGRAVING COMPANY, Kalamat Company, and Ben R. Preston, Defendants.

No. 4103.

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

September 30, 1965.

COPYRIGHT MATERIAL OMITTED

Dick, Zarley, McKee & Thomte, Des Moines, Iowa, D. H. Zarley, Des Moines, Iowa, of counsel, Price & Heneveld, Grand Rapids, Mich., Lloyd A. Heneveld, Grand Rapids, Mich., of counsel, for plaintiffs.

Woodhams, Blanchard & Flynn, Kalamazoo, Mich., Robert E. Woodhams, Kalamazoo, Mich., of counsel, Stratton, Wise, Early, Starbuck & Lennon, Kalamazoo, Mich., Benjamin W. Wise, Kalamazoo, Mich., of counsel, for defendants.

FOX, District Judge.

This is an action seeking an injunction against alleged infringements of the patents in suit, an accounting of profits, treble damages, costs, and attorney fees.

Plaintiff Robert R. Myers, Jr., is the inventor of record of United States Patents No. 2,507,347; 2,800,856; 2,814,990; and 3,062,139 (hereafter referred to as the "347", "856," "990," and the "139" patents, respectively).

"Myers Enterprises, Inc." is the present name of the original plaintiff, Printing Plate Supply Co., and for purposes of this opinion, the two names are interchangeable. However, for purposes of clarity, this court will refer to the corporate plaintiff at all times as "Printing Plate."

Individual plaintiff Myers is the inventor of all patents in suit, and the owner of the 856, 990 and 139 patents. Plaintiff Printing Plate is the owner of the 347 patent and exclusive licensee of the 856, 990 and 139 patents.

The patents in suit are concerned with methods of producing printing plates for use in the printing industry.

This industry had been dominated for decades by the lead-backed electrotype printing plate, which consisted of a thin electrotype shell with a lead backing. The manufacture of this plate involved the pouring of molten lead onto the back of the printing shell, and then allowing the lead to cool and set.

The result was a heavy, cumbersome plate which was then shaved to the desired thickness.

A further process to which such plates were subjected is known in the industry as the "make-ready process." This consisted of correcting areas of the plate which were not of uniform thickness by either placing a layer of suitable material over the desired area of the printing surface and then passing the plate between pressure rolls, or by actually hammering on the back of the plate.

This process could also be utilized to create variations in the elevation of the printing surface, which resulted in differing contrasts in the final print produced by the plate.

The weight of the finished plate gave rise to problems in the industry with the advent of the high speed printing press. Because of the great centrifugal force generated by the use of these heavy plates, and the component materials involved, the presses could not be operated at top speed without causing undue wear and tear on the printing plates. Thus, the industry was actively engaged in a search for a durable lightweight printing plate which could be used on the new printing presses without frequent and unnecessary stoppage.

The most successful solution to the problem prior to that offered by plaintiffs had been the so-called "Time-Life" plate. This is produced by shaving away a portion of the lead on a lead-backed plate and replacing it with a solid layer of aluminum, which is glued to the shaved plate. The result is a lighter, but still relatively heavy printing plate, which requires at least six manufacturing techniques not required by plaintiff's process.

Defendant Preston, in cooperation with another, had been working on the "Bista" plate, which was a plate backed entirely with plastic, but this proved unsuccessful.

At this point, it is well to consider the specific patents in suit, in the order in which they were granted.

The 347 patent, as originally applied for, sought patent protection for the application of a lead backing to a curved printing shell by means of a centrifugal casting machine, as well as for a solution to problems of the make-ready process, specifically, the placing of a sheet of paper or like material adjacent to the portion of the printing surface in the desired area(s) during the casting process, so that while the plate is being formed, the paper between the printing shell and the mold produces the desired variations in the surface thereof by reason of the pressure exerted simultaneously by the backing material which is being pressed onto the rear of the shell. A patent was granted only on the "make-ready" aspects of the patent application.

The 856 patent was granted in 1953, and represented an attempt to deal with a problem encountered in the search for a practical, lightweight printing plate.

In bonding together a printing shell, a layer of thermoplastic material and a layer of light weight backing metal with suitable adhesive, it was found that during the laminating process any surplus plastic at a given point had to flow to another location or out the sides of the plate, due to the compression applied during the laminating process.

For example, if compression were great near the center of the plate, the plastic sheet would be thinnest at that point, and the excess would have to move to the outer edges of the plate, causing an inconsistent density and attendant unevenness of the finished plate. To accomplish even this undesirable result, the plastic would have to be heated to a temperature at which it would be fluid enough to move freely to any point on the plate. Furthermore, plates do not cool evenly and this too could cause an objectionable finished product.

To overcome these difficulties, the plaintiff Myers provided, instead of a solid sheet of plastic, an irregular surface or perforated sheet. The result was, that when a surplus of plastic resulted from the compression, it filled the immediately surrounding irregularities or perforations, without affecting the remainder of the area.

The 990 patent was granted in 1954, and represented a further refinement of the solution presented by the 856 patent to the problem of lateral flow of the plastic material.

The 990 patent involved a process for making a printing plate in which solid plastic is used but a perforated aluminum backing is substituted for the solid aluminum backing. The perforations were filled with the soft plastic during the laminating process, and this provided (with the proper application of adhesive) a more secure bond between the plastic and the aluminum, giving a plate more durability. But more importantly, instead of forcing the plastic to flow laterally, which resulted in voids of entrapped air under the surface of the printing shell, the perforated aluminum allowed the plastic to flow vertically, permitting the air to escape from the voids and the plastic to then fill these voids.

The 139 patent was granted in 1959 and embodies the last refinement in plaintiff's process. Air and soft spots directly behind the printing shell were eliminated by the use of a layer of cheesecloth, which absorbed the trapped air and allowed it to escape from the printing plate. Myers also sought to obtain a patent on the idea of placing plastic on both sides of the perforated metal sheet, but the Patent Office granted a patent only on the cheesecloth concept.

The plaintiff's "Color-line" process is the trade name for the inventions incorporated into the lightweight printing shells covered by patents 856, 990, and 139.

Defendants raise the defenses of invalidity, non-infringement, and patent misuse, and each of these will be considered in separate parts of this opinion.

I. VALIDITY:

Defendants attack the validity of each of the four patents involved in this action.

In general, in any action in which the validity of a patent is attacked, there is a strong presumption of the validity of the patent issued by the United States Patent Office. 35 U.S.C.A. § 282; Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163; Ric-Wil Co. v. E. B. Kaiser Co., 7 Cir., 179 F.2d 401, cert. den. 339 U.S. 958, 70 S.Ct. 981, 94 L.Ed. 1369; Colgate-Palmolive Co. v. Carter Products, Inc., 4 Cir., 230 F.2d 855, cert. den. 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59, reh. den. 352 U.S. 913, 77 S.Ct. 152, 1 L.Ed.2d 120.

There is a heavy burden of proof upon the party asserting invalidity. 35 U.S.C.A. § 282; Patterson-Ballagh Corp. v. Moss, 9 Cir., 201 F.2d 403; Ezee Stone Cutter Mfg. Co. v. Southwest Indies Prod., Inc., 8 Cir., 262 F.2d 183; Squeeze-a-Purse Corp. v. Stiller, D.C., 175 F.Supp. 667, aff'd. 280 F.2d 424 (CCA 6), cert. den. 364 U.S. 828, 81 S. Ct. 67, 5 L.Ed.2d 56.

The standard of patentability (or validity) has been declared by the Sixth Circuit Court of Appeals to consist of three concepts: utility, novelty, and invention. Monroe Auto Equipment Co. v. Heckathorn Mfg. & Supply Co., 332 F.2d 406, cert. den. 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93; Harvey v. Levine, 322 F.2d 481; Maytag Co. v. Murray Corp. of America, 318 F.2d 79; Aluminum Co. of America v. Sperry Products, Inc., 285 F.2d 911, cert. den. 368 U.S. 890, 82 S.Ct. 139, 7 L.Ed.2d 87; Allied Wheel Products v. Rude, 206 F.2d 752.

The utility of the patents in suit has not been questioned. Novelty and invention are thoroughly discussed in the Monroe Auto Equipment Co. case, supra, from which the following quotes are taken:

"Telescoped, the test is whether the device would have been obvious to one skilled in the art. Maytag Co. v. Murray Corp. of America, supra, 318 F.2d at 81; Firestone v. Aluminum Co. of America, 285 F.2d 928, 930 (C.A.6); Aluminum Co. of America v. Sperry Products, Inc., 285 F.2d 911, 917 (C.A.6), cert. denied, Firestone v. Aluminum Co. of Amer., 368 U.S. 890, 82 S.Ct. 139, 7 L.Ed.2d 87.

"From this it may be said that invention is synonymous

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