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September 20, 1995

FERAG AG, an Alien Corporation and FERAG, INC., a U.S. Corporation, Plaintiffs,
GRAPHA-HOLDING AG, an Alien Corporation, Defendants.

The opinion of the court was delivered by: OBERDORFER

 Plaintiffs Ferag AG and Ferag, Inc. and defendant Grapha-Holding AG are two of only a very few companies that manufacture bindery equipment used to assemble or join together pages of brochures and magazines. Even in this age of computers, the demand for innovations in the binding of printed materials continues since the output of printing presses greatly outpaces the output of bindery machines. See Declaration of Ted W. Mayer at 3. The goal of these new developments is simply to increase the speed of the binding process, which has been limited by the fact that when sheets of paper move too quickly, they tend to fold, crease, tear, and flutter.

 At issue in this case is defendant's Weber patent, which discloses a bindery machine that plaintiffs claim has been anticipated by plaintiffs' prior Meier '755 patent. Plaintiffs also ask for a declaratory judgment that two of plaintiffs' machines, one introduced at an industry show in 1991 (the "Print '91" machine) and the other shown in September 1993 (the "IPEX" machine), do not infringe the Weber patent. Defendant has filed a counterclaim asserting that plaintiffs' Print '91 machine infringes its Weber patent.

 The Weber patent contains Claims 1-27. Currently pending is plaintiffs' motion for summary judgment that would invalidate Weber Claims 1-3, 5-11, 17-20, 26, and 27, and plaintiff's motion for summary judgment of the non-infringement of Weber Claims 4, 12-16, and 21-25. As to invalidity, defendant denies that Weber Claims 1-3, 5-11, 17-20, 26 or 27 are invalid as anticipated by the Meier '755 patent. As to non-infringement, defendant agrees that Claims 12-16, 21, and 25 are not infringed; leaving in dispute infringement Claims 4 and 22-24. For the reasons stated below, an accompanying Order grants plaintiffs' motion with respect to non-infringement and denies plaintiff's motion with respect to invalidity and grants summary judgment to the defendant on that issue.



 The patent in dispute is U.S. Patent 4,735,406, which discloses a "Machine For Making Brochures and the Like," invented by Walter Weber and assigned to defendant Grapha-Holding AG. It issued on April 5, 1988, from an application filed May 28, 1986, based on a Swiss application which was filed on June 4, 1985. See drawing attached as Appendix I.

 The machine disclosed by the Weber patent uses a rotating cylinder with several chains or carriers radiating from the cylinder-like paddles on a paddlewheel. (The single carrier, non-rotating saddle stitcher has long been the industry standard.) Individual folded sheets move linearly along the edge of each carrier (i.e., parallel to the axis of the cylinder), and the entire cylinder rotates. The accumulated pages are then carried to the saddles, where they are stapled. The increase in speed comes from the fact that there are several carriers rotating beneath the feeder rather than the traditional single chain or carrier moving linearly beneath the feeder.

 For purposes of plaintiffs' non-infringement claim, two other aspects of the Weber patent are relevant its stapling device and its sheet feeding units. Stapling takes place on the saddles, which are downstream of the carriers gathering the sheets of the brochure together. The connecting apparatus "comprises two staple applicators mounted on a yoke." Weber col. 6, l. 2-3. The yoke rocks in a pendulum movement around the outer perimeter of the cylindrical drum. Each applicator is fitted with means for applying as many staples as necessary to ensure that the sheets of each brochure are secured to each other. The applicator staples the brochures together at the folds of the collected sheets; and Claim 4 further defines the connecting means as "including means for simultaneously stapling the backs of sheets of a plurality of accumulations to each other" (emphasis added).

 The other aspect relevant to plaintiffs' non-infringement claim is the Weber device's "sheet feeding units," which are limited by several Claims throughout the patent. For the purposes of plaintiffs' motion, only Claims 22-24 are relevant. In Claim 22, the Weber patent discloses "the machine of claim 1, wherein each of said feeding units comprises means for delivering a stream of partially overlapping sheets wherein each preceding sheet overlies the next-following sheet." Claims 23 and 24 are dependent upon Claim 22. Claim 23 discloses "the machine of claim 22, wherein said delivering means includes means for conveying the sheets of the respective stream with the folded backs constituting the leaders of the sheets." Claim 24 discloses "the machine of claim 23, wherein each of said feeding units further comprises means for opening successive sheets of the respective stream including means for engaging the folded backs of the sheets."


 The prior art which plaintiffs allege anticipates the Weber patent is U.S. Patent 4,408,755, a "Method and Apparatus for Forming Multi-sheet Printed Products, Especially Newspapers and Magazines," invented by Jacques Meier and owned by plaintiffs ("Meier '755"). The Meier '755 patent issued on October 11, 1983 (approximately four-and-a-half years before the Weber patent), from an application filed February 17, 1981 based on a Swiss application which was filed on March 11, 1980. See drawing attached as Appendix II. Like the Weber patent, the Meier '755 patent is designed to form multi-sheet printed products such as newspapers, magazines and brochures.

 The machine disclosed by the Meier '755 patent also consists of a cylindrical drum containing radially protruding support ribs spaced evenly from each other around the drum. The drum has three infeeder or inlet sections arranged next to one another. Three transport devices feed the paper into the inlet sections. The transport device consists of a series of individual grippers, which remove folded sheets of paper from a stack.

 The stack of folded paper delivered by the transport device into the inlet sections is a single, continuous, interconnected web of paper similar to the continuous form paper used in a dot matrix or daisy wheel computer printer. In order to avoid the difficulties associated with the "gathering" of individual signatures or sheets, the Meier '755 device transports the paper without cutting the continuous web into individual sheets.

 For purposes of plaintiffs' non-infringement motion, the construction and operation of plaintiffs' Print '91 machine is relevant in two respects: its stapling mechanism and its sheet feeding units. The Print '91 machine's stapling device is described in detail in U.S. Patent No. 5,172,897 (A "Process and Apparatus for Collecting and Stapling Folded Printed Sheets") invented by Egon Hansch and assigned to plaintiff Ferag AG ("Hansch '897"). The machine's stapling station is located downstream of the feed stations, where the sheets have been gathered together. The stapling mechanism consists of a "self-enclosed track of travel for stapling heads extended around a collector drum" with several supports. "A stapling head is assigned to each support. The stapling heads rotate mutually synchronously about the axis of rotation of the drum." Hansch '897 Abstract. The heads move with the carriers and rotate at a rate of velocity essentially equal to the velocity of the supports. As each head rotates past a single, stationary cam, two staples are driven into the corresponding sheet collection, thereby stapling on the successive carriers as they rotate past the cam in serial fashion.

 As described in the Egon Hansch affidavit, the Print '91 machine's sheet feeding units are comprised of gripper conveyors, which carry the sheets tangentially towards carriers on a cylindrical drum. The carriers rotate around the drum. The cut-edges of the sheets are opened, and the gripper conveyor then drops the sheets onto the carriers. At the time each sheet is held by the gripper, it is neither attached to nor overlapped with any of the sheets that precede or follow it.


 Federal law provides patent protection for an invention unless

the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. 35 U.S.C. § 102(a).

 When a patent issues, there is a statutory presumption that each claim of the patent is valid. 35 U.S.C. § 282. A party asserting that a patent claim is anticipated under 35 U.S.C. § 102 "must demonstrate, among other things, identity of invention" between the claimed invention as properly construed and the disclosure of the reference. See Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992;, Corning Glass Works v. Sumitomo Electric USA, Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). Accordingly, anticipation is established "only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1267 (Fed. Cir. 1991). In order to have the Weber patent declared invalid, then, plaintiffs must show that every element of the Weber patent is anticipated by the asserted anticipating reference, the Meier '755, and must do so with clear and convincing evidence. 35 U.S.C. § 282.

 Although the Weber patent contains 27 Claims, only Claim 1 is relevant to this litigation. The other 26 Claims contain all of the limitations described in Claim 1, the exact language of which is as follows:

A machine for accumulating folded sheets into brochures and like products, comprising:
(a) a sheet transporting device arranged to advance sheets having folded backs in a predetermined direction along a predetermined path and including:
1. at least two elongated parallel carriers and
2. discrete conveyor means for each of said carriers,
3. each of said conveyor means having means for advancing sheets along the respective carrier; and
(b) means for feeding sheets to said carriers so that the backs of the sheets straddle the respective carriers, comprising
1. a first feeding unit having means for depositing first sheets onto successive carriers in a first portion of said path and
2. at least one additional feeding unit having means for depositing second sheets over successive first sheets in a second portion of said path downstream of the first portion so that the backs of the second sheets straddle the backs of the respective first sheets and form therewith accumulations of first and second sheets wherein the backs of the second sheets are accessible.
(emphasis added)

 In memoranda filed in this Court and in oral argument, the parties agree that whether the Meier '755 patent anticipates the Weber patent depends upon the meaning of "sheets" and upon the meaning of "discrete conveyor means for each of said carriers." Because plaintiffs must show that every element of the Weber patent is anticipated by the asserted anticipating reference in order to obtain the declaratory judgment they seek, if either the first or the second point of dispute is found against the plaintiffs, then the plaintiffs' ...

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