“[22]… the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. ….whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied.”
“To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
“[24] … anticipation requires prior disclosure of subject-matter which, when performed, must necessarily infringe the patented invention.”
“If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness.”
“[112] Fletcher-Moulton LJ’s judgment in British Westinghouse v Braulik(1910) 27 RPC 209 is as true today as when it was first said: ‘I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to inventors’” ‘I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to inventors’”
“[114] Here the Judge was really in a difficult position to decide obviousness. For he had already concluded that the claims were anticipated. So, looking at Windsurfing step (3), he had decided there were no differences. His views on obviousness were therefore inherently conjectural.”
“[15] Both experts broadly agree that there are three kinds of cut: a knife cut, a shear cut and a burst cut. However, a knife may cut in one of two ways: either by itself slicing through the printed product; or by being in cutting engagement with another knife which slices through the product. (i) In the simple knife cut (using one knife) the knife usually cuts down into a cutting strip or cutting stick set into a horizontal cutting table. The blade must penetrate the strip or stick in order to cut the lowest sheet. (ii) In a shear cut the paper is subject to shearing load between a first and a second knife (called a “knife” and “counterknife” respectively). Ordinary domestic scissors perform a shear cut. The first knife typically has a narrow wedge angle to enable it to penetrate the stack, whereas the second knife can have a wedge angle between 80o and 90o. The first knife must pass close enough to the second knife to avoid the bottom sheet being creased or bent, but does not need to contact it. What is necessary is that the knife and counterknife must be in “cutting engagement”
“[2] Multilayer, particularly printed products, e.g. journals folded one or more times, generally have to be cut on at least one, but usually two or three sides. In industrial in-line production of such printed products, which are generally conveyed away from the rotary press in the form of a scale flow, the aim is to integrate the cutting process into the dynamic production process, i.e. to cut at the full rotation capacity of e.g. 80,000 copies per hour.”
“ [6] Thus, the known cutting technologies in the case of dynamic high-performance product processes do not meet the quality requirements or only do so at the cost of high constructional expenditure. However, the same cutting qualities as in static or alternating processing processes are not obtained, the latter having highly developed cutting technologies with which by a suitable guidance of the cutting forces excellent results are obtained. Thus, e.g. entire paper packs, which rest on a fixed substrate acting as the counterknife, are cut by a swinging or dropping knife, which cuts the product on an accurately defined path (e.g. logarithmated shape) with excellent accuracy.”
“Thus, a cutting method comparable to the aforementioned static method is integrated into a dynamic process.”
“[9] The essential advantages of the invention are that on the one hand the throughput required for a dynamic high-performance process is obtained and simultaneously through the knife parts fixed relative to the material being cut and preferably the counterknife, a cutting quality comparable with that of static cutting methods is obtained. Through a suitable choice and arrangement of the second knife parts (preferably the cutting knives), it is possible, as a function of the characteristics, size and thickness of the printed products to be cut, to fix the cutting curve much as in the aforementioned static cutting mechanisms in such a way that an optimum distribution of the cutting forces occurs over the entire cut edge. Thus, the qualitative advantages of a static and the performance advantages of a dynamic cutting process are combined. In addition, through a corresponding arrangement of three cutting knives, the printed products can be cut on three sides in a single path, without requiring any turning or deflection of the product flow.”
“[13] It obviously falls within the scope of the invention to give a different shape and function to the second knife part. Thus, the second knife part can e.g. be constructed as a stationary, non-rotating blade or as a movable, non-fixed knife part.”
“(1) Method for cutting or trimming continuously conveyed, multilayer printed products in a continuous process, (2) in which at least one first knife part is jointly associated with each one or several printed products, (3) in which at least one first knife part and the associated printed product are moved at substantially the same velocity and are engaged with one another along at least one cutting edge, (4) characterized in that the first knife part and the associated printed product are moved past a second, fixed knife part, (5) in order to be brought into cutting engagement therewith, so that the printed product is at least cut along an intended cutting edge.”
“[122] The following description is taken from the product and process description. A conveyor rotates around an axis in an anti-clockwise direction. The angular speed of the conveyor is steady. Each printed product is held between a pair of leading and trailing clamp pieces. The products move as the conveyor rotates. Each leading clamp piece is attached by a spring to a point inward and ahead of it on the conveyor. Accordingly, when the leading clamp piece follower rolls are free the printed products are clamped between each leading clamp piece and its corresponding trailing clamp piece. Each pair of leading and trailing clamp pieces is pivotally journalled on a pivoting bolt. The centres of these bolts are disposed at a constant radial distance from the centre of the conveyor and are equally spaced at intervals of 20°. Each trailing clamp piece has a follower roll at the end of a lever arm. The rolls are constrained by cam surfaces, which together comprise a guide track. This causes the leading and trailing clamp pieces (and the printed products held between them) to rotate into different angular positions with respect to their respective radial directions as the conveyor rotates. [123] The trimmer comprises six rotating knife parts which are disposed on a circumference at equal 60 0 spacings. The rotating knife parts of the trimmer rotate clockwise about an axis. Each printed product makes contact with a rotating knife part at about 10 o’clock. The trimmer includes a single fixed knife part. The inner edge of the rotating knife part passes the fixed knife part at approximately 11 o’clock at which position the printed product is trimmed at its end by being cut between the two knife parts. The drawing in the PPD is partially reproduced below.”
“[124] Thus if we follow the progress of a printed product, it is shown clamped in position 1. The clamp moves anti-clockwise through positions 5 and 9. Meanwhile the rotary counterknife is rotating clockwise. The fixed rotary knife is rotating anti-clockwise. The counterknife and the printed product come into contact just before position 13; and the cut takes place between positions 13 and 14. The speed of the rotating counterknives is constant. However, the speed of the printed product varies during this process. Between positions 1 and 10 it moves quickly. The purpose of this is to allow the printed products to fan out so that they can be placed more easily between the rotating knife parts. Then the printed products are slowed down suddenly, so that by the time of the cut itself they are moving at the same (or almost the same) speed as the rotating counterknives. [125] A pair of side trimmers are placed at a different position on the circumference of the conveyor, usually upstream. One trimmer is in front of the drawing, the other behind it. As each printed product passes the side trimmers it is caused to move to the positions 1 to 17 as shown on the drawing. The side trimmers have their axes parallel to the plane of the drawing and to a radius corresponding to position l3 of the printed product, and so perpendicular to the axis of the conveyor. The distance between the fixed knives on the two side cutters is equal to the width of the product after trimming.”
“[126] The essential difference between NewsTrim and the patent in suit is that in NewsTrim the counterknife does not travel with the printed product. The printed product is conveyed by a separate clamp. Of course the counterknife makes contact with the printed product at the time of the cut; otherwise the cut could not take place.”
“[78] The description of the process in the specification says that during Phase II the first knife part is “concomitantly moving” with the printed products. This is the phase in which the knife part “catches up” with the printed products. In Phase III (i.e. before cutting) the printed products and the first knife part “are … engaged”
“[18] ….The printed products can also be so fixed in their cells by a clamping mechanism, that they cannot be further displaced until they have passed the second cutting knife 15.”
“The essential difference between NewsTrim and the patent in suit is that in NewsTrim the counterknife does not travel with the printed product. The printed product is conveyed by a separate clamp. Of course the counterknife makes contact with the printed product at the time of the cut; otherwise the cut could not take place.”
“Clearly the parts of the cutting mechanism, if they are rollers or rotating or oscillating blades, will move. What is important is that there is no change to the overall position of the mechanism during the operation. The contrast that the claim is making is therefore between the first knife, which travels continuously with the product at the same velocity, engaging with the intended cutting edge, and the second knife which remains behind at the same position or station, even though it may move.”
“[130] However, up to that point [i.e. that of cutting] they are not moving at substantially the same velocity. This can be seen most easily by comparing the position of the counterknife along the length of the printed product. Professor Lüthi carried out rather more sophisticated calculations which showed the same thing. The printed product is located between two counterknives at position 11. The trailing counterknife “catches up” with the printed product at position 12. From then on until the cut at position 13 they move at substantially the same speed. But between position 12 and position 13 the counterknife has moved further from the uncut edge of the printed product, so that they are not travelling in the same direction. Thus they are not travelling at the same velocity. At position 13 the printed product and the counterknife are moving at the same velocity for an instant of time, necessary to perform a cut. Immediately afterwards their directions of travel diverge. When dealing with the meaning of the word “displacement” in the patent in suit Mr Mellor argued forcefully that the skilled practical person would not be concerned with “infinitesimal” displacement. I think that the same approach is warranted when considering whether the counterknife and printed product in the NewsTrim machine are moving at the same velocity. The practical person would not be concerned only with the precise instant at which the cut takes place. If one lifts one’s eyes from the exact moment of cutting, the counterknife and the printed product do not move at the same velocity.”
“[131] In addition, I agree with MM that the two rotating knife parts of the NewsTrim machine are fixed (in the sense that they remain in the same overall location during the trimming process) and are associated with each other as a pair (in pairwise manner). Thus, in my judgment, they more closely fit the patent’s description of conventional cutting machines than the new route that the patent claims.”
“[46] … In Stobb, a trimming station is integrated into a stacker (a “compensated stacker”). Stobb takes three fixed blades arranged in a “U-shape”, and the signatures are moved past those blades by means of a rotary motion. Two of the blades are adjustable. <center><IMG alt="Diagram 6" hspace=15 src="15(image6).png" border=0> </center> … [47] The operation of the Stobb process can be seen from Figure 1 of Stobb (partially reproduced). [48] A conveying means (12) and (13) drops a signature (10) into a clamp, formed by members 18 and 19, pointing vertically upwards, and then rotated anti-clockwise past two fixed side cutters (16) and a fixed front cutter (17) and cut. The figure shows four clamps in a cruciform arrangement. The blades on the side cutters (16) are shown as angled or sloping blades. Once cut, the clamped signature continues to rotate anti-clockwise until the clamp points vertically downwards. The clamp releases the signature, and it falls into the compensated stacker (not shown). The stacker sits on a rotating table, which is rotated periodically by 180o so that the signatures stack evenly.The patent explains that although the embodiments show the signatures being rotated past the cutters, the cutters could be rotated past the signatures. [49] Figure 4 explains how the clamp and the side cutters can be adjusted. “A cross bar 47 is connected at the extending ends of the bars 46, and that determines the spacing between the outer edges 48 of the bars 46 and that spacing is the width of the signature after it is trimmed. When it is desired to change the width of the trimmed signature, then the cross member 47 is changed and a member of a different length can be inserted between the bars 46 and connected thereto, and that will change the spacing between the edges 48 and thus change the width of the signatures to be trimmed, and of course it will be recognised that the side cutters 16 will also be adjusted to have their cutting edges 49 in the plane of the edges 48 for trimming the signature overhang designated 51 in FIG 5.” [50] The final paragraph of the specification in Stobb says: “It will be seen that the arrangement is such that the holder or clamp member 19 is fixed with the shaft 15 to rotate therewith in the direction of the arrow B, and that rotation is such that member 19 becomes a bed knife relative to the three cutting blades 16 and 17. Thus, the holder 18 is used for pressing the signature against the member 19 which then serves as the main member against which the cutting is accomplished”. <center><IMG alt="Diagram 7" hspace=15 src="15(image7).png" border=0> </center> Figure 5 shows the side cutters (16) in the plane of the leading and trailing edge of the clamp (46). The clamp is shown as symmetrical. The view is a head on view; and the front of the clamp (corresponding to member 19 in figure 1) is shown as being made of three pieces (46, 47, 46). It is this member that “becomes a bed knife”. <center><IMG alt="Diagram 6" hspace=15 src="15(image6).png" border=0> </center> “A cross bar 47 is connected at the extending ends of the bars 46, and that determines the spacing between the outer edges 48 of the bars 46 and that spacing is the width of the signature after it is trimmed. When it is desired to change the width of the trimmed signature, then the cross member 47 is changed and a member of a different length can be inserted between the bars 46 and connected thereto, and that will change the spacing between the edges 48 and thus change the width of the signatures to be trimmed, and of course it will be recognised that the side cutters 16 will also be adjusted to have their cutting edges 49 in the plane of the edges 48 for trimming the signature overhang designated 51 in FIG 5.” “It will be seen that the arrangement is such that the holder or clamp member 19 is fixed with the shaft 15 to rotate therewith in the direction of the arrow B, and that rotation is such that member 19 becomes a bed knife relative to the three cutting blades 16 and 17. Thus, the holder 18 is used for pressing the signature against the member 19 which then serves as the main member against which the cutting is accomplished”
“[100] In my judgment Professor Lüthi had the answer to this point. He said that Stobb was not a blueprint for the manufacture of a working machine. It was a schematic presentation. A skilled addressee would construct member (19) as a counterknife and would realise that there needed to be marginal clearance between the leading edge and the trailing edge of the clamp. The kind of clearance required would be no more than a few microns. The details were not difficult to achieve. The edges of member (19) could be mitred corners, which any skilled person would adopt in constructing a working model of Stobb. To build in a measure of clearance was straightforward engineering. They do not fall outside the scope of trial and error experiments to make the machine work. I accept Professor Lüthi’s view (“if it moves like a duck, and quacks like a duck …”). For practical purposes member 19 is a counterknife in a two-knife shear cut. In my judgment Stobb discloses a counterknife (or, in the language of the claim a “first knife part”). ”
“[98] However, I do not consider that a knowledge of the principles of visco-elasticity would have been part of the mental toolbox of the skilled addressee of the patent at the time.”
“When it is desired to change the width of the trimmed signature, then [specified adjustments can be made], and of course it will be recognised that the side cutters 16 will also be adjusted to have their cutting edges 49 be in the plane of the edges 48 for trimming the signature overhang…(Col 352-61)”
“Apparatus for handling a signature, comprising a conveyor for moving a signature and having a terminal end for releasing the signature, a rotatably mounted signature holder (movably) disposed adjacent said terminal end for receiving the signature from said conveyor and with an edge of the signature extending beyond said holder, a stationary cutter disposed adjacent said holder and in the path of movement of the extending edge of the signature for trimming the extending edge of the signature when the signature is rotationally moved past said cutter.”
“[85] Mr Floyd submits that the “intended cutting edge” is no more than the edge along which it is intended to cut. If it is intended to cut along the whole of the (uncut) edge of the product, then that is the intended cutting edge. But if it is intended to cut only half way along the (uncut) edge, then that is the intended cutting edge. Mr Floyd also drew attention to claim 18 (an apparatus claim) in which it is claimed that the apparatus is so constructed that “the edges of the printed products are cut from one end to the other”
“[113] In my judgment the heart of the invention (and hence the inventive concept) is the separation of knife and counterknife: the one travelling with the printed product (but fixed relative to the printed product) and the other remaining fixed (in the sense I have described). This means that there can be many counterknives per knife (i.e. the knife and counterknife are not associated with each other “pairwise”). Of equal importance is the feature of the counterknife that it is (or is part of) the cell wall, and therefore also acts as a part of the clamp. The invention is limited to cutting products from end to end.”
“[41] Rösner dates from the mid-1970s. It describes a process for trimming paper stacks, principally book blocks, by one or more straight knives while the product is moving. This is achieved by trimming the book blocks by means of a cutting knife as the book blocks are moving, and by then pivoting the book blocks about 90°, again as they are moving, before they are trimmed further by another similar cutting knife. The blocks are held on a trolley or carriage. Rösner describes the cutting knife as follows: “One advantage is that the knife movement can be chosen at will, anything from a straight-line knife movement in a guide cam to a circular movement if the knife represents the coupling link between the cranks of a parallel crank drive fixed to the frame.” [42] The embodiments show both single knife cutting and also two knife cutting. It is the latter that is relevant for present purposes. As Rösner states: “The so-called bottom cutting tool which may be a bottom knife for shear-cutting or a cutter board for knife-edge cutting is more effective if fixed to the guiding arrangement although it can be in a fixed position in the machine’s cutting station.” [43] In the two-knife cutting, the cutting knife engages the cutting edge of the book block, and a shear cut is achieved against the edge of a counterknife, also associated with the cutting station. As Rösner states: “It goes without saying that the movement of the knife is synchronised with the movement of the carriage in such a way that the cutting procedure always takes place when the carriage has run into the guiding arrangements and the guiding arrangement briefly moves at the speed of the carriage for the duration of the cutting procedure.” [44] The upper, or cutting, knife moves, guided by a cam, so that it both follows the book block horizontally as it moves through the cutting station, and descends on the book block so as to cut it in cooperation with the lower knife. However, as Professor Lüthi demonstrated, when the cutting process takes place the book block (with the counter-knife attached) moves past the cutting knife, although not all the way past. “One advantage is that the knife movement can be chosen at will, anything from a straight-line knife movement in a guide cam to a circular movement if the knife represents the coupling link between the cranks of a parallel crank drive fixed to the frame.” “The so-called bottom cutting tool which may be a bottom knife for shear-cutting or a cutter board for knife-edge cutting is more effective if fixed to the guiding arrangement although it can be in a fixed position in the machine’s cutting station.” “It goes without saying that the movement of the knife is synchronised with the movement of the carriage in such a way that the cutting procedure always takes place when the carriage has run into the guiding arrangements and the guiding arrangement briefly moves at the speed of the carriage for the duration of the cutting procedure.”
“[105] As I have said, Professor Lüthi demonstrated that the book block and the lower knife moved part of the way past the upper knife. They did not move the whole of the way past. Rather the blade of the upper knife retracted, and then the book block moved on. In addition, the movement of the book block and the lower knife was the conveying process, rather than part of the cutting process itself. In other words the movement did not take place “in order” to bring the two knives into cutting engagement. In my judgment Rösner did not disclose this integer.”
“Just as with Müller Martini the counterknife here does not move with the paper throughout the conveying process. It is associated with a particular cutting station and it only moves briefly with the paper as it is brought into engagement with the cutting knife. So paper comes in, and just at the point where you are going to cut you introduce the counterknife, you slice through it, and it moves on, just as with Mueller Martini. That is why it is an important squeeze document. The only real difference from the Müller Martini system which can be identified is that the cutting knife in Rösner, although it is fixed to the cutting station, has an element of movement relative to the frame of the station. We have seen how it swings into the path of the paper as it moves through. In the specific embodiment of Rösner it is rotating about two fixed points.”