ROTA-CARB CORPORATION v. FRYE MANUFACTURING COMPANY, Civ. A. 3-835.
| Decision Date | 18 July 1961 |
| Docket Number | Civ. A. 3-835. |
| Citation | 197 F. Supp. 54 |
| Parties | ROTA-CARB CORPORATION, a New York Corporation, and Bernard Harmon, Plaintiffs, v. FRYE MANUFACTURING COMPANY, an Iowa Corporation, Defendant. |
| Court | U.S. District Court — Southern District of Iowa |
Charles F. Swisher, Waterloo, Iowa, Samuel J. Stoll, Jamaica, N. Y., for plaintiffs.
Irvin V. Gleim, Dayton, Ohio, John C. Eddy, Des Moines, Iowa, for defendant.
This is an action to enjoin infringement of a patent, Exhibit 1, issued February 12, 1957 to Bernard Harmon. Thereafter it was assigned by Harmon to plaintiff corporation. No question is raised by defendant as to the sufficiency of this assignment and the court will therefore consider that the proper parties plaintiff and defendant are before the court. The court finds that there is diversity of citizenship and that the court has jurisdiction of this case under Title 28 U.S.C.A. 1338(a).
It was agreed at the pretrial conference that the issues were
a) the validity of the Harmon patent, and
b) infringement.
In event of a finding for plaintiffs upon the issues just mentioned it was agreed that the damages, if any, would be determined later.
Plaintiffs claim that this patent, which is a method patent, teaches a new and novel idea as to the printing of spot carbon paper. Methods for making full sheet carbon paper have been known and used for many years. Spot carbonizing, or the making of a spot carbon paper, is of more recent origin. It consists of carbonizing portions of a sheet of paper and leaving other portions blank whereby the copies will not each contain all of the information typed upon the original and the separate carbon copies do not necessarily contain the same information. Exhibits 2 and 3 are examples of the product turned out by processes similar to those involved herein.
Harmon says that as a result of an approach from The Mutual Life Insurance Company of New York which he could not fill, he became interested in spot carbonizing in 1948, and in April of 1948 conceived the idea which he eventually patented. The basic features of Harmon's patent are
a) A fountain in which the ink is heated before it is applied and in which it is kept in a fluid state. Harmon suggests a temperature of 300° to 400° for this ink. Defendant claims to know of no ink requiring such temperatures and in its processes the ink reaches temperatures of 180° to 220°.
b) A heated roller which picks up ink from the fountain and delivers it to
c) a printing roller on which there is fastened in a manner easily removable, a metal strip (See Exhibit 5) to which is vulcanized or otherwise attached a rubber sheet so cut as to place or deliver the ink on the press in the spots or places desired.
d) Two cooling rollers past which the web of paper passes and is cooled and from which it goes to a round spool on which the paper is eventually wound.
Harmon also claims the use of a rubbery heat insulating material on the rollers which he proposes and an easily removable printing sheet.
The court should therefore discover the state of the art at the time of Harmon's conception of the patented idea. The court will not discuss all of the patents and articles cited.
It is to be here observed that defendant's witness Doven selected the British Hodler patent, dated December 30, 1925 (Exhibit 21) and the two Rutkoskie patents, dated June 5, 1934 and July 6, 1937 respectively (Exhibits 31 and 34), as the ones he considered to be closest to the patent in suit, while in the brief counsel discusses only the Allen patent (Exhibit 12) dated January 4, 1898, the McManus patent (Exhibit 22) dated December 24, 1929, and an article dealing with spot carbonizing (Exhibit 39) which appeared in Modern Lithographer and Offset Printer, in May, 1947. From this plaintiffs argue that all prior art exhibits, excepting only Exhibits 12, 22 and 39, have been abandoned. The court concludes, however, from the oral argument that counsel for defendant has not limited itself to a few of the patents but can rely upon any of the patents or articles received in evidence to show the state of the art and to show that there is nothing new or novel in Harmon. Plaintiffs' wish for abandonment is probably father to the thought that would avoid consideration by the court of Hodler and many other cited prior art patents.
Hodler held not only the British patent, Exhibit 21, but also an American patent, Exhibit 7, dated March 12, 1929. It seems to the court from the evidence adduced that Hodler first conceived a workable hot spot carbonizing process for carbon paper. He antedates Harmon by nearly twenty years. It further appears that Hodler had all of the features of Harmon except only that where Harmon had one roller between the fountain and the one printing roller, Hodler had two, and Harmon's claim set forth that the rollers shall have a rubberized heat insulating cover and has the printing sheet more easily removable than in Hodler. These matters are hereafter discussed.
The witness Doven called by defendant, claims that in 1948 or 1949 he had a conversation with Harmon and told him of the machines that he, Doven, had built. He says he had built two spot carbonizing machines prior to 1948 and that he gave Harmon some of the ideas of Harmon's patent. Doven's testimony is not entirely clear as to the exactness with which he explained his idea. Harmon denies such a conversation with Doven or any conversation until after 1950, the date he applied for a patent, and substantiates his oral testimony by a telegram received during the trial from a third party indicating that the date of the conversation was later than Doven claims. Credence must be given Harmon's testimony that the conversation was after the purchase by Harmon of a certain press, if the telegram is to have probative value. No objection was made on the ground of hearsay and the telegram thus casts some doubt on the time of the conversation. The court was impressed with Doven's sincerity and concluded from the testimony that he had antedated Harmon in the design of hot spot carbonizing. The court should here state that the evening following this trial the court wrote out in longhand most of the factual findings of this decree, including the observations just stated. A reading of the record has not caused any substantial change in the factual observations made following the trial. It concludes it does not need to pass on or determine whether Harmon received his ideas from Doven. Conflicts in the testimony between Doven and Harmon relative to whether Harmon had recently said he would never sue Doven also do not need to be resolved, and the attempt of the company by which Doven is employed to procure a license from Harmon is subject to the inferences drawn by each of the parties and is not deemed controlling in the decision here announced.
There is considerable testimony as to the rubber used by defendant and the rubber described by Harmon and whether such rubbers are heat insulating or heat conducting. These matters are commented on hereafter by the court.
The evidence convinces the court that the idea of spot carbonizing was not new with Harmon. Exhibit 19 shows an article on the subject as early as June, 1914, and Exhibit 39 shows an article in May of 1947. Doven says with the knowledge of Worth's article of May, 1947 he could have built a machine. Hodler as above suggested, had the idea as early as 1929 and the Allen patent of 1898, as hereinafter mentioned, contains many of the basic ideas found in Harmon.
Examining Harmon in more detail, it is to be observed that the fountain which Harmon utilizes is found in Allen (Exhibit 12) and Hodler (Exhibits 21 and 7). All parties agree that the ink must be kept hot to best impregnate the paper although they disagree as to the necessity of one of the features of Harmon as hereinafter mentioned, namely, use of rubber with heat insulating qualities. The use of a roller in the fountain to convey the fluid to the impression roller was not new. See Hodler and Allen patents above mentioned; Reutener, Exhibit 23; Rutkoskie, Exhibit 27; and Supligeau, Exhibit 29. The heating of the rollers conveying the fluid is shown in Rutkoskie, Exhibit 31, and the heating of the printing or impression roller was not new (See Hodler and Allen.) Even the idea of one roller which to a degree differentiates Harmon from Hodler was not new (See Hummelchen patent, No. 2,310,788), a patent which was not offered in evidence but which is discussed in Exhibit 8. See, also, Thompson, No. 1,977,460 of October 16, 1934, which was not offered.
Doven says all of these basic ideas of Harmon were known before Harmon; that he had never thought of checking for a patent believing at an earlier date than the date on which Harmon applied for a patent that there was nothing patentable in the ideas.
It is to be observed from Exhibit 17 that Harmon attempted to patent a machine known as a "Rotary Hot Wax Spot Carbon Coating Machine and Method" and the denial to Harmon of the patent was upheld by the United States Court of Customs and Patent Appeals (See In re Harmon, 222 F.2d 743, 42 CCPA 921) (See Pages 80-88, Exhibit 17).
In discussing some of the earlier patents, the Board of Patent Appeals in the last cited case, makes statements which have a bearing on the teachings of the prior art in this method patent.
The court said:
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