# Eastman Kodak Co. v. Agfa-Gevaert N.V.

> District Court, W.D. New York · April 22, 2008 · 560 F. Supp. 2d 227

URL: https://www.frixlaw.com/law-library/cases/1481983

## Case

- **Full name:** EASTMAN KODAK COMPANY, Plaintiff, v. AGFA-GEVAERT N v. and Agfa Corp., Defendants
- **Court:** District Court, W.D. New York
- **Decided:** April 22, 2008
- **Citations:** 560 F. Supp. 2d 227; 2008 U.S. Dist. LEXIS 34169; 2008 WL 1883900
- **Precedential status:** Published
- **Opinion:** Opinion by Telesca
- **Judges:** Michael A. Telesca
- **Cited by:** 5 later opinions in the Frix Law Library

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## Opinion text

DECISION and ORDER
MICHAEL A. TELESCA, District Judge.
By Order dated September 26, 2006, upon consent of the parties, I appointed Special Master Joseph W. Berenato, III, as a Special Trial Master in this matter for the purpose of conducting a bench trial and issuing a Report and Recommendation to the court as to how the issues of liability in this case should be resolved. From May 3 to May 11, 2007, Special Master Berenato conducted the bench trial of this matter, and on September 7, 2007, he issued a thorough, well-reasoned 122 page Report and Recommendation recommending that the court find: (1) that the defendants’ products Cronex 10TL and Orthovision G infringe plaintiffs U.S. Patents Nos. 4,425,425, 4,425,426, and 4,439,520; (2) that the remaining accused products do not infringe plaintiffs patents; (3) that the asserted claims of the plaintiffs patents are valid; (4) that the asserted claims of the plaintiffs patents are enforceable; (5) that the defendants’ infringement of plaintiffs patents was not willful, and (6) that plaintiff failed to provide defendant with notice of infringement with respect to Cro-nex 10TL prior to expiration of the patents in suit, and therefore, plaintiff is not entitled to damages for the infringement of those patents with respect to Cronex 10TL.
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On September 27, 2007, and October 2, 2007, respectively, Special Master Berena-to issued two additional Reports with respect to evidentiary issues and trial matters. Thereafter, in accordance with the court’s September 26, 2006 Order, the parties filed objections to the Special Master’s Reports.
Following a review of the record
de novo,
for the reasons set forth in Special Master Berenato’s September 7, 2007 Report and Recommendation, I adopt that Report and Recommendation in its entirety without modification. As an initial matter, I find no legal error in any aspect of the Special Master’s Report and Recommendation. The authority relied on by the Special Master is appropriate and controlling, and I find no error in the Special Master’s legal analysis or conclusions.
With respect to the Special Master’s development and discussion of the factual record in this matter, his analysis of the facts is so comprehensive and so complete, additional discussion of the factual issues would serve no fruitful purpose. In short, Special Master Berenato provided the court and the parties with an extensive and detailed explanation as to how and why he arrived at his recommendations. Because I agree in whole with his Report and Recommendation, I adopt his September 7, 2007 Report and Recommendation in its entirety, and make it a Final Order of this Court. With respect to the parties’ objections, I find that the issues raised in their objections were thoroughly explained by Special Master Berenato in his Report and Recommendation, and accordingly, I deny those objections without further comment. Finally, for the reasons stated in the Special Master’s September 27, 2007 and October 2, 2007 Reports, I adopt those Reports in their entirety.
ALL OF THE ABOVE IS SO ORDERED.
REPORT AND RECOMMENDATION
JOSEPH W. BERENATO, III, Special Master.
INTRODUCTION
Pursuant to the Court’s Order of September 26, 2006, the undersigned was appointed Special Master to issue a Report and Recommendation on the construction of the claims and, upon agreement of the parties, to issue a Report and Recommendation on the liability issues. The Report and Recommendation for Construction of Group I Patents was filed March 21, 2007. Trial was held May 3-11, 2007. Thereafter, the parties filed post-trial findings of fact and conclusions of law. The parties also submitted a list of exhibits as to which they agreed there were no objections to admissibility. Additionally, Defendants filed a post-trial motion seeking the admission of an exhibit to which Kodak had objected. A Report and Recommendation on that motion and the objected to exhibits is being separately filed.
Having heard the witnesses and considered the parties submissions, the following constitutes my Report and Recommendation regarding the ultimate issues of liability-
Background
As originally filed, this case involved alleged infringement by Defendants Agfa-Gevaert N.V. and Agfa Corporation (collectively “Agfa”) of seven patents owned by Plaintiff Eastman Kodak Company (“Kodak”). By stipulation of the parties, the so-called cross-over patents were eliminated from the case and trial proceeded based upon the T-grain patents. The T-grain patents are U.S. Patents Nos. 4,425,-425 (“the '425 patent”), 4,439,520 (“the '520 patent”), and 4,425,426 (“the '426 patent”). The '425 and '520 patents expired November 12, 2001 and the '426 patent
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expired September 30, 2002. Moreover, the '426 patent was the subject of a patent reexamination, Reexamination Control No. 90/001,255, filed June 8, 1987, by E.I. du Pont de Nemours & Company (“DuPont”), predecessor in interest to Defendants. As a result of the reexamination, no claims were canceled or amended although Kodak submitted affidavits and remarks distinguishing certain prior art.
Subsequent to the reexamination proceeding, DuPont spun-off its X-ray film business interests in 1996 as Sterling Diagnostic Imaging, Inc. (“Sterling”). In 1999, Agfa acquired Sterling and assumed Sterling’s patent infringement liabilities. Trial Tr. 669 (Verhoeven); TX 99 (Agfa Corp. Depo. Exh. 53 § 2.03). During its existence, Sterling manufactured X-ray film products at a plant in Brevard, North Carolina and sold such products in the United States. TX 823 (Response to Interrogatory No. 1 at 10), 28 (Agfa Corp. Depo. Exh. 48).
Kodak contends that claims 1-3, 5-9, and 19 of the '425 patent are infringed, that claims 1-5, 8-10, 13, 16, 19, 20, and 28 of the '520 patent are infringed, and that claims 1-8 of the '426 patent are infringed. Trial proceeded on the following products: Sterling Ultravision Ci, Sterling Ultravision L, Sterling Ultravision C, Agfa CP-BU, Agfa Ortho HT-G, Sterling Cronex 10T, Sterling Cronex 10TL, Sterling Or-thovision L, Sterling Orthovision G, DI Image Plus Green, and Agfa Ortho Opthos H.
1
Kodak asserts both literal infringement and infringement under the doctrine of equivalents. Defendants have denied infringement and have asserted the defenses of invalidity, non-infringement,
laches,
and unenforceability, and, with respect to Cronex 10TL, lack of notice under 35 U.S.C. § 287 . Kodak furthermore eon-tends that the infringement has been willful, which Defendants deny.
Notice as to Sterling Cronex 10TL
Kodak has accused both Cronex 10T and Cronex 10TL of infringing the '426 patent. Although denying that Cronex 10TL infringes, Defendants argue that they are not liable for any infringement because Kodak failed to mark its products with the patent numbers of the T-grain patents as required by 35 U.S.C. § 287 , that they did not receive notice of infringement by Cro-nex 10TL until after the T-grain patents had expired, and that consequently they cannot be hable for any infringement by that product.
Rite-Hite Corp. v. Kelley Co.,
56 F.3d 1538 , 1549 n. 8 (Fed.Cir.1995)
(en banc), cert. denied,
516 U.S. 867 , 116 S.Ct. 184 , 133 L.Ed.2d 122 (1995).
35 U.S.C. § 287 (a) provides generally that where the manufacturer or seller of a patented article fails to mark the article or its packaging with a notice that the item is patented, the patentee shall not be entitled to damages for infringement absent “proof that the infringer was notified of the infringement and continued to infringe thereafter .... ” The section further provides that where the patentee has not marked a patented article, damages for infringement are limited to the period following the date on which the infringer received actual notice of infringement. 35 U.S.C. § 287 (a).
There is no dispute that Kodak did not mark its X-ray products with a notice that they were patented under one or more of the patents in suit. Kodak has not disputed that for purposes of calculating damages, the damages period commenced when Agfa, or its predecessors in interest,
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received actual notice of alleged infringement of the patents in suit.
Kodak’s original Complaint alleged that Cronex 10T and a number of other Agfa film products infringed Kodak’s '426, '425, and/or '520 patents. Although various products were identified as infringing, the original Complaint did not identify Cronex 10TL as infringing. TX 1040 (¶ 16). It was not until October 24, 2004,
ie.,
after expiration of the T-grain patents, that Kodak supplemented its response to Agfa’s Interrogatory No. 5 and specifically accused Cronex 10TL of infringement. On July 13, 2005, Kodak filed an Amended Complaint and therein accused Cronex 10TL and other products of infringement. TX 1058.
In a Decision of July 2, 2004, this Court held that Kodak provided actual notice as to the Cronex 10T product in correspondence to DuPont dated September 7, 1995. The Court further held that the 1995 correspondence did not implicate any other accused product, with the possible exception of Cronex 10TL. The Court found that material disputes of fact regarding similarities between Cronex 10T and Cronex 10TL precluded grant of summary judgment on whether notice as to Cronex 10T was sufficient as to Cronex 10TL as well.
Kodak contends that notice it provided Sterling, Agfa’s predecessor in interest, in 1995 regarding infringement by Cronex 10T was sufficient to place Sterling and its assigns on notice that Cronex 10TL infringed the '426 patent. According to Kodak, Cronex 10TL is the latitude version of Cronex 10T and is thus a mere variation of Cronex 10T. Agfa denies that Cronex 10TL is a minor variation of Cronex 10T. Agfa asserts that the September 7, 1995 correspondence did not provide actual notice with respect to Cronex 10TL. According to Agfa, actual notice with respect to Cronex 10TL was not provided until after the T-grain patents had expired, and therefore 35 U.S.C. § 287 (a) precludes damages for any infringement by Cronex 10TL.
Cronex 10T is classified as a “gradient” film, whereas Cronex 10TL is classified as a “latitude” film. According to Agfa, it was well understood and widely recognized that gradient films were designed for applications requiring clear views of bone but offering little information for diagnostic purposes about the adjacent soft tissues, such as the lungs or mediastinum. TX 1342 (¶ 15); Trial Tr. at 682-83, 685-88, 691-93 (Hurwitz). Latitude films, on the other hand, were widely accepted as designed to capture images from a broader range of exposure levels than a gradient film,
e.g.,
Cronex 10T film. TX 1060 (¶ 32), 1120; Trial Tr. at 682-83, 685-88, 691-93 (Hurwitz), 841-42 (Hudson). The differences in sensitometric properties between the films led to the universally accepted use of the letter “L” in trade names such as Cronex 10TL to denominate latitude films. TX 1060 (¶¶ 34, 35).
By letter of September 7, 1995, Kodak notified DuPont that Cronex 10T infringed the '425 and '426 patents
2
, and attached a Cronex 10T brochure. TX 150. By letter of October 11, 1995 DuPont denied infringement and suggested a meeting to discuss the matter. TX 431. Kodak thereafter notified DuPont that it was willing to meet to discuss its infringement concerns. The parties met in November 1995 at DuPont’s facility in Brevard, North Carolina. Two participants at that meeting, Messrs. Hawley and Waaser, testified that only Cronex 10T was discussed at
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the Kodak/DuPont meeting and that Kodak never mentioned Cronex 10TL at the meeting or in any other communication with DuPont or DuPont’s successor Sterling. Trial Tr. at 514-15, 521-24, 555 (Hawley), 572-73, 576-77, 631 (Waaser).
Q. What technical data of films, other than Cronex 10T, was discussed at the meeting?
A. No technical data was discussed regarding other films.
Q. In fact, you said, Mr. Hawley, you were unaware of any technical data about any film other than Cronex 10T both in September and in November of 1995, correct?
A. Personally that’s correct.
Trial Tr. at 555 (Hawley).
Q. Now, either at the meeting or in this letter, did you provide any coding information or batch numbers for any product other than Cronex 10T?
A. No.
Trial Tr. at 584-85 (Waaser).
The parties agree that DuPont explained at the meeting that it was aware of the T-grain patents, that it designed and manufactured the products to avoid infringement, but that start-up issues at DuPont’s Brevard facility may have caused some out-of-specification product to be produced. DuPont assured Kodak that it had corrected the start-up issues and provided Kodak with production codes so that Kodak could acquire in the market Cronex 10T specimens, determine that their date of manufacture was after the meeting, and conclude that the product did not infringe the T-grain patents.
Kodak did acquire and test specimens of Cronex 10T after the November 1995 meeting. Kodak acquired and tested a sample of Cronex 10T in May 1996. There was no testimony about Kodak testing of Cronex 10TL for infringement of the T-grain patents as a result of the meeting. Kodak had in June 1995 tested Cronex 10TL and yet the September 1995 letter accused only Cronex 10T of infringement. TX 150, 1246, 1341 (¶ 214).
In an April 9, 2001 letter,
i.e.,
almost six years later, Kodak informed Agfa that it believed that Cronex 10T and ten other Agfa and former Sterling/DuPont products infringed at least one or more of Kodak’s '426, '425, and '520 patents. The April 9, 2001 letter identified eleven film products but made no reference to Cronex 10TL as an allegedly infringing product. TX 432, 1281; Trial Tr. at 641 (Verhoeven), 715-16 (Goedeweeck). The letter identified distinctly denominated products within the same product family,
e.g.,
Ultravision Ci, Ultravision L, and Ultravision C, and Or-thovision L and Orthovision G. Testimony at trial established that it was industry practice to designate latitude films with the letter “L”, so the 2001 letter makes clear that Kodak understood this practice and thus identified specific Ultravision and Orthovision products individually, and not generically by family.
“Actual notice requires the affirmative communication of a specific charge of infringement by a specific accused product or device.”
Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
24 F.3d 178, 187 (Fed.Cir.1994). Resolution of whether notice is sufficient requires a determination of whether “the recipient is informed of the identity of the patent and the activity that is believed to be an infringement.”
SRI Int’l v. Advanced Tech. Labs.,
127 F.3d 1462, 1470 (Fed.Cir.1997).
In
Gart v. Logitech, Inc.,
254 F.3d 1334 (Fed.Cir.2001),
cert. denied,
534 U.S. 1114 , 122 S.Ct. 921 , 151 L.Ed.2d 886 (2002), cited by both parties, the patentee Gart sent Logitech’s counsel a 1995 letter suggesting that Logitech’s counsel consider Gart’s patent to determine whether a license was needed with respect to TRACKMAN VISTA, a product of Logi-
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tech.
Gart,
254 F.3d at 1337 . In a 1996 letter patentee Gart cited its patent to Logitech as “particularly interesting relative to [Logitech’s] trackball product ... being sold under the trademark TRACK-MEN
[sic
— TRACKMAN] VISTA and TRACKMEN [sic — TRACKMAN] MARBLE.”
Id.
at 1338 . In a 1997 letter, Gart stated it was investigating infringement of “Vista and Marble Trackballs [sic ]” products.
Id.
Gart filed a complaint in 1998 for infringement by MOUSEMAN, MOUSEMAN+ , TRACKMAN VISTA, TRACKMAN MARBLE, TRACKMAN MARBLE+ , and TRACKMAN MARBLE FX.
Id.
The Federal Circuit in
Gart
found that the 1995 and 1996 letters provided actual notice as to TRACKMAN VISTA and TRACKMAN MARBLE, respectively.
Gart,
254 F.3d at 1346-47 . The Federal Circuit also found that notice was sufficient as to the MARBLE+ , and MARBLE FX products as of the 1996 letter, even though the 1996 letter only mentioned the TRACKMAN MARBLE product.
Id.
at 1347 . However, the letters did not serve as actual notice of infringement with respect to the MOUSEMAN and MOUSEMAN + products.
Id.
An examination of the predecessor and subsequent decisions does not reveal any further details concerning differences between the various products which might shed more light on the Federal Circuit’s holding.
See Tenneco Automotive Operating Co. v. Visteon Corp.,
375 F.Supp.2d 360, 365 (D.Del.2005) (citing
Gart).
The
Gart
decision has been construed by one district court as follows:
[T]he Court cannot accept Defendants’ reading of
Gart
to foreclose actual notice from ever applying to any infringing product that exhibits anything other than complete and total identity with one cited in the “notice” at issue. Although the Federal Circuit apparently did reject the appellant’s argument that certain allegedly similar (but distinctly denominated) devices were encompassed by the notice provided to the patentee, it did not provide an explanation in support of that holding, and the Court will not ascribe to that rejection a meaning not much as alluded to by the Federal Circuit. See
254 F.3d at 1346-47 .
Indeed, the Court notes that the Federal Circuit’s statement that “we hold that the district court erroneously found that neither the 1995 letter nor the 1996 letter effected actual notice under
section 287, at least as to
the products referenced in those letter[,]” suggests an openness to the possibility that certain products not particularly referenced in the subject communications
could be
held to fall within the charge of infringement levied in the communications. See
id. at 1346
(emphasis added).
Coca-Cola Co. v. Pepsico, Inc.,
2004 WL 4910334 n. 17, 2004 U.S. Dist. LEXIS 30375 n. 17 (N.D.Ga.2004).
The district court in
Coco-Cola Co.
applied what it termed an “intermediate standard” of actual notice:
[T]he requirement of notice of infringement directed towards a “specific accused product or device” is satisfied where the accused device is merely a modification or evolution of that referenced in the notice of infringement and fails to exhibit a substantial functional change from the device so referenced. Such a standard, in the view of the Court, pays due regard to the rights of accused infringers to have a sufficiently clear understanding of what “specific product” (as opposed to a “family” or “class” of products) is alleged to be infringing, while at the same time avoiding the imposition upon patentees of the burden of constantly evaluating each embodiment of a competitor’s product to determine whether a minute “tweak” in
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design mandates a supplemental notice of infringement.
Coca-Cola Co.,
2004 WL 4910384 , at *30, 204 U.S. Dist. LEXIS 30375 , at 93-94.
Physically, the imaging layers of the Cronex 10T and 10TL were formulated using different silver halide grains. TX 1341 (¶ 211); Trial Tr. at 839-43 (Hudson). From its inception, Cronex 10T had contained a single type — as opposed to a blend — of tabular grains in its imaging layers. Before 1997, Cronex 10T employed a Type 88 grain that had an average grain volume of about 0.24 cubic micron. In 1997, after the DuPont business had been spun off, Sterling began to manufacture a slightly modified version of Cro-nex 10T using Type 78 grains. TX 1341 (¶ 211); Trial Tr. at 839-43 (Hudson).
On the other hand, Cronex 10TL had always contained a blend of two different types of tabular grains. Between 1995 and early 1998, Cronex 10TL employed a blend of Type 79 (72% by weight) and Type 81 (28% by weight) grains. TX 1341 (¶ 211); Trial Tr. at 815, 839-43 (Hudson). This version of 10TL existing between 1995 and 1998 is referred to as “Cronex 10TL-old”. In 1998, the grains of Cronex 10TL were replaced with a blend of Type 79LCW and Type 80 grains. The replacement version of the 10TL existing from 1998 forward is referred to as “Cronex 10TL-new”. At no time did the Cronex 10T film contain any of the Type 79, 79LCW, 80, or 81 grains of Cronex 10TL. Cronex 10TL never contained the Type 88 or 78 grains of the Cronex 10T. TX 1341 (¶ 211); Trial Tr. at 839^3 (Hudson).
The lower concentration grains blended into the Cronex 10TL-old and Cronex 10TL-new emulsions were of different sizes than the grains of the Cronex 10T emulsion. The different size grains employed in the blends were added to adjust the contrast of the films. TX 832 (¶ 26); Trial Tr. 354 (Dillenbeck).
In addition to different grain types, the Type 78 grains of the Cronex 10T and the Type 79 grains of the Cronex 10TL were subjected to different emulsion precipitation procedures. TX 1136, 1341 (¶ 212); Trial Tr. 840-41 (Hudson).
The selection of different grain sizes and the different precipitation procedures between the Cronex 10T and Cronex 10TL are responsible for imparting different sensitometry properties to the respective products. TX 1341 (¶¶ 210-222), 1342 (¶¶ 8-23); Trial Tr. at 570-72 (Waaser), 681-83, 692-93 (Hurwitz), 839-43 (Hudson). Radiographic films have three primary photographic properties which are utilized by a radiologist: speed, contrast, and maximum density. TX 1342 (¶ 21). Cronex 10T and Cronex 10TL differed from one another with respect to their contrast and maximum density functionalities.
The following table illustrates some of the different properties between Cronex T, Cronex 10TL-old containing Type 79 and 81 grains, and Cronex 10TL-new containing Type 79LCW and 80 grains:
[[Image here]]
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TX 1060 (¶ 31).
See also
TX 1120, 1341 (¶ 213); Trial Tr. at 841-42 (Hudson).
Cronex 10T demonstrated a higher contrast and top density (maximum density or Dmax) than the Cronex 10TL product. Contrast describes the relative difference between light and dark areas of developed film. A high contrast film demonstrates sharp differences between the light and dark areas, whereas a low contrast film demonstrates subtle differences between the light and dark areas. The top density indicates the maximum darkness of the film. The toe gradient indicates the contrast achievable by the film at low areas of exposure. The middle gradient indicates the contrast achievable by the film at intermediate areas of exposure. The upper gradient indicates the contrast achievable by the film at areas of high exposure. TX 1120, 1341 (¶ 213), 1060 (¶ 32); Trial Tr. at 841-42 (Hudson).
Kodak’s data shows substantial functional differences between Cronex 10T and Cronex 10TL. In June 1995, Kodak conducted photographic performance testing on both Cronex 10T and Cronex 10TL. TX 1246, 1341 (¶ 214). The data shows that the gradient measurements for Cronex 10TL were less at the lower, average and upper points, as compared to Cronex 10T, regardless of the screen used to expose the film. In January 2002, Kodak again studied the photographic properties of Cronex 10T and Cronex 10TL and again found photographic differences between the two films. TX 463, 1246, 1291, 1341 (¶ 214).
The functional differences between Cro-nex 10T and Cronex 10TL were also reflected in how Agfa and its predecessors sold and marketed the products. Cronex 10T and 10TL were sold and marketed concurrently with one another for different intended applications. TX 1341 (¶ 211); Trial Tr. at 838 (Hudson). DuPont and Sterling listed Cronex 10T and Cronex 10TL separately in their price catalogues, and DuPont and Sterling described Cronex 10T as a “high contrast” film and Cronex 10TL as a “medium latitude” film. TX 1259. DuPont, Sterling, and subsequently Agfa represented to the end user that Cronex 10T and Cronex 10TL were different products marketed for different uses based on different film properties. TX 1342 (¶ 17). Agfa markets the high contrast Cronex 10T film for applications requiring imaging of minute differences in bone structure. The lower values for the Cronex 10TL film illustrates much broader exposure latitude and is marketed for imaging the fine and dense tissues in the patient’s chest region, such as lung and heart tissues. TX 1060 (¶ 32), 1120; Trial Tr. at 682-83, 685-88, 691-93 (Hurwitz), 841-42 (Hudson).
Dr. Robert Hurwitz, a diagnostic radiologist, testified that these products have been received and applied differently by radiologists. Latitude films such as Cro-nex 10TL provide less information about bone detail but significant diagnostic information about the adjacent soft tissues, such as the chest and abdomen, where a wide range of soft tissues and bones are encountered including the lungs, mediasti-num, ribs and spine. TX 1342 (¶ 16); Trial Tr. at 682-83, 685-88, 691-93 (Hurwitz).
The testimony of Dr. Hurwitz demonstrated that radiologists appreciated the substantially different functionalities between Cronex 10T and Cronex 10TL, and that radiologists selected between these products based on how these substantial functional differences fulfilled different end user needs. Dr. Hurwitz testified a radiologist would not consider the films to be interchangeable variations of one another.
Q. And is it true that in Dr. Dillen-beck’s report he gave the opinion that
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Cronex 10TL is merely a variation of Cronex 10T?
A. He so stated.
Q. And, Doctor, from your view point as an end user as a radiologist, do you agree with Mr. Dillenbeck’s evaluation that Cronex 10TL is merely a variation of Cronex 10T?
A. I do not.
Q. And why is that?
A. Because they are two different films for two different purposes.
Q. And, Doctor, as a radiologist do you believe that these films are interchangeable?
A. I do not.
Trial Tr. at 693 (Hurwitz).
See also
TX 1342 (¶ 22); Trial Tr. at 682-83, 685-88, 691-93 (Hurwitz).
Kodak argues that DuPont and Sterling considered Cronex 10T and Cronex 10TL to be “sister products” and part of the same “Cronex 10T family.” TX 153, 158; Trial Tr. 571 (Waaser), 1085-86 (Hudson), at 842 (Hudson); Depo. Desig. Tab 38 (10/14/05 Russell) at 168. This argument is not persuasive because had Kodak intended to make specific charges of infringement in 1995 against products other than Cronex 10T, it could have done so, just as it did in April 2001 when it charged several specific Agfa products by name with infringement. In the alternative, Kodak could have notified DuPont that the family of Cronex products violated its patents, as it did with Agfa in February 2001, when it notified Agfa that its “thoracic imaging products” violated Kodak’s crossover patents.
Kodak argues that notice as to Cronex 10T constituted notice with respect to Cro-nex 10TL because of some shared characteristics and processing attributes of the films. Mr. Dillenbeck identified various characteristics and processing attributes for Cronex 10T and Cronex 10TL in advertising brochures that were identically or similarly worded. This argument is not persuasive because Cronex 10T and 10TL also share many identical or similar characteristics and processing attributes to Sterling products which did not use tabular grain emulsions, such as Cronex 10S. TX 125, 126, 140, 141, 1085, 1086, 1099, 1127, 1128, 1341 (¶ 217); Trial Tr. at 438-42 (Dillenbeck).
Kodak further argues that its November 10,1995 letter to DuPont (TX 457) expanded notice of infringement beyond the Cronex 10T product. That letter made reference to technical discussions pertaining to “tabular grains in DuPont X-ray film.” The November 10, 1995 letter established a confidentiality agreement between Kodak and DuPont that was to apply at the November 1995 meeting.
Q. Well, what other portion of the document mentions any other specific DuPont film that Kodak believed was infringing the '426, '425 or '520 patents that are at issue in this case?
MR. FLETCHER: Objection to the extent it goes to attorney/client privilege as to what Kodak was thinking.
A. The only film specifically mentioned is Cronex 10T.
Q. Nothing else in the letter that would provide DuPont with infringement notice other than the product of Cronex 10T, correct?
A. That’s correct.
Trial Tr. at 514-15 (Hawley).
This Court has already held that:
the November 10, 1995 correspondence that Kodak contends is a notice of infringement was nothing more than a letter confirming a meeting to discuss the alleged infringement of Cronex 10T on Kodak’s '425 and '426 patents. The
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November 10, 1995 letter itself does not charge infringement by any product of any patent, but merely confirms that the parties will meet to discuss “technical data pertaining to tabular grains in DuPont X-ray film and claims in Kodak’s ['425 and '426] patents .... ” The fact that the parties were meeting to discuss DuPont technology in light of Kodak’s intellectual property does not demonstrate that Kodak had put DuPont on notice that all of its T-grain films infringed Kodak’s patents.
Moreover, considering the November 10, 1995 correspondence in conjunction with the September 7, 1995 correspondence, as Kodak urges, only supports Agfa’s contention that DuPont received notice of infringement with respect to only its Cronex 10T product. The September 1995 correspondence from Kodak to DuPont, and DuPont’s October, 1995 response discuss only the Cronex 10T product. Accordingly, there is no reason to believe that Kodak’s November 10, 1995 confirmatory letter was intended to expand the scope of the products at issue, given that the parties had engaged in discussions related only to the Cronex 10T film. The fact that Kodak chose to use a generic term in one confirmatory letter can not operate to transform a specific charge of infringement relating to a single product into a significantly broader charge directed at any product that may fit within that generic term.
Decision of July 2, 2004.
Rather than expanding the scope of notice from its September 1995 letter, the November 10, 1995 letter set forth an understanding that discussions at the meeting would be confidential. Even accepting,
arguendo,
that the November 10, 1995 letter expanded confidentiality to products other than Cronex 10T, an agreement to maintain communications confidential does not necessarily convey that all products discussed at the meeting were accused of infringement. It also bears mentioning that the confidential information exchanged at the November 1995 meeting was limited to Cronex 10T. Trial Tr. at 555 (Hawley), 584-85 (Waaser).
Considering the substantial differences between the products, the industry practice of separately designating products, Kodak’s own letter of 2001 separately identifying specific products within families of products, and the other reasons discussed above, it is my recommendation that notice as to Cronex 10T did not constitute notice of infringement as to Cronex 10TL.
Defendants’ Laches Defense
Defendants have asserted as a defense that Kodak delayed unnecessarily in bringing suit, so that the equitable defense of
laches
may be invoked. Establishing
laches
does not normally preclude suit, but simply limits the period for which damages may be recovered.
Laches
is a judicially recognized defense to a suit for patent infringement, and Kodak’s claim for damages arising prior to suit may be barred should Defendants establish entitlement to the defense.
See A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
960 F.2d 1020, 1028 (Fed.Cir.1992)
(en banc).
Defendants allege that (1) Kodak delayed filing suit for an unreasonable and inexcusable length of time from the time that Kodak knew or reasonably should have known of its claims against Defendants; and (2) Kodak’s delay operated to the prejudice or injury of Defendants. A.C
. Aukerman Co.,
960 F.2d at 1032 ;
Costello v. United States,
365 U.S. 265, 282 , 81 S.Ct. 534 , 5 L.Ed.2d 551 (1961).
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A delay of six years in filing suit from the time the plaintiff knew or should have known of its claims creates a presumption of
laches. A.C. Aukerman Co.,
960 F.2d at 1035-36 . The parties dispute whether a period of six years passed since Kodak knew or should have known of its claims of infringement.
The following is generally undisputed. Kodak sent a September 1995 letter to DuPont (predecessor to Defendants) asserting that DuPont’s Cronex 10T product infringed the '425 and '426 patents. TX 150. After an exchange of correspondence between Kodak and DuPont, a meeting took place in North Carolina on November 18, 1995. TX 828 (¶ 3); Trial Tr. 502 (Hawley). DuPont claimed that it was experiencing start-up difficulties at its then new Brevard facility which may have resulted in a production run tested by Kodak that was out of specification. TX 1046; Trial Tr. at 504, 526-27, 557 (Hawley), 574-78, 581-82 (Waaser), 858-62 (Hudson); Dep. Tr. of Apple 1/29/04 at 25-30, Dep. Tr. of Guy 2/6/04 at 107-109, Dep. Tr. of Braitsch 9/9/04 (30(b)(6)) at 38-40.
The meeting concluded by DuPont assuring Kodak that DuPont intended to operate comfortably outside the claims of the T-grain patents, and that any excursions due to “start-up” problems were “fixed.” TX 828 (¶ 4); Trial Tr. 508-09 (Hawley); Depo. Desig. Tab 2 (Apple) at 220. Consistent with the representations at the meeting, DuPont agreed to provide Kodak with film codes for Cronex 10T film produced after the start-up issues at its Bre-vard facility had been corrected so that Kodak could test to assure that DuPont’s assertions of non-infringement were correct. TX 1046; Trial Tr. at 160 (Van Dam), 529-530, 552-553 (Hawley), 581 (Waaser), 858-62 (Hudson).
DuPont provided the promised product codes to Kodak in November 1995. DuPont advised Kodak that: “Further, we understand that Kodak will purchase publicly available Cronex 10T with an emulsion number of 578-511x-0161, or later, to confirm that the product is not covered by either of the above identified patents. We assume that once Kodak is satisfied that our product is not covered by either patent, Kodak will drop its charge of infringement.” TX 433, 1256; Trial Tr. at 557 (Hawley), 584-85 (Waaser).
In May 1996, Kodak performed grain size measurements on a sample of Cronex 10T that had been made after the batch identified in DuPont’s letter of November 29, 1995. Kodak thereafter analyzed the data from those measurements to compare Cronex 10T to the patent claims. Kodak did not notify DuPont or Sterling of any allegations of infringement as a result of this testing. TX 391, 1258, 828 (¶ 7), 1049 (¶ 7); Trial Tr. at 561 (Hawley), 587 (Waaser); Dep. Tr. of Braitsch 9/9/04 (30(b)(6)) at 39-80.
Q. And did Kodak, in fact, analyze a subsequent batch after the 1995 discussions between DuPont and Kodak regarding the alleged infringement by Cronex 10T?
A. Kodak did analyze a subsequent batch.
Dep. Tr. of Braitsch 9/9/04 (30(b)(6)) at 39.
Q. Did the business at Eastman Kodak responsible for making the decision in 1996 whether to sue DuPont over the alleged infringement of Cronex 10T have the subsequent analysis in 1996 of Cro-nex 10T?
MR. NOTO: Objection to form.
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A. I can’t personally say that they had that information. I was told that they had that information.
Dep. Tr. of Braitsch 9/9/04 (30(b)(6)) at 41.
The grain thicknesses, average aspect ratio, individual projected area and percent total projected area for the Cronex 10T product (578 6011 0070 01) analyzed in 1996 were calculated by Agfa based on Kodak’s data contained in TX 1258. The percent total projected area was calculated from the sum of the projected areas of tabular grains having a thickness of less than 0.2 micron divided by the sum of the projected areas of all grains measured. From Kodak’s data, the average aspect ratio of this subset of grains was 7.04 for those grains having a thickness of less than 0.2 micron and the percent total projected area was 21.10 percent. TX 1060 (i 22). Defendants have represented that these 1996 measurements resulted in at least 50 percent of the total projected area being provided by grains having a thickness of 0.233 micron or less, with the grains having an average aspect ratio of 6.30:1. TX 1060 (¶ 24).
Kodak asserts infringement under the doctrine of equivalents for various products where grains of up to 0.246 micron are included to reach the claimed limitation of at least 50% of total projected area. Other products having an average aspect ratio as low as 4.4:1 are also alleged to infringe Kodak’s T-grain patents under the doctrine of equivalents. The calculation for the 1996 Cronex 10T film sample falls within the thickness and aspect ratiorang-es claimed by Kodak to infringe claim 1 of the '426 patent under equivalency. TX 832(¶ 14). Indeed, Kodak has not denied that its claim scope under the doctrine of equivalents encompasses the 1996 Cronex 10T film.
See
TX 1053 (No. 219).
A period of more than six years elapsed between Kodak’s May 1996 testing of the Cronex 10T product and the filing of this action on October 31, 2002. The breadth of the claim scope for which Kodak alleges infringement under the doctrine of equivalents is sufficiently broad to cover the Cro-nex 10T tested more than six years before suit was filed. Defendants have therefore demonstrated that, with respect to Cronex 10T, there was a delay of at least six years in filing suit from the time that Kodak knew or should have known of its claim against Cronex 10T. Accordingly, a presumption of
laches
applies against Kodak with respect to Cronex 10T.
An effect of this presumption is to shift the burden onto Kodak to come forward with sufficient evidence to raise a genuine factual issue regarding the reasonableness of the delay or the absence of prejudice.
A.C. Aukerman Co.,
960 F.2d at 1037-39 . The presumption is of the “double bursting bubble” type in the sense that if Kodak raises a genuine issue of fact with regard to either element, then Agfa must carry the burden of persuasion and affirmatively prove both elements in order to prevail on the defense of
laches. Hemstreet v. Computer Entry Sys. Corp.,
972 F.2d 1290, 1293 (Fed.Cir.1992). As explained below, Kodak has demonstrated sufficient excuse for its delay to rebut the presumption. Agfa, on the other hand, has not carried its burden of persuasion sufficient to establish entitlement to the defense.
Following the November 1995 meeting and its subsequent testing, Kodak made no further allegations of infringement of the T-grain patents to DuPont or its immediate successor Sterling. Trial Tr. at 561 (Hawley), 587, 596 (Waaser), 639 (Verhoeven); Dep. Tr. of Braitsch 9/9/04
*246
(30(b)(6)) at 166-83. The evidence indicates that Kodak’s testing of the 1996 Cronex 10T film in May of 1996 may have provided Kodak with sufficient information to form at least a preliminary opinion that the tested batch of film infringed Kodak’s patents under Kodak’s interpretation of its claims under the doctrine of equivalents. Kodak had accepted DuPont’s explanation and assurances made during the November 1995 meeting. TX 828 (03/02/04 Haw-ley declaration, ¶ 8); Trial Tr. 509 (Haw-ley). However, Kodak relied on DuPont’s representations and assurances that it would permanently fix the manufacturing problems. TX 828 (03/02/04 Hawley declaration ¶ 8); Trial Tr. 509 (Hawley). Kodak’s reliance was not unjustified. Kodak believed DuPont to be a very reputable company. Indeed, the initial samples tested supported DuPont’s representations that the start-up problems had been resolved.
Kodak monitored the Cronex 10T film through at least 1998. TX 469,1261; Trial Tr. at 160 (Van Dam); Dep. Tr. of Braitsch 9/9/04 (30(b)(6)) at 132-33, 149. In 1998, Kodak again analyzed a Cronex 10T product sample for grain sizes. TX 1261. As explained by David Braitsch, Kodak’s Intellectual Property Manager for research and development at the time, routine benchmark testing at Kodak in mid-1998 revealed a decrease in silver content in film manufactured by Sterling. TX 829 (03/03/04 Braitsch declaration ¶ 5); Agfa Depo. Desig. Tab 4 (09/09/04 Braitsch) at 31-32. The testing served to arouse Kodak’s concerns.
Once Kodak’s concerns were aroused, it investigated the Cronex 10T product and then expanded that investigation. It would seem that Kodak acted reasonably in investigating other products once its concerns about Cronex 10T were aroused.
3
While Kodak could have notified Sterling at the time about the product it then examined, it may well have believed another “manufacturing” issue had arisen. Agfa Depo. Desig. Tab 4 (09/09/04 Braitsch) at 117. Further, Kodak’s individual grain-by-grain thickness analysis of the medical imaging film manufactured by Sterling was necessary for determining infringement under the Kodak T-grain patents. TX 829 (03/03/04 Braitsch declaration ¶ 5). Testing of the other products in suit extended the amount of time required for Kodak to complete its investigation. It was reasonable for Kodak to carry out these tests and, as both parties have attested to, the shadowed electron microscopy technique is time consuming. Trial Tr. 1178 (Liggero) (process is “labor intensive”); Agfa Depo. Desig. Tab 4 (09/09/04 Braitsch) at 136-37. It was also reasonable for Kodak to seek advice of legal counsel before making accusations of infringement against Agfa. Kodak took the time reasonable under the circumstances to review, analyze, and evaluate the Sterling and Agfa T-grain film products in depth before notifying Agfa of its claims for infringement.
Agfa’s actions also demonstrate the time commitment involved in conducting an infringement analysis of the T-grain patents. After Kodak sent Agfa a letter regarding infringement of the T-grain patents in April 2001 (less than six years after its original September 1995 notice letter to DuPont regarding Cronex 10T), Agfa by its own admission required a relatively
*247
long time to conduct internal discussions regarding the patent infringement allegations due to the complexities of the issues, the need for product testing, collecting of relevant information, and subsequent technical and legal analysis. Trial Tr. 750 (Goedeweeck). It initially took Agfa almost three months to respond to Kodak’s letter regarding the T-grain patents. TX 352; Trial Tr. 749 (Goedeweeck). Agfa continued to request further delays before substantively responding, arguing that it was “premature” to have further discussions in July 2001. Trial Tr. 758 (Goedeweeck).
See also
TX 241.
Kodak first informed Defendants that it believed that Sterling Ultravision Ci, Sterling Ultravision L, Sterling Ultravision C, Agfa Cronex 5, Agfa B Plus, Agfa CP-BU, Agfa Ortho HT-G, Sterling Cronex 10T, Sterling Orthovision L, Sterling Orthovision G, and Agfa Ortho Opthos H infringed at least one or more of the T-grain patents in an April 9, 2001 letter. TX 432, 1281. In response to Kodak’s April 2001 infringement allegations, Defendants informed Kodak that, according to their assessment, none of the products or emulsions were covered by any of the three patents. TX 352, 1282; Trial Tr. at 720-23 (Goedeweeck). As described above, it took Defendants several months to complete their assessment. On September 6, 2001, Agfa and Kodak exchanged technical data on Opthos H, one of the accused products. TX 458,1165, 1284; Trial Tr. at 726-29 (Goedeweeck).
On October 29, 2001, Kodak terminated discussions with Defendants. Despite a tradition of handling disputes outside of court, Kodak did not contact Defendants again until over a year later when Kodak filed suit. TX 376, 1288; Trial Tr. at 734-36 (Goedeweeck).
While Kodak conceivably could have proceeded more expeditiously after its concerns were aroused, Defendants suggested a product-by-product evaluation during which the parties could air their positions. Hence, Agfa itself was proposing a protracted process to resolve matters. When the 2001 discussions ended, Kodak proceeded to engage counsel and prepare for litigation. Hence, it appears that Defendants seek the benefit of the failed discussions and their own delay, while faulting Kodak for not initially suing in 1996, shortly thereafter, or prior to sending its 2001 letter.
Furthermore, this suit involves products other than those produced by DuPont/Sterling. Various Agfa products have been accused of infringement. In short, Agfa would seem to be seeking a piecemeal litigation process which would be overly complicated by requiring that each product’s initial awareness by Kodak be investigated. There is no suggestion that Kodak had significant information about products other than Cronex 10T in 1996, at least not information sufficient to formulate an accusation of infringement against those other products. If Agfa were to have its way, Kodak would be required to file an infringement action after it learned of infringement by any one Agfa product, and to thereafter supplement its complaint every time Kodak initially became aware that an accused product infringes a T-grain patent. This would lead to piecemeal litigation, repetitious discovery and motion practices, and other complications.
Moreover, Agfa has not established prejudice or injury. Prejudice can be evidentiary or economic.
A.C. Aukerman,
960 F.2d at 1034 . While Agfa established that certain participants at the 1995 meet
*248
ing had in the interim died, it did not establish any meaningful evidentiary prejudice as a result because other participants either testified or gave depositions. Although Dr. Verhoeven, Chairman of Agfa’s Board of Directors, testified that the Sterling acquisition either would not have gone forward or would have been structured differently had he been aware of the infringement issue, he was aware of the issue because the 1995 letter was produced during due diligence in the course of the Sterling acquisition. Despite that, he did not investigate the matter further. Hence, Agfa has not demonstrated any meaningful economic prejudice in its acquisition of Sterling. Additionally, the products in suit involve also Agfa products and not just products produced by Sterling.
Finally,
laches
is an equitable remedy. A
luches
defense may be defeated if the plaintiff can show that the defendant “has engaged in particularly egregious conduct which would change the equities significantly in plaintiffs favor.”
Id.
at 1033 . While the claims contain limitations other than mere grain thickness, DuPont and Sterling never informed Kodak at or after the 1995 meeting of the to shift to a thinner grain.
Potash Co. of Am. v. Int’l Minerals & Chem. Corp.,
213 F.2d 153, 155 (10th Cir.1954) (if “the party which advances the defense of
laches
is responsible for the delay or contributes substantially to it he cannot take advantage of it. Then, too, if material facts are concealed or misrepresented by a suspected wrongdoer, and if in reliance thereon the person wronged is deceived and his suspicions are allayed for awhile, a court of equity will not grant the wrongdoer any advantage resulting from the elapse of time”).
The absence of an opinion of counsel is a factor to be considered in determining the appropriateness of
laches. Bound v. Spencer Gifts, Inc.,
1996 WL 556657 , 1996 U.S. Dist. LEXIS 14325 (E.D.Pa.1996) (“a defendant’s failure to make a reasonable inquiry regarding patent validity after being apprised of its existence is a factor to be considered” in determining whether the conduct was egregious to defeat a
laches
defense);
Cover v. Hydramatic Packing Co.,
34 U.S.P.Q.2d 1128 (E.D.Pa.1994) (defendant found to have engaged in egregious conduct by continuing to manufacture a product after receiving an infringement notice and without conducting a reasonable inquiry into the validity of the patents). Dr. Verhoeven testified that the 1995 notice letter from Kodak to DuPont was produced during the due diligence phase of Agfa’s acquisition of Sterling, which had by then been spun-off from DuPont. Trial. Tr. at 641. Although he testified that he had assumed the matter concluded by the time of the acquisition, he did not testify to having received any advice from U.S. counsel on the matter. Trial. Tr. at 644. To the extent that the equities were not already balanced in Kodak’s favor by the time required to investigate the various products and the lack of prejudice, Defendants’ failure to obtain legal counsel and their silence concerning the product changes shift the equities in Kodak’s favor.
In view of the above, it is recommended that Defendants have not established entitlement to the defense of
laches.
Defendants’ Invalidity Challenges
As in essentially every patent case, the accused infringers assert that the allegedly infringed claims are invalid in view of prior art.
4
As the party asserting
*249
invalidity, Defendants* burden is one of clear and convincing evidence. 35 U.S.C. § 282 . “A patent issued from the United States Patent and Trademark Office (PTO) bears the presumption of validity under 35 U.S.C. § 282 . An accused infringer, therefore, must prove patent invalidity under the clear and convincing evidentiary standard.”
Metabolite Labs., Inc. v. Laoratory. Corp. of Am. Holdings,
370 F.3d 1354, 1365 (Fed.Cir.2004), cert.
denied,
548 U.S. 926 , 126 S.Ct. 2976 , 165 L.Ed.2d 990 (2006). Moreover, it is “especially difficult” to satisfy the burden of proving invalidity when prior art cited in litigation was previously considered by the PTO during prosecution.
Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
909 F.2d 1464, 1467 (Fed.Cir.1990).
Prior art may render claims invalid as “anticipated” under 35 U.S.C. § 102 or as “obvious” under 35 U.S.C. § 103 . Anticipation requires that each and every element of the claimed invention be disclosed in a single prior art reference.
In re Paulsen,
30 F.3d 1475, 1478-79 (Fed.Cir.1994). Obviousness requires that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103 . “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”
KSR Int’l Co. v. Teleflex Inc.,
- U.S. -, 127 S.Ct. 1727, 1741 , 167 L.Ed.2d 705 (2007). “[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”
KSR,
127 S.Ct. at 1741 .
Kodak sold a commercial X-ray film product containing chemically sensitized, tabular grain emulsions since the 1930’s.
From 1937 until the 1950’s the Eastman Kodak Company sold a Duplitized® ra-diographic film product under the name No-Screen X-Ray Code 5133. The product contained as coatings on opposite major faces of a film support sulfur sensitized silver bromide emulsions. Since the emulsions were intended to be exposed by X-radiation, they were not spectrally sensitized. The tabular grains had an average aspect ratio in the intermediate range of from about 5 to 7:1. The tabular grains accounted for greater than 50% of the projected area while nontabular grains accounted for greater than 25% of the projected area.
TX 312 ('520 patent, col. 8,
l.
66, to col. 9,
l.
15); TX 320 ('425 patent, col. 1,
l.
62, to col. 2,
l.
12); TX 313 ('426 patent, col. 1,
l.
62, to col. 2,
l.
13); Trial Tr. at 1101 (Liggero).
One cannot conclude from the foregoing statement that the No-Screen X-Ray Code 5133 emulsions met the grain structure and other parameters of either the intermediate or the high aspect ratio claims. TX 835 (10/26/06 Marchetti report, ¶ 36); Trial Tr. 1147 (Liggero) (none of the claims of the patents in suit call for an emulsion with an average grain thickness of 0.36 micron which is a characteristic of No-Screen according to the T-grain patents).
Further, No-Screen was not spectrally sensitized. TX 835 (10/26/06 Marchetti report, ¶ 37).
See also
Trial Tr. 1146 (Ligge-ro). Nothing about No-Screen would have prompted or encouraged a person skilled in the art to investigate spectral sensitization of tabular grains. TX 835 (10/26/06
*250
Marchetti report, ¶ 37). As the above text indicates, No-Screen was not spectrally sensitized because it was intended to be exposed to X-ray-radiation (not to light from intensifying screens, as is the case for the films at issue in this litigation).
Id;
Trial Tr. 1146 (Liggero).
Moreover, Kodak specifically referred to the No-Screen product in the patent applications and brought the product to the attention of the patent examiner in an Information Disclosure Statement. TX 1009 (at EK027144). It is “especially difficult” to satisfy the burden of proving invalidity when prior art cited in litigation was previously considered by the PTO during prosecution.
Hewlett-Packard,
909 F.2d at 1467 .
C. Mees & T. James,
The Theory of the Photographic Process
(3d ed.1966), Figure 2.6 (“Mees and James”) is widely accepted as the authoritative work of the photographic sciences. “The Mees and James book ... is widely read and in many ways the Bible of photographic science.” TX 1025; Trial Tr. at 1108, 1111 (Liggero).
Mees
&
James Fig. 2.6 is described as showing “[p]reshadowed carbon replicas of grains of a high-speed negative-type emulsion.” TX 846 (Mees & James at 37). It is a single-field image. TX 835 (10/26/06 Marchetti report, ¶ 38). The text referring to this Figure states that “[t]he grains of commercial emulsions (Figs. 2.5 and 2.6) are rarely larger than 5 jjl; a more normal upper limit for very fast emulsions is half that value.” TX 846 (Mees & James at 36).
Using the disclosed shadow angle of 11 degrees and ignoring sampling and measurement error, Agfa’s expert Dr. Liggero measured 42 grains in Figure 2.6 and concluded that the depicted emulsion contains tabular grains of less than 0.3 micron in thickness and at least 0.6 micron in diameter that account for about 89 percent of the total projected area and have an average aspect ratio of about 11.5:1. TX 1025A, 1169; Trial Tr. at 1110-11 (Liggero).
Dr. Liggero’s measurement protocol and the photograph of Figure 2.6 of Mees & James are not sufficiently reliable as to constitute clear and convincing evidence of invalidity.
First, the number of grains measured by Dr. Liggero is insufficient to clearly and convincingly constitute a reliable sampling population for determining whether the Mees and James emulsion has a high aspect ratio as required by the '425 and '520 patents or an intermediate aspect ratio as defined by the '426 patent. According to a document generated by an Agfa affiliate in 1987, only 30 of the grains in this image can be measured. TX 76 (“The micrograph ... has several crystals that cannot be measured because they overlap leaving 30 crystals in the field”); Trial Tr. at 1149-50 (Liggero). Despite that, Dr. Liggero testified that he was able to measure as many as 42 grains. Trial Tr. at 1110 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 164. Dr. Liggero himself stated, however, that 42 grains is an insufficient number of grains from which to draw a conclusion about whether the emulsion falls within the literal scope of any of the T-grain patents. Trial Tr. 1110,1150,1200 (Liggero) (“To draw rigorous scientifically accurate conclusions, one would need more than 30 or 42 samples .... ”).
Second, the quality of the photograph in Mees and James draws Dr. Liggero’s measurements into question. According to Dr. Liggero, to “draw rigorous scientifically accurate conclusions, ... one would want the original and standard TEM.” Trial Tr. 1200. Dr. Liggero also testified that he was not sure whether the image some
*251
how had been changed from the original as a result of its being reproduced
for
bookmaking purposes. Trial. Tr. 1198. Dr. Liggero indicated that his measurements from the textbook were sure to include distortion error. Trial Tr. 1111.
Third, Dr. Liggero’s conclusions that the emulsion shown in Figure 2.6 of the Mees and James reference was chemically and spectrally sensitized were based on text that the emulsion was a commercial emulsion. Dr. Liggero stated that the emulsion was “most likely optimally chemically and spectrally sensitized.” Trial Tr. at 1108— 11 (Liggero). This testimony concerning “likely” optimum sensitization does not rise to the level of confidence necessary for satisfying a clear and convincing burden. Recall that No-Screen, a tabular grain product, was commercially available and yet was not spectrally sensitized.
Kodak’s expert witness Dr. Marchetti asserted that Mees
&
James Fig. 2.6 does not teach anything about sensitization of T-grains. TX 835 (10/26/06 Marchetti report, ¶ 40). Kodak represented during the reexamination proceedings that the emulsion shown in Mees
&
James Fig. 2.6 was a research emulsion and was not spectrally sensitized. TX 423 (affidavit submitted by Kodak in the '426 reexamination). Dr. Liggero stated that he had no reason to doubt the accuracy of Kodak’s statements. Trial Tr. 1187-88 (“I have no reason to believe that Kodak’s statement to the Patent Office in the '426 re-exam wasn’t accurate.”).
Finally, the '426 patent was subjected to reexamination by the PTO. Mees & James Fig. 2.6 was before the PTO in the Reexamination of the '426 patent. Trial Tr. 1147-48; Depo. Desig. Tab 31 (02/13/07 Liggero) at 142. The statutory “presumption [of validity] is fortified to the extent that there has been a reexamination of the patent by the Patent and Trademark Office.”
CVI/Beta Ventures, Inc. v. Custom Optical Frames, Inc.,
893 F.Supp. 508, 514 (D.Md.1995),
aff'd,
92 F.3d 1203 , 1996 WL 338388 (Fed.Cir.1996);
E.I. du Pont de Nemours & Co. v. Polaroid Graphics Imaging, Inc.,
706 F.Supp. 1135, 1141 (D.Del.1989) (while presumption of validity remains unaltered, “the exhaustive consideration given the prior art by the PTO during [reexamination] must be weighed in determining patentability”),
aff'd,
887 F.2d 1095 , 1989 WL 108217 (Fed.Cir.1989).
The James and Higgins reference in Figure 2.3 depicts a “typical negative-type” silver iodobromide tabular grain emulsion. According to Agfa, the reference therefore describes to a person of ordinary skill in the art a commercial optimally chemically and spectrally sensitized tabular grain film. TX 1021A; Trial Tr. at 1114-16 (Liggero). Agfa further argues that using the disclosed shadow angle of 18.4 degrees and ignoring sampling and measurement error, Figure 2.3 depicts an emulsion containing intermediate aspect ratio T-grains as defined by the '426 patent claims.
During cross-examination Dr. Liggero acknowledged that Fig. 2.3 of James and Higgins was prepared from the same electron micrograph as Figure 2.6 of Mees and James. Trial. Tr. 1165 (Liggero). Dr. Liggero also stated that he could not find any reason to doubt Kodak’s statement to the PTO that the sample was mislabeled and was not a commercial sample. Trial Tr. 1188 (Liggero). Clear and convincing evidence requires more than assumption. As the party asserting invalidity, it was incumbent upon Defendants to provide evidence that was both clear and convincing about the James and Higgins material. Defendants have not met this burden.
*252
G. Danguy, “On the Sensitometric Character and Chemical Sensitization of Silver Bromide Emulsions with Tabular Grains,”
Science et Industries Photographiques,
Vol. 34, No. 5-6, at 141-50 (1963) (TX 1024) (“Danguy 1963”), was cited by Kodak for consideration by the PTO during prosecution of the '520 patent.
See
TX 321 (EK004997-5005), 1009 (EK027143-46) (Cited Art Statement Under 37 CFR 1.97-1.99). Kodak characterized Danguy as follows:
Danguy can be viewed as being essentially cumulative with de Cugnac and Chateau, cited in the specification at page 2, lines 21-26, in that it also discloses high aspect ratio tabular grain silver bromoiodide emulsions. Danguy further discloses chemical sensitization of high aspect ratio tabular grain emulsions, which de Cugnac and Chateau does not.
TX 321 (EK005000), 1009 (EK027146).
Danguy 1963 is an elaboration of a study first reported in G. Danguy, “The Preparation and the Sensitometry of Photographic Emulsions with Tabular Silver Bromide Grains,”
Bulletin de la Societé Rovale des Sciences de Liège,
Vol. 31, No. 11-12, at 732-50 (1962) (TX 364) (“Danguy 1962”).
See
TX 835 (10/26/06 Marchetti report, ¶ 12).
Danguy 1962 and Danguy 1963 describe the preparation of five emulsions, each precipitated according to the same conditions and then ripened for progressively longer periods. TX 835 (10/26/06 Marchet-ti report, ¶ 13). Of the five emulsions, the fifth emulsion (the “845” emulsion) was subjected to 15 hours of ripening, by which time “all the small initial grains [had] disappeared.” TX 1024 (at 143). The emulsion was described as being “formed exclusively of tabular grains of greatly varying dimensions,” including a thickness “on the order of 0.1 |x.”
Id.
The “large crystals” of the emulsion are described as reaching 50 pc, with a few crystals even larger.
Id.
The grains are described as having linear dimensions of between 25 and 100. According to Danguy 1962, the average size of the grains is “about 30 and can be as high as 100 g,”. TX 364.
Kodak stated in its disclosure of Danguy 1963 to the PTO that these statements indicate the presence of high aspect ratio grains, and, in that sense, they are cumulative of de Cugnac. TX 835 (10/26/06 Marchetti report, ¶ 14); TX 321 (at EK005000), 1009 (at EK027146). Although, as admitted by Kodak, Danguy discloses an emulsion having high aspect ratio grains, Kodak’s T-grain patents do not claim their inventions so broadly.
Ekchian v. Home Depot, Inc.,
104 F.3d 1299, 1304 (Fed.Cir.1997) (“statements made in an IDS can be the basis for a court to interpret the scope of the claims of a granted patent.”) Rather, the T-grain patent claims include specific limitations concerning the thickness, average aspect ratios and percent projected areas of the grain populations. Danguy does not provide sufficient information to determine whether the described emulsion grain populations meet the grain structure and parameters of either the high aspect ratio claims or the intermediate aspect ratio claims. TX 835 (¶ 14). The grain precipitation and ripening processes described in Danguy 1963 (at p. 143) would not inherently or necessarily result in emulsions meeting these parameters.
Id.
Additionally, Defendants have not demonstrated by clear and convincing evidence that Danguy discloses spectral sensitization or optimal spectral sensitization of its tabular grains. Danguy 1963 reports having chemically sensitized emulsion “845” (the fifth emulsion described above) to provide emulsion “937”. TX 321, 835
*253
(10/26/06 Marchetti report, ¶ 16), 1024 (at 148). Agfa concludes that the chemical sensitization disclosed in Danguy 1963 is optimal chemical sensitization of the high aspect ratio tabular grains. Agfa bases its conclusion on Danguy’s statement that “[t]he decrease in concentration of Au + S complex is necessitated by the limitation of fogging of these two emulsions, optimally sensitized as in the previous case.” TX 1024, at 148; Trial Tr. at 1107(Liggero).
However, neither Danguy 1962 nor Dan-guy 1963 disclosed spectral sensitization (optimal or otherwise) of the disclosed tabular emulsions. TX 835 (10/26/06 Marchetti report, ¶ 20). In light of the results reported in Danguy 1963, a person skilled in the art would have been discouraged from attempting to spectrally sensitize an emulsion containing tabular grains like those disclosed in that article. TX 835 (10/26/06 Marchetti Report, ¶ 19). Dr. Marchetti’s expert report, largely unrebut-ted, advises that the relatively high volume tabular grains of Danguy 1963 exhibited only comparable native sensitivity to much smaller volume non-tabular (globular) grains discussed in Danguy. See TX 835 (10/26/06 Marchetti report, ¶¶ 15-20). One would have expected the higher volume tabular grains to have exhibited much greater native sensitivity. Id.
Finally, Danguy 1963 states that the emulsions were exposed to light filtered by a Wratten Kodak blue filter light no. 50. TX 1024 (at p. 148), 835 (10/26/06 Marchet-ti report, ¶ 17). Kodak argues that by this technique, the emulsions were exposed solely to blue light, in order to evaluate speed in the native region of sensitivity.
Id.
Danguy 1963 refers to a commercial emulsion as having been spectrally sensitized. TX 835 (10/26/06 Marchetti report, ¶ 21), 1024 (at 148). Kodak argues that this reference in Danguy 1963 is not a teaching of spectral sensitization of tabular grains. TX 835 (¶ 21). The commercial emulsion discussed in Danguy 1963 contained
non-
tabular grains.
Id.
Further, the spectral sensitization of the commercial emulsion played no role in the analysis presented in Danguy 1963.
Id.
The comparative experiment described in Danguy 1963 — involving exposure to light filtered by a Wratten Kodak blue filter light no. 50 — was designed to eliminate any effect on the sensitization comparison resulting from the presence of a green spectral sensitizer in the commercial emulsion.
Id.
Hence, while Danguy may have disclosed high aspect tabular grains, the patents do not claim the inventions so broadly. Indeed, while Kodak acknowledged that tabular grains were known before the invention but characterized them as scientific curiosities of no commercial or practical application, the T-grain patents acknowledge that the No-Screen product was a tabular grain X-ray imaging product
5
. Kodak’s characterization of tabular grains as primarily a scientific curiosity is corroborated by Dr. Liggero, Defendants’ expert, who testified that while at Polaroid he was aware of tabular grains but recalled no investigations or research that suggested that the tabular grains would be useful in Polaroid’s film products. Trial Tr. at 1100 (Liggero) (“In my early years at Polaroid tabular grain emulsions were considered for various projects, but rejected”), 1145 (no one at Polaroid in the 1970s came up with tabular grains that would provide a benefit)
Between 1971 and 1974, Fuji Film Co., Ltd. (“Fuji”) scientist Dr. Tanaka Tani authored a nine part series concerning
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studies on the spectral sensitizing effect of dyes on tabular grain emulsions. TXs 1027-1084; Trial Tr. at 1117-19 (Liggero). The ninth paper in that series, T. Tani, “Photographic Effects of Electron and Positive Hole Traps in Silver Halides DC. Factors Influencing Desensitization Caused by Sensitizing and Desensitizing Dyes,”
Photographic Science & Eng’g,
Vol. 18, at 576-81 (Sept-Oct.1974) (TX 1034) (“Tani IX”), investigated desensitization of emulsions to blue light resulting from application of a known visible-range sensitizing dye (referred to as “Dye I” in the article) and a known desensitizing dye (referred to as “Dye II” in the article). TX 835 (10/26/06 Marchetti report, ¶ 22).
Agfa argues that Tani EX describes tabular grains having an average thickness of 0.2 micron and an average grain diameter of 1.11
micron
— i.e., an average aspect ratio of 5.5:1. TX 1034, 576-77; Trial Tr. at 1118-19 (Liggero). Agfa also points to Figure 1 of Tani DC as depicting an emulsion consisting of predominately thin tabular
grains
— i.e., at least 50 percent of the total grain projected area consists of grains of less than 0.2 micron in thickness. TX 1034; Trial Tr. at 1118-19 (Liggero). However, in Tani IX the phrase “height of 0.2 (j,” is preceded by the words “under the assumption that.” In this passage, Tani IX seemingly is assuming a grain height to estimate the amount of Dye I required for monolayer coverage of the grains.
Id.; see also
Trial Tr. at 1156-57 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 23 (“Q. So Professor Tani is assuming those grain dimensions in order to deduce the amount of dye necessary for a mono-layer coverage of the grains, correct? MR. LOWE: Objection to form. BY THE WITNESS: Yes”).
Tani IX does not provide sufficient information to determine whether the Type A emulsion met the grain structure and parameters of either the intermediate or the high aspect ratio claims. TX 835 (10/26/06 Marchetti report, ¶ 26). Nothing in the reference discloses that actual measurements were conducted to determine whether greater than 50% of the total projected area was comprised of grains with a thickness less than 0.2 micron. Trial Tr. 1157 (Liggero). Nothing in the reference discloses that actual measurements were conducted to determine whether greater than 50% of the total projected area was comprised of grains with a thickness less than 0.3 micron and a diameter of at least 0.6. p,. Trial Tr. 1157 (Liggero). The portions of Tani IX relied upon by Agfa state assumptions.
Drs. Liggero and Hudson attempted to follow the grain production recipe described in Tani IX, producing an emulsion wherein tabular grains of less than 0.3 micron in thickness and at least 0.6 micron in diameter provided about 64 percent of the total grain projected area and had an average aspect ratio of about 7.2:1. TX 1334 at ¶¶ 21-22. Kodak responds that Agfa’s purported “replication” of a Type A emulsion involves a number of ingredients, volumes, and steps not disclosed in Tani DC. TX 835 (10/26/06 Marchetti report, 26). For example, the gel concentration is not specified in Tani DC
Id.
Gel concentration is a significant parameter in determining size and thickness.
Id.; see, e.g.,
TX 856 (M. Antoniades & J.S. Wey, “Aggregation Phenomena in AgX Precipitation in the Presence of Gelatin,”
J. Imaging Science & Tech.
42:393-98 (1998)), 853 (M. Antoniades & J.S. Wey, “Precipitation of Fine AgBr Crystals in a Continuous Reactor: Effect of Gelatin on Agglomeration,”
J. Imaging Science & Tech.
36:517-24 (1992)). Thus, it is impossible to “replicate” the Type A emulsion based on the disclosures in Tani DC, and Agfa’s at
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tempted “replication” provides insufficient basis for arriving at clear and convincing conclusions about the grain parameter characteristics of the Type A emulsion. It may be noted that if this replication could be deemed accurate and reliable, it would conflict with Agfa’s position that Tani IX’s emulsion has a thickness less than 0.2 |x under the '426 patent claims.
With regard to spectral sensitization, Agfa argues that Tani DC teaches the spectral sensitization of the tabular grains using a green spectral (“visible range”) sensitizing dye named 3,3’-diethyl-9-me-thyl-thiacarbocyanine bromide. TX 1034, 576; Trial Tr. at 1118-20 (Liggero). According to the results reported about Figure 2, Tani IX states that “the examination on the desensitization by the dyes has been extended over ranges from the low to the high level of the dyes, which exceeded their optimum amounts.” TX 1034 at 577. However, the accompanying Figure 2 of Tani IX does not show sensitization at any level of Dye I or Dye II. Rather, Figure 2 shows desensitization as a function of the amount of dye added. As acknowledged by Dr. Liggero, Defendants’ expert, desensitization is not the same as sensitization. Trial Tr. at 1145. Hence, Tani IX investigated a mechanism different than sensitization. While the two are seemingly related, the effect of one is not necessarily the effect achieved in the other. Therefore, “optimum amount,” as used by Tani IX, should be interpreted simply to mean assumed monolayer coverage. TX 835 (10/26/06 Marchetti report, ¶ 29).
Finally, the non-pertinence of Tani IX is suggested by the actions of Fuji, another competitor. Fuji and Agfa communicated about the Kodak T-grain patents and the possibility of challenging them with prior art. TX 932. Significantly, although Fuji provided Agfa with a listing of prior art that it deemed potentially pertinent to the patents, Fuji did not identify the Tani articles. Considering that Dr. Tani was a Fuji scientist, it would have been expected that Fuji would have cited those articles if they had been deemed important. Fuji was apparently aware that publications could be cited as prior art, because its letter references two publications. TX 932. Furthermore, the Tani article predates the filing of the T-grain patents by almost ten years and there is nothing in the record that Fuji commercialized, attempted to commercialize or recognized the Tani articles as teaching what Defendants claim is taught. Considering that Fuji and Kodak were fierce competitors in the film business, it is difficult to believe that Tani disclosed such a significant breakthrough that nonetheless was ignored by Fuji.
Agfa argues that Figure 11 of Tani III (reference 1(c) in Tani IX) [T. Tani, “Photographic Effects of Electron and Positive Hole Traps in Silver Halides III. Desensitization by Sensitizing and Desensitizing Dyes,”
Photographic Science & Eng’g,
Vol. 15, No. 5, at 384-393 (Sept.-Oct.1971) (“Tani III”)] shows the addition of the green spectral sensitizing dye to the tabular grains described in Tani IX in amounts sufficient to achieve a maximum speed attainable from the grains in the “minus blue”
(i.e.,
green) region of the spectrum. TX 1029 (Figure 11 and accompanying text), 1336; Trial Tr. at 1120-21 (Liggero).
Tani III does not disclose chemical sensitization of T-grains. Dr. Liggero conceded as much on cross-examination. Trial Tr. 1158 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 56. As Dr. Liggero further conceded, it is therefore unknown whether a higher speed could have been achieved had the sensitizing dye been added in conjunction with chemical sensitization. Trial Tr. 1158 (Liggero); Depo.
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Desig. Tab 31 (02/13/07 Liggero) at 63. In addition, Tani III discloses no information regarding the thickness of the T-grains described therein. Trial Tr. 1158-59 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 87-88.
Agfa argues that Tani V [T. Tani, “Photographic Sensitizing and Desensitizing Phenomena of Various Silver Halide Grains by Electron Traps,”
Photographic Science & Eng’g,
Vol. 17, No. 3, at 306-314 (May/June 1973) (“Tani V”) ] describes the optimal chemical sensitization of the tabular grain emulsions — “the degree of the increase of photographic speed due to these chemical sensitizations was compared for the various grains at their optimum conditions.” TX 1031 (page 307), 1336; Trial Tr. at 1121 (Liggero).
Tani V does not disclose spectral sensitization of T-grains, optimal or otherwise. Depo. Desig. Tab 31 (02/13/07 Liggero) at 46 (“[T]his does not address spectral sensitization.”); Trial Tr. 1157 (Liggero). In addition, Tani V discloses no information regarding the thickness of the T-grains described therein. Trial Tr. 1157-58 (Liggero).
Agfa argues that Tani VII [In T. Tani, “Photographic Effects of Electron and Positive Hole Traps in Silver Halides VII: Interaction Between Reduction Sensitization and Desensitization by Dyes on Various Silver Bromide Grains,”
Photographic Science & Eng’g,
Vol. 18, No. 5 (Sept/Oct. 1974) (TX 1033) (“Tani VII”)] describes the chemical (“reduction”) sensitization and the spectral sensitization of the same tabular grain emulsion. TX 1033, TX 1336; Trial Tr. at 1121-22 (Liggero). Tani VII discloses conditions sufficient for optimal chemical sensitization of the tabular grain emulsion — “50°C for 60 minutes.” TX 1033 (page 570), 1336; Trial Tr. at 1121-22 (Liggero). Tani VII allegedly discloses conditions sufficient for optimal spectral sensitization of the tabular grain emulsion — “surface coverage of grains by dyes were relatively high.” TX 1033 (page 570), 1336; Trial Tr. at 1121-22 (Liggero). According to Agfa, a person of ordinary skill in the art would have understood Tani VII to have disclosed optimally chemically and spectrally sensitized tabular grain films. Trial Tr. at 1121-22 (Liggero).
Tani VII relates to desensitization, and does not disclose optimal spectral sensitization or optimal chemical sensitization. Trial Tr. 1159 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 91. Dr. Liggero, Defendants’ expert, stated on cross-examination that Tani VII does not explicitly disclose optimal spectral sensitization or optimal chemical sensitization. In addition, Tani VII discloses no information regarding the thickness of the T-grains described therein. Trial Tr. 1159 (Liggero); Depo. Desig. Tab 31 (02/13/07 Liggero) at 88.
Kodak filed U.S. Patent Application No. 06/320,899 (“the '899 application”) on November 1, 1981,
i.e.,
before the effective filing dates of any of the T-grain patents, naming as inventors Herbert Wilgus and Jong-Shinn Wey. TX 1015. On September 30, 1982, Kodak filed a continuation-in-part of the '899 application which resulted in U.S. Patent No. 4,414,306 to Wey and Wilgus. TX 1014.
The '899 patent application is admitted prior art against the '426 patent. TX 1006 (at EK00191) (“[the '899 patent application constitutes] a prior teaching of tabular grain silver chlorobromide emulsions in which the molar ratio of chloride to bromide ranges up to 2:3”). Further, the applications have different inventive entities.
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The '899 application describes less than 0.2 tabular grains:
In a preferred form the emulsions are of high aspect ratio. As applied to the emulsions of the present invention the term “high aspect ratio” is herein defined as requiring that tabular silver halide grain containing chloride and bromide in at least annular grain regions having a thickness of less than 0.3 micron and a diameter of at least 0.6 micron have an average aspect ratio of greater than 8:1 and account for at least 35 percent of the total projected area of the silver halide grains.
Although emulsions according to the present invention can have average aspect ratios as low as 5:1, it is preferred that the emulsions have high average aspect ratios of greater than 8:1. Average aspect ratios can range up to 15:1, 30:1, or even higher. The preferred emulsions of the present invention have an average thickness less than 0.2 micron. In a preferred form of the invention these tabular grains account for at least 50 percent and optimally at least 70 percent of the total projected area of the silver halide grains containing chloride and bromide in at least annular grain regions.
TX 1015 (page 10).
See also
TX 1014 ('306 patent, col. 6,
l.
52, to col. 7,
l.
6).
The '899 application describes the optimal sensitization of the tabular grains— “the emulsions of the present invention are preferably, in accordance with prevailing manufacturing practices, optimally chemically and spectrally sensitized.” TX 1015 (page 36).
See also
TX 1014 ('306 patent, col. 20, ll. 32-36). The '899 application also describes the use of the preferred tabular grain emulsions in an X-ray film format — “[w]hen the photographic elements of the invention are intended to serve radiographic applications .... ” TX 1015 (page 46, EK107228).
See also
TX 1014 ('306 patent, col. 25, ll. 38-40).
Thus, Agfa concludes that the '899 application describes the asserted claims of the '426 patent — X-ray films comprising optimally spectrally sensitized, intermediate aspect ratio tabular grain emulsions. TX 1334 (¶¶ 39-43).
Kodak responds that the '899 patent application does not disclose a duplitized radiographic element containing an emulsion wherein tabular silver halide grains having a thickness of less than 0.2 micron and an average aspect ratio of from 5:1 to 8:1 account for at least 50 percent of the total projected area. In particular, the cited passage of the '899 application does not state that the average aspect ratio of grains less than 0.2|jl, is 5:1 to 8:1 as required by the '426 patent’s claims. Nor does the passage indicate that those tabular grains having a thickness less than 0.2jx account for at least 50% of the total projected area.
A duplitized radiographic element was known in the art, and the '899 application referred to X-ray film format. The '899 application was cited by Kodak on a PTO 1449 form, and the examiner initialed the form next to the entry (as well as crossing out the entry, as was standard practice for patent applications listed on 1449 forms). It also is discussed in the T-grain patents. Thus, the '899 application was considered by the PTO and the claims allowed over the reference.
Kodak filed U.S. Patent Application No. 06/320,904 (“the '904 application”) on November 1, 1981, naming as inventors Ko-fron, Booms, Haefner, Wilgus and Jones. TX 1008. On September 30, 1982, Kodak filed a continuation-in-part of the '904 application which resulted in U.S. Patent No.
*258
4,439,520 to the same named inventors. TX 1003.
Agfa argues that that the '904 application renders the '426 patent claims invalid. Agfa bases its argument on Kodak’s accusation that certain Agfa products infringe both the '520 and '426 patents under the doctrine of equivalents.
See, e.g.,
TX 1055. Agfa argues that because Kodak alleges these Agfa products satisfy the high aspect ratio grain size requirements of the '520 patent and the intermediate aspect ratio grain requirements of the '426 patent, the intermediate aspect grain ratio of the '426 patent must be obvious in view of the high aspect ratio grain requirements of the '904 application and of the '520 patent. According to Agfa, the '904 application describes the use of the preferred tabular grain emulsions in an X-ray film format— “[w]hen the photographic elements of the invention are intended to serve radio-graphic applications ....” TX 312 ('520 patent, col. 41, ll. 31-36), 1008. The '904 application incorporates by reference Research Disclosure 18431 [TX 1036], which describes radiographic elements and crossover reduction. TX 312 ('520 patent, col. 41, ll. 31-36), 1008(71). Thus, it is Agfa’s position that the '904 application describes the asserted claims of the '426 patent—X-ray films comprising optimally spectrally sensitized, intermediate aspect ratio tabular grain emulsions—if the '426 patent claims are permitted to cover the same subject matter claimed by the '520 patent. TX 1334 (¶¶ 35-38).
The questions to be resolved involve the scope of the claims and the impact of the prior art, not Kodak’s arguments regarding equivalency. It is the properly interpreted claim that is reviewed, not a patent owner’s accusation of infringement.
The '904 application does not disclose a duplitized radiographic element containing an emulsion wherein “tabular silver halide grains having at thickness of less than 0.2 micron and an average aspect ratio of from 5:1 to 8:1 account for at least 50 percent of the total projected area” as recited in claim 1 of the '426 patent.
As the party asserting the defense of invalidity, Defendants were required to establish invalidity as to each claim by clear and convincing evidence. In the present instance, Defendants have shown that pieces of claims were known in the art. What Defendants have not done, at least not clearly or convincingly, is establish that each asserted claim was either anticipated or obvious. Rather, Defendants have merely cited to various items of prior art and frequently seem to draw unsupported conclusions based upon that art. Defendants did not clearly and convincingly cite to prior art and apply it to the asserted claims in a manner sufficient to establish claim invalidity. Furthermore, to the extent Defendants rely upon obviousness, they have not adequately addressed the “secondary considerations” that apply to the obviousness determination.
An assessment of obviousness requires consideration of objective factors potentially indicating non-obviousness.
Graham v. John Deere Co.,
383 U.S. 1, 17-18 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966). “Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.”
Graham,
383 U.S. at 17-18 , 86 S.Ct. 684 . Secondary considerations including a finding of commercial success may not carry suffi
*259
cient weight to override a determination of obviousness based on primary considerations. Such a determination can be made as long as the secondary considerations are contemplated by the court.
Ryko Mfg. Co. v. Nu-Star, Inc.,
950 F.2d 714, 719 (Fed.Cir.1991).
Kodak’s medical imaging products incorporating the patented T-grain technology were publicly acclaimed, with experts and commentators acknowledging the achievement of previously unobtainable advantages.
See, e.g.,
TX 472
(Kodacolor VR 1000
—A
Review,
The British Journal of Photography, dated November 26, 1982) at EK106593 (“In emulsions which have been the norm until the present development, faster films have been produced by, at the simplest, producing larger grains of silver halide, usually requiring thicker emulsion layers, using more silver and resulting in coarser grained images. By changing the shape of the crystals by flattening them they intercept more light for a given amount of silver halide and the emulsion layer thickness, important for sharpness, is kept down. This fundamental change in the shape and structure of the silver halide crystals, named T-grain’ by the Kodak research workers as an abbreviation for tabular grain, is said to be the company’s single biggest advance in silver halide emulsion technology in more than fifty years”)
TX 429
(Eastman Color High-Speed Negative Film 7292,
SMPTE Journal, dated September 1986) at EK062811 (“In 1983, Eastman Kodak Co. demonstrated a significant advance in photographic emulsion technology with the introduction of Kodacolor VR 1000 film, which incorporates Kodak T-grain emulsions. This class of emulsions, characterized by their tablet-like crystal structure, provides previously unobtainable advantages”)
TX 387
(Screen Film Processing Systems for Medical Radiography: A Historical Review,
Radiographics, dated November, 1989) at EK049010, EK049017 (stating that introduction in 1983 of a film for medical imaging that had tabular grains was the result of a “breakthrough in emulsion technology that produced flat, tabular silver halide crystals, oriented with the flat side parallel to the support,” and identifying, among others, Dr. Russell Holland, E.I. DuPont de Nemours and Company, “for providing historical information and helpful discussions on the article”)
Other articles lauded the T-grain technology as it applied to other films, such as color photographic film.
TX 475
(Kodak
—fastest
ever print film,
Amateur Photographer, dated October 16, 1982) at EK106604 (calling Kodak’s Kodacolor VR 1000 T-grain film “a combination of existing technology with a radical approach to conventional image recording”)
TX 471
(Fash-Film Coup, A colorful marvel from Kodak,
Time Magazine, dated October 18, 1982) (“The company’s new film represents an important technological break-through. For years researchers seeking to devise high-speed color print films have been stymied by the difficulties involved in increasing the light sensitivity of photographic film without producing grainy or fuzzy pictures. Kodak scientists overcame this problem by in effect redesigning the physical structure of the silver halide crystals that form the light-sensitive coating of unexposed film. In their changed shape the crystals now are flat
*260
ter, with more of their surface area being exposed to light on the film itself’)
TX 473
(Eastman Kodak unveils “world’s fastest” color film,
Chicago Tribune, dated October 8, 1982) (“But some analysts said they expect the new emulsion technology to be used eventually to improve sharpness of a wide range of amateur films and to be used in such industrial products as X-ray, graphic arts and motion picture films”)
TX 473
(Eastman Kodak unveils “world’s fastest” color film,
Chicago Tribune, dated October 8, 1982) (stating that “it was Kodak’s announcement of a new film crystal breakthrough — which the firm called the ‘single biggest advance in silver-halide emulsion technology in more than 50 years’ — that apparently impressed Wall Street analysts and investors. In trading on the New York Stock Exchange, Kodak closed up $2.75 a share to $85.75, and was the fifth most active stock, with 672,600 shares changing hands”);
Furthermore, Drs. Boom and Kofron received special recognition for their work. TX 428
(Kodak Employees Accept Progress Medal Awards,
PSA Journal
Official Magazine of the Photographic Society of America,
dated November 1988) at EK062800 (“In recognition of their pioneering research in photographic science; [f]or their historic breakthrough in the practical application of tabular silver grain structures; [f|or their research in photographic emulsions which has resulted in outstanding improvements in sensitivity, image sharpness, and granularity; [t]he Photographic Society of America is proud to present its highest award, the PSA Progress Medal for 1988, to: Dr. Robert E. Booms and Dr. James T. Kofron”); Trial Tr. 66-67 (Booms). Drs. Booms and Kofron also received the Inventor of the Year Award from the Rochester Intellectual Property Law Association in 1991.
Kodak’s X-ray films employing the T-grain technology have been commercially successful.
See, e.g.,
Trial Tr. 66 (Booms) (Kodak commercialized X-ray films products, known as the TMAT line of films, under the T-grain patents and those products were commercially successful); Trial Tr. 366-67 (Dillenbeck) (TMAT G falls within the scope of the '425 patent); TX 632 (P & L for HI Analog Film & Dental Extra-Oral 1996-2004) (showing hundreds of millions of dollars in sales of Kodak X-ray films employing T-grain technology); Depo. Desig. Tab 35 (06/05/03 Roberts) at 221 (Kodak products employing the T-grain technology have been commercially successful).
Kodak’s competitors obtained licenses from Kodak for the T-grain technology.
See, e.g.,
TX 171 (acknowledging that Fuji had taken a license from Kodak for T-grain '426 patent technology); TX 426 (Cross-licensing agreement between Eastman Kodak Company and Fuji, dated 05/26/1988) (including T-grain patents); and TX 459 (Cross-licensing agreement between 3M Company and Eastman Kodak Company, dated 03/01/1989) (including '426 T-grain patent).
Finally, in the Reexamination of the '426 patent, the PTO specifically found that “[e]ven if a
prima facie
case exists, the patent owner has demonstrated an unexpected improvement in speed and crossover relationship for radiographic elements utilizing the T-grains of the present invention sufficient to contradict the
prima facie
case.” TX 423 (at EK060572).
Defendants’ attempts to discredit this collection of secondary evidence have been unpersuasive.
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It was incumbent upon Defendants to make a
prima fade
showing of invalidity before Kodak need address the validity of its patents. Patents are presumed valid and Kodak need not establish the validity of its patents. While the citation of art not considered by the PTO might allow the clear and convincing standard to more easily be met, the burden is always upon the party asserting invalidity to prove it.
In view of the above, it is recommended that Defendants have failed to establish invalidity of any claim of the asserted patents.
Literal Infringement by the Accused Products
Kodak accuses the following products of infringing the T-grain patents as set forth in the following table.
[[Image here]]
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[[Image here]]
Making, using, offering to sell, and selling a patented invention all constitute infringement if done without the authority of the patent holder. 35 U.S.C. § 271 (a). The determination of patent infringement is a two-step analysis: (1) interpreting the meaning and scope of the asserted patent claims and (2) comparing the accused product to the claims as interpreted.
Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed.Cir.1995)
(en banc), aff'd,
517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996). Kodak has the burden of establishing infringement by a preponderance of the evidence.
Centricut, LLC v. Esab Group, Inc.,
390 F.3d 1361, 1367 (Fed.Cir.2004).
The claim construction of the patents in suit was set forth in the Report and Recommendation for Construction of Group I Patents, March 21, 2007 (“Claim Construction Recommendation”). Based on that claim construction, there are factual issues relating primarily to sensitivity and grain size.
The term “chemically sensitized” was defined in the Claim Construction Recommendation as the treatment of grains with a chemical which is not selective with respect to a spectral region for increasing photographic speed of the treated grains.
There is no dispute that each of Agfa’s accused products is chemically sensitized. Agfa Statement of Fact (“SOF”) No. 155 (“In all instances, the Agfa films are chemically sensitized”).
The term “spectrally sensitized” has been construed in the Claim Construction Recommendation to mean the treatment of grains with a spectral sensitizer which is selective with respect to a spectral region and which causes an increase in sensitivity to the grain in that spectral region.
There is no dispute that each of Agfa’s accused green light sensitized films are spectrally sensitized. Agfa SOF No. 156 (“In all instances, the accused green light sensitized films are spectrally sensitized. These films are Orthovision G, Orthovision L, CXODGUV2, CXODGGY2, CX1X5 and CXODGAS.”).
Agfa argues that the remaining accused
products
— ie., Cronex 10T, Cronex 10TL, Ultravision G, Ultravision C, Ultravision Ci, and Ultravision L — are not spectrally sensitized. According to Agfa, the so-called “DF-629” or B6B dye used in production of these products is not a spectral sensitizing dye. TX 1182, 1189, 1341 (¶ 178-99); Trial Tr. at 857-58, 1061-62,
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1090-94 (Hudson), 992-1000 (Van den Zegel).
The overwhelming evidence points to a conclusion that all of Agfa’s accused products are spectrally sensitized. The DF-629/B6B dye meets the T-grain patents’ definition of a spectral sensitizer. The dye is selective with respect to a spectral region and causes an increase in sensitivity of the grain in that spectral region.
See
Trial Tr. 262-63, 265-66 (Marchetti) (“the grains are much more sensitive after the dye is added to the blue region of the spectrum”); TX 1189 (at A631497) (sensitivity of emulsion to blue light (ie., speed) shown to be higher when B6B/DF-629 dye is used (test no. 34902705) versus when dye is not used (test no. 349502702)); Trial Tr. 1062 (Hudson) (TX 1189 demonstrates that if you “leave the dye out,” then “it’s a slower film”); Trial Tr. 1206 (Marchetti) (TX 1189 indicates that the dye “fits the Special Master’s definition” in that “it increases the speed in a spectral region”); Depo. Desig. Tab 2 (01/29/04 Apple) at 92-93 (Cronex 10T is “spectrally sensitized” using a “blue absorbent dye”); Depo. Desig. Tab 17 (07/08/04 M. Guy) at 97 (Agfa Rule 30(b)(6) witness on product formulations) (“I know when you add the [B6B/DF-629] dye to the emulsion, you increase the speed of the emulsion.”); TX 833 (08/24/06 Marchetti expert report) ¶¶ 20-30 (B6B/DF-629 dye is a spectral sensitizing dye).
The record is replete with admissions and internal DuPont/Sterling documents expressly identifying the B6B/DF-629 dye as a spectral sensitizing dye or identifying the products containing this dye as having been spectrally sensitized. TX 181 (“Sterling Diagnostic Imaging Brevard R & D Technology Portfolio — April 6, 1999”) at A163979 (DF-629 is a “blue J-aggregating spectral dye”); TX 24 (Sterling “Patent Clearance for Cronex® 10ST (Type 578)”) (A006027-A006165) at A006131 (one “component” of the product is “spectral sensitization”); TX 157 (“Low Cost, Half-Speed Blue Medical Screen Film Candidate Recommendation March 17, 1997”) at A160041 (“Blue Spectral Sensitization” listed as a “Product Feature”); TX 16 (“Update on Patent Protection for Ultraviolet Imaging System”) at A004982 (referring to DuPont tabular grain medical X-ray films “which are spectrally sensitized to the blue or UV”); Trial Tr. 935 (Hudson) (the B6B dye was referred to in DuPonf/Sterling as a spectral sensitizing dye), Depo. Desig. Tab 22 (10/12/04 Hudson) at 36, 58-59 (the Sterling emulsion is “subjected to chemical and spectral sensitization”; a feature of the film is “blue spectral sensitization”).
DuPont obtained U.S. Patent No. 5,108, -887 (TX 905), which is directed to the B6B/DF-629 dye.
See
TX 181 (“Sterling Diagnostic Imaging Brevard R
&
D Technology Portfolio — April 6, 1999”) at A163979 (“DF-629 ... is protected by U.S. 5,108,887”), TX 18 at A005083 (“The dyes claimed [in the '887 patent] are those used for all current blue and UV tabular grain products.”). The title of this DuPont patent is “Zeromethine Merocyanine Dyes as J-Aggregating
Spectral Sensitizers
for Tabular Emulsions.” TX 905 (emphasis supplied). The specification of the DuPont '887 patent states, among other things, that “J-aggregation causes a single dye, or a mixture of dyes, to shift the absorption maxima to a longer wavelength.” TX 905 (at col. 1, lines 50-52).
That the B6B/DF-629 dye is a spectral sensitizing dye is also established by a wedge spectrogram generated in the DuPont laboratories and reproduced in an internal DuPont Technical Report authored by DuPont scientist Dr. Dietrich Fabricius in 1990.
See
TX 280 (Technical Report entitled “Manufacture of New Sensitizing Dye
for
Cronex® 10T: DF-629 and D-905 Solution,” authored by Dr. Fa-
*264
bricius) at A617343 (showing wedge spectra for DF-629);
id.
at A617339 (“Careful inspection of the DF-629 spectra reveals a spike near 460 nm, which is attributed to the DF-629 J-aggregate.”); TX 843 (original DuPont Laboratory Notebook containing the DF-629 wedge spectrogram) at A054232-A054237 (data “indicates significant spectral sensitization from these dyes and especially DF-629.”). The spike shown in this wedge spectrogram would not occur if the dye were not acting as a spectral sensitizer. Trial Tr. 269, 307-08 (Marchetti) (wedge spectrogram made by DuPont “absolutely” indicates that the dye is a spectral sensitizer). Dr. Fabricáis (who also was an inventor in the DuPont '887 patent), was an expert on sensitization of silver halide grains and, in fact, “was the leading guy in terms of sensitizing dyes” at DuPont/Sterling. Trial Tr. 1077 (Hudson)
Based on the testimony of Dr. Hudson, Agfa argues that the wedge spectrogram does not necessarily indicate a spike near 460 nm. Agfa’s argument is contradicted by a DuPont document, TX 280 at A617339, which states that “[c]areful inspection of the D-629 spectra reveals a spike near 460 nm, which is attributed to the DF-629 J-aggregate.” Agfa also asserts that “DuPont did not perform the wedge spectrogram analysis using an equal energy source and appears to have used a glass slide-both of which distort the density bands,” but cites no support for these assertions or other evidence that, if true, these conditions would have meaningful consequences.
Agfa argues that its dyes act as “site directors” to enhance chemical sensitization without functioning as a spectral sensitizing dye:
Dyes used in this manner can be referred to as “site directors” because they direct chemical sensitizers to certain locations within the grain, thereby focusing the energy absorbed by the grains to these locations.... [Speed increase alone is not proof of] spectral sensitization because site direction also produces a speed increase as a result of increased chemical sensitization without the dye necessarily functioning [as a spectral sensitizing dye].
TX 1341 (¶ 184);
see also
Trial Tr. at 1061-62 (Hudson).
To support its position, Agfa conducted experiments in which emulsions were sensitized using the of sensitization compounds. In the experiments, the chemical sensitization process was conducted until the maximum speed (at an acceptable fog level) was obtained. With the exception of the experimental variables of dye amount and the actual moment of dye addition, no other parameters were changed other than to demonstrate that higher levels of dye addition would not increase speed. TX 1341 (¶ 192-195); Trial Tr. at 1063-66 (Hudson), 992-1000 (Van den Zegel).
In each experiment, a first test was conducted in which the dye was present during chemical sensitization. That system was assigned a reference speed of zero. In a second test, speed was measured with no dye present. For all products, there was a speed loss relative to the first test. It is Agfa’s position that the speed loss is due to either less efficient chemical sensitization (due to no site directing effect of the dye) or no spectral sensitization, or both. To determine if there is a loss due to no spectral sensitization, a third test was conducted in which the dye was added after chemical sensitization. Agfa’s theory is that because the dye is added after chemical sensitization, the dye cannot act as a site director for chemical sensitization in the third tests.
For all products other than the green light sensitizer films, the third tests produced a speed loss greater than the second
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test, which included no dye. Agfa concludes that the dye does not function as a spectral sensitizer, but as a site director to enhance chemical sensitization. This conclusion is based on Agfa’s theory that the dye would always increase sensitivity, regardless of whether it is added before or after chemical sensitization, if the dye was functioning as a spectral sensitizer. TX 1341 (¶ 191). Because the dye for these products only increased speed if it was added prior to the chemical sensitizer, Agfa concludes that the dye must function exclusively as a site director.
Agfa’s tests are filled with too many unanswered questions and doubts to overcome the overwhelming evidence and admissions that the dyes are spectral sensitizers. Further, there are reasonable explanations to reconcile Agfa’s test results with evidence that the dyes are spectral sensitizers. First, even if the B6B/DF-629 dye acts as a site director in the accused products, it also may be functioning as a spectral sensitizer. Trial Tr. 304-06, 320-22 (Marchetti) (“A dye cannot function only as a site director because if it does, the system will lose speed because the light that is absorbed will be lost.”), 323 (Marchetti) (“[If] [the B6B and B6E/DF-629 dyes were] acting only as site directors, there may be some small increase in speed, but there would be a huge decrease in speed due to the fact that you’re wasting all the light.”).
Second, Dr. Van Den Zegel, who performed the tests, testified in his deposition that, when optimally sensitizing an emulsion, “[t]he amount of spectral sensitizer that is applied before chemical sensitization is greater than the amount that would be added if the spectral sensitizer would be added after chemical sensitization” and that where the spectral sensitizing dye is added after chemical sensitization, “too much spectral sensitizer gives desensitization.” Depo. Desig. Tab 44 (05/26/04 Van Den Zegel) at 372-73. The experiment should have used a different dye level and/or varied other conditions of sensitization when the dye was added after chemical sensitization. Trial Tr. 1206-07, 1226 (Marchetti); Depo. Desig. Tab 31 (02/13/07 Liggero) at 267-68 (admitting that it is unfair to compare optimized emulsions with sub-optimized emulsions). The experiments conducted by Dr. Van den Zegel appear to show only that too much dye was used, resulting in desensitization, in the case where the dye was added after chemical sensitization.
Accordingly, it is my recommendation that all of the accused products be found to be spectrally sensitized.
The phrase “substantially optimally chemically and spectrally sensitized” has been defined in the Claim Construction Recommendation as emulsions which have been both chemically and spectrally sensitized to “achieve speeds of at least 60 percent of the maximum log speed attainable from the grains in the spectral region of sensitization under the contemplated conditions of use and processing.” Log speed is 100 (1-log E), wherein E is measured in meter-candle seconds at a density of 0.1 above fog.
The phrase “substantially optimally chemically sensitized” has been defined in the Claim Construction Recommendation as emulsions which have been chemically sensitized to “achieve speeds of at least 60 percent of the maximum log speed attainable from the grains in the native (blue) spectral region under the contemplated conditions of use and processing.” Log speed is 100 (1-log E), wherein E is measured in meter-candle seconds at a density of 0.1 above fog.
These definitions incorporate within them the concept that optimization is conducted taking into account the contemplated conditions of use and processing in the
*266
photographic arts. Dr. Marchetti, Kodak’s expert, agreed with these definitions. Trial Tr. 282. The evidence of record is clear that persons of ordinary skill in the photographic arts would have interpreted optimum sensitization under contemplated conditions of use and processing to mean the maximum log speed attainable from the grains while meeting the other product specifications, such as may be specified by the photographer or user. These other product requirements may include fog levels, contrast, and keeping properties. Trial Tr. 62 (Booms) (“[O]ptimal sensitization means that you get the best sensitivity that you can while meeting the other system requirements of whatever product that you’re working on.”); Trial Tr. 278-80 (Marchetti) (“Optimal sensitization is essentially a practical definition to optimize the emulsion to get the most [speed] that you can within the constraints that you are going to use it for.”); Trial Tr. 1104 (Lig-gero). “Optimal sensitization” as that term is commonly used in the industry and in the T-grain patents does not mean obtaining maximum photographic speed in an absolute sense. Trial Tr. 279 (Marchetti) (persons skilled in the art do not understand optimal sensitization to mean the absolute highest speed without regard to any other characteristics), 280 (Marchetti) (not aware of anyone in the photographic community that sensitizes without regard to other product requirements), 279 (Mar-chetti) (“[I]f you don’t [take into account the other system requirements] you don’t produce a product that is useful for anything or a product that meets the customer
Kodak never undertook any experiments to quantify the extent of sensitization of the accused products. However, a patentee may prove direct infringement by either direct or circumstantial evidence.
Moleculon Research Corp. v. CBS, Inc.,
793 F.2d 1261, 1272 (Fed.Cir.1986), ce
rt. denied,
479 U.S. 1030 , 107 S.Ct. 875 , 93 L.Ed.2d 829 (1987),
rev’d on other grounds,
872 F.2d 407 (Fed.Cir.1989). There is no requirement that direct evidence be introduced, nor is a jury’s preference for circumstantial evidence over direct evidence unreasonable
per se. See Fuji Photo Film Co. v. Jazz Photo Corp.,
394 F.3d 1368, 1374 (Fed.Cir.2005);
Moleculon Research,
793 F.2d at 1272 (noting “it is hornbook law that direct evidence of a fact is not necessary”);
Liquid Dynamics Corp. v. Vaughan Co.,
449 F.3d 1209 (Fed.Cir.2006), cer
t. denied,
- U.S. -, 127 S.Ct. 599 , 166 L.Ed.2d 432 (2006) (“Though it is [patentee’s] burden to prove infringement, it chose to rely on circumstantial evidence for some installations. While direct evidence may have made [patentee’s] case of infringement stronger, it does not render the case presented to the jury unreasonable as a matter of law. Indeed, the jury could have reasonably inferred from the evidence submitted that each of the tanks infringed the claims”);
see also Michalic v. Cleveland Tankers, Inc.,
364 U.S. 325, 330 , 81 S.Ct. 6 , 5 L.Ed.2d 20 (1960) (“Circumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”).
There is at least a preponderance of evidence sufficient to find that the accused products meet the “substantially optimally” sensitized claim limitations. DuPont, Sterling and Agfa employed designed experiments to sensitize the accused products to achieve the maximum speed consistent with other system requirements. The DuPont/Sterling and Agfa scientists who conducted such experiments were skilled in that art. Consistent with standard industry practice, Agfa acknowledged that
*267
the goal of the designed experiments was to achieve the highest speed taking into account the contemplated conditions of use and processing. Trial Tr. 1088 (Hudson) (“[W]e were almost always trying to strive to increase to get more out of the products that we could.”), 284-88, 298 (Marchetti) (describing evidence regarding designed experiments conducted by Defendants);
see also
Depo. Desig. Tab 22 (10/12/04 Hudson) at 57-60 (it was the “general goal” on all of the Sterling tabular grain X-ray films to get the best speed consistent with the fog and fog-aging parameters that were applicable);
id.
at 94 (referring to use of designed experiments to “try to find the optimum levels”); Depo. Desig. Tab 23 (02/15/07 Hudson) at 163 (scientists who conducted such experiments were skilled in the art).
At trial, Agfa’s expert Dr. Hudson conceded that the accused products were developed using designed experiments with the intent of maximizing speed while simultaneously satisfying other product specifications.
Q. Now, Dr. Hudson, it’s true, is it not, that the people that developed products at DuPont and Sterling tried to get all the speed they could out of emulsions while maintaining acceptable fog and fog aging levels?
A. Yes. And then there is [sic] also other [parameters] as well, but that’s right.
Q. And the goal was to get the best speeds possible with the fog and fog aging parameters applicable, isn’t that correct?
A. Yes. But you still have to have acceptable DMAX, contrast, safelight, for the customer, physical properties that the film itself, and, of course, the fog aging, that is the normal shelf life, just so we’re clear.
Q. The people at DuPont and Sterling conducted designed experiments to find the optimal level for those products, correct?
A. We conducted designed experiments and tried to get find the best speed we could within the constraints of having, you know, our aging test, acceptable fog contrast, these [sic] hardness of the film samples. And then that’s why we were able to find things that led us to go from 10TI and 10ST and make the big grain drop.
Q. And you used designed experiments in that process?
A. Yes, for that particular example, we probably used 100 or 200.
Q. And those people that performed the designed experiments were skilled in the art?
A. Yes.
Trial Tr. 935-36 (Hudson).
Additional evidence concerning the optimal sensitization of Cronex 10T (also internally referred to as “10ST”) and Cronex 10TL can be found at:
TX 157 (“Low Cost, Half-Speed Blue Medical Screen Film Candidate Recommendation March 17, 1997”) at A160040 (“the methods for sensitizing these grains were optimized in the laboratory”)
TX 181 (“Sterling Diagnostic Imaging Brevard R
&
D Technology Portfolio— April 6, 1999”) at A163983 (Sterling X-ray emulsions made use of “smaller/thinner tabular grains in which spectral sensitization has been fully utilized”)
TX 162 (“New Cronex®10ST Medical Screen Film Technology Assessment Report”) at A160788 (“The sensitizing dye and AF-165 have been increased to optimally sensitize” the grains)
TX 162 (“New Cronex®10ST Medical Screen Film Technology Assessment Report”) at A160791 (“The elements of the ‘improved sensitization scheme’
*268
which are used in Cronex® 10ST consist of optimized amounts of the dyes and unconventional addition times during digestion”)
TX 24 (“97-B-MR-02 10ST Cronex® 10T, (Type 578) Consumables Manufacturing Recommendation”) at A006032 (the dye, gold, mercury, TCA, and GDBAS used in the product “are all sensitizers whose amounts have been optimized”)
TX 66 (“Product Design Plan Coversheet — Low Coating Weight 10TL (579)”) at A027034 (“Aim speed ... will be achieved by employing the same sensitization techniques which were successfully implemented into Cronex 10ST”)
Evidence concerning the optimal sensitization of Agfa CP-BU (aka Agfa B Plus, DI Image Plus Blue, Radiomat B Plus, McKesson Clear Choice Performance Plus High Speed Blue, and Agfa Cronex 5) (internal designator CXIX5), can be found at:
TX 42 (“Product Development Curix Blue Mat (screen and film)”) at A017054 (“The concentration of B6B that is added is critical and 150 ml/1000 ZZ is optimal for [the emulsions used in CX1X5]. Higher concentrations produce desensitization, lower concentrations produce doka.”)
Depo. Desig. Tab 50 (06/11/04 Ver-beeck) (Agfa scientist) at 95-98 (the emulsions in CX1X5 are optimally sensitized in the sense of “total sensitization,” including “spectral and chemical”; the use of the spectral sensitizer increases the speed of the emulsion; if more spectral sensitizer were used, desensitization would occur; the amount of spectral sensitizer is sufficient to achieve total optimal sensitization)
TX 37 (“Components for a New Generation Curix UV-Blue Material” dated 10/07/96) at A015396 (table showing “Optimization of ripening solutions CX BLUE DG”; solutions include the B6B dye; “[t]his optimized ripening formula was brought into production”)
Id.
at A015397.
Depo. Desig. Tab 54 (09/08/04 Verbeeck) (Agfa scientist) at 495-96 (opti-malization of the relationship between conservation, fog, speed, and doka was achieved in CX1X5)
Depo. Desig. Tab 33 (09/01/04 Mest-dagh) (Agfa scientist) at 39-41 (with respect to the emulsions in Agfa-Gevaert Depo. Exh. 19 [TX 872; includes CX1X5], Agfa achieved at least 60% of the maximum speed achievable within the contemplated parameters reflecting the contemplated conditions and exposure; the dye was adsorbed to the surface of the tabular grains in an amount sufficient to optimally sensitize the tabular grains)
Additional evidence concerning the optimal sensitization of Curix Ortho HT-G (aka Radiomat SG and McKesson Clear Choice Performance Plus Medium Speed Green) (internal designator CXODGU.V2), DI Image Plus Green (aka Radiomat G Plus) (internal designator CXODGGV2), and Opthos H (internal designator CXOD-GAS) can be found at:
Depo. Desig. Tab 45 (05/27/04 Van Den Zegel) at 419-20 (the CXODGU.V2 and CXODGGV2 emulsions have been optimized in such a way that optimal properties are derived from the materials; that result is achieved in part by using a spectral sensitizer)
TX 57 (“Product Description Curix Or-tho DGAS”) at A019312 (AT006004) (“Co-ripening is optimal to a maximum sensitivity, with fog and doka [dark room sensitivity] being within the norm....”)
Depo. Desig. Tab 52 (06/15/04 Ver-beeck) (Agfa scientist) at 254-55 (the
*269
emulsions in CXODGAS are optimally sensitized in the sense of “total sensitization” (spectral and chemical); “we have sought an optimal performance of the emulsion”)
Depo. Desig. Tab 33 (09/01/04 Mest-dagh) (Agfa scientist) at 39-41 (with respect to the emulsions in Agfa-Gevaert Depo. Exh. 19 [TX 872; includes CXOD-GUV2, CXODGGV2, and CXODGAS], Agfa achieved at least 60% of the maximum speed achievable within the contemplated parameters reflecting the contemplated conditions and exposure; the dye was adsorbed to the surface of the tabular grains in an amount sufficient to optimally sensitize the tabular grains)
While Kodak did not produce direct evidence of what the speed or maximum speed was for each of the Agfa products, the evidence points to a conclusion that all of Agfa’s products were substantially optimally sensitized for their contemplated conditions of use and processing. The claim construction did not require that the maximum speed of the film be determined in order to conclude whether a given emulsion was optimally sensitized. Based upon statements in the patents, the claim construction articulated clearly that the contemplated conditions of use and processing needed to be taken into account and neither party filed an objection to the Claim Construction Recommendation. Indeed, at trial Kodak’s expert Dr. Marchetti acknowledged that he agreed with the construction of that limitation. Trial Tr. 282. Accordingly, it is my recommendation that Agfa’s products are all spectrally sensitized, substantially optimally chemically and spectrally sensitized, and substantially chemically sensitized.
Claim 1 of the '426 patent recites that the tabular silver halide grains having a thickness of less than 0.2 micron and an average aspect ratio of from 5:1 to 8:1 account for at least 50 percent of the total projected area of the silver halide grains present in the silver halide emulsion. Emulsions meeting these criteria are referred to as “intermediate aspect ratio emulsions.”
Claim 1 of the '425 patent and claim 1 of the '520 patent recite that the tabular silver halide grains having a thickness of less than 0.3 micron, a diameter of at least 0.6 micron, and an average aspect ratio of greater than 8:1 account for at least 50 percent of the total projected area of the silver halide grains present in the silver halide emulsion. Emulsions satisfying these criteria are referred to as “high aspect ratio emulsions.”
Claim 19 of the '425 patent and claim 19 of the '520 patent characterize the tabular silver grains as having a thickness of less than 0.5 micron, a diameter of at least 0.6 micron, and an average aspect ratio greater than 8:1 accounting for at least 50 percent of the total projected area of the silver halide grains present in the silver halide emulsion.
Kodak’s TEM images were taken at magnifications between 8469x and 10,000x, TX 1341(135), whereas Agfa uses a higher magnification of 14,000x to 18,000x to measure the grain replicas. TX 1341 (¶ 20). Agfa alleges that Kodak’s use of lower magnification levels resulted in measurement inaccuracies with respect to the projected surface area of the silver halide grain replicas, which in turn resulted in inaccuracies in the calculated aspect ratio and in the calculated percent projected area. TX 1341 (¶ 35).
An opposite case could be made,
i.e.,
that Kodak’s measurements are arguably more precise than those of Agfa’s inasmuch as Kodak used a measuring device with increments of 0.01 millimeters, whereas Agfa used a measuring device with increments of 0.5 millimeters. Trial Tr. 1082 (Hudson). In any event, neither argument is persuasive. Dr. Hudson ex
*270
plained during trial how the testimony of Agfa’s expert Dr. Apley demonstrated that any error in measurement caused by differing magnifications “averages out,” assuming that at least 100 measurements are taken.
And the other thing that we just heard from Dr. Apley is because all these measurements are random, for the most part sometimes you’re a plus, a hundredth of millimeter too long and on the next grain measuring you may get a hundredth of a millimeter too short. The beauty is all the measurement, the errors measure out he included the two sources of error. One part of was the measurement error; the other part was sampling error. The sampling error totally swamped the measuring error, so the point is we can knit pick all we want on the measurements, whether this one is more accurate than that. Once you do 100 of the measurements, the beauty is that error averages out.
Trial Tr. at 1083 (Hudson). Moreover, Dr. Cole, a former Kodak employee and expert with extensive experience in grain measurement, testified that the Kodak methodology used by Mr. Van Dam was accurate and had been implemented properly. Trial Tr. 188-92.
For these reasons, I find that no persuasive showing has been made that either Kodak’s lower magnification or Agfa’s greater measuring increments materially affects the accuracy of grain measurements by either of the parties, at least for those samples for which at least 100 measurements were taken.
Agfa asserts that Kodak, and in particular Mr. Van Dam, changed the procedures by which shadowed electron micrographs were obtained for the purposes of this action. In particular, Agfa asserts that shadowed electron micrographs taken for the purposes of this action were obtained with higher shadow angles,
i.e.,
21 to 33 degrees

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1481983. Public record. Not legal advice.