APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA (D.C. Civil No. 73-120).
Van Dusen, Adams and Weis, Circuit Judges. Van Dusen, Circuit Judge, dissenting in part.
WEIS, Jr., Circuit Judge.
All but one of the machines utilized by the defendant to fashion ribbon into decorative bows were found to infringe upon a patent owned by the plaintiff. On the issue of damages, however, the plaintiff did not fare so well, the award being limited by a determination that laches had been proved. These conclusions reached by the district court have not been demonstrated to be erroneous and we affirm.*fn1
Plaintiff Minnesota Mining and Manufacturing Company (3M) holds patents 2,933,223 and 3,112,240. The '223 patent was issued in 1960 and covers a device which constructs decorator ribbon bows such as are frequently seen on gift wrappings. The '240 patent issued in 1963 and encompasses the design of the bows.
Defendant Berwick Industries has been engaged in the manufacture of bows since 1960 and uses Tye-Sil, Wanchek, Camberloc and Bowmatic bow-making machines. Plaintiff asserts that these machines infringe apparatus claims 1, 2, 5 and 17 and method claims 14 and 15 of the '223 patent*fn2 and that the bows produced infringe the '240 patent.
We need only describe the machines briefly since the district court detailed their characteristics at length in its opinions.
The Wanchek and Tye-Sil machines are of the cam drop-off type. They employ a horizontally movable shuttle which has a one-way ribbon gripper and a ribbon guide. As the shuttle moves forward it pulls ribbon from a supply roll and climbs a cam until it is positioned above a spindle on which three needles are mounted vertically. The shuttle then drops off the cam and impales the ribbon on the needles. As the shuttle moves to the rear to start the process again, the spindle rotates so that the loops of the bow are disposed on various radii. This process repeats itself until a finished bow is formed.
The Camberloc machine is essentially similar to the Wanchek and Tye-Sil machines. The only essential difference is that in the Camberloc the shuttle impales the ribbon on horizontally mounted needles.
The Bowmatic is much more sophisticated. Ribbon is continuously withdrawn from the supply roll by means of a double roller drive and moves forward through a guide. When the ribbon reaches the end of the guide, a cam raises a spindle on which there are vertically mounted needles. The ribbon is impaled by the needles, and the spindle lowers. At its lowest point, the spindle rotates so as to twist the ribbon and dispose the loops on various radii. Ribbon continues to move forward and the process repeats until a finished bow is formed.
After a bench trial, the district court made extensive findings of fact and concluded that Berwick had failed to sustain its burden that claims 1, 2, 5, 14, 15 and 17 of patent '223 were invalid. Finding the requisite equivalency between the Tye-Sil, Wanchek, and Camberloc machines and the apparatus claims of patent '223, the court determined that there was infringement. However, it found no infringement of the apparatus claims as to the Bowmatic, a machine with highly advanced solid state circuitry and tremendous production capacity. The court noted that unlike the mechanism described in the 3M patent, the Bowmatic:
1. causes the ribbon to be continuously withdrawn from a supply source and advanced through the process by a double roller mechanism rather than by a shuttle;
2. does not use a pendulum or cam drop-off to give either horizontal or downward motion to the ribbon - rather, the ribbon moves continuously through guides which regulate the route of ...