# Amicus Curiae Brief — Williams & Wilkins Co. v. United States > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_1623%3A16 ## Record - **Collection:** Supreme Court brief - **Document type:** Amicus Curiae Brief - **Published:** January 1, 1975 - **Citation:** 420 U.S. 376 ## Text 4 Alt ee biel aS UR Sich PAC fy A Lda. \ WE: : ; PAPERS \ Kiel BI a TABLE OF CONTENTS. Page Tue Interest or Amici CURIAE .............0ccceeeceee 2 American Society for Testing and Materials ............ 2 National Council of Teachers of Mathematics .......... 2 American Society for Microbiology ................... 3 Editor-in-Chief, Journal of Urology .................. 5 SR PUPORE OF TOG TIED oo oc ccc cckecaveperestepcus 6 DEFINITIONS AND THE OPINIONS BELOW ................4. 7 MN Seeders os nsod 655 thee eh nk Vo oLaa whi Sea eee ene 8 PUR Re 0 RUMIGRAPGE 5 vc ok cee ce Sok hea eae bewties 8 as CE OF CTU ood cred vncuews 6S e0xckenpdeiekinne 16 TABLE OF AUTHORITIES. Cases: Page Ex parte Garbo, 141 U. S. P. Q. 913 (P. O. Bd. App. 1962) . .19, 20 Keene v. Wheatley et al., 14 Fed. Cas. 180, 193 (No. 7644) SO MED a cn vacenacaers (5) Fixing the image by fusing. The plate can be cleaned and used over and over again for hundreds or even thousands of exposures. One way of performing the step of developing the k latent image is called impression development. This in- volves a system of developing electrostatic images with a ‘ series of rollers which have been described by Schaffert f as ‘‘somewhat analogous to the inking roller system used in printing presses.’’ It is to be noted that this system is capable of high speed development and good prints have been produced at speeds of 30 inches per second surface velocity. The time required to produce a print by xero- graphy is primarily dependent upon the speed of image de- velopment since other steps in the process are usually of b short duration. One of the well-known copying machines is the Xerox * t 914 * copier. This is a desk-size copying machine in which all operations are automatic, except for insertions of docu- . ments or other materials to be copied. The units for charg- * Trademarks of Xerox Corporation. REE TEI, BIT * = y i ER LI e 10 Brief Amici Curiae ing, exposing, developing, transferring and cleaning are appropriately stationed around the circumference of the drum, and all of these operations take place in sequence as the drum rotates. The developer is a mixture which cas- cades over the drum surface and is then collected and re- circulated in the developer unit. Paper sheets are fed from the paper supply rack into the transfer station and are then conveyed through the fusing unit and out onto a receiving tray, as shown in Fig. 1. L CHARGING GRIO + BRUSH AND CLEANER UNIT GeO GR ., PAPER CONYEYOR SYSTEM BS nb aa eaten INR ex Tah ot x 4 | : > z rs) 2 z ELECTROSTATIC TRANSFER Fic. 1 The machine is capable of copying book and magazine pages as well as single-sheet documents. The paper on which the printing is made requires no special properties. Copies can be made on ordinary paper or on such sheets as vellum or offset paper masters. Copying speed, after a brief warm-up period, is 30 seconds for the first print, and 6 prints per minute thereafter. A more recent ma- Brief Amici Curiae 11 chine of this class is the Xerox 2400* which is designed to produce copies at the rate of 2400 per hour. One of the most recent machines is the Xerox 7000 * which is a versatile high-speed duplicator with a choice of five reductions. Originats up to 14” x 18” may be copied on 8%” x 11” copy paper ard the copies can be made at the rate of 3600 :o,ies per hour. This machine includes numerous other suphisticated features such as automatic sorting of copies, copying two documents at once with or without sorting, copying photographs and 3-dimensional originals, and double-side duplicating. This machine is also useful as a signature ** maker for making booklets with printing on both sides of the pages. The first application of xerography to automatic con- tinuous copying was in the field of microfilm enlargement. A xerographic machine for producing enlarged prints from microfilm was developed by the Xerox Corporation for the U. S. Navy in 1953. Since 1953 Xerox Corporation has produced a series of automatic copying machines under the trademark Copyflo.* These are rather large machines designed for high-volume output. The principle of opera- tion of the Copyflo machines is illustrated in Fig. 2. The xerographic process used in such machines is similar to that of the Xerox 914 except that the paper is fed from a roll, and the printed copy is rewound on a take-up roll. Copy production is at the rate of 20 linear feet per minute. Persons skilled in the art of xerography have equated electrostatic copying machines to plateless printing presses. As pointed out by Schaffert at page 144: ‘‘The Xerox Copyflo machines can be regarded as plateless printing presses, the plate being replaced * Trademarks of Xerox Corporation. ** “Signature” is the trade term for a multi-page printed sheet, folded to form a booklet. NE ABE ALOE LEE LITTLE NE Se a EL 12 Brief Amici Curiae MICROFILM PROJECTOR i. erent —_— —— ‘wees | setae | el) | eee a COPY - PROJECTIONS. 1 4=* cain TRANSFER SECTION "9% —~FEAS | XEROGRAPHIC 2) — [| ORUM A Fic. 2. DEVELOPMENT by a transparency, a piece of microfilm, or a sheet of paper containing the subject matter to be printed. The speed of 20 feet per minute, however, would be too slow for the usual commercial printing job. Nevertheless, when relatively few copies are needed, these machines can become quite useful, particularly in reprinting out-of-print materials. For example, it is quite feasible to print a single copy or several copies of an entire book either directly from an exist- ing copy or from microfilm. Presumably, photocopy machines utilizing zinc-oxide papers could also be adapted to handle similar printing jobs.’’ (See foot- note 7.) 8. It has been noted that the NIH library photocopy service employs 2 Xerox copying machines and 2 Recordac microfilm cameras in conjunction with a Xerox Copyflo printer. See p. 12, sudra. Brief Amict Curtae 13 In addition to the Xerox Copyflo machines,* there are other known electrostatic printing presses. For example an electrostatic printing press has been developed by Harris-Intertype Corp. for the U. S. Army and a similar printing machine was developed from Radio Corporation of America for the U. S. Army Engineer and Development Labs. The Xerox Corporation has also developed for the U. S. Air Force an automatic xerographic printer which makes finished continuous-tone positive prints from pho- tographie negatives. ‘The machine was designed primarily for use in high speed, high volume printing from aerial film for mapping and reconnaissance purposes. Xeroprinting is a by-product of the development of xerography. Xeroprinting is the name given to an electro- static printing process designed to print many copies of a subject, document or page from a master plate or cylin- der. The printing master or plate consists of a metal sheet or cylinder upon which is imprinted an image in the form of a thin, insulating coating. The image areas con- sist of insulating material and the background areas are bare metal. When the master plate is electrically charged by pass- ing it under a corona charging unit, the charges deposited on the insulated image remain on the image surface and those deposited on the bare metal areas are conducted away to ground. Thus an electrostatic image correspond- ing to the insulated areas is formed. From this point on, the making of a print follows a sequence of steps similar to xerography, i.e., the image is developed with powder, transferred to paper, and the powder fused to the paper. A drawing of an experimental xeroprinting press made in 1948 is shown in Fig. 3. This press was operated at printing speeds up to 1200 feet per minute. It thus clearly appears that xerography is not only analogous to traditional! printing but it actually resembles Te te ce ye 3 aS SCRE se Ra se iy whe PEN EEE TNT ON te 14 Brief Amici Curtae Fic. 3 printing in important details. When we turn our attention to variant forms of printing—utilizing photographic or the more modern photoelectric techniques—the parallel is even more striking. When more than a few copies of a document are re- quired it is usual to employ one of the duplicating processes. One of the best known is offset duplicating which is essen- tially a special type of lithographic printing. One of the first commercial applications of xerography was in the preparation of offset paper masters. The powder image was simply transferred from the selenium plate to an offset master sheet and bonded to the sheet by heat fusing. After iNET OE SAB SET EMPTOR OD Be Brief Amici Curiae 15 Pik TAA the usual chemical treatment of the sheet it was attached to the cylinder of the duplicating machine. Thousands of copies could then be printed if needed. The lithographic principle requires that the printing areas be ink receptive and water repellent, and that the background or non-print- ing areas be water receptive and ink repellent. The fused xerographic powder which contains a high proportion of water repellent resins was found to be ideally suited for the preparation of paper offset masters. This application of xerography provided a rapid photo- graphic method of preparing offset masters. The conven- tional steps of processing negatives and the photo-mechan- ical operations of preparing plates were eliminated. The simplicity, speed, and flexibility of the method led to a multitude of uses in the duplicating and reprinting of docu- ments and other materials that carried far beyond the normal routine of office duplicating. Old documents could be reprinted with deletions and additions if required, and records could be reproduced and brought up to date. The success of xerograpky in offset duplicating led to the investigation of potential applications of xerographic techniques in commercial lithographic printing. Paper- base lithographic printing plates, such as those obtained by transfer from selenium xerographic plates, are suitable for short runs up to perhaps 10,006 impressions. For larger runs and for multi-color printing the greater durability of metal plates is required. A process for converting a xero- graphic metal plate into a lithographic printing plate has been shown to be feasible in the laboratory although it as not found wide commercial usage as yet. In the highly competitive industry of commercial printing, printing quality is of prime importance. New processes, therefore, must measure up to quality control standards before they can become established in this field. | : : 4 eata Kisad hi sSesGAS SeE_—_ CASE AS eta ee gee chara dataict ns gee aed ” wae OD 5 16 Brief Amici Curiae As pointed out by Schaffert at page 143: ‘*In the gap that separates the long-run printing job and small-run duplicating job, xerographic tech- niques have found 2 place of importance. For many years there has been a need for economical production methods applicable to short-run printing of certain types of books, pamphlets, and other limited distribu- tion publications, and for the reprinting of out-of-print materials in limited quantities. The preparation of printing plates for such jobs by conventional methods may prove to be too costly and time consuming. It is in this area that lithographic plates made by xerog- raphy show promise of making wou~thwhile contribu- tions to the art of printing.’’ (See footnote 7.) THE ART OF PRINTING. The dictionary definitions with regard to printing and reprinting have been set forth at page 7 of this brief. In order to put them in the proper perspective it must be recognized that prior to the invention of printing documents and books were in the form of manuscripts written by scribes. The process of printing has been contrasted with the method of writing in an early copyright decision of Keene v. Wheatley et al., 14 Fed. Cas, 180, 192 (No. 7644). (C. C. E. D. Pa. 1861). In that decision it was stated: ‘*Writing is a method of originally developing the composition, and of adding copies made singly, letter by letter. Printing is a process of multiplying the copies, by sheets. Thus the difference is that between multi- plication and addition. Human means of increasing the number of copies by writing are extremely limited. By printing, they may, on the contrary, in the words of Lord Cranworth, be multiplied indefinitely. 4 H. L. Brief Amici Curiae 17 ¢ Cas. 833. The books printed by those who first publicly * practiced the typographic art in Europe usually con- : tained an advertisement that they were not written, as all books had previously been, but were made by a new invention, whereby the several sheets were stamped at once, and not made line by line as formerly.’’ [Em- phasis added. ] As noted above, the Trial Judge found that NLM and the NIH library were not only ‘‘printing’’ and ‘‘reprint- ing’’ but also ‘‘publishing’’. He stated: ‘* ‘Publishing’ means disseminating to others, which defendant’s libraries clearly did when they distributed photocopies to requesters and users.’’ [See footnote 2.] In Keene v. Wheatley et al., supra, the Court also had vecasion to consider the meaning of the word ‘‘publish’’ in the copyright law in connection with the general distribu- tion of a printed book, and stated ‘‘. . . the delivery of a single copy to a subscriber is a public circulation.’’ (14 Fed. Cas. 192). [Emphasis added. ] While printing traditionally has been associated with the setting of type and a printing press, many changes have taken place in the printing art since the days of Guten- berg.® This has been judicially noted in a variety of set- tings. For example, the Patent Laws (35 U. S. C. 102),” like the Copyright Law, include reference to printing. 9. For a glimpse of what the future holds for printing, see “Good-by to Gutenberg”, January 24, 1966 issue of Newsweek, pages 85-88. 10. §102. A person shall be entitled to a patent unless— a. the invention was known or used by others in this coun- try, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or b. the invention was patented or described in a printed publication in this or a foreign country or in public use fT LOR IS RR 18 Brief Amici Curiae In 1971 the Court in Philips Electronic and Pharma- ceutical Industries Corp. v. Thermal and Electronics In- dustries, Inc., 450 F. 2d 1164, 171 U. S. P. Q. 641 (3rd Cir. 1971) had before it the question of whether the microfilm of a German patent application was a prior ‘‘printed publica- tion’’ within the meaning of 35 U. S. C. 102(a). The Court noted the ‘‘modern copymaking techniques and the wide- spread commercial, industrial and educational use of micro- film as well as its use in our libraries and data storage banks’’, The Court further noted: ‘ ‘, .». there have been revolutionary developments in techniques for reproduction, printing and dissemina- tion of documents ~nd data. The traditional process of ‘printing’ is no loager the only process synonymous with ‘publication.’ The emphasis, therefore, should be public dissemination of the document, and its avail- ability and accessibility to persons skilled in the sub- ject matter or art. The field is rapidly undergoing change and im- provement. To restrict our interpretation of Section 102(a)’s ‘printed’ publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live and the unde:lying rationale of Section 102. We hold, therefore, that the term ‘printed’ as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming. Whether or not an individual microfilm is a ‘printed’ publication 10. (Cont’d.) or on sale in this country, more than one year prior to the date of the application for patent in the United States, or... Brief Amws Curiae 19° within the meaning of the statute is a question of fact which ought to be determined by the application of criteria consonant with modern day methods of print- ing, duplicating and disseminating Cocuments.’’ (171 U.S .P. Q. 645) [Emphasis by Court.;} The Court approved the findings of the trial court that the German application, as microfilmed and indexed, was available and accessible, with the exercise of reasonable diligence, to persons ordinarily skilled in the art and that the application was a ‘‘printed publication’’ under the statute. The Government as represented by the Patent Office also has had occasion to construe the meaning of ‘‘printed publication’’ under 35 U. S. C. 102 with respect to micro- film. In Ex parte Garbo, 141 U. S. P. Q. 913 (P. O. Bd. App. 1962) the Board of Patent Appeals had before it the question of whether or not a microfilm of a German patent application could be considered ‘‘prior art’’. The German patent application had been recorded on microfilm and offered for sale in the Bibliography of Scientific and In- dustrial Reports, Office of Technical Services, U. S. De- partment of Commerce. Garbo contended that the micro- film citation was neither ‘‘printed’’ nor ‘‘published’’ prior to his filing date. The Patent Office Board of Appeals in holding that such a microfilm was a ‘‘printed publication’’ under the statute made the following observation: ‘“‘In the citation at hand, the Government un- doubtedly went to considerable expense in accumlating the material contained in the microfilmed disclosures of which the citation is a part. The sole purpose of this expenditure was to make the information avail- able to all who could use it. The Government in choos- ing microfilm as a vehicle selected the only economical EDS RRS De RUE a TOMS LETS ORM i ENE SOF RAMEE TG Ee pies BeOS 20 Brief Amici Curiae low cost method available to it for making this in- formation available to the entire metal founding in- dustry. It seems incongruous that the best of efforts by our Government to make more knowledge available shall come to naught through the patent system in ef- fect nullifying these efforts by ruling that they are insufficient in law to accomplish the purpose for which they were intended.’’ (141 U. S. P. Q. 916) From the foregoing it is clear that under the Patent Laws the term ‘‘printed’’ can include documents dupli- cated by modern methods and techniques, including xerography and the now well established process of micro- filming. It seems incongruous that the Government in construing the Copyright Law does not consider that mak- ing ‘‘Xerox’’ copies is equivalent to printing when as stated in ‘‘Good-by to Gutenberg’’,” ‘‘Xerography and other copying techniques have already turned every. office mailroom into a publishing house.’’ CONCLUSION. The decision of Trial Judge Davis is consistent with the constitutional purpose of the Copyright System and soundly concludes that the making of copies of whole articles whether by printing presses or a more modern ‘method of duplication is proscribed by the Copyright Law. Respectfully submitted, Rosert B. WasHsurn, Woopcock, WasxHsugn, Kurtz & Mackiewicz, 1831 The Fidelity Building, Philadelphia, Pennsylvania. 19109 Attorneys for Amici Curiae. 11. See footnote 9. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385001_1623%3A16. Public record. Not legal advice.