256 F. Supp. 354 | W.D.N.Y. | 1966
Trial before the undersigned at Rochester, N. Y., November 29 to December 3, 1965.
FINDINGS OF FACT
1. This is a patent infringement suit based upon Appeldorn Patent No. 3,126,-786. The patent was issued March 31, 1964, on an application filed July 20, 1962. It is exclusively owned by the plaintiff by assignment from Appeldorn, the applicant. The patent is for an Overhead Projection System. An overhead projector is a visual demonstration device commonly used as an aid in teaching. Its purpose is to project a horizontal image onto a vertical screen.
2. Defendant, Projection Optics Company, Inc., is a New York corporation. It has a factory at Rochester, N. Y., employing about thirty people in the manufacture of lenses. It is charged with infringement by sale of its Travel-Graph (Model 21000) overhead projectors, made by Charles Beseler Company of East Orange, New Jersey. Projection Optics is a distributor. Defendant, Dunbar and de Zeng, Inc., is a New York corporation and a Rochester dealer. It is accused of infringement by sale of Porta-Scribe overhead projectors made by Beseler (Models 15700 and 15710). James E. Duncan, Inc., is a New York corporation and a Rochester dealer. It is accused of infringement by sale of Projection Optics’ Travel-Graph projectors. Beseler is a partnership comprised of two partners —Martin F. Myers and Philip Berman. Each owns fifty per cent of the shares of Projection Optics. It employs about three hundred people. All of the accused projectors are made by Beseler in New Jersey. The Travel-Graph projector and the Porta-Scribe projector are essentially the same. Claims 1, 2, 3, 4, 5, 7 and 9 are at issue in this suit.
3. Beseler has been producing overhead projectors since about 1947. Prior to 1958 the plaintiff, 3M, was producing its Thermofax Copier Machine. By 1960 it was selling materials for use on that machine which would produce transparencies, useful for overhead projectors. 3M entered the overhead projector business in 1960. It first had its projectors made for it by another company (Model 42 by Buhl Optical Company). It sold its Model 42 projectors for a brief period in 1960. It then produced a revised Model 42 of its own manufacture during 1960-1961, and a portable projector (Model 43) in 1960-1962. In 1961 3M undertook a redesign of its projectors to cut their cost and, as a consequence, their size and weight, by eliminating certain features in their then current models, and, by resorting to less expensive construction. It produced the commercial form of the Appeldorn projector and placed it on the market in August, 1962. There were two models, portable Model 60, priced at about $230, and standard Model 66 priced at about $170. To meet this competition, Beseler brought out its own low-cost projectors. It is these projectors which are accused here of infringing the patent in suit.
4. One of the Beseler partners, Martin F. Myers, saw the new 3M projector in September, 1962. By about December,. 1962 he decided that Beseler should compete with the new 3M projectors. A prototype was completed in January,. 1963. Limited production started in. March, 1963. Beseler was stimulated into development and production of its Porta-Scribe projector by the 3M Model 66 projector, and by its favorable accept
5. The Appeldorn Patent was issued on March 31, 1964. Two weeks later this suit was started. No previous notice was given to Beseler or any of its customers. This was just one week before the Department of Audio-Visual Instruction of the National Education Association trade convention held in Rochester, N. Y., on April 20, 1964. This was the most significant marketing convention of the year. The start of the suit was accompanied by a public news release and instructions to 3M sales personnel for use in sales promotion. 3M aggressively engaged in a greatly enlarged sales effort for its new projectors by plentiful distribution of literature and by sales task forces and telephone campaigns. It conducted dealer seminars and contests. It published magazines and actively advertised. It gave away 7500 projectors in Assistance Grants to Education. It promoted sales at trade and professional conventions. Its projector sales were also aided by its sales of transparency making copy machines.
6. There is no convincing evidence that the commercial success of 3M’s Model 66 and 60 projectors was due to those factors by which the patent claims differed from the prior art.
7. In the introductory paragraph, the patent states that it relates to "a projection system including a novel lens assembly.” The patent then contrasts the Appeldorn projector with prior art projectors, which it claims were deficient in having large projection heads that hinder free access to the transparency stage and interfere with visibility by the audience. The size of the projection head has little effect on the utility of the projector because the teacher or speaker affords a much more important obstruction. The only structure whose size or economy is referred to in the patent is the head. Neither the patent nor its claims refer to or concerns the size or weight or cost of the entire projector. The patent covers projectors without regard to their size, weight or cost.
8. The Appeldorn projector has the conventional general arrangement of a body and a head. The body has an inline type of light-cone-producing means, with a “suitable” light source, exemplified as an iodine-vapor incandescent lamp. This lamp was in the prior art. Its qualities making it suitable and obvious for use in the in-line type of overhead projectors were known. The body is described in the patent as “a light source and the usual means for directing light from the source through a horizontally held transparency and upwardly in a cone of light.” No patentable novelty resides in the body portion of the projector. The projection head is the only possible novelty in the patent. The patent states: “This invention relates to a projection system including a novel lens assembly and more particularly to a projection system and lens assembly for use in overhead projectors or the like wherein it is desirous to bend the path of the projected light.” The bending of the light path is accomplished solely in the head. The supposed disadvantage of large size of projector head is said to be
9. An important aspect of the patent device is that the head pivots or tilts as a unit, so that the fixed relationship between the mirror and the two lenses (which together form the lens system) is not changed. Whenever pivoting or tilting occurs, it is the entire head assembly which moves, moving both lenses and the mirror together.
10. The unitary character of the projection head and of its pivoting arrangement is emphasized throughout the patent by numerous statements making clear that it is the entire head, the complete lens assembly, which is pivoted for elevating the screen image. The patent specification discloses only a unitary head and lens-mirror assembly, consisting solely of two lenses and a mirror, pivoting as a whole. No other form of head is suggested by the disclosure. In particular there is no suggestion that the two lens elements may be movable relative to one another. The invention described in the patent concerned a unitary projection head with both lenses pivoted together and remaining in fixed relation to each other as the head is pivoted.
11. The application for the patent was filed July 20, 1962. It contained twelve claims. All the claims were limited to the unitary head, where the mirror and. both lenses were rigidly connected together and pivoted together. The lenses were specified as of the meniscus type. 3M learned of the competing Beseler projector in February, 1963 and saw a sample of it on March 30, 1963. By April 9, 1963 a Visual Products Patent Status meeting was held to review the “legal aspects” of the situation. At that meeting a new claim wording was discussed and new claims were proposed. On April 11, 1963 3M informally proposed three new claims (and an alternate to one of them) to the Patent Office, as a prelude to a requested interview with the Examiner, which was refused. On May 2,1963 a sample Beseler projector was procured by 3M. On May 16, 1963 a formal amendment was filed in the Patent Office cancelling all original claims and substituting an entire new set of eleven claims. These new claims attempted to change materially the nature of the invention previously claimed by Appeldorn. In an obvious effort to cover the Beseler projector, the unitary character of the head and the pivoting of it as a unit (described in the application as essential) were repudiated as even a part of the invention. Instead, a new feature was added, a pivotal mirror where previously the head as an entity was required to be pivotal. This was the first indication of a projector having a projection head which had other than a “unitary” head or which included “a means for pivoting the mirror” for maintaining the prescribed ray relationship. Nowhere in the patent was there any disclosure of such a separately pivoted mirror nor where to place its pivot point. This change was made notwithstanding that pivoting the mirror alone in the Appeldorn device would not maintain the required ray relationship. The reflected ray could not then stay even near the center of the second lens, which the pat
12. The accused Porta-Scribe projector has the usual body and head. The body has an in-line light source, using an iodine-vapor and a Fresnel lens condensing system. The body is essentially the same as that of the prior art Bancroft and Projecto-Lite projectors. The projection head is a “segmented” head in contrast with the unitary head. The Porta-Scribe head is made up of four principal components: 1 — a first fixed meniscus lens and its fixed lens housing, 2 — a second pivotal meniscus lens and its pivotal housing, 3 — a mirror and its pivotal mounting, 4 — an angle-halving linkage between the second movable meniscus lens housing and the mirror pivotal mounting, to cause the mirror always to move through half the angle through which the second lens is moved. The light cone enters the first lens, passes to the mirror by which it is reflected to pass through the second lens and then to the screen. The first lens is fixed by its housing to remain always coaxially aligned with the incident axial ray. That housing is secured to a projection head bracket, which is slidably carried by a post to permit up and down adjustment of the entire head by use of a focusing knob. In this way focusing is accomplished in the conventional manner by moving the entire head. The second meniscus lens and its lens housing are pivotable on the fixed lens housing, and hence are pivotable relative to a bracket about a pivot point. The mirror is separately pivoted on the head bracket about the same pivot point, and the mirror is linked by the angle-halving linkage to the second lens housing. When the second lens housing is tilted either up or down, the linkage causes the mirror to tilt in the same direction but at half the amount. Thus, when the second lens is tilted up 20 degrees, the mirror is tilted up 10 degrees by the linkage. This elevates the reflected ray by 20 degrees and elevates the screen image by the same angle. The linkage assures that the axial ray, after reflection by the mirror, enters the sec
13. In 1952 Beseler began the manufacture and sale of the Junior Vu-Graph projector. From then up to now this Junior Vu-Graph projector has been sold with three successively different “Bestar” projection lens arrangements, referred to as the first, second, and third versions. Only the first and second need be considered here. The first version was made and sold in 1952 and 1953. The second version was made and sold from 1953 to 1956. Both versions preceded the patent filing date by more than one year. The Patent Office did not have these projectors before it as prior art.
14. The Junior Vu-Graph has a body with “the usual means” for producing the cone of light passing upwardly through the projection stage, with a “bent” light source. It is a wide-angle projector. In the head, the cone of light enters a fixed first 4y2" meniscus lens, which is coaxial with the central (axial) ray of the light cone. Above the first fixed lens is a pivoted mirror which reflects the light horizontally so that the axial ray passes coaxially to a pivoted second 3" meniscus lens and then to a screen. An angle-halving linkage connects the pivoted second lens with the pivoted mirror, so as to cause the mirror always to move through half the angle through which the second lens tilts. To elevate the screen image, the second lens and its housing are pivoted upward by the angle it is desired to elevate the image on the screen. The linkage then automatically raises the mirror by half that angle. Focusing is accomplished by varying the distance of the second lens to the stage, by moving the second lens in or out of its housing barrel. The real image of the filament is inside the head, between the two lenses. The second version had exactly the same body as the first. The head of the second version was slightly modified. The vertical light cone first impinged on the mirror and was reflected onto a lens assembly consisting of a pair of spaced equal meniscus lens elements, through which light passed to the screen. The lens elements had Y values of 3.4 and 2.5. (Y value is a term specifically defined in the patent as the ratio of focal length divided by radius of curvature. These Y values of version #2 are within the ranges of 3.3-3.7 and 2.3-2.7, claimed by Appeldorn in claim 6). The same angle-halving linkage coupled the mirror to the lens assembly to move the mirror by one-half the angle through which the lens was moved. This second version was adopted in 1953 because it was cheaper and to make the two-meniscus lens system more simply replaceable by a higher-quality and higher-cost three lens “Actar” system, merely by replacing a single removable lens barrel. Focusing is accomplished by varying the distance from the two-element lens assembly to the stage, by sliding the lens assembly horizontally in its mounting. The real image of the lamp filament is between the two lenses.
15. In 1912 Spencer Lens Company of Buffalo, N. Y., offered for sale overhead projectors under the trade name Delineascope. In that year it published a catalog which illustrated and described a Model 6 Delineascope, useful as a lantern slide, and microscope projector, and a vertical attachment which, when added, makes the Delineascope an overhead projector.
16. The Ozalid Projecto-Lite projector was on the market in 1960, more than a year before the Appeldorn application date. It was not considered by the Patent Office. This projector had an incandescent lamp light source directly beneath the condenser lens which produced a converging cone of light through the projection stage. It therefore has an in-line light source. The head was supported above the transparency stage on the vertical pivot. It consisted of a three-element Cooke triplet projection lens and a pivoted mirror above it. The vertical cone of light entered the lens and passed onto the mirror. The mirror was pivotable to elevate the screen image in the conventional way. The real image of the filament was between the elements of the lens. Focusing was accomplished by raising the entire head on its post by a focusing knob.
17. Bancroft Patent 2,310,273 (1943) was cited by the Patent Office against Appeldorn. Appeldorn limited his claims to distinguish over Bancroft. Bancroft discloses an overhead projector for projecting bowling scores. Its principal difference from the patented projector is that Bancroft projects his images onto an overhead screen in front of the operator whereas Appeldorn’s projector projects its image onto a screen in back of the operator. Bancroft discloses an in-line light source, essentially the same as that of Appeldorn. Bancroft has a lamp directly underneath and in line with a condenser lens and transparency projection, stage, and without a pre-condenser. Above this Bancroft has a projection head which is vertically adjustable for focusing. The head contains the first lens element, a flat mirror, a roof mirror, and a second lens element. Bancroft shows how to raise or lower the screen image. He states that the entire head may be pivotally mounted for this purpose. This amounts to a general teaching that the screen image of an overhead projector may be elevated by pivoting the projection head. Bancroft shows every essential feature of the Appeldorn patent except the use of a single mirror and use of meniscus-shape of lens. The roof mirror was required because Bancroft projected his images forwardly. He recognized that the usual overhead projector would produce a reversed image if projected forwardly. To re-reverse it back to normal, Bancroft used the roof mirror which was unnecessary for rear-projecting overhead projectors. Any ordinarily skilled person desiring to use the Bancroft device for rearward projection
18. Heimstadt-German Patent 275,-988 (1912) shows a pair of corrected or compound meniscus lenses with a pivoted mirror in between, serving as a projection head for a motion picture projector. This is a “bent lens assembly”, with a pivotable mirror. Heimstadt was not considered by the Patent Office.
TT , ^ , „„„„„„ Hahn-German Patent 382,193 (1922) shows a pair of compound meniscus lenses separated by a reflecting mirror. The patent states “one can enclose in a known manner between the two halves of the objective a prism which bends the beam of light by 90 degrees so that the plane of the film scrip makes a right angle with the plane of the projection screen.” It has a wide projection angle. Hahn teaches Appeldorn’s “bent” lens assembly.
20. Muller-German Patent 404,438 (1924) was not considered by the Patent Office. Muller shows the use of a pair of symmetrical (identical) meniscus lenses in a lantern slide projector and an overhead opaque projector.
21. In designing and developing the accused Porta-Scribe projector Beseler intended to and did draw on its own earlier Junior Vu-Graph and other prior art projectors, and based its new projector on the prior art. The Junior VuGraph first version had essentially the same structure as the accused PortaScribe projector. The Junior Vu-Graph has a “bent” light source while the accused Porta-Scribe has an “in-line” light source with an iodine-vapor lamp. This is an immaterial difference, since the “inline” light source was known in the art (Bancroft and Ozalid). The Junior VuGraph light source is directly beneath the stage and condenser. The “in-line” and “bent” light systems are equivalent and interchangeable. It would have been obvious to an ordinarily skilled person in 1960 to use an “in-line” light source, since the non-darkening iodine-vapor lamp was then commercially available, which removed a major deterrent to the use of the in-line arrangement, and since the omission of a pre-condenser and mirror merely reduced cost at the expense of uniformity of illumination. The accused projectors have equal meniscus lenses, while the Junior Vu-Graph first version lenses were somewhat unequal, This is immaterial, since equal lenses had been used in Prior art projectors and it would have been obvious to an ordinarily skilled person to use equal lens size. The use of symmetrical lens systems was common and their advantages were well jmown
22. The Junior Vu-Graph focused its image by moving only one lens element to change its distance from the stage, while tile accused Porta-Scribe focuses by raisin£ tbe entire head. This is immaterial, since focusing by head movement has long been conventional and interchangeable with other focusing methods. It was an old way of obtaining focus in an over-h?ad Pretor. It would have been ob-v*ous f° use if-
23. The accused Porta-Scribe projector also has essentially the same structure as the Junior Vu-Graph No. 2, which has an equivalent performance to that of the Porta-Scribe. The following differences exist: in the Porta-Scribe projector, the mirror is between the two lenses, while in the Junior Vu-Graph No. 2 it is before the two lenses. This is immaterial, since the mirror would normally be placed between the lenses. It would have been
24. In both the Porta-Scribe and the No. 2 Junior Vu-Graph focusing is accomplished by adjusting the distance between the stage and the entire lens assembly. In the Porta-Scribe, the entire head is raised, while in the Junior VuGraph No. 2 only the lens assembly is moved. This is an immaterial, mechanical modification. The light source differs, as in the case of the Junior VuGraph No. 1, but this is immaterial for the same reasons as applied to the Junior Vu-Graph No. 2.
25. The accused Porta-Scribe projector was intended to and did use only what was taught by the Junior Vu-Graph Nos. 1 and 2, plus mere ordinary skill of the art. In the minor respects in which the Porta-Scribe deviated from the Junior Vu-Graph, including the iodine-vapor lamp and lens curvature, Beseler utilized features which were in the public domain.
26. The claims of the patent in suit could apply to the prior art Junior VuGraph as well as they can be applied to the accused devices. Since patent claims may not be interpreted to cover what is taught by the prior art plus the application of ordinary skill, there is no infringement by the accused projectors.
27. Each of the following features was embraced in the patent in suit and each of those features was in the prior art: iodine-vapor lamp was old and its use was obvious; the in-line light source was old and its use was obvious; the elimination of the pre-condenser from the light source was old and was obvious; the use of Fresnel lenses in overhead projectors was old and was obvious; putting a mirror between two meniscus lenses to form a triangular arrangement was old and its use was obvious; the elevation of screen image by pivoting the projection head or mirror was old and its use was obvious; focusing by raising the projector head was old and its use was obvious; locating the real image of the light source between the lens-elements was well known in projectors long before the patented projector and its use was obvious; keeping the axial ray radial to the surfaces of the first lens and passing through the center of the second lens was conventional and obvious; selecting the specific lens curvatures was within the skill of ordinary lens designers using prior art techniques; using a 10" x 10" stage size was old and obvious; using a 17" height above the stage for the real image of the light source was dictated by the conventional prior art focal length of 14 inches, and was old and obvious.
28. Each of these features of the patent serves the same functions as it did in the prior art and in the same way. The interaction in the patent projector of the various features set forth above is the same as occurred in the prior art. There is no unusual'or surprising consequence from combining those features into a single projector.- The accused projectors do not use the patent feature in which the ray relationship is variable, i. e., “generally radial” and “substantially through the center.”
29. Each of the claims in suit is either anticipated by the prior art or has differences from the prior art which would have been obvious to an ordinarily skilled person.
30. The Porta-Scribe does not include either of the basic features of Appeldorn, the unitary head or the head pivoting arrangement. The accused projectors differ in structure from Appeldorn’s in the following respects: Appeldorn’s head is a rigid, unvarying, triangular arrangement of a mirror and two meniscus lenses, the whole arrangement pivoting with respect to the body “as a unit.” This is a unitary head and is critical to Appeldorn’s claimed invention. Without this unitary feature, the projector would not work as intended, to keep the image in focus despite elevation of the image; in the accused projector the head is segmented and articulated. It has four separate parts, each moving differently. One is a lens fixed to the body. The second is a
31. The accused projectors differ in operation from Appeldorn’s in the following respects: in Appeldorn’s the relation between the axial ray and the lens axes is a variable one. It is a fixed relation in the accused projectors; in Appeldorn’s the pivoting means serves to maintain his desired variable ray relation. In the accused projectors, the ray relation is independent from the pivoting means because of the angle-halving linkage; in Appeldorn’s, the reflected axial ray is said to pivot about the center of the second lens and this is said to be essential. In the accused projectors no such pivoting occurs; in Appeldorn’s, a 20 degree elevation of the screen image requires only a 10 degree tilt of the head. In the accused projectors such an elevation requires a 20 degree tilt of the movable head portion (containing the second lens). In Appeldorn’s, his first lens, mirror and second lens all move 10 degrees for a 20 degree image elevation; whereas in the accused projector, the first lens does not move at all, the mirror moves 10 degrees, and the second lens moves 20 degrees.
32. The accused projectors are similar to the patent projector in certain respects; such as the iodine-vapor lamp, the in-line light system, the use of meniscus lenses, the curvature of the lenses, focusing by raising the head, locating the real light source between the projection lenses. In each of these respects the accused projectors utilize only the prior art, or the ordinary skill of the art. None of these produces any unexpected results.
33. The accused projectors differ in result from the Appeldorn projector in the following respects: in the Appeldorn projector, upon elevating the screen image, the image plane tilts backward, while in the accused projector it tilts forward. In the Appeldom projector, upon elevating the screen image, it is impossible to correct keystoning while maintaining over-all focus, while in the accused projectors keystoning can be corrected while maintaining over-all focus. In Appeldorn, in higher image-elevation angles vignetting occurs, because of cutting off of some of the light cone by first lens mounting, while in the accused projectors no vignetting is caused by the first lens mounting upon pivoting the head, since the cone of light is fixed relative to the first lens. The Appeldorn device has automatic refocusing when the screen image is raised, requiring no focusing adjustment, while this is absent from the accused projectors. The accused projectors omit material limitations of the patent claims as follows: All of the claims of Appeldom, except claim 5, include as an element of the claimed combination “a projection head consisting essentially of”
34. In 1960 or 1961, Appeldorn undertook to redesign 3M Models 42 and 43 overhead projectors to make them less costly and less bulky. They had a high quality, three-element lens arrangement (Cooke triplet). The cost of such a lens made it an obvious point of inquiry for reducing cost as well as bulk. Early in 1961 the idea occurred to reduce head size by putting a mirror between two of the lens elements, instead of on one side of the entire lens system. This change was old and obvious. Appeldorn discussed the question of cost with Gilkeson, Chief Engineer of 3M’s Wollensak Division at Rochester, N. Y. It was Gilkeson who suggested the use of meniscus-shape lenses. Gilkeson then supplied sample lenses to Appeldorn. The first lens system was a barrel with two stock coaxial meniscus lens elements. Appeldorn tried it and asked Gilkeson to design special lens elements for use in a triangular arrangement. By December 11, 1961, Appeldorn thought he had made a discovery. He submitted an invention disclosure to 3M’s patent counsel. This disclosure did not refer to meniscus lenses at all. What Appeldorn thought he had discovered was a rigid triangular arrangement. He made no claim to having suggested that the meniscus-shape lenses be used. Thereafter, the special lenses that Appeldorn had requested were designed. Gilkeson turned over to his assistants, Conrad and Lynch, the task of determining their curvatures. Conrad and Lynch designed the specific lenses disclosed in the patent and determined their curvatures specifically in claims 7 and 8 of the patent. Appeldorn did not specify any radii of curvature. Thus it was Gilkeson who
35. 3M misrepresented the state of the art to the Patent Office in an attempt to cover the later and different device of Beseler’s. 3M intended, prior to this suit, to assert the Appeldorn patent against Beseler and its customers, but gave no indication of that intention to them. By its conduct, 3M prevented Beseler from calling to the attention of the Patent Office the true facts as to meniscus lenses and as to other prior art.
CONCLUSIONS OF LAW
1. Appeldorn Patent No. 3,126,786 is invalid in view of the prior art.
2. It is invalid because Appeldorn was not the true inventor of the subject matter of the patent.
3. It is unenforceable against the defendants because of plaintiff's inequitable conduct.
4. There has been no proof of infringement.
5. The complaint is dismissed for non-infringement, invalidity and unenforceability of the patent in suit, with costs.
6. Defendants’ demand for attorneys’ fees under Sec. 285 of Title 35, U.S.C, is denied.
Settle judgment on notice.