Paper Converting MacHine Company v. Magna-Graphics Corporation

745 F.2d 11, 223 U.S.P.Q. (BNA) 591, 1984 U.S. App. LEXIS 15193
CourtCourt of Appeals for the Federal Circuit
DecidedSeptember 28, 1984
DocketAppeal 84-738
StatusPublished
Cited by201 cases

This text of 745 F.2d 11 (Paper Converting MacHine Company v. Magna-Graphics Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Paper Converting MacHine Company v. Magna-Graphics Corporation, 745 F.2d 11, 223 U.S.P.Q. (BNA) 591, 1984 U.S. App. LEXIS 15193 (Fed. Cir. 1984).

Opinions

NICHOLS, Senior Circuit Judge.

This appeal is from a judgment of the United States District Court for the Eastern District of Wisconsin (Reynolds, C.J.), 576 F.Supp. 967, entered on December 1, 1983, and awarding plaintiff Paper Converting Machine Company (Paper Converting) $893,064 as compensation for defendant Magna-Graphics Corporation's (MagnaGraphics) willful infringement of United States Patent No. Re. 28,353. We affirm-in-part and vacate-in-part.

d

Although the technology involved here is complex, the end product is one familiar to most Americans. The patented invention relates to a machine used to manufacture rolls of densely wound (“hard-wound”) in-dustrial toilet tissue and paper toweling, The machine, commonly known as an automatic rewinder, unwinds a paper’ web continuously under high tension at speeds up 2,000 feet per minute from a large-diam-®tef Pfer ^oil-known as the parent roll or bedroll-and simultaneously rewinds it onto PaPerf>oard cores to fo™ individual consumer products.

Before the advent of automatic rewinderS) toilet tissue and paper towel producers Uged “stop-start” rewinders. With these machines, the entire rewinding opera-tion had to cease after a retail-sized “log” was finished so that a worker could place a new mandrel (the shaft for carrying the paperboard core) in the path of the paper web. In an effort to increase production, , ,. . , . , , , . ’ automatic rewmders were introduced m the , incA, ,. , ,. . early 1950 s. These machines automatical, , , , . , ,, ,, ,, ly moved a new mandrel into the path of the paper web while the machine was still winding the paper web onto another mandrel, and could operate at a steady pace at sPeeds UP to about 1,200 feet per minute.

1^62, Nystrand, Bradley, and Spencer invented the first successful “sequential” automatic rewinder, a machine which not only overcame previous speed limitations, but also could handle two-ply tissue. This rewinder simultaneously cut the paper web and impaled it on pins against the parent roll. Then, after a new mandrel was automatically moved into place, a “pusher” would move the paper web away from the parent roll and against a glue-covered paperboard core to begin winding a new paPer In-

On April 20, 1965, United States Patent No. 3,179,348 (the '348 patent) issued, giv[14]*14ing to Paper Converting (to whom rights in the invention had been assigned) patent protection for machines incorporating the sequential rewinding approach. On September 1, 1972, Paper Converting applied to have the claims of the ’348 patent narrowed by reissue, and on March 4, 1975, United States Patent No. Re. 28,353 (the ’353 patent) issued on this application. The ’353 patent, like the original ’348 patent on which it is based, received an expiration date of April 20, 1982. Claim 1 of the ’353 patent defines the improvement in the web-winding apparatus as an improvement comprising:

(C) means for transversely severing said web to provide a free leading edge on said web for approaching a mandrel on which said web is to be wound m said path, and
(D) pin means extensibly mounted on said roll for maintaining a web portion spaced from said edge in contact with said roll, and pusher means extensibly mounted on said roll to urge said maintained web portion against an adjacent mandrel.

Paper Converting achieved widespread commercial success with its patented auto-matie rewinder. Although there are not many domestic producers of toilet tissue and paper toweling, Paper Converting has sold more than 500 machines embodying the invention.

In 1979, Paper Converting brought the present action against Magna-Graphics for infringement of the ’353 patent. After a trial concerning only issues of liability, the district court held the ’353 patent valid and found it willfully infringed, 211 USPQ 788 (E.D.Wis.1981). It awarded treble damages, finding that Magna-Graphics had acted without the advice of counsel as to the change it made in its machines to avoid infringement. The Seventh Circuit affirmed, 680 F.2d 483 (7th Cir.1982). The parties commendably raise no issues here which the Seventh Circuit has already decided as to Magna-Graphics’ liability.

When the district court held the accounting for damages (after the Seventh Circuit had affirmed it on the liability portion of the case), it found that Magna-Graphics had made two sales of infringing rewinders and associated equipment: one to the Fort Howard Paper Company (Fort Howard) under circumstances to be described, and one to the Scott Paper Company (Scott). The court awarded to Paper Converting $112,-163 for Magna-Graphics’ sale to Scott, and $145,583 for Magna-Graphics’ sale to Fort Howard. The court then trebled these damages, and added $119,826 as prejudgment interest on the untrebled award, This appeal is from the judgment awarding damages.

II

Magna.Graphics asserts reversible error in virtually every element of the district court’s “accounting” or award of damages. jn particular, Magna-Graphics contends district court erred in (1) finding sai6) substantial manufacture, and delivery of the Fort Howard rewinder to be an infringement, (2) basing the damages award 0n Paper Converting’s lost profits, (3) adopting an incremental income theory when determining Paper Converting’s lost profits, (4) computing Paper Converting’s lost profits based on the value of the entire rewinder line as opposed to the patented rewinder alone, and (5) awarding prejudgment interest to Paper Converting. Despite Magna-Graphics' many arguments, however, we are not persuaded that the district court made any reversible error in its lengthy and detailed analysis of its accounting,

III

A

Magna-Graphics first argues that it should bear no liability whatsoever for its manufacture, sale, or delivery of the Fort Howard rewinder because that machine was never completed during the life of the ’353 patent. We disagree,

In early 1980 Fort Howard became interested in purchasing a new high-speed rew-inder line. Both Paper Converting and [15]*15Magna-Graphics offered bids. Because Magna-Graphics offered to provide an entire rewinder line for about 10 percent less than did Paper Converting, it won the contract. Delivery would have been before the ’353 patent expired. Magna-Graphics began to build the contracted for machinery, but before it completed the rewinder, on February 26, 1981, the federal district court in Wisconsin determined that a similar Magna-Graphics’ rewinder built for and sold to Scott infringed the ’353 patent. The court enjoined Magna-Graphics from any future infringing activity.

Because at the time of the federal injunction the rewinder intended for Fort Howard was only 80 percent complete, Magna-Graphics sought a legal way to fulfill its contract with Fort Howard rather than abandon its machine. First, Magna-Graph-ics tried to change the construction of the rewinder so as to avoid infringement. It submitted to Paper Converting’s counsel three drawings illustrating three proposed changes, and asked for an opinion as to whether the changes would avoid infringement. Paper Converting’s counsel replied, however, that until a fully built and operating machine could be viewed, no opinion could be given.

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Bluebook (online)
745 F.2d 11, 223 U.S.P.Q. (BNA) 591, 1984 U.S. App. LEXIS 15193, Counsel Stack Legal Research, https://law.counselstack.com/opinion/paper-converting-machine-company-v-magna-graphics-corporation-cafc-1984.