## Facts

- The dispute involved X–Y plotters that move a pen in the X-direction and paper in the Y-direction using pinch rollers to avoid paper slippage.
- Bausch & Lomb, Inc. (B&L) owned a reissue patent (Yeiser) describing high-friction pinch roller surfaces (e.g., knurling or rubber) to reduce slippage.
- Hewlett-Packard Co. (HP) owned a patent (LaBarre) claiming a pinch wheel surface with a “random pattern, size, and height of rough spots” created by silicon carbide grit.
- LaBarre’s grit increased friction and created small indentations in the paper that repeatedly engaged the grit during paper movement, producing a “positive drive” effect that further inhibited slippage.
- B&L made and sold grit-wheel plotters (through its Houston Instruments division) that HP alleged literally met LaBarre’s claim limitations.
- B&L later sold the Houston Instruments division to Ametek, Inc.; HP alleged B&L actively induced Ametek’s post-sale infringement.
- In the district court, B&L admitted its devices fell within the LaBarre claim language but argued the claims were invalid as obvious over Yeiser and other prior art.

## Issues

1. Whether HP’s LaBarre patent was invalid for obviousness under 35 U.S.C. § 103 in view of Yeiser and other prior art concerning high-friction pinch wheels.
2. Whether B&L actively induced infringement under 35 U.S.C. § 271(b) after selling its plotter business to Ametek, based on the sale transaction, related communications/support, and indemnification terms.

## Decision

- The Federal Circuit affirmed the judgment that the LaBarre patent was not proven obvious and therefore remained valid.
- The Federal Circuit affirmed the finding of literal infringement, which was effectively undisputed on appeal given B&L’s admission that its devices met the claim language.
- The Federal Circuit affirmed the finding of no post-sale inducement of infringement because the record supported the conclusion that B&L lacked specific intent to encourage Ametek’s infringement.

## Legal Principles

- Obviousness turns on what the prior art would have suggested to a person of ordinary skill, including whether there was a reason to modify or combine teachings; similarity of purpose does not alone establish obviousness when the claimed structure differs.
- A claim term describing a surface with a “random pattern, size, and height of rough spots” may function as a structural limitation when tied to disclosed physical features (grit) and their mechanical interaction with the workpiece.
- Patent invalidity must be proven by clear and convincing evidence; failure to show a persuasive motivation to replace or modify prior-art structures can defeat an obviousness challenge.
- Inducement under 35 U.S.C. § 271(b) requires purposeful, culpable conduct and specific intent to cause infringement; foreseeable infringement and ordinary commercial terms (including indemnification in a business sale) do not, without more, establish inducement.
- Appellate review of a district court’s intent findings relevant to inducement is deferential and will be upheld absent clear error.

## Conclusion

The Federal Circuit upheld the validity and infringement findings for HP’s grit-wheel plotter patent because the prior art did not render the claimed grit-based structure and its “positive drive” mechanism obvious, and it affirmed the rejection of post-sale inducement liability because HP did not prove B&L specifically intended to encourage the purchaser’s infringement.


Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990)