The opinion of the court was delivered by: RIPPEY
This is an action for infringement by defendant of United States letters patent No. 1,757,001, issued to plaintiff May 6, 1930, on improvements in a photographic apparatus designed for making photostatic copies of documents on both sides of a film-coated sheet of paper.There are eleven claims in this patent, and plaintiff charges infringement of all claims except claim No. 3. Defendant concedes that claims 1 and 2 and 4 to 7, inclusive, of the patent in suit are valid, denies that the "Photostat Recorder," the machine which it has manufactured and sold since the issuance of the patent to plaintiff, is an infringement of those claims, and puts in issue the validity of claims 8 to 11, inclusive.
Plaintiff also seeks, in this action, to have the scope of the claims contained in his patent broadened by a decree declaring void or of no effect claims 1, 2, 3, 4, 6 to 28, inclusive, in patent No. 1,794,347, issued February 24, 1931, to Arthur W. Caps and Ivan E. Leininger, and now owned by defendant, and that he is the prior inventor of the invention set forth in each of said claims and the owner of said claims as between the parties to this suit and entitled to damages from defendant for infringement thereof in the same manner as though his patent, in fact, contained those claims. Defendant challenges his right to any such decree on the grounds, among others, that plaintiff has abandoned, and is estopped from asserting, any right, if he ever had any such right, to those claims so allowed to Caps and Leininger or to the invention described in and covered by the same, and moved to strike out that part of the complaint which sets up the facts upon which such decree is sought.
Plaintiff alleges that defendant's possession of a "Universal Recorder," the predecessor of its present machine, is an act of infringement, and seeks an accounting from defendant for "duplex" paper manufactured and sold by defendant since the issuance of his patent to users of "Universal Recorders," which were made and sold by defendant prior to the issuance of such patent.
On April 20, 1924, one John S. Greene filed an application in the Patent Office for letters patent on an invention in protographic roll holders, serial No. 733,062, which was later assigned to defendant. The Commissioner of Patents declared an interference with the then pending application of Beidler, No. 704,275, filed April 4, 1924. The subject-matter of the interference was defined in the following court: "In a camera having an exposing clamber and light admitting means, a film holder rotatably mounted in the camera and operative to present two sides of film to light successively, film drawing means and film severing means associated and movable with the film holder, and operative means stationed in locations with relation to which the film holder is movable for imparting motion to the film drawing means and film severing means when the said film holder is in a predetermined position."
The patent tribunals called upon to act on the interference held that Beidler was entitled to priority of invention on the subject-matter of the interference. The count is in the same wording as claim 4 in Beidler's patent. Later, Greene and the Photostat Corporation filed a bill in equity in the District Court for the Western District of New York under section 4915 of the Revised Statutes (35 USCA § 63) against Beidler and the Rectigraph Company for a decree declaring Greene the inventor of the subject-matter of the interference. And answer was interposed in which defendants claimed priority of invention in Beidler. On the trial it was held that Greene was entitled to priority. On appeal to the Circuit Court of Appeals (Greene v. Beidler, 58 F.2d 207), the decision of the District Court was reversed. The sole question involved or passed upon was whether Greene or Beidler first disclosed and demonstrated in a photocopying machine "the mounting on the turntable of the paper feeding rolls and the paper cutting device." There was no question involved in that suit as to whether the decision of the Court of Customs and Patent Appeals in the Beidler-Caps & Leininger interference (hereafter discussed) was wrong nor was the validity of plaintiff's patent passed on. Beidler counterclaimed in that action seeking a determination of the patentability and scope of his then pending application, and set up infringement by defendant by the manufacture and sale of the "Universal Recorder," the machine of the Greene application, but the court dismissed this counterclaim as Beidler's patent had not then issued.
In 1911, defendant made and sold a "Simplex" machine which was suitable for copying records on only one side of the copying paper. It still makes and sells many of these machines. In 1913, there was a cameragraph "duplex" mirror type machine in use in Chicago. Subsequently the defendant developed and in 1924 commenced selling the "duplex" machine of the Greene application. This machine was not satisfactory, as it was a hand-operated type requiring two men to operate and was slow owing to the requirement that the turntable should be in a fixed predetermined position before the film-severing knife and film-moving mechanism could work. The Cameragraph Company of Kansas City had, in the meantime, developed the highly efficient Caps & Leininger machine later described. In 1925, defendant took over the Cameragraph Company. It ceased manufacturing the "Universal Recorder" and replaced it with the Caps & Leininger machine, advertising and selling the latter as "Model No. 2, Photostat Recorder." It continued to sell "Universal Recorder" still in stock until August 20, 1928, since which date none have been manufactured or sold. Twenty-five of the "Universal Recorders" were sold. All were called in by defendant and all returned except five, which are still in the hands of the original purchasers. All of those returned to defendant have been junked except one, which defendant has used as an exhibit in this case.
It is conceded that the "Universal Recorder" was an infringement of claim 4 of the patent in suit. Plaintiff claims that defendant's possession of the single machine used as an exhibit is a past and continuing act of infringement. It was one of the dismantled machines and was reassembled shortly before the trial and brought into court in an operative condition. It has not been used or exhibited except for the purposes of this litigation. Its presence in court was important to enable the court to visualize and compare the mechanism and principles of operation of the Greene machine with the Beidler and the Caps & Leininger machines. The circumstances here are such as not to entitle plaintiff to injunctive relief against infringement. There is no threatened or contemplated infringement. The evidence establishes that defendant entirely ceased the manufacture or use or sale of the "Universal Recorder," the infringing machine, after the grant of the patent in suit. The possession as a model does not constitute actual or threatened infringement in the absence of proof that the machine is held for purposes of profit in violation of the exclusive right of the patentee to make, use, and sell the patented invention, where there has been no invasion or threatened invasion of the patentee's monopoly after the grant. Standard Measuring Machine Co. v. Teague (C.C.) 15 F. 390; Bonsack Machinery Co. v. Underwood (C.C.) 73 F. 206, 211; Robinson on Patents, § 899; Westinghouse Electric & Mfg. Co. v. Stanley Electric Mfg. Co. (C.C.) 116 F. 641; Deere & Webber Co. v. Dowagiac Mfg. Co. (C.C.A.) 153 F. 177.
From the time defendant put the "duplex" machines on the market, it has sold a copying paper to users of those machines. The fact appears that its paper has been used almost exclusively by users of all "duplex" machies. Because of this fact, plaintiff claims that defendant is liable for contributory infringement, and that an injunction should issue forbidding it to further advertise the paper for use. This claim can apply only to the five "Universal Recorders" still in use. Defendant has advertised and still advertises itself as a retailer only of paper in rolls of 350 feet in length and of desired width, sensitized on one or both sides, and varying in quality and kind, stating, in its advertising matter, that "all of these papers are sensitized by the Eastman Kodak Company exclusively for the Photostat Corporation for use in the Photostat Recorder," that "the unequaled technical and productive facilities of the Eastman Kodak Company are a continual assurance of unlimited supply of sensitized paper of the most excellent and uniform quality," and that the papers used are severally watermarked "Byron Weston Co. Linen Record 1925 Photostat" or "Eastman Kodak Company." While defendant specifically refers to the suitableness of the paper for use in the "Photostat Recorder," it advises the public as to the source of the supply. Defendant nowhere advertises that this is the only paper or only make of paper that can be used for photocopying purposes.It states that the best results can be obtained from its use in the "Photostat Recorder." There has not been called to the attention of the court any advertising matter of defendant issued since the issuance of the patent in suit containing any statement that the paper sold by it either can or should be used in "Universal Recorders," nor is any reference to that machine anywhere made. Nor is there a scintilla of evidence from which any inference may be drawn that the Eastman Kodak Company will not sell suitable paper to any one who wishes to purchase it. In other words, there is an open source of supply of photocopying paper for any one who may wish to buy, no matter what type of machine he may be using.
It is readily admitted by defendant that it has sold its paper to some users of "Universal Recorders" since the issuance of the patent in suit. Defendant had the same right to sell its paper to any one seeking to purchase as had any other maker or retailer. None of the claims of the patent in suit covers photocopying paper as an essential element of the invention, and its sale to users of infringing machines does not constitute infringement. Individual Drinking Cup Co. v. Errett (C.C.A.) 297 F. 733; Miller v. Electro Bleaching Gas Co. (C.C.A.) 276 F. 379, certiorari denied 257 U.S. 660, 42 S. Ct. 187, 66 L. Ed. 422; Carbice Corporation v. American Patents Development Corporation, 283 U.S. 27, 51 S. Ct. 334, 75 L. Ed. 819; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S 425, 14 S. Ct. 627, 38 L. E. 500.
The bill of complaint is utterly devoid of any allegations necessary to sustain contributory infringement arising out of the sale of paper to users of the infringing machines. If the article is capable of an infringing use, it must be alleged and the proofs must show that it is manufactured and/or sold to infringers with knowledge and intent and with the purpose that it will be so used. Westinghouse Electric & Mfg. Co. v. Precise Mfg. Corporation (C.C.A.) 11 F.2d 209; Miller v. Electro Bleaching Gas Co. (C.C.A.) 276 F. 379.
It now becomes necessary to consider the proceedings in the Beidler-Caps & Leininger interference in connection with the coverage and scope to be allowed to the claims of the patent in suit. Beidler's application, serial No. 704,275, upon which the patent in suit was issued, was filed in the Patent Office April 4, 1924. Arthur W. Caps and Ivan E. Leininger filed an application, serial No. 641,471, on May 25, 1923, on a photographic copying machine.
The two applications contained the same broad subject-matter of invention. On March 6, 1925, the Patent Office declared an interference between Beidler and Caps and Leininger, and the interference counts were stated as follows:
"1. The combination with a comera body and a support for a sheet of double coated sensitive material in the focal plane thereof, of means for rotating said support within the camera body to present first one side and ...