# Polaroid Corp. v. Eastman Kodak Co.

> District Court, D. Massachusetts · October 11, 1986 · 641 F. Supp. 828

URL: https://www.frixlaw.com/law-library/cases/1482978

## Case

- **Full name:** Polaroid Corporation v. Eastman Kodak Company
- **Court:** District Court, D. Massachusetts
- **Decided:** October 11, 1986
- **Citations:** 641 F. Supp. 828
- **Precedential status:** Published
- **Opinion:** Opinion by Zobel
- **Judges:** Zobel
- **Cited by:** 15 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/1482978

## Opinion text

MEMORANDUM OF DECISION
ZOBEL, District Judge.
Polaroid Corporation, the assignee of numerous patents in the field of instant photography, brought this action against Eastman Kodak Company for infringement of twelve of its patents relating to the art/technology of both film and camera. Kodak denied infringement and alleged that all of the patents are invalid or unenforceable or both.
One of the film patents, U.S. Patent No. 3,761,269, this Court, on Kodak’s motion for summary judgment, held invalid as obvious within the meaning of 35 U.S.C. § 103 . The parties waived their claims of infringement and invalidity with respect to a second patent, U.S. Patent No. 3,757,657, alleged to have been infringed by certain features of Kodak’s EK-4 camera. Trial proceeded with respect to the remaining ten patents
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on the issues of liability and infringement, on one hand, and invalidity and/or unenforceability on the other. This memorandum shall constitute my findings of fact and conclusions of law as to those issues.
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I.
Background.
In conventional photography, as opposed to instant photography, a picture begins as a sheet of plastic or paper coated with a thin layer of gel which has in it a suspension of microscopic crystals of silver halide. When that coating is exposed through the lens of the camera, the silver halide grains are modified to form an invisible image— the latent image. Exactly how the latent image is formed is apparently still subject to debate, but it involves the transformation of the silver halide into concentrations of minute, reduced silver particles depending upon the intensity of light on various portions of the film.
To make the latent image visible, the film is placed into a developer — a reducing agent. The developer delivers electrons to the concentration of silver halide grains that form the latent image and further transforms them into metallic silver. Because the developer will continue to deliver electrons to the silver halide; ultimately reducing all to silver, the process must be stopped after a period of time when the latent image has become optimally visible. This is accomplished by briefly immersing the film in a dilutable acid bath. Because exposure of the film to light would wipe out the latent image, developing must be accomplished in a dark room.
Following development, the film is put into a solvent for silver halide — hypo—
*830
which converts the remaining silver halide crystals into soluble silver salts and removes them by dissolving them. Since all of these chemicals would in time adversely affect the quality of the image, the film finally is thoroughly washed in water and dried, leaving a permanent negative image.
The negative image is formed where light converted the silver halide into metallic silver, which is seen as black. The more light reaches a particular area, the denser the concentration of silver and the darker the image in that area. The brightnesses on the negative are thus totally reversed. To produce a positive, the process just described is repeated. The negative is projected onto sensitive paper carrying a silver halide emulsion either through an enlarger or by pressing the negative directly against the positive. The positive is then processed in essentially the same manner as was the original film.
Edwin H. Land, the founder of Polaroid and the inventor of numerous patents, including several of those in suit, began work on what he came to call “one-step photography” in 1944. In 1947, he first introduced his version of the diffusion-transfer process by which the negative and positive were produced simultaneously. The film which will become the negative was exposed in the same manner as in conventional photography. The steps thereafter differed radically from those described above. The negative is brought into juxtaposition with a positive sheet within the camera and a viscous reagent contained in a sealed pod on one of the sheets is spread between them by means of two rollers. The positive and negative, which are symmetrical, are developed at the same time. After a defined period of time, the sandwich, positive and negative with reagent in-between, is pulled out of the camera and peeled apart. The camera also serves as the darkroom. Later, in the SX-70 system, the sandwich itself becomes the dark room.
One-step photography, as first marketed in December 1948, produced a sepia colored photograph. That was replaced by black and white peel-apart film in the early 1950s. At the same time that these sepia and black and white films and cameras were being developed and improved, Land and his associates addressed the problem of instant color photography.
Color photography requires three negative layers, each sensitive to a different primary color — blue, green or red. Complimentary dye layers — yellow, magenta and cyan, the subtractive colors positioned between the sensitive layers — absorb the primary color to be recorded on each sensitive layer. Thus, the blue sensitive layer controls the yellow dye layer next to it, which absorbs blue light; magenta absorbs green; and cyan, red. The dye layers are therefore sometimes called minus blue, minus green, and minus red. In conventional color photography, each sensitive layer contains a “coupler” and the dye layer a “color developer” which, by a reduction-oxidation process, will join together and form a dye. After exposure, the color developer is oxidized — it gives up electrons to the sensitive layer where the latter has been catalyzed by light. The silver halide layer is reduced — it gains electrons, enabling the col- or developer and silver halide to join. Each color uses a different coupler and the coupling process takes place within each layer. There is no transfer to different layers. Moreover, the reaction time of each coupler is different. Instant photography relies on a diffusion transfer process in which the reagents that form the negative image at the same time operate to form the positive. Coupler chemistry did not easily adapt to diffusion transfer.
At Dr. Land’s direction, Howard G. Rogers, starting in 1947, began work on the problem of instant color film. The solution he evolved discarded couplers and relied instead on dye developers, a combination of preformed dye and developer, and led eventually to one of the patents in suit, U.S. Patent No. 3,245,789 . By 1957, Polaroid had made a prototype of the first one-step color photograph, and in 1963 it introduced instant color to the market under the name Polacolor, a peel-apart product.
*831
Further work on both film and camera led to the introduction of the SX-70 system in 1972, described by Dr. Land as “absolute one-step photography.” It is an elegant, highly sophisticated camera and film system. The photographic unit, which is ejected from the camera immediately after exposure, develops into a visible image in daylight and requires no peeling. The camera designed for the particular needs of this film unit contains a motor, gear train, and pick which, working together, operate to eject the film unit. The photographer needs to do nothing but focus the camera and expose the film to obtain a finished print.
Except for the ’789 dye developer patent mentioned above and the 165/262 opacifying layer patents to Rogers, all of the patents in suit pertain to innovations incorporated into the SX-70 system.
From the early 1950s, Kodak had supplied Polaroid’s needs for negative material. After Polaroid’s development of the one-step color photograph, the parties, in December 1957, entered into an agreement pursuant to which Polaroid disclosed to Kodak certain of its color technology, including Rogers’ concept of dye developers, and Kodak cooperated with Polaroid to develop and produce negative material adapted to this technology. Kodak then continued to supply Polaroid’s requirements for negative material and the parties periodically met to discuss their research activities. About 1963, the research meetings terminated, although Polaroid continued to work on refinements and improvements in color and continued to inform Kodak of its progress from time to time. In April 1968, Polaroid advised Kodak of a radically new film, which would ultimately become the SX-70, and in October of that year, Dr. Land showed Henry C. Yutzy, Kodak's vice president of research, photographs made with the new method. The parties discussed a licensing and continuing supply arrangement, without coming to any resolution. In April 1969, Kodak notified Polaroid of its intention to terminate the 1957 agreement.
, In early 1969, Kodak also launched its project PL-976 — an effort to put an instant product on the market by 1976. The object was to produce a high quality color print in the camera which preferably would not require peeling and to do so without the assistance of existing patents. PL-976, then optimistically redesignated PL-974 (moving back to 1974 the projected market date) investigated a variety of photographic chemistries. During 1970, groups at Kodak outside the research laboratory became more interested and the project was once again renamed and restructured. Project P-129 was begun to develop an instant color film similar to Polacolor and compatible with Polaroid cameras. P-130 was to produce an integrated system — Kodak film for a Kodak camera. The former, P-129, was abandoned toward the end of 1972 after an expenditure of 94 million dollars. Although the stated reason was that Kodak had been unable to solve certain problems caused by the particular chemistry used, the cessation of work on P-129 followed shortly upon the introduction by Polaroid of its SX-70. Contemporaneous Kodak memoranda recognized that any product created by P-129 would be obsolete even if it appeared on schedule.
The P-130 effort continued with increasing intensity. Because Kodak sought to attain its objectives — camera and film— simultaneously, not sequentially, the expenditures of manpower and money were enormous. Between 1,300 and 1,400 people were assigned to P-130 at the peak period — late 1973 to mid-1975. Dr. Albert Sieg, Director of Photographic Strategic Planning, described the approach taken by Kodak. The different groups assigned to solve various discrete problems were to explore the existing technology and pursue parallel work on different applicable technologies. When no technology existed to solve a particular problem, invention was called for. That, in turn, required increased funding and increased resources. Despite these efforts, numerous problems defied solution.
*832
By the early part of 1972, Kodak had developed the “Lanyard” camera model, so called because the picture was to be ejected by use of a lanyard. It advanced the film by means of front picks. It did not contain a motor nor a gear train but did include devices to strip the pod from the photograph and to trim its edges. Although, as a consequence, the camera was relatively large, Kodak’s marketing people were content with its size. Following Polaroid’s SX-70 announcement in April 1972, and review by the P-130 committee of its implications, the committee found that the “P-130 program as earlier defined, was no longer desirable.” The Lanyard camera was too large by comparison to that marketed by Polaroid.
Kodak also encountered numerous difficulties in its attempt to develop the film. Like Polaroid, it had to work out the imaging chemistry of integral film. By the fall of 1971 Kodak researchers had focussed on two dye release chemistries but did not achieve sufficient speed with either one of them until late 1972. By mid-April 1972, Kodak researchers had still not worked out a solution to the problem of dye stability and they had yet to solve problems associated with the mordant and the opacification layers. Although they hoped to achieve a “no-inventions” prototype by January 1973, a host of difficulties remained as late as mid-December 1972.
It is undisputed that Kodak purchased large quantities of SX-70 cameras and film in October 1972, after they became commercially available. It is also undisputed that the several groups and departments involved in P-130 were ordered to familiarize themselves with the Polaroid product and to test it. As a result, Kodak’s marketing coordinators and managers commented in January 1973 that the P-130 program, as it then existed, was only “marginally acceptable.” They recognized that Polaroid had set the standard Kodak would have to meet and that even a “me-too” program would require more than two and one-half years to produce a less than equal design.
Kodak did, in fact, introduce an integral system consisting of its EK-4 and EK-6 cameras and PR-10 film in April 1976. It is those products which, in several particulars, are alleged to infringe the patents in suit. Although, as Kodak correctly points out, this case involves nine
3
different patent disputes and instant photography is not the perpetual domain of Polaroid, the response of Kodak to the SX-70 system has some bearing on the judgment concerning the underlying patents. Also while it is by no means decisive on the question of infringement of any particular patent, so does the suggestion in September 1973 of Kodak’s Development Committee that “[development should not be constrained by what an individual feels is potential patent infringement.”
Kodak denies each allegation of infringement and argues the invalidity of each claim asserted against it. I will deal with the specific allegations of infringement and validity in the discussion pertaining to each patent. Certain broad contentions recur, however, and are properly addressed here.
The parties are in substantial agreement on the standards for judging anticipation and obviousness under 35 U.S.C. §§ 102 and 103. They disagree in one area that bears on several of the patents in suit — the effect of Polaroid’s internal work and whether it constitutes part of the prior art against which the validity of a particular patent is to be judged. Work done within Polaroid which was not published is not prior art and I have not considered it in judging the validity of any patent.
Del Mar Engineering Laboratories v. United States,
524 F.2d 1178, 1182 , 207 Ct.Cl. 815 (1975).
As to each patent, Polaroid relies on the presumption of validity. Kodak claims that this presumption is in nearly every instance undercut by Polaroid’s failure to disclose pertinent prior art to the
*833
Examiner. The parties have genuine disagreements as to what constitutes prior art, but I rule that Polaroid has fulfilled its obligation to the Patent Office where the patent in suit is in the class of patents that was cited.
See, e.g., E.I. Du Pont de Nemours v. Berkley & Co., Inc.,
620 F.2d 1247, 1267 (8th Cir.1980);
International Telephone & Telegraph v. Raychem Corp.,
188 U.S.P.Q. 214 , 219 (D.Mass.1975),
aff'd,
538 F.2d 453 (1st Cir.),
cert. denied,
429 U.S. 886 , 97 S.Ct. 238 , 50 L.Ed.2d 167 (1976). In addition, prior art described in the specifications is expected to be considered by the Examiner.
Gould v. General Photonics Corp.,
534 F.Supp. 399, 403 (N.D.Cal.1982). Patent Examiners are also presumed to be aware of patents which issued from applications they had earlier examined.
Hahn & Clay v. A.O. Smith Corp.,
320 F.2d 166 , 172 n. 15 (5th Cir.),
cert. denied,
375 U.S. 944 , 84 S.Ct. 351 , 11 L.Ed.2d 274 (1963).
In support of its argument that the patents are valid, Polaroid points to the commercial success of the processor product disclosed. The SX-70 camera and film system has unquestionably been immensely successful, as has Kodak’s product. The evidence presented is, however, inadequate to permit me to assign to any one patent credit for the commercial success of the whole. Accordingly, this factor has played no part in the decision.
Finally, I have for the sake of completeness proceeded to consider the issue of infringement even as to those claims found to be invalid.
II.
U.S. Patent No. 3,362,821
Land U.S. Patent No. 3,362,821 concerns stabilization in one-step color photography. All photographic processes, as described earlier, implicate three steps — exposure (formation of the latent image), development (formation of a visible image), and stabilization (cessation of chemical reactions and preservation of the visible image). In conventional photography stabilization is accomplished by subjecting the film to different chemical solutions seriatim. One-step photography, by definition, required telescoping all of the steps, which is not to say that numerous steps did not occur sequentially within film and camera. Thus, chemicals were needed which would, when combined with the processing composition, permit development, then stop it at the optimal point and thereafter remain neutral. Solution of this problem was complicated by the fact that each type of film, sepia, black and white, and color, unexpectedly called for markedly different stabilization techniques.
Polaroid’s first one-step film, introduced in 1948, produced sepia prints in a peel-apart format. For stabilization, Dr. Land used metal salts and water soluble esters. In the presence of the processing composition, the metal salts reacted with the esters to reduce the pH. Because their reaction rate with the alkali of the processing composition was relatively slow, they permitted formation of the image before they broke up to produce alcohol and neutralizing acid. Finally, the reaction of the several components of this system reduced the pH to an ideal level, just above neutral. Too much acidity would cause production of sulfur which, in turn, would attack silver and ultimately destroy the photograph.
This stabilization mechanism was highly successful also because the photographer needed to do nothing but take the picture. Brown pictures were not ideal, however, and there was great pressure to produce black and white film.
Because both sepia and black and white film involved silver transfer, Dr. Land and his associates had thought that the same stabilization process would work with black and white film. They found that it did not. To obtain a black and white print, the aggregation of silver ions was changed. That produced a shield. As a consequence, the metal salt, lead acetate, could not uniformly penetrate the black and white surface and the migration of the esters was also retarded. The ultimate solution was the print coater. The photographer had to swab each positive with a solution of a polymer and acetic acid that both washed the film and gave it a protective coating.
*834
This stabilizing system also required redesign of the black and white image and the support.
Color film called for still different techniques. The timing needs of color were different from those of both sepia and black and white. During the 1950s and into the early 1960s, when Polaroid and Kodak still cooperated, scientists from both camps discussed a number of proposals, including a suggestion of Kodak’s Dr. Vittum to use an acid layer of commercially available sulfostearic acid.
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None worked successfully and as the scheduled date for marketing the new color film, Polacolor, approached, Polaroid expected to offer the film with a print coater. Even that, however, presented difficulties. Because the problems inherent in stabilizing color film differ radically from those pertaining to black and white, the coaters used different materials and required different “skills” from the user. The color print had to be coated within five seconds after removal from the camera. It had to be swabbed 16-18 times and the coating was slow to dry.
The print coater was not only cumbersome and difficult to use, it also lacked elegance. During the summer of 1962, Dr. Land and his associates engaged in intensive investigation of alternative stabilizing techniques. To succeed, the stabilizing system had to meet three requirements. It had to allow the processing emulsion to retain its alkaline characteristics long enough to permit adequate image development and dye transfer. It then had to drop the pH abruptly and permanently to prevent further development and dye transfer, and third, it had to remove from the image-receiving layer the alkali metal ions introduced by the processing emulsion. The alkali metal ions, if not removed, would precipitate as salts in the image receiving layer and in time cause the image to become dull.
In September 1962, Land conceived and indeed suggested to Messrs. Yutzy and Damschroder of Kodak, the use of a nondiffusible polymeric acid and associated timing layer. Unlike the esters which first had to decompose to provide a neutralizing acid, the acid polymer would react instantly upon contact with the alkali. The acid polymer would then abruptly drop the pH in the film structure by removing alkali metal ior.s from the processing solution and attaching them to itself. The layer had to be thick enough to provide adequate polymeric acid to accomplish the task, and a mechanism had to be incorporated to delay the reaction until the completion of development. The idea had two additional advantages. The polymeric acid, by removing the alkali metal ions, prevents the precipitation of metal and attendant dullness of picture. It thus produces more brilliant images. Color diffusion transfer by its very nature requires the disposition of a larger volume of alkali than does sepia or black and white film. The polymeric acid layer disposes of that alkaline environment and thus enables maintenance of a good image indefinitely.
Polaroid immediately incorporated the concept of a nondiffusible polymeric acid layer into its Polacolor film which was, with that stabilization mechanism, introduced to the market in 1963. Dr. Land considered building the polymeric acid layer described above into two possible locations of the film unit: between the support and the adjacent image-receiving layer; or beyond the far part of the negative, that is, between the support associated with the negative and the innermost layer of dye developer. Two patents issued on this invention, one pertaining to the location of the acid layer near the positive, Land U.S. Patent No. 3,362,819 ; the other pertaining to an acid layer near the negative, Land U.S. Patent No. 3,362,821, the patent in suit. Polacolor employs the location described in the ’819 patent. Polaroid alleges
*835
that Kodak’s PR-10 film, which admittedly contains an acid layer, places the layer in the photosensitive element thereby infringing the ’821 patent.
The ’821 patent discloses a layer of a nondiffusible acid-reacting reagent in the photosensitive element. It describes the preferred embodiment of the invention as a layer containing an acid-reacting polymer, and particularly, a polymer-containing free carboxyl group. The patent uses the shorthand expression — a polymeric acid layer. It includes a list of specific polymeric acids suitable to the purpose. The specifications teach that the polymeric acid layer is preferably 0.5 to 1.5 mils thick; that is, relatively thick as compared, for example, with the dye layers.
The acid layer contains acid groups attached to a polymer so as to be nondiffusible. It reduces the pH in the image-receiving element by attracting alkali ions and then trapping them by precipitating them into the acid layer. The patent accordingly describes the acid layer as “a mordant for alkali.”
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It further teaches that the action of the polymeric acid must be controlled so that it will not interfere either with the development of the negative or with the image transfer of unoxidized dye developers. In other words, the reduction of pH must be properly timed. The patent suggests three timing mechanisms. A separate spacer layer of inert polymer may be used to delay contact between the alkali ions and their trap, or an inert poisoner may be mixed into the acid polymer to make the acid less accessible to the alkali ions. A third method calls for an acid layer with a relatively lower concentration of acid groups, again to prevent too rapid attraction and precipitation of alkali ions.
The patent states that the polymeric acid layer “is provided in the photosensitive element and is positioned adjacent the support, i.e., between the innermost layer of dye developer and the support.” That positioning is depicted as well in Figure 1 of the patent. The specifications by reference to Figure 1 describe the photosensitive element as comprising “a support bearing, in turn, a layer containing as a nondiffusible acid-reacting reagent, a polymeric carboxylic acid ...” and the dye developer layers. The image-receiving element comprises a “support carrying an image-receiving layer.”
Claim 1 is the only claim asserted against Kodak. In the context of color diffusion transfer processes, it claims the use of a layer of a nondiffusible polymeric acid containing sufficient acid groups to effect a reduction of at least two pH units in the surface of the image-receiving layer, compared with the initial pH of the processing composition, prior to the completion of the imbibition period. The acid layer is claimed to be contained in the photosensitive element and positioned between the support and the innermost negative layer.
Kodak denies infringement and contends that the patent is, in any event, invalid under 35 U.S.C. §§ 102 , 103 and 112 and that it is unenforceable. It relies in its post-trial brief on two prior art references listed in the Section 282 Notice: U.S. Patent No. 2,584,030 and Kodak French Patent No. 1,293,709.
6
The ’709 patent is said to disclose the process described in claim 1 of ’821 and thus to render that claim invalid under 35 U.S.C. §§ 102 (a) and 102(b). French Patent No. 1,293,709 describes color diffusion transfer processes employing coupler chemistry in which the photosensitive element is exposed, an alkaline-processing solution is applied, and a diffusible colored image is transferred to an image-receiving layer. It acknowledges that in “processes involving the transfer of dye images to mordanted reception layers, small amounts
*836
of alkali ...” may also be transferred and may be objectionable. One proposed solution is to wash the reception layer to remove such materials, and one method offered is “to squeegee the dye images into contact with a moist sheet containing ... an acrylic acid polymer ... to neutralize the alkali____” Alternatively, it suggests providing “a hydrophylic [sic] organic colloid layer containing the mentioned acids ... between the mordanted support and ...” reception layer, which layers are later stripped from the mordanted support.
I find that ’709 does not anticipate claim 1 of '821. The acid layer in ’709 is not located in the photosensitive element, but between the photosensitive layer and its support. Both Dr. Land and Kodak’s expert, Dr. Trautweiler, agreed that the ’709 layer does not reduce the pH of the surface of the mordanted support, the analog of the image-receiving layer of ’821. More fundamentally, the acid layer of ’709 is a scavenging layer designed to prevent alkali from reaching the mordanted support, not a stabilizing system designed to stop the development process and prevent subsequent chemical reactions. The experts agreed, moreover, that they knew of no commercial unit in which dyes diffuse through an acid layer, that is, one in which the acid layer is positioned as in ’709. That patent does not describe the process of '821 and the process it does describe does not solve the problem addressed by '821.
Kodak asserts that ’709, in any event, and U.S. Patent No. 2,584,030 disclose the technique of using an acid layer in the photosensitive element to reduce pH and that ’821 therefore represents no more than the application of routine skill. Kodak’s assertion is premised on a most narrow reading of the patent in suit, namely, that the purpose of the acid layer is to neutralize the processing composition and thereby to prevent stain caused by the oxidation of the developer. I do not, in view of the evidence adduced at trial, treat the invention so severely. The ’821 patent describes a system of stabilization that not only lowers the pH but does so in a specified manner with a timing mechanism. Its purpose is not merely to prevent stain but also to increase the light-stability of the dyes in the image. The specifications and examples teach the use of particular acids and acid layers of particular thicknesses. They teach three different timing mechanisms, which are earlier detailed, and the means of achieving light stability through trapping positive cations in the acid layer so that they cannot go to the image layer and damage it.
For the reasons outlined earlier, I do not find in the '709 patent the teaching of the stabilization system of ’821, even to one of the high level of skill characteristic of those engaged in this field. The single reference on page 52 of a 53-page document
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to a “hydrophylic [sic] organic colloid layer containing ... acids” to remove “small amounts of alkali” from the mordanted reception layers does not teach the use of an acid layer with a timing mechanism. Nor does the peel-apart film of ’709 teach the location of the acid layer “in the photosensitive element.”
The second prior art reference relied on by Kodak is Land’s ’030 patent, issued ten years before ’821. It teaches stabilization techniques useful for sepia images and describes two processes, one using heavy metal salts and the other, an acid. One of the acids specified is cellulose acetate hydrogen phthalate, which is also a preferred polymeric acid in '821. The ’030 teaches the need to reduce the pH of the liquid composition to 7, 6 or lower, and while it is preferable that “the acidifying substance” be “included on or associated with the image-carrying layer ...” such is not essential and “it might, for example, be positioned between the photosensitive layer and the base carrying this photosensitive layer____” This patent, like ’709, describes a peel-apart film structure. The acid layer
*837
is available to the alkaline reagent directly so that neutralization occurs immediately. The amount of acid must be small enough not to interfere with silver development. During processing, the acid is slowly dissolved by the processing composition while simultaneously the pH of the processing composition is slowly lowered.
I credit the testimony of Dr. Land that this mechanism does not teach the system embodied in ’821. To say, as did Dr. Trautweiler, that if one deletes the words “col- or” and “dye” from claim 1, one gets the process described by the ’030 patent does not take sufficient account of the essential differences between the processes for sepia and color. Color diffusion transfer requires more time than the simpler silver transfer of sepia, and color requires the removal of the alkali metal ions from the environment of the image entirely. Neither these unique requirements of color, nor the mechanisms disclosed in ’821 for meeting them are disclosed in ’030.
The evidence is undisputed, moreover, that the art had been full of experiment for several years, but no one had perceived the particular conformation, position and qualities of the ’821 polymeric acid layer for stabilizing color diffusion transfer film units until Dr. Land did in 1962. He was the first despite the fact that the parties in this case include on their staffs, without doubt, the world’s preeminent experts in the field of instant photography.
Kodak further argues that the ’821 patent is invalid because it does not teach how to make the claimed invention as required by 35 U.S.C. § 112 . One of the requirements of claim 1 is that the polymeric acid layer contain sufficient acid groups to effect reduction in the pH of the surface of the image-receiving layer of at least 2 pH units compared with the initial pH of the processing composition. Kodak’s expert, Dr. Trautweiler, calculated the drop in pH in several examples cited in ’821. His computations show a substantially smaller reduction and Kodak argues therefrom that the patent does not teach how to make the claimed invention. The calculations are just that — they are not based on experimental data. Moreover, Dr. Trautweiler did not view the system as a whole. Other components effect some reduction of pH before the acid layer begins its work. But the acid layer completes the process and does thereby cause reduction of the pH on the surface of the image-receiving layer by at least two pH units. In this fashion, the invention works precisely as claimed.
Finally, Kodak contends that the patent in suit is unenforceable because Polaroid’s attorney and Dr. Land allegedly misrepresented the content of ’030 to the examiner and failed to inform the Patent Office of the existence of the ’709 patent. To prevail in this defense Kodak must show that Dr. Land and his attorney made misrepresentations with knowledge of their falsity or in an atmosphere of gross negligence as to their truth. It must further show that any information withheld was material. Materiality means facts known to the applicant which but for nondisclosure would have prevented the patent from issuing or would have restricted the claims.
Digital Equipment Corp. v. Diamond,
653 F.2d 701, 715 (1st Cir.1981) (citing
Union Carbide Corp. v. Filtrol Corp.,
170 U.S.P.Q. 482 (C.D.Cal.1971),
aff'd,
179 U.S.P.Q. 209 (9th Cir.1973)). The First Circuit does point out that the questions of culpability and materiality are interrelated such that an intentional scheme to defraud may require a lesser showing of materiality; a negligent misstatement, a greater one.
Digital Equipment Corp. v. Diamond,
653 F.2d at 716 .
The ’030 patent was unquestionably cited to the examiner. Given my finding above on the relevance of its contents to the invention of the patent in suit, I find that Dr. Land and his attorney did not in any way misrepresent its significance. French Patent No. ’709 was not cited at all, but I credit the testimony of the attorney, Mr. Mervis, that he was unaware of it until many years later. I find, therefore, that the ’821 patent is valid against all of the defenses raised by Kodak.
*838
The issue of infringement hinges on the definition of the location of the acid layer in Kodak’s PR-10 film. Specifically, the question is whether the acid layer is “in the photosensitive element.” The parties do not disagree that the PR-10 acid and timing layers are positioned between a support and the photosensitive silver halide and associated dye layers. But Kodak points out first that in the manufacture of PR-10 the acid layer is coated on one support, the negative layers on another support, and that they are manufactured as separate elements and then assembled into one film unit. Because the negative and acid layers are coated on different supports, it argues, the acid layer is not positioned “in the photosensitive element.” The difficulty with that argument is that claim 1 is admittedly a process, not a product claim, and in defining the process it describes the position of the acid layer in the photosensitive element precisely where it is located in PR-10, “between the support and the innermost layer containing ... dye image-forming substance.” The photosensitive element is described in the specifications as including, in order, a support, a polymeric acid layer, a spacer or timing layer, and the layers containing the silver halide emulsions and dye developer. Regardless of the manner of manufacture, the sequence of layers in PR-10 is that described in the patent, and during processing, PR-10 is comprised of the same layers depicted in Figure 1 of the patent and has the same structure described in claim 1.
Conflicting definitions of “photosensitive element” in other Polaroid patents do not save PR-10 from the claim of infringement. The term clearly has various possible meanings, as is shown by Kodak’s recital of other references. ’821, however, provides its own clear definition.
8
A patentee is entitled to choose his own terms and to insist on them so long as he is consistent and does not contravene any single established or accepted meaning.
Mooney v. Brunswick Corp.,
663 F.2d 724 (7th Cir.1981);
Harrington Manufacturing Co. v. White,
475 F.2d 788 , (5th Cir.),
cert. denied,
414 U.S. 1040 , 94 S.Ct. 542 , 38 L.Ed.2d 331 (1973).
For the reasons stated, Land U.S. Patent No. 3,362,821 is valid and infringed by Kodak’s PR-10 film.
III.
U.S. Patent No. 3,245,788
As noted earlier, Howard G. Rogers began in 1947 to explore the possibility of importing color into one-step photography. Conventional color photography relied on coupler chemistry to produce color. A col- or developer became oxidized, and as a result combined with a coupler compound to form a dye. Different couplers were needed to produce different colors and each had a different reaction rate, making this process unsuitable for diffusion transfer which required a synchronization of reactions that coupler chemistry simply did not permit. Rogers sought to solve that problem by his coupling dye process disclosed in U.S. Patent No. 3,087,817, a patent not directly involved in this litigation. It used preformed dyes with coupling groups attached. In that process, the oxidized color developer joined with the coupler and its attached dye and thereby controlled not the formation of dye but the transfer of the preformed dye to the positive layer. That is, when the processing composition is introduced, the color developer is oxidized where silver halide was exposed and, as described before, it then joins with the coupler. The junction of color developer and coupler forms an insoluble compound which remains in the negative layer and is ultimately discarded as the negative is peeled. Where silver halide was not exposed no oxidation-reduction and no coupling takes place; the coupler with dye attached re
*839
mains soluble in the processing solution and can transfer to the positive layer. The coupling dye process eliminated the problems attendant on different reaction times as the same coupling groups could be used for all dyes. But all color developer compounds used in the coupling process, paraphenylenediamines, themselves presented other difficulties. They were unstable when stored in the negative and had a tendency to desensitize the silver halide emulsion; they sometimes stained the picture; they could cause dermatitis; and they gave relatively slow reaction time and film speeds.
In the early 1950s, Mr. Rogers proposed an entirely new approach, the use of dye developers. A single molecule of such compounds contains both dye to form the image and developer to develop the latent image in exposed silver halide and to control diffusion.
9
The idea was to change the solubility and therefore mobility of the dye through oxidation by the developing silver. Mr. Rogers, in fact, hypothesized two possibilities, a “positive” dye developer which as a consequence of oxidation would produce a less soluble product, and a “negative” dye developer which would create a more mobile dye product. These concepts were ultimately embodied in two patents, respectively, U.S. Patent No. 2,983,606 and No. 3,245,789, the patent in suit. The positive dye developer process disclosed in the ’606 patent is the one which Polaroid has used commercially in all of its color films since the introduction of Polacolor. Polaroid alleges that the negative dye developer process was incorporated into Kodak’s PR-10 film.
The positive dye developer process works as follows. After exposure and the introduction of the processing compound, an auxiliary developer, which may be included in the processing compound or built into the negative layer, will in the exposed portions of silver halide, give its electrons to the silver halide. It, in turn, takes electrons from the dye developer, which thereby becomes oxidized. Oxidation precipitates the dye, thereby fixing it in the negative layer. Where silver halide was not exposed, the dye developer is not oxidized; the dye is not precipitated, and the dye therefore is able to transfer to the positive layer to form the colored image. In both the developed and undeveloped portions, the silver halide stays in the negative. Where the scene is light, the dye is held back in the negative by its precipitation there, while in the darker portions of the picture where silver halide remains undeveloped, and the dye developer unoxidized, the dye is free to move to the positive, the image-receiving layer.
As described in Rogers U.S. Patent No. 3,245,789, issued to Polaroid Corporation on April 12, 1966, on Application Serial No. 107,889, filed on May 5, 1961, in the negative dye developer process the dye is transferred to the positive layer in the exposed — the developed — region of silver halide. In general terms, the dye developer, which has relatively low mobility to begin with, is, as is true for the positive dye developer process, oxidized. In the negative dye developer process, however, the dye developer splits off a dye molecule as a result of oxidation. This molecule then has a lower molecular weight and greater solubility, so it becomes more mobile. It is then able to transfer to the positive layer. Where silver halide is not exposed, the dye developer is not oxidized and not split. Being relatively immobile, the unoxidized dye developer remains in the negative.
Specifically, the patent discloses a color diffusion transfer process for forming col- or photographs or transparencies using compounds referred to as “negative transferring developing agents.” If colored, these compounds are described as being dye developers in the reduced state, “i.e.,
*840
they are compounds which are both dye and a silver halide developing agent.” They are characterized as being “relatively nontransferable to the image-receiving layer” but they form a substantially more mobile, diffusible oxidation product. That is, the colored oxidation product is more diffusible than the unoxidized negative transferring developing agent.
The patent suggests that the photosensitive element of the film unit, the negative, contains in the silver halide emulsion a layer of the dye developer.
10
When, after exposure, the liquid processing composition is introduced, it permeates the emulsion to provide a solution of dye developer. Then, as the exposed silver halide is developed, the oxidation-reduction reactions previously described and the attendant transfers of dye molecules take place.
Polaroid charges infringement of claims 5 through 9. Claims 6 through 9 are dependent on claim 5.
Claim 5 describes the process outlined above. Claim 6 adds the requirement that the mobile oxidation product be a dye that absorbs light in the same region of the spectrum in which its associated silver halide emulsion is sensitive. Claim 7 provides for positioning the dye developer layer between the silver halide emulsion and the film unit support. Claim 8 claims the addition of an auxiliary developing agent, which is colorless. Claim 9 adds the requirement that development be effected in the presence of an antifoggant.
11
Kodak challenges the validity of the patent and denies infringement. It asserts, first, that the process taught in the patent and claimed in claim 5 does not in fact work, as required by 35 U.S.C. §§ 101 and 112. Second, it contends that the process is anticipated by the prior art and that it is, in view of the prior art, obvious. Resolution of these contentions depends on the date of invention and the scope and content of the prior art applicable in light of that invention date. Finally, Kodak argues that PR-10 practices the prior art and not the teaching of the patent in suit. Therefore, either the patent in suit is invalid in view of the prior art or, if valid, it is not infringed.
Section 101 provides that “whoever invents ... any new and useful process ... may obtain a patent therefor.” Section 112 requires that the specification contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same____”
Kodak asserts first that the ’789 invention is useless because, as described, it will produce at best a poor image. This is so, it says, because the negative dye developer must be mobile even in the unoxidized state to serve as the developing agent for the silver halide. That is, unless the dye developer molecules are mobile, they cannot move into contact with the silver halide. Kodak asserts that if they are mobile, the developer molecules will transfer to the positive layer unoxidized and thus cause poor image discrimination. Second, Kodak argues that the patent, in fact, discloses only one negative dye developer compound, bis-sulfonyl hydrazide, and that this compound does not work even in a peel apart format which mechanically stops any further diffusion transfer.
A fortiori,
it does not work with integral film.
The argument does not accord with the appropriate legal standard and it misconceives the disclosure of the patent. A patent is invalid under § 101 if the “invention is ‘incapable of achieving any of the aims of the patent under any conditions.’ ”
E.I. DuPont de Nemours & Co. v. Berkley &
*841
Co.,
620 F.2d 1247 , 1258 n. 10 (8th Cir.1980). The process described in this patent does occur precisely as planned. Experiments by both parties demonstrated that the negative dye developer molecule split when oxidized and thereby produced a mobile dye which transferred to form an image that corresponded to developed areas in the negative. Although the evidence showed that the images obtained were poor, because more dye developer transferred than is desirable, I credit the testimony of Mr. Rogers that the solution, to add a larger ballast, was an expedient well known in the art. Indeed, Dr. Lee J. Fleckenstein, a senior research associate in the Color Instant Laboratory Division of Kodak, testified at length about the experiments he conducted, beginning in 1958, with various compounds and ballasting groups. I am persuaded therefore that one of ordinary skill in this field “would be able to understand the patent disclosure and, from that disclosure, using the skill of the art, could build an operative system.”
Decca Ltd. v. United States,
544 F.2d 1070, 1077 , 210 Ct.Cl. 546 (1976),
cert. denied,
454 U.S. 819 , 102 S.Ct. 99 , 70 L.Ed.2d 89 (1981). Accordingly, the patent is not invalid under either § 101 or 112.
The remaining issues of invalidity are bound up with the issue of infringement. They all require determination of the date of the invention of ’789 and the manner in which the processes described in the cited patents and patent applications and those of PR-10 and ’789 work.
The background of the inventions disclosed in the ’606 positive dye developer and ’789 negative dye developer patent is outlined above. Mr. Rogers conceived of the idea of both positive and negative dye developers at some time during the early 1950s. He thereafter conducted experiments with positive dye developers and succeeded in obtaining image transfer by 1955. He did little, if any, work with negative dye developers because they were relatively slow and required the use of reversal emulsions. Mr. Rogers had, however, observed the effects of negative dye developers and he recalled that the images were poor and transient.
In 1955, Polaroid very broadly disclosed both positive and negative dye developers in the form of an amendment, claim 28, to a pending patent application, Serial No. 415,-073. The claim was rejected by the Examiner and Polaroid eventually cancelled it without prejudice. Polaroid did not by this action concede invalidity of that claim.
In 1957 Polaroid disclosed both positive and negative dye developer processes to Kodak pursuant to the mutual disclosure agreement made in December, 1957. That document states that “Polaroid has examined a large number of processes for obtaining transfer images in color,” and that except for a few described in the literature, these processes are described in patents and patent applications appended to the document. The descriptions refer to particular chemicals and the manner in which they react; the use of reversal emulsions, antifoggants and auxiliary developers; and a variety of arrangements of the several layers of a film unit. The document also asserts that “[Njegative transfer images may be obtained by forming a mobile dye as a result of development of the latent image____” It specifically discloses the use of “a sulfonyl hydrazide of one or two molecules of a dye,” the class of compounds used in Example 1 of the patent.
The application for the ’789 patent was filed on May 5, 1961.
Polaroid claims an invention date at least as early as 1953, but, in any event, no later than December 1957. To sustain either date, it must prove both that by that date Mr. Rogers had conceived of the negative dye developer and that he had reduced it to practice. That is, Polaroid must show not only that Mr. Rogers formulated the process in his mind, but also that the process had been successfully performed. To show reduction to practice it must show that “the series of steps constituting the process ... [have been] carried out in such a manner as to demonstrate the practicability of the process.”
Bell Telephone Laboratories v. Hughes Aircraft Co.,
422 F.Supp.
*842
372, 380 (D.C.Del.1976) (quoting 1 Rivise and Caesar,
Interference Law and Practice
§ 131 (1980)),
aff'd,
564 F.2d 654 (3d Cir.1977),
cert. denied,
435 U.S. 924 , 98 S.Ct. 1489 , 55 L.Ed.2d 518 (1978).
Despite the disclosures in the 1955 patent application and the 1957 document to Kodak and despite the fact that the latter refers to the compounds ultimately specified in the patent, Polaroid adduced no evidence of any documented experiments that demonstrated the efficacy of negative dye developers until the experiments conducted in November 1960. Mr. Rogers’ testimony concerning his observations during the 1950s was tentative and constitutes tenuous evidence of reduction to practice at best. Accordingly, I find that ’789 is entitled to an invention date of November 1960.
To show both invalidity and noninfringement, Kodak relies on the splittable coupler process represented by its British Patent No. 840,731 granted on July 6, 1960 and three references based on inventions of K.E. Whitmore and P.M. Mader of Kodak.
12
The last three are also directed to the splittable coupler process; but they disclose in addition a “deamination” process.
In the splittable coupler process of the British patent a mobile color developing agent develops the exposed silver halide and becomes oxidized. It then moves to a dye release compound composed of a preformed dye to which is attached a conventional color coupler (para-phenylenediamine) and ballast group. The oxidized developer displaces the dye molecule which is thereby split off. The dye thus becomes mobile and is able to transfer to the image receiver. It is a process that, all parties agree, takes place in two steps and is relatively slow.
The deamination process of Whitmore-Mader also operates in two steps. It uses black and white, not color developer. However, the initial reaction is similar to that of the splittable coupler process. The developer reacts with exposed silver halide and becomes oxidized. It too moves to an immobile dye group but instead of simply displacing the dye molecule it first oxidizes the dye compound, thereby being itself reduced to its original state. The oxidized dye group, which is called a “quinoneimine,” undergoes another reaction. As the Australian specification puts it, “subsequent treatment with, for example, strong alkali causes deamination to take place and the splitting off of ...” a diffusible dye for transfer to the reception layer. The residue is still ballasted and therefore immobile; it remains behind. Because the split dye segment contains an “amino” group, the process is called “deamination.”
In the PR-10 process, according to Kodak, black and white developer is oxidized by exposed silver halide. The oxidized developer moves to the adjacent layer of a ballasted immobile dye release compound, sulfonamidonaphthal, oxidizes it and becomes itself again reduced. The oxidized dye release compound, a quinoneimide, undergoes hydrolysis, resulting in its being cleaved into a mobile, diffusible dye and an immobile ballasted group. Because the split dye contains an amide group, Kodak calls the process “deamidation.” Kodak asserts that this is the process described in the prior art and that it is a process different in kind from that described in ’789; but if it were deemed to infringe ’789, then ’789 is both anticipated by and obvious in view of that prior art.
Kodak’s first argument, that its PR-10 process is different from and does not infringe the process disclosed in ’789, has several elements. It asserts that in the ’789 process, the dye containing compound, the dye developer, is mobile and moves to the silver halide, whereas the corresponding compound of PR-10 does not. It further argues that in ’789 the dye compound develops silver halide; in PR-10 it does not. In ’789 oxidation of the dye compound causes a diffusible dye molecule to be split off; in PR-10 oxidation forms a
*843
new immobile compound with dye still attached. The dye splits off only upon the next reaction, hydrolysis. In ’789 the oxidation reaction is irreversible; in PR-10 the developer compound is oxidized by the silver halide but then returns to a reduced state after oxidizing the dye compound.
Kodak’s analysis of the ’789 process is premised on a strained and narrow reading of the patent and it hinges on the terminology used in describing these two processes. If the terms are changed, the analysis fails. First, claim 5 of the patent does not require the dye containing compound and the developing agent to be one and the same. Therefore, it does not require that the dye-containing compound be mobile so as to contact the silver halide.
See infra
note 9.
Claim 5 does not call for development
by
the negative dye developer; rather it states that silver halide is developed
“in the presence of
a negative dye developer.” (emphasis added). I credit the testimony of Mr. Rogers that the auxiliary developer is the agent that contacts and develops silver halide. It moves back and forth between the layers of dye developer and silver halide, oxidizing the former and reducing the latter. The fact that claim 8 of the ’789 patent specifically calls for the use of an auxiliary developer does not mean that claim 5 is not broad enough to include its use.
See Application of Smythe,
480 F.2d 1376, 1381-82 (C.C.P.A.1973);
United States v. Adams,
383 U.S. 39, 48-49 , 86 S.Ct. 708, 712-13 , 15 L.Ed.2d 572 (1966). Thus the patent does not require either explicitly or implicitly, that the dye developer be mobile before oxidation.
13
Functionally, therefore, the negative dye developer of '789 corresponds to the dye release compound of PR-10, not to the developer or electron transfer agent of the latter.
Second, Kodak’s argued distinction between the oxidation processes is as well more apparent than real. The oxidation and cleaving reactions of PR-10 and ’789 occur in a similar manner and with one treatment. The parties agree that oxidation of the negative dye developer of ’789 results in splitting off a diffusible dye molecule. The reaction takes place in the alkaline processing composition and it is without question a one-step reaction. ’789 does not describe a separate alkali step, but the alkali attack is an important part of the reaction.
The oxidation and splitting reactions in PR-10 also take place in the alkaline solution and I find that they occur essentially simultaneously. That is, when oxidized, the dye compound cleaves into dye and immobile by-product virtually instantaneously. I credit the testimony of Mr. Rogers that the reaction mechanisms ’789 and PR-10 are the same. Although Kodak describes the PR-10 process in terms of successive oxidation and hydrolysis reactions, those, in fact, occur at the same time; in Mr. Rogers’ words, the reactions happen “in one fell swoop.”
Finally, there is no difference between the two processes in the manner in which the developer (the electron transfer agent — the black and white developer of Kodak and the auxiliary developing agent of Polaroid) functions. In both, the developer is alternately oxidized by the exposed silver halide and reduced by the dye containing compound.
Kodak unquestionably spent considerable time and effort to achieve a dye release process and I do not doubt the testimony of Dr. Fleckenstein concerning his experiments in 1969 with sulfonamidophenols and his observation of their reactions. The sulfonamidophenols are in reality, however, another species of negative dye developer. PR-10 in fact employs sulfonamidonaphthols but the parties agree that they are simply a stronger developer. They do not
*844
differ in reaction from the phenols. I find that those compounds follow the same reaction path as do the compounds of the ’789 patent.
Kodak additionally argues, however, that if PR-10 and ’789 are construed to involve the same process, then the process disclosed in ’789 was anticipated by the prior art and therefore the patent is invalid. I find that both processes are fundamentally different from those described in the prior art. The Whitmore-Mader proposal requires after oxidation of the dye compound “subsequent treatment with ... strong alkali” which causes deamination and splitting off of the dye. In contrast, ’789 and PR-10 are one-step processes. The Whit-more-Mader process is, moreover, of questionable utility. The dye group specified is a para-phenylenediamine compound and therefore suffers all the disadvantages attendant on the use of that chemical. Mr. Rogers testified that the process has no commercial value for the additional reason that the compounds specified could give rise to extraneous competing reactions that would result in less mobile dyes and a reduced yield of diffusible dye.
14
Kodak did not, in fact, pursue the deamination proposal in the succeeding continuation-in-part application which resulted in the grant of a patent. Whitmore-Mader does not anticipate ’789 nor are the teachings of '789 obvious in view of Whitmore-Mader.
The PR-10 process infringes every element of the claims of the ’789 patent that Polaroid has asserted. It is a diffusion transfer process in which exposed silver halide is developed “in the presence of” a sulfonamidonaphthol dye releaser which is a colored silver halide developing agent. In PR-10, the dye releaser or developing agent is oxidized as a function of development and forms an oxidation product, the dye, which is more mobile in the alkaline solution than was the dye releaser, and which transfers by diffusion to the image-receiving layer. It thus infringes claim 5.
PR-10 also fits the added elements of claims 6 through 9. It employs the relationship between dye color and silver halide sensitivity specified in claim 6. The dye releaser of PR-10 is positioned in the photosensitive element in a layer between the silver halide and the support, as required by claim 7. The electron transfer agent of PR-10 is the colorless “additional silver halide developing agent” of claim 8 and development is effected in the presence of an antifoggant as required by claim 9.
Because ’789 does not practice the teaching of Whitmore-Mader, it is neither anticipated by nor obvious in view of those prior art proposals. Because PR-10 does practice the teaching of '789 it infringes the asserted claims of that patent.
IV.
U.S. Patent Nos. 3,594,165 and 3,689,262
The development of a photograph must occur in a darkroom because exposure of the latent image to light will destroy it. The conventional darkroom has no place in instant photography, however, so Polaroid evolved several means of shielding the negative from light during development. The camera itself served as darkroom in some models; the film unit did in others. The latter solution typically consisted of light-tight external layers, one of which was coated with the image-receiving layer, while the other was designed to be peeled away after development to enable viewing of the picture. Absolute instant photography as envisioned by Dr. Land required a darkroom mechanism by which the film unit would remain intact before, during and after exposure and would not
*845
be physically altered after processing. It also required a mechanism whereby development could take place outside the camera and in daylight. The solution was an internal opacifying system, one manifestation of which was used in the SX-70 system.
The basic SX-70 film structure is disclosed in U.S. Patent No. 3,415,644 issued to Dr. Land. It consists of a transparent support on which are coated the neutralizing and image-receiving layers and an opaque support on which are coated the negative layers. The two supports are joined at their edges and the processing composition, which contains an opacifying agent, is spread between them. The darkroom is thus formed by the opaque support and the opacifying agent. Two fundamental problems inhere, however, in that arrangement. First, because the film is exposed through the same side through which the image is ultimately viewed, a means for reversing the negative image must be incorporated. Second, the opacifying agents specified in the patent, titanium dioxide, a white substance, and carbon black, turned out in practice to be unsatisfactory singly and in combination. Titanium dioxide did not provide adequate opacification; carbon black, even in combination with titanium dioxide, provided an unsatisfactory grey background for viewing the picture. The first problem was solved in the SX-70 system by incorporating a mirror into the camera, the second, by departing from the teaching of the patent and synthesizing an opacifying agent which temporarily bars light and is then “decolorized.”
While reviewing his own work on the SX-70, Howard Rogers, on New Year’s Day, 1968, thought of an alternative to its film structure. His idea was to coat both the positive and negative elements on the same transparent support but to place between the image-receiving and photosensitive layers separate white pigment and carbon black layers. The white layer was the background for viewing and the white and black layers in combination, one of the walls of the dark room. To form the other wall of the darkroom, Mr. Rogers included carbon black in the processing composition. The processing composition was spread not between the positive and negative layers but between a second transparent support and the photosensitive layers.
This structure permits exposure through the separate transparent sheet and viewing through the support coated with the laminate.. The arrangement results in a right-reading image and thus eliminates the need for any reversal mechanism. The positioning of the pod and processing composition permits the use of carbon black as the opacifying agent and eliminates the need for an expensive decolorizing compound. Mr. Rogers points out that his process is a much simpler opacification system than that employed in SX-70. He suggests two additional advantages. First, spreading the processing goo on the outer side of the negative layers means that the dyes do not have to travel through it; the structure therefore better tolerates bubbles in the processing composition. Second, using a preformed white layer permits viewing against the white background of the image as it forms. Mr. Rogers’s structure represents a neat solution to the competing requirements of a darkroom for processing and at least one transparent support for exposure. It was not used in the SX-70 because by the end of 1967 the work on the SX-70 was substantially completed and a considerable investment had been made in production machinery.
Mr. Rogers’s discovery is disclosed in U.S. Patent Nos. 3,594,165 and 3,689,262, both of which issued on September 5, 1972 and which the parties have treated as substantially identical. ’262 is a continuation-in-part of ’165. The specifications call for coating on one transparent support both the image-receiving and photosensitive layers. The sandwich is completed with a “transparent sheet element superposed coextensive the contact surface of the laminate” and affixed along the edges to form an integral structure. The patents further disclose that the laminate contains between the image-receiving and photosensitive layers “a processing composition permeable opaque layer.” That opaque layer is pref
*846
erably two discrete layers, one containing titanium dioxide for viewing the image against a white background and one containing an opacifying agent such as carbon black for absorbing light.
The pod is located so that the processing composition is spread “on the surface of the laminate distal the transparent support,” that is, between the laminate and the separate transparent sheet. The processing composition contains, in addition to the chemicals necessary to accomplish development and stabilization, an opacifying agent which, again, may be carbon black. The patents specify that exposure is made through the separate sheet that, in conjunction with the laminate containing the separate opaque layers, forms a light-tight envelope in which the development process can occur. After exposure, the processing composition spreads and penetrates through the negative layers to initiate the dye diffusion process. The dye transfer image may then be viewed as it is being formed through the transparent support and against the white layer.
The patents suggest the inclusion of a polymeric acid layer “positioned intermediate the transparent support layer and next adjacent essential layer.” Alternatively, the “polymeric neutralizing layer” may be “carried by the [separate] transparent sheet... next adjacent to the photosensitive laminate.” In such a structure the acid layer may be insulated from “deleterious interaction with the remainder of the photographic system during storage, exposure and initial processing” by a timing layer.
Polaroid has asserted claims 3, 5 and 6 of each patent against Kodak. Each of these claims incorporates by reference claim 1 of the respective patents. Claim 1 describes a composite diffusion transfer color process film unit comprised of three parts. The first, subpart (a) in the '165 patent, calls for a laminate that contains a transparent support on which are coated, in order, a dye image-receiving layer, a processing composition permeable opaque layer, a silver halide layer, and dye image-forming layers. The second, part (b), describes a second transparent support of a size equal to the first and opposite the laminate. The third, part (c), calls for a pod containing processing composition and an opacifying agent positioned so that its contents are spread between the laminate and the second transparent support.
Claim 3 adds that the opacifying agent in the processing composition is present in sufficient quantity and the opaque layer of subpart (a) “is effective to prevent exposure” of the silver halide layers in the presence of radiation actinic to development. Claim 5 provides that the opaque layer “is actinic radiation reflective.” Claim 6 specifies that it is comprised of titanium dioxide in a polymeric binder.
Kodak claims that every element of the 165/262 film structure is old. In particular, it alleges that U.S. Patent No. 3,415, -645, an earlier Polaroid patent, describes most of the features of the patent in suit. Those features of 165/262 not described in '645 — the concepts of incorporating an opacifying agent in the processing composition and of using separate black to white strata — are, it asserts, both taught in the prior art. Kodak also argues that the 165/262 patents are invalid under 35 U.S.C. § 112 for failing to disclose the best mode known to Mr. Rogers for preparing the layers of the film unit. Finally, Kodak denies that its PR-10 film infringes these Polaroid patents.
The earlier '645 patent, which was before the Patent Examiner during the prosecution of the patents in suit, describes a film unit that has one opaque layer which serves both as light barrier and white background for viewing, and an opaque flap which is superimposed on the negative layers after exposure. The pod is located so that the processing composition is spread between the positive and negative layers.
Kodak points to identical drawings depicting the arrangement of layers of the '645 and 165/262 patents, respectively, and argues therefrom that before processing the film units are identical in arrangement and functioning. For example, both
*847
are exposed and viewed from opposite sides and both permit viewing of the image as it develops. Neither requires peeling to view the picture and both are described in their respective patents as “integral.” According to Kodak, then, the only difference between them is the manner in which the “delayed” opaque layer is constructed after exposure. The ’645 patent uses an opaque flap; the 165/262 patents use carbon black in the processing composition. Since the latter mechanism is well known in the prior art, Kodak argues that this modification of ’645 does not result in patentable invention.
The difficulty with Kodak’s argument is that the evidence does not support the premise of identity between the ’645 and 165/262 patents, even before processing. Dr. Trautweiler, Kodak’s expert, testified and I so find that despite the similarities of the drawings, ’645 does not disclose the photosensitive laminate of 165/262. As Mr. Rogers explained, although the corresponding layers are similarly arranged, they do not adhere to each other in the same way. In addition, the ’645 patent specifies a single opaque layer to act as both light barrier and white background for the final picture. I find that the specifications of 165/262 and claims 3, 5 and 6 of those patents, read together, clearly provide for separate, preformed black and white layers.
The use of separate black and white strata constitutes a significant difference. Combining black and white into one layer creates optical problems because too much white provides inadequate opacification and causes the light to be attenuated to the negative, resulting in fogging. Adding sufficient black to prevent damage to the negative is likely to cause the picture to lose white highlights and look muddy. In contrast, the 165/262 patents teach that separating the black and white layers provides opacification without compromising the clarity of the picture. Placing the black layer behind the white minimizes fogging. None of the prior art cited, including, of course, the ’645 patent, refers to adjacent preformed black and white layers, one of which has an absorptive and the other a reflective background.
Kodak concedes that 165/262 are different from ’645 during and after processing. The difference between 165/262 and ’645 before processing is greater, however, than the mere substitution of carbon black for the opaque flap. Unquestionably, the addition of carbon black to the processing composition was known even as a means of opacification. But the issue is whether in view of the cited prior art, the similarities between the subject matter of 165/262 and the prior art are such that the subject matter of 165/262 as a whole would have been obvious.
Thomas & Betts Corp. v. Litton Systems, Inc.,
720 F.2d 1572, 1579 (Fed.Cir.1983);
Kimberly-Clark Corp. v. Johnson & Johnson,
745 F.2d 1437 (Fed.Cir.1984). I find that they were not.
The use of opacifying agents in the processing composition is taught in three patents relied on by Kodak: U.S. Patent Nos. 3,053,659 and 2,607,685 to Land; and U.S. Patent No. 3,309,201 to Friedman. All relate to peel-apart film units. None disclose the other relevant and significant features of the 165/262 film unit.
The ’685 patent is cited as an early example of the concept of distributing an opacifying agent from a rupturable pod to create a light shield for out-of-camera processing of the film unit. The patent does not, as Kodak concedes, teach the inclusion of the opacifying agent in the processing composition. Indeed the film unit of that patent has three pods, one each for developer, white pigment and black dye. I credit the testimony of Mr. Rogers that this multiple pod arrangement- is wholly unsuitable to integral films.
Further, the film units of the ’659 patent are primarily for x-ray images. The patent clearly teaches the technique of providing a delayed opaque layer by superimposing an opaque cover sheet over the exposed surface or including lamp black, also known as carbon black, in the processing goo. But the film units depicted in the patent are not arranged and do not function in the manner
*848
of the 165/262 film units. With none can the forming of the image be viewed. More specifically, the films of Figures 1-5 in the ’659 patent do not have the photosensitive laminate of 165/262 nor the opaque layers permeable to the processing composition. Figure 10 represents a transparency that may be viewed only after both the top and bottom opaque layers have been stripped off. Contrary to Kodak’s contention, the '659 patent does not teach the functional equivalent of an opaque flap and opaque goo. It uses an opaque envelope for processing the transparencies, not opaque flaps. Moreover, if opaque goo were substituted, the unit would be nonfunctional. A transparency by definition cannot be shielded by a permanent opaque layer.
The Friedman ’201 patent, where the use of an opacifying agent in the processing composition is also taught, relates to film units for making 35 mm transparencies. Its disclosure of opaque processing composition between the positive and negative layers does not suggest the 165/262 film unit.
Finally, it is undisputed that Kodak in October 1969
15
applied for a United States patent on a film unit identical to that of the 165/262 patent. The application, which was approved by Kodak management, was based on an “Invention Conception” by Harold E. Cole, a patent attorney at Kodak. Mr. Cole had extensive knowledge of the prior art and had spent considerable time studying Polaroid patents to find a “non-infringing way” to make an instant film. He distinguished this film structure over the prior art including, in particular, the Land '645 patent and pointed to precisely the same advantages over the prior art on which Mr. Rogers now relies. Kodak learned in early 1970 of Mr. Rogers’s applications which had been filed in 1968. Kodak management consulted outside patent counsel and engaged in considerable effort to obtain a United States patent, filing altogether three applications on the same film structure. The ’165 patent issued in July 1971; Kodak finally, and on the advice of outside patent counsel, abandoned its United States patent application in December 1971.
Although Kodak’s position at the time of its own application concerning the patentability of the 165/262 film structure is not decisive on that issue, it is some evidence that claims 3, 5 and 6 of the Rogers patents are valid against the prior art.
Finally, Kodak contends that the 165/262 patents are invalid under 35 U.S.C. § 112 because they do not disclose the best mode known to Mr. Rogers of preparing the photosensitive layers. The statute requires that the patent set forth the “best mode contemplated by the inventor of carrying out his invention.” The arrangement of the layers is important in controlling the diffusion of the dye developers. Because the dye developers are mobile in the processing composition, the laminate must be constructed in such a manner that the mobile dye developer remains in the area of its associated exposed silver halide. The developer associated with unexposed silver halide, however, must be able to diffuse to the image receiver. Lack of control over the dye developer results in a defective color image. One solution lies in the addition of interlayers which slow the progress of the dye developers or barrier layers which temporarily halt it. It is the alleged failure to specify the use of barrier layers and the precise composition of the barrier layers appropriate to the laminate disclosed that Kodak argues runs afoul of section 112.
I credit Mr. Rogers’ testimony that he thought interlayers sufficient and that he considered gelatin to be the preferred inter-layer material for this film unit. That is indeed what the patents recite. I further find that gelatin will produce satisfactory, albeit not perfect, color separation because the use of auxiliary developer, also speci
*849
fied in the patent, will precipitate the non-reacted dye developer in its original layer.
In an ongoing effort to improve interlayers, Polaroid experimented with a number of latex materials, including one known as Rhoplex AC-61. Polaroid used it in the commercially available form and also with the addition of thickeners. Mr. Rogers did not consider it the best interlayer material. Rather, in experimenting with it and other materials he found that what worked in the laboratory turned out not to be usable with the production machines. Accordingly, I find that Polaroid has not violated section 112 nor has it deliberately omitted known information concerning the effect of thickeners which would render the patent unenforceable.
Kodak does not deny that the PR-10 film unit contains each element of the asserted claims. It denies infringement, however, on the ground that each of the PR-10 features is found in the prior art. Kodak cannot avoid infringement by suggesting that individual components of PR-10 are disclosed in various prior art references.
Morrill v. Automatic Industries, Inc.,
93 F.Supp. 697, 708 (W.D.Mo.1950). It is the unique layer and support arrangement described in the asserted claims which are included in the PR-10 and this arrangement is not described in the prior art. I find that the PR-10 film infringes claims 3, 5 and 6 of the 165/262 patents.
V.
U.S. Patent No. 3,770, ^39
Mordants are chemicals that fix dyes in a substance by combining with the dye to form an insoluble compound. The dyes used in instant photographic processes are, by definition, soluble and therefore tend to wander both toward and away from the image-receiver. Accordingly, a mordant must be included in the image-receiving layer to form and retain an image. U.S. Patent No. 3,770,439 relates to a class of polymeric mordants which include in their structure specified repeating units
16
that are described in the patent and denoted as “Formula A.”
In the fields of photography and textile printing, mordants have been used for a long time to bind dyes; and numerous mordanting compounds have been produced commercially and disclosed in the literature and in patents.
Researchers at both Polaroid and Kodak sought to adapt some of these known compounds to integral film. They found however that diffusion transfer in an integral film unit imposed additional and far more rigorous requirements on the mordant than did the “matrix printing” process. In the latter, no diffusion through several layers takes place. Color prints are made from three preformed printing matrices that are dipped in different color dyes and one after another pressed directly against a receiving sheet that contains a mordant. The receiving sheet is immediately exposed to air to dry.
By contrast in any instant process the photosensitive and image-receiving layers are contained within the same sandwich, and all three dyes travel at the same time in an alkaline environment through several layers before reaching the image-receiver. Although peel-apart film is separated and the image-receiving layer exposed to air, such is not the case with integral film. In an integral film unit even after the dyes reach the image-receiver they are subjected to ongoing chemical reactions. In addition, the final image remains in a wet environment as the film unit slowly dries over a period of weeks following exposure and development. Thus to be useful for an integral film unit, a mordant had to work with three dyes at once; it had to be strong enough to attract the dyes to the image-receiver and to prevent their being pulled out
*850
by competing chemical reactions; and it had to hold the image stable in a wet environment.
Polaroid encountered numerous difficulties in meeting these mordanting requirements during the development of the SX-70 film, and in the summer of 1970 Dr. Land assigned Lloyd D. Taylor, the Laboratory Manager of Polymer Research, to find a mordant that would hold the dyes in an integral film unit. Dr. Taylor directed his staff to evaluate several compounds, including polymers of certain vinyl benzyl quaternary ammonium salts. He had worked with such compounds in the early 60’s. Although he had found some of them promising, he put them aside as they were not then commercially available. Under Dr. Taylor’s direction, his staff tested a number of polymers and obtained far better results with compounds that contained the vinyl benzyl quaternary ammonium mixture than with those that did not.
U.S. Patent No. 3,770,439, filed on January 3, 1972, and issued on November 6, 1973, describes Dr. Taylor’s discovery of the excellent mordanting qualities of polymers that include repeating units of vinyl benzyl quaternary ammonium salts of a particular construction. The repeating unit is denoted “Formula A” and its general chemical structure is shown as follows:
[[Image here]]
The name of the compound signifies its constituent parts. “Vinyl” is the two carbon, three hydrogen part of the structure at the top left:
[[Image here]]
The lines to the left and right of the carbon atoms represent bonds that link this repeating unit to others. The “benzyl” is comprised of the benzene ring
17
with one carbon and two hydrogen atoms attached:
[[Image here]]
Bonded to the benzyl group is the “quaternary nitrogen” atom represented by the symbol N+. “X-” represents an anion that is covalently bonded to the positively-charged nitrogen to form a salt. The quaternary nitrogen bonds directly with three chemical groups in addition to the benzyl group. The patent refers to those three as “R groups” and in the representation of Formula A uses the shorthand symbol (R1)*
The specifications and the claims in issue state that “each R can be the same or different substituent chosen from the group consisting of hydrogen, hydroxyl, alkyl radicals having from one to six carbon atoms, alkoxy radicals having from one to six carbón atoms, or alkanol radicals having one to six carbon atoms____” Only the alkyls are implicated in this lawsuit.
Alkyl groups are a series of compounds of hydrocarbons.
18
They are named in accordance with the number of carbons they contain. The first six members of the series are the “lower” alkyls and they include methyl carbon (1), ethyl (2), propyl (3), butyl (4), pentyl (5), and hexyl (6). An “alkanol” and “alkoxy” are “substituted” alkyls where one of the hydrogen atoms is substituted by a nonalkyl such as oxygen.
Mordants bind dyes through various forces. One is the attraction the typically positively-charged (cationic) mordant has
*851
for the negatively-charged (anionic) dye. Another, known as Van de Waal’s forces, involves the preference that different hydrocarbons have for each other as compared to the water in which the dyes are dissolved. The hydrocarbon parts of the dye are attracted to the hydrocarbon parts of the mordant, resulting in “hydro-phobic bonding” of the two. The problem for the designer of a mordant is to achieve the optimum balance of these forces for the particular dye, including, of course, matching the water sensitivity characteristics of the mordant to that of the dye.
Variability in mordant water sensitivity relates directly to mordanting qualities. Because the dye is in water, the mordant must be hydrophilic enough to react with the dye, but hydrophobic enough to form a mordant complex that is insoluble. The mordant must also correlate with the water sensitivity of the dye. It should not pull out the dye instantly and thus clog the surface of the image receiver, but it should permit uniform penetration of the image layer by the dye.
Quaternary ammonium salts are very water sensitive. Dr. Taylor discerned that their water sensitivity could be changed by varying the number of carbon atoms in the R groups, but he also realized that longer-chain alkyl groups would create complications. With an increase to, for example, 8 carbons, micelle formations, aggregates of small molecules that are not polymers, may occur in the image layer and cause haze or similar optical problems. Accordingly, in July 1970 Dr. Taylor directed his staff to evaluate polymers containing lower alkyl group vinyl benzyl quaternary ammonium repeating units,
19
which ultimately led to the patent in suit.
The parties completely disagree about the scope of the disclosure of the ’439 patent. Polaroid asserts that it concerns both homopolymers and copolymers of Formula A. Kodak would limit the claims to homopolymers. Polaroid insists that the patent is directed specifically to integral film. Kodak reads it to describe polymeric mordants conforming to Formula A generally. I find that the patent describes homo-polymers and copolymers of Formula A as mordants for integral film.
First, Polaroid’s research and experiments were directed to a variety of copolymers of Formula A. In 1970 Dr. Stanley Bedell grafted a Formula A polymer to a polyvinyl alcohol homopolymer. Dr. Taylor tested it on August 31,1970 and found that it worked well. In 1971 Dr. Jurgen Grasshoff made a straight chain copolymer that included a Formula A polymer. Also in 1971 Polaroid evaluated on a commercial scale a mixture that included a polymer of Formula A and another mordant, poly-4-vinyl pyridine homopolymer. All of these experiments proved the mordanting ability of Formula A. The last-mentioned test showed Formula A to provide faster dye transfer and higher dye density, particularly with cyan, than did the mordant containing only the poly-4-vinyl pyridine.
Second, the language of the patent clearly indicates both homopolymers and copolymers. The specifications refer to “a polymeric material including a polymer of ... [Formula A]____” They describe the invention as comprising “a polymer of Formula A copolymerized with other polymeric materials____”
20
The patent as a whole thus informs the claims which refer to a “polymeric layer comprising a polymer conforming to Formula A____”
Similarly, the descriptions of the film units in the patent persuade me that the mordant disclosed is for integral film. All
*852
of the examples use structures of integral film.
Polaroid accuses Kodak of infringing claims 1, 7, and 8. Claim 8 is incorporated by reference into claim 7.
Claim 1 describes an image-receiving element that includes a Formula A mordant with specified R groups as quoted and described above. Claim 7 describes a diffusion transfer product, including “a photosensitive system comprising at least one selectively sensitized silver halide layer integrated with a dye image providing material, processing composition ... and an image-receiving element ...” that conforms to claim 1. Claim 8 adds that the photosensitive system comprises a blue, a green, and a red-sensitive silver halide layer integrated, respectively, with a yellow, a magenta, and a cyan dye image-providing material.
Kodak contends that claim 1 is anticipated, pursuant to 35 U.S.C. § 102 (a) and (b); that all claims asserted are invalid as obvious, pursuant to 35 U.S.C. § 103 ; that the patent is unenforceable for Polaroid’s breach of its duty of disclosure; and that, in any event, the PR-10 mordant does not infringe.
Kodak’s obviousness argument relies on a number of foreign and United States patents as well as on an article. They include two patents of Dr. Hyman Cohen, a Kodak scientist, French Patent No. 2,003,-003, and Belgian Patent No. 734,082; Russian Author’s Certificate No. 165,378; British Patent No. 1,022,207, U.S. Patent No. 3,773,509, plus a 1957 article by Messrs. Jones and Goetz, entitled “p. Vinylbenzyltrialkyl Ammonium Salts in Vinyl Polymerization.”
The parties agree that the level of skill in this art is very high. A person of ordinary skill would have a Ph.D. degree in organic chemistry and several years in photography systems with a fair exposure to instant photography and polymers.
I find initially that the U.S. ’509 patent is not prior art. It was filed on March 9, 1971, and thus subsequent to the invention date of, at the latest, August 1970 to which the ’439 patent is entitled.
All of the remaining references do in some manner describe mordants with repeating units that conform to Formula A; the French patent discloses a generic structural formula into which Formula A fits. However, all are directed specifically to matrix printing. None describes the use of the mordant disclosed in an instant, let alone, integral film unit.
French Patent No. ’003 discloses a formula with numerous variables. Even Kodak’s expert, Dr. Donald Arthur Smith, agreed that the formula permits the construction of a very large number of compounds. None of these are vinyl benzyl quaternary ammonium compounds. Nothing in the patent suggests the particular utility of the lower alkyls. And the patent does not teach that any of the mordants disclosed are useful in integral film units. Indeed, in later applications by Dr. Cohen and others for patents covering a specific class of vinyl benzyl quaternary ammonium mordants for instant photography, Dr. Cohen and his co-inventors distinguished those compounds which included some Formula A polymers from the ’003 disclosures. They further claimed them to be patentable over U.S. Patent No. 3,709,690, the counterpart of French ’003.
The Belgian ’032 patent clearly does include data on the mordanting performance of three Formula A polymers, but again in the context of matrix printing.
21
Moreover, the patent teaches not the utility of Formula A, but the addition of “reactive anchoring” groups to prevent matrix stain, the diffusion of the mordant into the matrix. Reactive anchoring groups react chemically with another polymer included in the gelatin to become immobilized. Such a reaction is both unnecessary and highly undesirable in an integral film unit. It would add yet another reaction that is difficult to control and one that would tend to fuse all the polymers in the image-receiving
*853
layer. Reactive anchoring groups are outside the scope of the ’439 patent and the references in the Belgian patent to formula A polymers in connection with the disclosure of reactive anchoring groups do not teach the particular use of Formula A disclosed in the ’439 patent. Kodak so viewed the Belgian patent on an earlier occasion. In an application relating to a group of vinyl benzyl quaternary ammonium mordants for instant film, that led to U.S. Patent No. 3,625,694, Dr. Cohen again claimed these compounds to be patentably distinct over the Belgian disclosures.
In a similar vein, the British ’207 patent teaches the use of a particular “hydrazinium” anchoring group as copolymer with a Formula A compound. It, too, is directed to matrix printing. It, too, is undesirable in instant photography, and neither Polaroid nor Kodak has ever used for commercial instant film a mordant that included such an anchoring group.
The disclosure of a Formula A mordant in Russian Author’s Certificate 165,378 is, like the disclosure in the other references, directed to a matrix printing process for movies. This process, both experts agreed, is even more cumbersome than the ordinary matrix printing process and teaches nothing about mordants for instant film.
Kodak argues with respect to the Russian Author’s Certificate that it not only teaches the disclosure of ’439 but, in fact, anticipates claim 1 of the patent. But claim 1 defines the image layer of an integral film unit; it is not the image layer of any photographic diffusion process. It is not, therefore, anticipated by the Russian Author’s Certificate.
The Jones and Goetz article discloses that a Formula A polymer can be used as a mordant in invisible ink which becomes visible when the paper is treated with indigo dye. The authors also found one Formula A compound to mordant an acidic dye in the context of textile printing. Like the other references cited, it is inapposite.
Kodak’s argument throughout depends on glossing over the distinctions between matrix and instant dye transfers, and on its assertion that the utility of a mordant for one process necessarily suggests its utility for another. The fact that one skilled in the art would consider as possible candidates in an extensive search the mordants disclosed in these references does not meet the standard of obviousness under 35 U.S.C. § 103 .
In re Yates,
663 F.2d 1054, 1057 (C.C.P.A.1981),
Application of Goodwin,
576 F.2d 375, 377 (C.C.P.A.1978),
aff'd without opinion,
599 F.2d 1060 (C.C.P.A.1979);
Trio Process Corp. v. L. Goldstein’s Sons, Inc.,
461 F.2d 66 , 72 n. 18a (3d Cir.),
cert. denied,
409 U.S. 997 , 93 S.Ct. 319 , 34 L.Ed.2d. 262 (1972).
I am persuaded by the evidence that the differences between matrix printing and instant photography are such that the knowledge of one is not directly transferable to the other. Both Polaroid and Kodak tried to adapt for instant photography mordants used in matrix printing. Both failed. Because diffusion transfer, particularly in an integral film, imposes substantial additional requirements on mordants, none of which are considered or addressed in the cited references, I find that those references do not render the ’439 patent invalid under 35 U.S.C. § 103 .
Kodak asserts that the patept is unenforceable because Polaroid allegedly withheld from the Patent Office material information concerning the usefulness of Formula A polymers as mordants. Specifically it claims that Polaroid knew that these mordants have poor light stability and that they do not function well with yellow dye. I credit the testimony of Dr. Taylor that the light stability tests on which the argument is based and which were conducted in 1965 with Polacolor film produced results that were erratic and, at best, inconclusive. As for the contentions concerning yellow dye, they are based on one manifestation of Formula A. Others, with different sized R groups, provide good mordanting with yellow dye as well. Polaroid did not, therefore, withhold information such as to render the patent unenforceable.
The issue of infringement depends first on the scope of the ’439 patent. The mor
*854
dant of PR-10 is a copolymer, and Kodak asserts that the patent is limited to homo-polymers of Formula A. Since I have earlier addressed this argument,
see infra
p. 851-852, and found the ’439 patent to include copolymers of Formula A as well, this defense fails.
The second argument centers on the composition of the PR-10 mordant. The parties agree that it has three different repeating units — styrene, divinylbenzene and vinylbenzyldimethylbenzyl ammonium chloride. Polaroid contends that the first two repeating units are not mordants at all. According to Polaroid, the styrene balances the hydrophilic/hydrophobic properties of the polymer and the divinylbenzene serves to cross-link all three of the repeating units. The third unit, Polaroid says, is the mordant of the polymer and it infringes ’439. Kodak insists that the compound cannot be so compartmented, that its mordanting properties are due to the combined effect of all the parts of the polymer. I am persuaded from the evidence that the quaternary nitrogen component of the PR-10 mordant is the one that performs the function of capturing and immobilizing the dye. I am equally persuaded, however, that the other two repeating units are essential to achieve the good mordanting quality of the whole.
Finally, Kodak contends that the vinylbenzyldimethylbenzyl ammonium chloride is a structure not disclosed or claimed in the ’439 patent. Again, the parties agree that the allegedly infringing polymer is a vinyl benzyl quaternary ammonium structure with 3 R groups. Two of the R groups are admittedly methyls and therefore lower alkyls that fit squarely within the asserted claims. The third is a benzyl group; it includes a 6 carbon benzene ring plus an additional carbon. It admittedly is not a lower alkyl and it does not fit the language of the patent. Polaroid asserts, however, that the benzyl is a substituted alkyl which is equivalent to a six-carbon hexyl. Alternatively, it argues that under the doctrine of equivalents, the PR-10 mordant infringes the patent in suit because the dimethylbenzyl quaternary ammonium repeating unit achieves results equivalent to those achieved with Formula A hexyl.
The evidence at trial disclosed considerable disagreement about the terminology used to describe the benzyl R group. Dr. Taylor testified, and Kodak’s experts agreed, that strictly speaking it is a substituted alkyl consisting of a one carbon methyl substituent and a six carbon benzene ring. The evidence also showed that the presence of the benzene ring transforms this R group into an aryl. I find that both terms are correct. A substituted alkyl is an alkyl in which one hydrogen has been replaced by a nonalkyl, a definition that encompasses the R group in issue. An aryl compound is one which has the benzene ring structure, a definition that also includes this R group. The '439 patent claims only “alkyl radicals having from one to six carbon atoms” and certain specified substituted alkyls not including benzyl. Accordingly, I conclude that the choice of nomenclature does not dictate the result. The benzyl R group is simply not claimed.
The question remains whether the PR-10 mordant infringes under the doctrine of equivalents.
The parties agree that under the doctrine of equivalents infringement may occur if the defendant’s product or process performs the same function in the same way to obtain substantially the same result as the product or process disclosed in the patent.
Graver Tank and Mfg. Co. v. Linde Air Products Co.,
339 U.S. 605 , 70 S.Ct. 854 , 94 L.Ed. 1097 (1950);
Rich Products Corp. v. Mitchell Foods, Inc.,
357 F.2d 176, 182 (2d Cir.),
cert. denied,
385 U.S. 821 , 87 S.Ct. 46 , 17 L.Ed.2d 58 (1966). The burden of establishing equivalence is on the plaintiff.
A comparison of the PR-10 mordant, or even of its quaternary nitrogen component, with Formula A discloses that both unquestionably perform the same mordanting function. I find also that both quaternary nitrogen repeating units perform that function in substantially the same way, although I credit the testimony of Dr. Smith
*855
that the PR-10 compound is a stronger mordant than any manifestation of Formula A. If the comparison is between the PR-10 mordant as a whole and Formula A, they clearly do not function in the same way because the divinyl benzene component of PR-10 permits cross-linking of the polymer and results in a latex compound.
Regardless of how they are viewed, the quaternary nitrogen repeating units of PR-10 and the ’439 patent do not, in any event, achieve the same result. As discussed earlier, the reason for limiting the number of carbon atoms in Formula A to six was Dr. Taylor’s perception that a larger number would cause optical problems. The PR-10 mordant confirms that understanding. It is a cloudy dispersion and does cause optical interference. Thus, while it achieves good mordanting results, the PR-10 compound does so with precisely the disadvantage predicted for compounds with more than six carbons. Kodak solves the optical problem by incorporating matching refractive indices into the gelatin in which the mordant is mixed — a solution wholly outside the scope of ’439. Even comparing the mordanting results of dimethyl-hexyl and dimethyl-benzyl R group polymers, I am not persuaded that they are equivalant. The tests performed by Polaroid to show equivalence do not succeed. The results were different even though the hexyl used was not a straight chain R group but a ring structure.
The PR-10 mordant does not, therefore, infringe any of the claims of the ’439 patent asserted. It does not read on the claims nor has Polaroid shown equivalence.
In summary, I find that the ’439 patent is valid, but that the accused mordant does not infringe any claims asserted.
VI.
U.S. Patent No. 3,578,540
Photographic prints, whether produced by conventional means or by an instant process, whether on a single support or consisting of a laminate, have a tendency to curl and to distort.
22
Although the parties disagree about the precise manner in which curl or distortion is induced in integral film units, they agree that it is the presence of moisture at some point in the life of the film unit that may bring about a temporary or permanent deformation of the print. The patent in suit, U.S. Patent No. 3,578,540 to Dr. Land, describes an integral film unit “especially designed to resist distortion due to physical changes, particularly the quantity and distribution of moisture in laminae comprising the [film unit]----” The evidence shows and the patent points out that the effects of moisture on the dimensional integrity of the supports are exacerbated in an integral film unit because the quantity and distribution of moisture within the film units continue to change for a relatively long period of time.
It was well known in the art that curl and distortion are caused by uneven stresses on the supports. It was also known that these stresses are caused by the absorption of moisture by the supports and subsequent drying. The supports tend to respond unequally to the moisture itself and to the presence of alkali therein. The photographic layers also absorb moisture and swell as a result. Upon drying, the layers shrink and thus also exert forces, uneven forces, on the supports.
Dr. Land hypothesized that in an integral film unit the direct and indirect impact of moisture operates initially on the inside surfaces of the supports, and if the impact or stress on the supports is balanced the problem of curl is solved. That is, identical supports arranged in such a manner as to respond equally to what is contained between them is the answer. He thought such a balanced response could be attained by using supports that have both good mechanical stability and extremely low permeability to water and water vapor. Nonabsorption of water by the supports eliminates that distortion caused by the
*856
presence of moisture. Thus, the patent discloses that “a generally flat, undistorted and dimensionally stable, yet flexible” film unit can be achieved by using supports which are “symmetrically disposed with respect to the surrounding atmosphere and dimensional changes” and which are made of “materials that exhibit low water absorption and low water transmission rates.”
The specifications describe a film unit that uses symmetrical supports. Symmetry in this context is described as substantially equal reaction of the two supports to the presence of moisture. The essential characteristic of the supports, according to the patent, is that they be “relatively impermeable to and non-swellable by moisture.” “Suitable materials include alkaline solution impermeable materials such as vinyl chloride polymers; polyesters such as polymeric films derived from ethylene glycol terephthalic acid, for example, polyethylene terephthalate, polycarbonates, phenylene oxide polymers, acrylics, polyethylene and polypropylene.” The patent cautions that the list is exemplary and not exhaustive, and that in fact other materials with superior water absorption qualities are known. Although these materials may not have suitable optical qualities for the transparent support, they are ideally suited for use as the opaque support layers. The example in the patent uses polyester, i.e., polyethylene terephthalate. Polyester is also the material used in SX-70 and PR-10 film units.
23
Polaroid asserts infringement of claims 5, 6 and 8. Claims 5 and 6 incorporate by reference claims 1 and 4, and claim 8 incorporates claim 7.
Claim 1 describes a laminated photographic product comprised of two dimensionally-stable support layers, at least one of which is transparent, but both of which have substantially the same physical responses to the presence of moisture in the image-containing layer sandwiched between them. The image-containing layer includes a silver halide emulsion layer; an intermediate lamina comprising a polymeric film-forming material and an opacifying agent; and an image-receiving layer containing a dye-diffusion transfer image. Claims 4 and 5 add the requirement that all support layers be formed of the same polymeric material and have substantially the same physical characteristics, and that they be relatively impermeable to water vapor. Claim 6 specifies that they be made of polyester. Claims 7 and 8 are similar and reiterate the support layers’ relative impermeability and similar physical response to moisture.
Kodak challenges the validity of the patent on the ground that it is anticipated by Kodak’s BIMAT film. It further asserts that the only new aspect of the film unit described is the selection of the support materials. According to Kodak, the choice of polyester is obvious, as is the use of symmetrical supports. Kodak also denies infringement.
The initial dispute between the parties concerns the nature of the disclosure. Whereas Kodak views the patent as teaching nothing more than the choice of polyester as the material of choice, Polaroid defines the invention by reference to specific qualities of the supports — they must be symmetrical and substantially impermeable to moisture.
Polyester was developed by Dupont and it became available for use as film in 1955. DuPont proclaimed it as superior to cellulose acetate in optical clarity, durability, dimensional stability and low moisture sensitivity. These claims were unquestionably true and the photographic industry began using a polyester film base in the late 1950s in various applications. It is undisputed that for some time before the invention of the ’540 film unit both parties employed polyester and prescribed it in a number of patents, including patents pertaining
*857
to instant photography.
24
It is also clear, however, that for reasons hereafter set forth, neither party considered using two polyester supports with integral film units until Dr. Land did so.
As noted earlier, it was well known long before Dr. Land conceived the idea of symmetrical supports that one cause of curl and distortion was the uneven drying of print or film unit components and the consequent uneven forces on the support. The evidence shows that the conventional response was to provide a balance against these forces. An example of such balancing used in conventional film was coating the side opposite the photographic layers with “pelloid,” a material which expanded and contracted in a manner similar to the photographic layers. It thereby opposed the forces generated by the drying of the photographic layers.
25
This means of balancing is not useful, however, in integral film units — structures kept together in a closed system before, during, and after development, which remain in contact with and respond to not only water but also the alkali in the processing composition. Dr. Land’s insight lay in the recognition that the problem has to do not solely with the reaction of the supports to that environment but also to each other. The film unit will remain flat if the supports are symmetrical in the sense that both have low water transmission and absorption rates. It had theretofore been thought that to maintain image stability one of the supports had to be water permeable so that the film unit could dry fairly rapidly. Contrary to that prevailing wisdom, Dr. Land believed that with the presence of the polymeric acid layer in the film unit a wet environment would not harm the image
{see
Part II, the '821 patent,
supra).
Accordingly, the combined use of the polymeric acid layer and symmetrical supports would result in a film unit that was both stable and flat. That Dr. Land’s hypothesis is correct has been proven by countless film units produced with both features. Thus, I find that the '540 patent discloses substantially more than the choice of a known material. The question remains whether the concept of symmetry as articulated in this patent was taught in the prior art.
The parties agree that a person of ordinary skill in the art to which the ’540 patent pertains would have had at least an undergraduate degree in chemistry or chemical engineering and several years experience in the fields of plastics and film. Each party disparages the qualifications of the opposing expert. I find both not only qualified, but highly qualified.
The references cited against the patent in suit fall into several categories. First, are the patents pertaining to peel-apart film units. Kodak’s ’915 patent and Polaroid’s ’775 patent describe a color instant film with a layer structure similar to that of '540. The former includes polyester in a comprehensive list of possible support materials. The latter suggests polyester as the material for both support layers. However, because both disclose only peel-apart film units, neither addresses the particular problems of curl in the closed system of an integral unit. Neither teaches the concept of symmetry.
The second category includes U.S. Patent No. 2,563,342 and U.S. Patent No. 2,983, -606, both of which do describe integral embodiments. The ’342 patent is directed to black and white film. One of the objects of the patent is to obtain greater resistance to curling, and it attempts to do so by the use of two support layers made of the same material, cellulose acetate. Polyester was not, at the time of this patent, available. In any event, despite the depiction in ’342 of a film unit with identical supports, the patent does not teach the fea
*858
sibility of using symmetrical water-impermeable supports which by definition will maintain a wet environment for a period of time. Indeed, both Polaroid and Kodak found the use of cellulose acetate for both supports to be impracticable.
The ’606 patent discloses a film unit with a structure like that of ’540. Although directed primarily to peel-apart film, it does contain a description of an integral format that has two supports. It mentions cellulose acetate for the negative support, baryta paper for the positive support, and polyester not at all. The patent admittedly teaches nothing about choosing materials for those supports. It certainly does not teach the use of water-impermeable symmetrical supports, and I do not find the concept of symmetry to have been obvious even to a person of the high skill necessary in this field.
Finally, Kodak points to its own BIMAT process as evidence that the invention of the ’540 patent is old and that symmetry in support is obvious. BIMAT was used for aerial and satellite reconnaissance photographs. It consists of a large roll of 4 mil Estar, the Kodak tradename for polyester film base, on which was coated a gelatin layer containing a processing agent. The user soaked the gelatin in a prescribed solution and brought this sheet into contact with a sheet containing the exposed negative. The latter was also carried on a large roll and was exposed frame-by-frame. When the two sheets are brought together the exposed negative is developed and a diffusion transfer image formed on the Es-tar sheet. After development, the negative is stripped away. Because the image layer on the Estar sheet was wet and sticky, it could be, and often was, covered with a second transparent polyester support to permit handling of the film. The BIMAT process thus provides transparencies, not reflection prints. These transparencies were stored on a spool or reel and could be viewed on a light table. Particular frames could then be cut out and processed again to make photographic prints.
Mr. John Otto, now a marketing product coordinator with Kodak, and formerly a photographic technician, brought to court samples of BIMAT processed aerial film that, he testified, had been made in 1966. They were flat and they were made of two sheets of polyester. However, the similarity with the disclosure of ’540 ends there.
Kodak never regarded BIMAT as a permanently closed system. The laminate is made of two long strips of film, not discrete film units; and Kodak experienced difficulties making the cover sheet adhere to the BIMAT film. The informational brochure for this product states that an image will last about a week to ten days and it recommends that if long storage is desired, the film should be washed and dried.
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It differs from an integral film unit in that the BIMAT sandwich is filled only with hardened gelatin, the transferred silver halide and a residue of processing material, compared with the multiplicity of layers and the retained moisture in an integral film unit. Given these fundamental differences in process, function and resultant product — and despite the facts that it uses two polyester supports and that some flat samples exist — I find that BIMAT does not anticipate the '540 patent, nor teach its invention.
The inventiveness of the patent is further underscored by Kodak’s unsuccessful efforts to achieve a flat and stable film unit. Kodak's efforts, begun in 1969, focused initially on systems that had at least one water permeable support, because it then adhered to the prevailing wisdom that rapid drying was essential to image stability. For the most part it used Estar for the image layer support and tested with it more than 600 different support materials. After the introduction of SX-70 Kodak began to use two polyester supports.
The PR-10 film unit differs from the literal language of the claims in two re
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spects. It uses pelloid layers on the outside of both supports. In addition, the two supports are of different thickness — 4 mil for one, 6 mil for the other — and are therefore of different stiffness as well. Kodak also claims departures in the PR-10 from the description of the laminae and the diffusion path of the ’540 patent.
I am not persuaded by the evidence that the addition of the pelloid layers corrects any tendency to curl. On the contrary, the evidence suggests that a PR-10 film unit without pelloid is no more prone to curl than one with the pelloid layers intact.
That the supports of PR-10 are of different thickness and stiffness is undisputed. Kodak argues from this fact that the supports therefore do not have the same physical response to moisture as required by the claims. I credit the testimony of Dr. Land, however, that the important characteristic is the low permeability to water of the inside surface of the support. That is what determines the physical response of the support layer as a whole to moisture. That being so, the difference in thickness does not avoid infringement of all claims asserted.
Finally, Kodak argues that because the transfer image of PR-10 is not formed by diffusion of the dye image-providing materials through the layer formed by the processing composition, it is not formed by diffusion “through [the] intermediate lamina,” and PR-10 does not infringe the asserted claims. The argument is premised on a reading of claims 1 and 7 that would limit the intermediate lamina to a layer formed by the processing fluid. I credit Dr. Land’s testimony that the intermediate lamina of these claims are not so limited.
In summary, claims 5, 6 and 8 of U.S. Patent No. 3,578,540 are valid and infringed.
VIL
U.S. Patents No. 3,709,122 and 3,753,392
Background
Every camera must incorporate a mechanism for advancing film into position to be exposed and after exposure away from the shutter opening and usually onto a roll for storage. Instant photography employs not rolled film but separate thin, flexible film units which are stacked in a cassette, typically in exposure position and which must be moved one at a time. Moreover, in an instant system, the film unit must, after exposure, move into the spread rollers to break the pod and distribute the processing composition contained in it over the entire photographic portion of the film unit. Thus, in a camera for instant photography, the film-advancing system must not only move the stacked film unit, it must do so one at a time and it must drive the spread rollers at an even and proper speed for a period long enough to both spread the processing composition and fully eject the film unit out of the camera.
During the development of the SX-70 Polaroid engineers and an outside consultant designed many different film-advancing systems. The principal variables were the location and shape of the motor and the configuration and mechanics of the pick, the device to move the film unit. All of the early designs placed the motor in or near the rollers, that is, in front of the cassette and camera, and they used friction devices or continuously reciprocating front picks. In the fall of 1969, after a number of pre-production models of cameras had been built, it became apparent that substantial problems remained with the pick in its various manifestations. Even in the then latest model, the PT III, the pick was unreliable in that it sometimes failed to transport even one film unit while at other times it transported more than one. The problem was sufficiently serious that Robert Duncan, the project manager of the SX-70 program, feared that Polaroid would not be able to meet the projected introduction date for the SX-70 camera and film. Dr. Land and others then engaged in an intensive effort to find a solution. As a result, Dr. Land and Messrs. Blinow and Leduc, a Polaroid engineer and his assistant, developed a transport system which gave rise to two patents, for the rear pick and for the
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rear motor and gear train. The pick, which had been incorporated into earlier commercial cameras and the several experimental models before the fall of 1969, included, as mentioned earlier, both friction devices such as rubber fingers or wheels that pinched on the surface of the film unit, and front picks that entered holes in the film unit and pulled it into the spread rollers. Because the film units were thin and flexible, it had earlier been thought that they had to be pulled rather than pushed out of the cassette.
The friction devices were in practice unreliable. They did not always move the film unit at uniform speed; the pressure of the device could mechanically alter the silver halide grains and it could push the film unit out of alignment with the exit slot; the rubber tended to harden with age or become contaminated and was then unable to engage the film unit constantly and steadily. The front pick also presented several additional difficulties. The perforations required in the film unit for the operation of the front pick jeopardized the moisture integrity of the pods, they added to the cost of production, and they marred the appearance of the finished picture. In addition, a hole had to be built into the cassette containing the film unit to permit access of the pick to the film unit. Because that hole was near the exit slot it jeopardized the light tightness of the system.
These combined disadvantages defined the problem that required solution — to move film reliably and one at a time, without disturbing the alignment of the remaining film units relative to t

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1482978. Public record. Not legal advice.