Weiss v. R. Hoe & Co.

• Decision Date: 19 February 1940
• Docket Number: No. 121.,121.
• Citation: 109 F.2d 722
• Parties: WEISS et al. v. R. HOE & CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

109 F.2d 722 (1940)

WEISS et al. v. R. HOE & CO., Inc., et al.

No. 121.

Circuit Court of Appeals, Second Circuit.

February 19, 1940.

Hoguet, Neary & Campbell, of New York City (Thomas G. Haight, of Jersey City, N. J., and Granville M. Brumbaugh and Mark N. Donohue, both of New York City, of counsel), for plaintiffs-appellants.

Sawyer, Kennedy, Humason & Hazell, of New York City (Cleon J. Sawyer, James J. Kennedy, and James J. Kennedy, Jr., all of New York City, of counsel), for defendants-appellees.

Before SWAN, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

SWAN, Circuit Judge.

This litigation involves three patents to Adolph Weiss relating to rotary intaglio printing machines. Speedry Gravure Corporation is exclusive licensee under the Weiss patents. The defendant R. Hoe & Co., Inc., is the manufacturer and the other defendant is a user of the machines alleged to infringe. For convenience the patents in suit will be designated "first", "second" and "third" in accordance with their chronological development by Weiss. The first patent is Reissue No. 18,856, granted June 6, 1933, on an application for reissue filed September 10, 1932. It is a reissue of Patent No. 1,631,169 granted in 1927 on an application filed in August, 1924. Claims 1, 3, 4, 5, 6, 7, 15 and 16 of the Reissue Patent are in suit. The second patent is No. 2,055,272, granted September 22, 1936 on an application filed December 7, 1932. Claims 1, 2, 5, 8, 9, 11, 22, 25, 40 and 45 of this patent are in suit. The third patent is No. 2,014,303, granted September 10, 1935, on an application filed July 22, 1933. Only claims 11 and 68 of this patent are in issue on this appeal. The district court wrote an opinion and made extensive findings of facts and law. The first patent was held invalid for lack of invention; the claims of the other patents were held invalid unless so limited as not to be infringed, except claim 68 of the third patent which was held valid but not infringed. This appeal presents the usual issues of validity and infringement.

Rotary intaglio printing presses were old in the art before Weiss entered the field. The essential elements of all such presses are a printing cylinder and an impression cylinder between which passes the "web", that is, the paper to be printed. The words or design to be printed on the web are etched into the printing cylinder and the depressions of varying depth thus made take up the printing fluid and transfer it to the web under the pressure exerted by the two cylinders. A shallow depression gives a light tone of printing; the deeper the depression the darker is the tone. There are various methods of applying the ink to the printing cylinder, a familiar one being to rotate the cylinder in a pool of ink contained within a housing. The edge of a blade called the "doctor" is held at an angle against the printing cylinder to scrape off excess ink, leaving only that contained in the etched depressions. Weiss' first patent is for a combination of these well-known elements. Claim 1 reads as follows: "1. In a printing machine the combination of a housing for a printing fluid, a rotatable printing cylinder journaled in the housing and having configurations thereon formed by depressions extending below the outer surface thereof, a doctor blade for the machine with one end thereof bearing on the surface of the cylinder, an impression roller coacting with a web movably located between it and the periphery of the cylinder and means to maintain the housing air tight."

The novelty of this combination is said to reside in so arranging the old elements as to make the housing "air tight" and thus permit the use of highly volatile inks without the deleterious effects incident to ink evaporation. Weiss' machine came to be known as the "closed fountain" type of press; earlier intaglio presses, in which there were various closure attachments to prevent ink splashing, but no attempt to make the housing air tight, are known as the "open fountain" type.

Weiss' second patent is an adaptation of the first to a machine equipped with a reciprocating doctor.¹ Reciprocating doctors had long been used on open fountain presses to equalize the wear on the doctor blade and printing cylinder and thus prolong their operative life without repairs. The application of a reciprocating doctor to an air tight housing involved problems of closure hereafter to be discussed.

The third patent introduced two improvements to Weiss' prior constructions, one involving a means of axial adjustment of the printing cylinder, the other an improved method of supplying ink. In multicolored printing absolute registry between successive imprints is essential and to accomplish this in large presses some means of adjusting axially the printing cylinder, independently of movement of the housing, is necessary. Such adjustment was already known in open fountain presses.

For many years the great problem of the industry was to increase the speed of rotary intaglio printing. In 1924 newspaper press speeds (relief printing) in excess of 20,000 cylinder revolutions per hour were common but in rotary intaglio printing the rate of speed of large units was only 5,000 to 6,000 revolutions per hour. By 1931 it had gotten up to 8,700 revolutions in monotone printing but was still about 4,000 for multicolored work. At the date of the trial, however (1938), the speed had been increased to 24,000 revolutions per hour in monotone and 19,000 in multicolor. The defendants argue that the present press speeds have resulted from improvements in web-tensioning devices, web-pasting devices, folders, driers, blowers, heavier press frames and roller bearings as well as from the development of the closed fountain. But we think the record supports the plaintiffs' contention that Weiss' conception is entitled to the chief credit. The testimony of several witnesses to that effect is corroborated by the undisputed experience of the Alco Gravure Corporation. In 1931 it had purchased the best open fountain press then available and its maximum performance was 8,700 cylinder revolutions per hour in monotone printing and 4,000 revolutions in multicolor. In the following year Weiss was employed to convert this press into a closed fountain type embodying his inventions. When this was done, it was immediately run at a speed of 16,000 cylinder revolutions per hour — the maximum capacity of the folder with which the press was then equipped. When this folder was replaced with a standard folder of greater capacity, the press was run, without other change, at speeds of 24,000 revolutions in monotone and 19,000 revolutions in multicolor printing. These facts demonstrate the merit of Weiss' conception of using highly volatile inks and overcoming the difficulties inherent thereto by preventing ink evaporation. All recently designed presses are of the closed fountain type.

In 1923 Weiss was a manufacturer of paper cups. He used a small press to print on a continuous web that was fed to his paper cup machine and experienced difficulty in getting the ink to dry fast enough to keep up with the speed of his cup machine. This led him to try more volatile inks in an intaglio press and he encountered difficulties due to evaporation. Prior to Weiss the efforts to overcome the problems presented by evaporation in intaglio printing had been directed to means of increasing the speed of drying on the web slow-drying inks. He turned away from this solution. He perceived that highly volatile inks were necessary for high press-speeds and that evaporation must be avoided not only at the main ink body in the fountain but also in the ink on the printing cylinder before it reached the doctor, the ink in the depressions of the cylinder before it reached the paper, the ink residue in the depressions before they again received ink, and the ink wiped off by the doctor and returned to the main ink body. To accomplish this he utilized the printing cylinder itself, the doctor blade, the offside cover and the housing ends and side walls to effect a closure of the housing which would be as nearly air tight as practically possible and expose to the air only so much of the printing cylinder as was essential to an operative machine. After filing his original application in August 1924 Weiss built a small machine (Exhibit 13) that he used successfully in printing on the web that was fed to his paper cup machine. In 1926 he formed with two other men a corporation to develop the invention commercially. They built a three unit model for multicolor printing. Experiments showed that a reciprocating doctor blade instead of a stationary blade was desirable. A model of this for two-color printing was completed early in 1931. In July of 1931 this model was demonstrated to the defendant R. Hoe & Co. but no terms were arrived at with this corporation. In December 1931 Alco Gravure Corporation became interested in Weiss' inventions and caused the formation of Speedry Gravure Corporation to which Weiss granted an exclusive license. Alco also employed Weiss to embody his inventions in one of its open fountain presses. This resulted in the great increase in its productivity already mentioned. Following this success steps were taken to convert into closed fountains all the large intaglio presses at the plant of Alco, which became a sublicensee of Speedry. Shortly thereafter R. Hoe & Co. Inc. began to build presses of the type alleged to infringe.

The foregoing survey of the facts shows that Weiss' "closed fountain" machine when introduced commercially had an immediate effect upon the industry and that his patents are entitled to the benefit of such favorable inferences as the doctrine of commercial success may justify.

In retrospect what Weiss did in his first patent in suit seems simple. He merely rearranged the elements of the open fountain type of press so as to close the openings. The printing cylinder itself was used as one of the elements...