Appeal from the District Court of the United States for the Western District of Wisconsin; Ferdinand A. Geiger, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
This bill charged appellee with infringing claims 4 and 5 of United States patent No. 1,693,886, issued December 4, 1928.
The patent relates to a method and machine for slip-sheeting a roll-feed or rotary printing press when printing on any type of material. A slip sheet of blotting material serves not only to help support the printed sheet in its passage through the press, but to prevent ink from the freshly printed sheet from smudging or offsetting upon another sheet when piled up at the delivery end of the press.
The original bill relied upon both types of claims, but at the trial appellant abandoned the machine claims and relied solely on process claims 4 and 5.*fn1 The defense was in validity based on prior uses.
On May 13, 1933, after the bill was filed and shortly before the trial, when depositions had been taken tending to show prior use, appellant filed a disclaimer*fn2 limiting the method of the patent to slip-sheeting transparent material difficult to handle, especially cellophane.
The court found that the claims in suit, as affected by the disclaimer, were invalid and void on account of anticipation by the public knowledge, existence, sale and use of each of Meisel presses Nos. 184, 561, 801, and 774, and were invalid and void as not proper method claims. For these reasons the court dismissed the bill for want of equity, and this ruling constitutes the basis of the appeal.
In explanation of the objects of the patent it may be said that the use of slip sheets to protect the printed sheets from offsetting antedates this patent many years. In earlier years this was accomplished by hand; but upon the advent and use of roll-feed printing machines, including rotary sheet printing presses that cut sheets from the roll of print paper before printing, where it is impracticable to insert slip sheets manufally because of the speed of delivery, the offset problem became more pronounced. The problem was further aggravated when the print paper used was fragile, or difficult to handle, or was transparent, thus permitting the offset marks to show through the face of the sheet. It was under these conditions, appellant claims, that the patentees made the discovery which constitutes the basis of the patent.
The objects as set forth in the application are: (1) To associate slip sheets with freshly printed sheets printed on a roll-feed press; (2) to introduce an auxiliary strip into association with print paper in a printing apparatus for supporting the print paper or for preventing offset, and to deliver auxiliary sheets synchronously with printed sheets; (3) to introduce an auxiliary web into a machine performing a plurality of operations including severance on a principal web, and provide for conducting the auxiliary web and sheets cut therefrom in association with said principal web and sheets cut therefrom and for delivering the auxiliary web sheets in company with the principal web sheets.
It is claimed by appellant that these objects were accomplished as disclosed by the patent by using certain means conceived with an ordinary roll-feed printing press, which, it may be added, was manufactured and sold by Meisel Press Manufacturing Company to appellant. An elevation of that press, together with patentees' attachments, is shown in Fig. 2 of the patent application here reproduced, together with Fig. 3, which is a detail perspective view of the slip sheet roll-supporting element of the preferred structure.
For many years Meisel had manufactured and sold presses such as this, and patentees merely added to the original Meisel press a slip-sheet roll 32 from which the slip sheet is fed over tension roller 45 and slip-sheet is fed over tension roller 45 and slip-sheet guide roller 48 to idler 11, where it ...