ROBERT M. DOW, JR., District Judge.
Plaintiff SOC-USA, LLC ("Plaintiff") has sued Defendants Office Depot, Inc. and Epson America, Inc. for infringement of U.S. Patent No. 7,465,018 ("the '018 patent"). Defendants have counterclaimed, alleging, among other things, that the '018 patent is invalid. In this consolidated action, the Court has construed certain disputed claims in both the '018 patent and a related patent, U.S. Patent No. 7,058,399 ("the '339 patent"), and has ruled on motions for summary judgment filed by the Defendants in both cases. Specifically, on September 29, 2010, 2010 WL 3894217, the Court granted Seiko Epson Corporation's motion for summary judgment of non-infringement of the '339 patent. In a separate order issued that same day, the Court granted Office Depot, Inc. and Epson America, Inc.'s motion for summary judgment of invalidity based on indefiniteness as to claims 7, 9, 15, 17, 19, and 21 of the '018 patent, but denied their motion as to claims 11, 13, 27, and 29 ("the remaining asserted claims").
The Court takes the relevant facts primarily from the parties' Local Rule ("L.R.") 56.1
The '018 patent relates to color combinations to be used in a color printing system. The abstract for the '018 patent describes the invention as:
'018 patent, Abstract. The '018 patent is a continuation of the '339 patent, and claims priority to a provisional application filed on January 27, 2003. (Pl. Wilcox Resp. ¶ 6; Pl. Berns Resp. ¶ 6.)
As noted above, the only claims in the '018 patent at issue here are claims 11, 13, 27, and 29. Claims 11 and 27 of the '018 patent, both independent claims, have the following format:
'018 patent, col. 14, ll. 33-51; col. 27, ll. 14-27. The two claims differ from one another only in the way in which they describe the claimed colors. Claim 11 defines the colors in terms of "intensity."
The '018 patent specification includes six spectroscopic curves representing an example of each of the six claimed colors. (Pl. Wilcox Resp. ¶¶ 11-12.) The curve representing an orange-red appears below:
The patent also discloses "[t]ypical examples of pigments or dyes" that may be used to produce "colouring material" in each of the claimed colors. (Pl. Wilcox Resp. ¶¶ 20-25.) For example, to achieve an orange-red, the '018 patent suggests using pigment "Red 108 (Cadmium Red Light)." (Pl. Wilcox Resp. ¶ 21.) Finally, the patent includes a "Colour Bias Wheel," which is identified as "incorporating the colours of the present invention." (Pl. Wilcox Resp. ¶ 27.) According to the '018 patent, "[t]he six colour types used in the system of the invention are illustrated in * * * the `Colour Bias Wheel.'" (Pl. Wilcox Resp. ¶ 28.) The "Colour Bias Wheel" from the '018 patent appears below:
In a September 29, 2010 memorandum opinion and order, the Court construed certain disputed claim terms in the '018 patent. The Court construed the limitation "each of a different colour," found in claims 11 and 27, as meaning that each colored material in a particular color printing system must be of a different color. The term "color"
The Court also construed the six colors terms found in claims 11 and 27 as having three separate limitations: (1) the wavelength limitation; (2) the highest reflectance limitation; and (3) the area limitation. The Court first pointed out that, like the '339 patent, each of the claimed colors in the '018 patent is defined in terms of the six basic colors—red, orange, yellow, green, blue, and violet ("component colors"). With the parties' agreement, the Court adopted its previous construction (from its order construing the claims of the '339 patent) of the wavelength ranges for each of the component colors within the six colors disclosed in claims 11 and 27. Accordingly, the Court construed the wavelength ranges occupied by the component colors as follows: violet (400-440 nm), blue (420-490 nm), green (490-550 nm), yellow (550-590 nm), orange (590-620 nm), and red (610-700 nm). (See Def. Berns Resp. ¶ 3; Def. Wilcox Resp. ¶ 24.) The Court's conclusion as to the wavelength range limitation was based largely on the table recited at column 6, line 60 through column 7, line 8 of the '018 patent ("wavelength table"). (Def. Wilcox Resp. ¶ 27.)
The Court construed the term "intensity," found in claim 11, and the term "area under a graph," found in claim 27, both to mean "the area under the spectrographic graph of reflectance (percent) versus wavelength occupied by the specified color." (See Def. Berns Resp. ¶ 3; Def. Wilcox Resp. ¶¶ 24-25.)
Taking the three limitations together, the Court thus construed the claimed color "orange-red" found in claims 11 and 27 as follows:
The Court construed the other five claimed colors according to the same pattern.
As to the limitation "provided the combination is other than cyan, magenta, a yellow and black," found in both claims 11 and 27, the Court concluded that as long as a printing system contains a combination of four colored materials other than cyan, magenta, yellow, and black (where three are chosen from the six claimed colors), it falls within the scope of the asserted claims, even if the system also contains the combination of cyan, magenta, yellow, and black. The Court construed the terms "cyan," "magenta," and "yellow," as "green-blue," "violet-red," and "green-yellow or orange-yellow," respectively.
On December 2, 2010, in accordance with the parties' agreed schedule, Defendants filed the two motions for summary judgment at issue here. In their motions, Defendants argue that the remaining asserted claims are invalid by anticipation and obviousness in light of the Wilcox Book and the Berns, Viggiano, ederMCS, and Kueppers references. Included in the supporting documents filed with the Defendants' motion for summary judgment as to Berns, Viggiano, ederMCS, and Kueppers were declarations from two of their experts, Gregory N. Radencic ("Mr. Radencic") and Dr. Robert Hunt ("Dr. Hunt"). As required by L.R. 56.1, Defendants also filed a statement of undisputed material facts that relied, in part, on the two declarations.
Asserting that it could not fully respond to Defendants' summary judgment motions of invalidity of the '018 patent without
On April 15, 2011, before the close of Rule 56(d) discovery and before Plaintiff had deposed Mr. Radencic and Dr. Hunt or filed its response to Defendants' summary judgment motions, Defendants filed what they titled "Supplemental Declaration[s]" for Mr. Radencic and Dr. Hunt [224, 225] ("the disputed declarations"). Both of the disputed declarations were filed in support of Defendants' motion for summary judgment of invalidity based on the Berns, Viggiano, ederMCS, and Kueppers references.
On Friday, April 29, 2011 at 10:54 p.m., the night before the deposition of another of Defendants' expert's, J.A. Steven Viggiano's ("Dr. Viggiano"), Defendants produced five additional documents. While meeting with Dr. Viggiano on the afternoon before his deposition, Dr. Viggiano told Defendants that he had done additional testing on certain color samples that he had tested in 1998. Once they learned of the testing, Defendants worked with Dr. Viggiano to prepare documents describing the new data and produced the documents to Plaintiff late that night. At the deposition the next day, over Plaintiff's objections, Defendants asked Dr. Viggiano questions about the newly-produced documents.
Before reaching the merits of Defendants' summary judgment motions, the Court must address (1) Plaintiff's motion to strike, (2) Defendants' motion for leave to file a sur-reply to the motion to strike, and (3) Defendants' motion for leave to file an amended L.R. 56.1 statement of material facts.
Plaintiff moves to strike the disputed declarations and the evidence submitted with them, arguing that the declarations "set forth new opinions based on new testing" of print samples that was not conducted until after Defendants moved for summary judgment. [228, at 1.] According to Plaintiff, because Defendants cannot demonstrate "excusable neglect" under Federal Rule of Civil Procedure 6(b)(1)(B), the Court should strike the disputed declarations from the summary judgment record.
In addition to claiming that Rule 6(b)(1)(B) is not the correct standard to use here, Defendants counter that the disputed declarations merely supplement the record with spectroscopic testing that "confirms and corroborates the test results previously presented in support" of Defendants' summary judgment motion [227, at 2], and that Plaintiff is not prejudiced by the disputed declarations and related evidence.
Rule 6(b)(1)(B) provides: "When an act may or must be done within a specified time, the court may, for good cause, extend the time on motion made after the time has expired if the party failed to act because of excusable neglect." The Court agrees with Defendants that Rule 6(b)(1)(B) does not provide the correct standard here. First, Rule 6(b)(1)(B) states that a Court may extend time "on
Second, Defendants correctly point out that they complied with the Court's deadline by filing their motions for summary judgment and supporting documents—including Dr. Hunt and Mr. Radencic's original declarations in support of the Berns, Viggiano, ederMCS, and Kueppers motion—by December 2, 2010. Plaintiff does not argue that Defendants failed to timely file their summary judgment motion or supporting documents; it argues instead that Defendants improperly supplemented their summary judgment filings with new evidence and expert opinions that had not previously been disclosed. That issue is properly analyzed under Federal Rules of Civil Procedure 26 and 37. See, e.g., Rowe Int'l Corp. v. Ecast, Inc., 586 F.Supp.2d 924, 933 (N.D.Ill.2008); Solaia Tech. LLC v. ArvinMeritor, Inc., 361 F.Supp.2d 797, 807 (N.D.Ill.2005).
Rule 26(a)(2)(B) provides that an expert retained by a party to testify in a case must prepare a written report that includes "a complete statement of all opinions the witness will express and the basis and reasons for them; [and] the data or other information considered by the witness in forming them * * *." Fed. R.Civ.P. 26(a)(2)(B)(i)-(ii). A party who has disclosed an expert report under Rule 26(a)(2)(B) also has an ongoing duty to supplement its expert disclosures in a timely manner if the party learns that the information disclosed or the response is "incomplete or incorrect and if the additional corrective information has not otherwise been made known to the other parties during the discovery process or in writing." Fed.R.Civ.P. 26(e)(1); see also Fed. R.Civ.P. 26(a)(2)(D). The duty to supplement, however, "does not provide an opening for wholly new opinions." Rowe Int'l Corp., 586 F.Supp.2d at 933 n. 1.
The sanctions for violating Rule 26(a) and (e) are severe: "If a party fails to provide information or identify a witness as required by Rule 26(a) or 26(e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). The Seventh Circuit has established a four-factor test for evaluating whether Rule 37 sanctions are warranted: (1) prejudice or surprise to the party against whom evidence is offered; (2) ability of the party to cure the prejudice; (3) likelihood of disruption to the trial; and (4) the proffering party's bad faith or willfulness in not disclosing evidence at an earlier date. David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir.2003). Not all four factors must be met; preclusion of untimely or insufficiently disclosed evidence is "automatic and mandatory" where the violation is unjustified and harms the opposing party. Finley v. Marathon Oil Co., 75 F.3d 1225, 1230 (7th Cir.1996). The rationale behind Rule 37 "is to avoid an unfair `ambush' in which a party advances new theories or evidence to which its opponent has insufficient time to formulate a response." Rowe Int'l Corp., 586 F.Supp.2d at 934 (citing Salgado by Salgado v. Gen. Motors Corp., 150 F.3d 735, 741 n. 6 (7th Cir.1998)).
Consistent with the authorities cited above, the Court first must determine whether the disputed declarations contain new opinions. If later-submitted opinions and analyses do not differ substantially from opinions offered in the original declarations, they are not late for purposes of 26(a) and so not subject to Rule 37 preclusion. See Rowe Int'l Corp., 586 F.Supp.2d at 935; Solaia Tech., 361 F.Supp.2d at 807. If the Court finds, however, that Defendants
Mr. Radencic, a Technology and Research Analyst employed by the Printing Industry of America ("the PIA"), was hired by Defendants to conduct a spectroscopic analysis of certain printed samples of ink used with the ederMCS printing system—one of the references at issue here. The printed samples that Defendants hired Mr. Radencic to test are found in the K + E Book, published by the ink manufacturer K + E Druckfarben. In his original declaration, dated November 18, 2010, Mr. Radencic stated that on October 19, 2009, the PIA conducted a spectroscopic analysis of the ederMCS inks to determine their spectral reflectance characteristics. The results of the October 2009 testing were attached as an exhibit to his declaration.
Mr. Radencic's supplemental declaration states that in January of 2011, at his direction, the PIA retested the same color samples from the K + E Book to determine their spectral reflectance characteristics. According to his supplemental declaration, the PIA used the same testing process and methodology in the January 2011 test as it did in the October 2009 test. The results of the test were attached to his supplemental declaration as an exhibit. Mr. Radencic further states that on April 11, 2011, he contacted Flint Group Germany GmbH, a company that acquired the K+E Novavit product line, and asked them to create new print samples of six K + E inks. These six inks are identified in the K + E Book as the inks used for the ederMCS printing system. Mr. Radencic states that after receiving the newly created print samples ("the Flint samples"), the PIA tested these new samples using a spectrophotometer to determine the reflectance characteristics of each ink. The results of the Flint samples test are attached as an exhibit to the supplemental declaration.
Finally, Mr. Radencic's supplemental declaration states that counsel for Defendants also requested that the PIA conduct a spectroscopic analysis of printed samples of certain Pantone prinking inks. Mr. Radencic states that he ordered two swatch books from Pantone, Inc. ("the Pantone Books"). The Pantone Books contained color samples of the Pantone inks identified in the ederMCS reference, and, more relevant here, the Viggiano reference. According to Mr. Radencic, on April 11, 2011, after he had received the Pantone Books, the PIA tested printed color samples in the Pantone Books using the spectrophotometer to determine their spectral reflectance characteristics. The results of the Pantone tests are attached as exhibits to his supplemental declaration.
Mr. Radencic thus conducted three spectroscopic tests relating to the ederMCS printing system and the Viggiano reference after December 2, 2010: (1) a retest of the K + E ink samples, (2) a test of the Flint samples, and (3) a test of samples from the Pantone Books. While the retest data is not new, the data explaining the PIA's tests of the Flint samples and samples from the Pantone Books is. At the time of Mr. Radencic's original declaration, he had not yet asked for or received the Flint samples or the two Pantone swatch books. There was no indication in his original declaration that he planned to conduct more testing of K + E inks and there was no discussion of his plan to test ink samples from the Pantone Books. As such, the Court determines that the data describing the PIA's tests of samples from
Nevertheless, the new expert opinions found in Mr. Radencic's supplemental declaration do not prejudice Plaintiff. First, while Mr. Radencic's testing of the Flint and Pantone Book ink samples took place after Defendants filed Mr. Radencic's original declaration, involved new print samples, and produced new data, the tests could not have taken Plaintiff by surprise. The tests are consistent with the arguments and evidence presented by Defendants in their summary judgment brief. Plaintiff knew that Defendants' strategy was to conduct a spectroscopic analysis of each of the colors disclosed in each reference and then determine whether the disclosed colors fell within the scope of the colors claimed in the '018 patent. Both of Mr. Radencic's new tests were done for the same purpose, and, while they created new data, that data simply corroborated the results of the tests that he or Dr. Viggiano had already done. Plaintiff was not "sandbagged" by Mr. Radencic's new testing.
Furthermore, because Defendants filed Mr. Radencic's supplemental declaration while the parties were engaged in Rule 56(d) discovery and before Plaintiff had deposed Mr. Radencic or filed its response to Defendants' summary judgment motion, Plaintiff had ample time to cure any potential prejudice. Plaintiff had the opportunity to issue supplemental discovery requests relating to the new testing or to ask Mr. Radencic questions about the new tests at his deposition. If Plaintiff felt constrained by the scope of the Rule 56(d) discovery, it could have asked the Court to expand discovery in light of the new evidence. It did not do so. At the very least, Plaintiff could have addressed the additional testing in its response brief.
Finally, the Court is not convinced that Defendants acted in bad faith. From the record, it appears that Mr. Radencic conducted the retest of the K + E ink samples and the new test of the Flint samples on his own without direction from Defendants. And while Defendants did ask Mr. Radencic to perform the tests on the ink samples from the Pantone Books after they had filed his original declaration, Defendants argue that the new tests are essentially an early reply to an argument as to degradation of the ink samples that they believed, based on the parties' Rule 56(d) discovery, Plaintiff was planning to make in its response brief. Although once a party has filed its motion for summary judgment it does not have free reign to submit supplemental documents in support of its motion—even while engaged in Rule 56(d) discovery—here, Defendants' disclosure of the new testing before Mr. Radencic's deposition and before the date for filing the response brief is enough to satisfy the Court that Defendants were not acting in bad faith. Accordingly, because the disclosure of Mr. Radencic's supplemental declaration was harmless to Plaintiff, the Court denies Plaintiff's motion to strike this declaration and the evidence submitted with it. See, e.g., Turley v. ISG Lackawanna, Inc., 803 F.Supp.2d 217, 230-34, No. 06-CV-794S, 2011 WL 1104270, at *4-7 (W.D.N.Y. Mar. 23, 2011) (denying motion to strike declarations submitted with the defendant's summary judgment reply brief where the declarations did not prejudice the plaintiff); Rx.com Inc. v. Hartford Fire Ins. Co., 426 F.Supp.2d 546, 555 (S.D.Tex.2006) (denying the defendant's motion to strike evidence the plaintiff submitted with its summary judgment reply brief where the additional evidence "remedied some of the evidentiary problems [the defendant] raised and helped clarify the record evidence" and where the defendant suffered no prejudice).
Defendants hired Dr. Hunt to provide his expert opinion as a person of skill in
Dr. Hunt further opined that the Berns and Viggiano references and the Kueppers patent disclosed a printing system within the scope of the remaining asserted claims, and that the disclosure would anticipate or render obvious each of the remaining asserted claims of the '018 patent. In reaching his conclusion as to the Viggiano reference, Dr. Hunt relied on Dr. Viggiano's original spectroscopic reflectance data for the Pantone Basic Colors and Pantone Basic Process Colors, done in 1998.
In his supplemental declaration, Dr. Hunt stated that the additional tests conducted by Mr. Radencic "confirm and verify [his] earlier conclusions that the Viggiano reference and the ederMCS references and printing system each anticipate the asserted claims of the '018 patent." [225, at 2.] Thus, while the conclusions in his supplemental declaration are the same as the ones in his original declaration, they are based in part on Mr. Radencic's new testing and are, accordingly, new opinions.
For the same reasons discussed above, however, the Court concludes that Plaintiff was not prejudiced by the new opinions in Dr. Hunt's supplemental declaration. Dr. Hunt's analysis of Mr. Radencic's new testing was identical to the analysis that he undertook in his original declaration. Based on this analysis, Dr. Hunt reached the very same conclusions as to anticipation and obviousness that he reached in his original declaration. Plaintiff's lack of surprise and the abundant time and opportunity it had to cure any potential prejudice leads the Court to conclude that the addition of Dr. Hunt's supplemental declaration is harmless. For those reasons, the Court denies Plaintiff's motion to strike Dr. Hunt's supplemental declaration and the evidence supporting it.
In its reply brief filed in support of its motion to strike, Plaintiff also asks the Court to strike the newly-produced Dr. Viggiano documents and the deposition testimony relating to those documents.
Using the legal standard set forth above, the Court also concludes that Defendants' disclosure of the new Dr. Viggiano documents did not prejudice Plaintiff. The total production was only twenty-six pages describing testing that was similar to and corroborated the 1998 testing that Dr. Viggiano had described in his declaration in support of Defendants' summary judgment motion. Thus, while Plaintiff did not have an abundance of time to review the documents, it had seen similar testing before and the three-or-more hours that it did have to prepare was likely enough to develop at least an initial impression of Dr. Viggiano's new data. Further, because the parties were still engaged in Rule 56(d) discovery, Plaintiff had the opportunity to ask to re-depose Dr. Viggiano—something Defendants state they would not have opposed in light of the late disclosure—or issue new discovery requests relating to the newly disclosed documents. In other words, Plaintiff had the ability to cure any potential prejudice and it failed to do so.
Nor was Defendants' late production of these five documents in bad faith. Plaintiff does not contest the fact that Defendants produced the documents on the day that they learned about Dr. Viggiano's supplemental testing. Defendants were as surprised as Plaintiff to learn that Dr. Viggiano had undertaken these tests. Had Defendants waited until the deposition itself to turn over the documents and then elicited testimony from Dr. Viggiano about the documents without giving Plaintiff any time to review them, the Court might reach a different conclusion. However, because Defendants did, in good faith, produce the five documents before the deposition, the Court concludes that Plaintiff was not prejudiced here. For those reasons, the Court denies Plaintiff's motion to strike as to the Dr. Viggiano documents and related deposition testimony.
In the foregoing analysis, the Court has addressed pursuant to Rules 26 and 37 whether Plaintiff was prejudiced procedurally by the contested evidence. But the Court hastens to add that the inclusion of this evidence in the summary judgment record did not lead to any substantive prejudice either. Although the Court cites to some of this evidence in its discussion of the Viggiano reference (see below), the Court's disposition of Defendants' summary judgment motions would have been the same even if the Court had disregarded all of the contested "new" evidence. In the end, that evidence merely supplements the clear and convincing evidence supporting invalidity that Defendants already had marshaled prior to the additional disclosures since December 2010.
In sum, because Plaintiff has not been prejudiced—either procedurally or substantively—by the disclosure of Defendants'
Having resolved the parties' preliminary disputes, the Court turns to Defendants' two motions for summary judgment. Defendants argue that the remaining asserted claims of the '018 patent are anticipated and rendered obvious by the Wilson Book, Berns, Viggiano, four ederMCS references, and Kueppers. Because claims 11, 13, 27, and 29 are anticipated by the Wilcox Book and the Viggiano reference, the Court grants Defendants' motions.
Summary judgment is proper if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). In determining whether there is a genuine issue of fact, the Court "must construe the facts and draw all reasonable inferences in the light most favorable to the nonmoving party." Foley v. City of Lafayette, Ind., 359 F.3d 925, 928 (7th Cir.2004). To avoid summary judgment, the opposing party must go beyond the pleadings and "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (internal quotation marks and citation omitted).
A genuine issue of material fact exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505. The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Summary judgment is proper against "a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322, 106 S.Ct. 2548. The non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmovant]." Anderson, 477 U.S. at 252, 106 S.Ct. 2505. "Summary judgment is as appropriate in a patent case as it is in any other case." C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed.Cir.1990).
Patent validity is a question of law, not fact, but "the same factual questions underlying the [U.S. Patent and Trademark Office]'s original examination of a patent application will also bear on an invalidity defense in an infringement action." Microsoft Corp. v. i4i Ltd. P'ship, ___ U.S. ___, 131 S.Ct. 2238, 2242-43, 180 L.Ed.2d 131 (2011). A patent is presumed to be valid according to 35 U.S.C. § 282, and the party alleging invalidity must "prove invalidity by clear and convincing evidence." Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1310 (Fed. Cir.2011) (quotation omitted); see also Microsoft
Defendants first argue that the '018 patent is invalid as a matter of law because the Wilcox Book and the Berns, Viggiano, ederMCS, and Kueppers references each independently anticipate claims 11, 13, 27, and 29 of the '018 patent. A patent claim is invalid by anticipation if "the invention was patented or described in a printed publication in this or a foreign country* * * more than one year prior to the date of the application for patent in the United States * * *." 35 U.S.C. § 102(b). Anticipation requires the presence of "each and every claim limitation in a single prior art reference, either explicitly or inherently." In re Omeprazole Patent Litig., 483 F.3d 1364, 1371 (Fed.Cir.2007). To be anticipating, the reference must also "enable one of ordinary skill in the art to make the invention without undue experimentation." In re Gleave, 560 F.3d 1331, 1334 (Fed.Cir. 2009) (quotations omitted). "As long as the reference discloses all of the claim limitations and enables the `subject matter that falls within the scope of the claims at issue,' the reference anticipates—no `actual creation or reduction to practice' is required." Id. (quoting Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380-81 (Fed.Cir.2003)). Anticipation is a question of fact. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (2005). Nevertheless, "without genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law." Id.
Defendants first contend that the '018 patent is invalid by anticipation in light of a book written by Michael Arthur John Wilcox ("Dr. Wilcox"), inventor of the '018 patent, entitled "Blue and Yellow Don't Make Green" ("the Wilcox Book"). Both the first and second editions of the Wilcox Book are part of the prior art because they were published in the United States or a foreign country more than one year before the '018 patent's 2003 priority date. See 35 U.S.C. § 102(b); (Pl. Wilcox Resp. ¶¶ 7-8.).
The Wilcox Book discussed "colour mixing," specifically identifying "six principle colours central to its approach. Two reds: orange-red and a violet red. Two yellows: orange-yellow and green-yellow. And two blues: green-blue and violet blue." (Pl. Wilcox Resp. ¶ 9.) Like the '018 patent, the Wilcox Book teaches that the six-color combination can be used to produce a wider gamut of colors than can be achieved by using the traditional blue, red, and yellow combination. The Wilcox Book disclosed the same six spectroscopic curves relating to the "six principle colours" as are disclosed in the '018 patent, and includes figures and disclosures for each of the six colors. (Pl. Wilcox Resp. ¶¶ 13-19.) For example, the Wilcox Book discussed "Cadmium Red," identified in the book as "orange-red," in the following way: "An orange-red such as Cadmium Red, reflects red very well, quite a large amount of orange and a smaller percentage of violet." (Pl. Wilcox Resp. ¶ 14.) Under the spectroscopic curve identified as "Cadmium Red Light PR 108," the Wilcox Book states, "[w]ith a high reflectance percentage * * * a bright color is suggested. As the wavelengths are mainly in the red/ orange region the graph indicates a bright orange-red." (Pl. Wilcox Resp. ¶ 14.) The spectroscopic curve representing "Cadmium Red Light PR 108" appears below:
The Wilcox Book has a similar disclosure for each of the five other "principle colours." (Pl. Wilcox Resp. ¶ 15-19.)
Finally, the Wilcox Book included a "Colour Bias Wheel," which identifies the "six principle colours" set forth in the book. (Pl. Wilcox Resp. ¶ 29.) The "Colour Bias Wheel" found in the Wilcox Book appears below:
Recognizing the similarity between the Wilcox Book and the '018 patent, Plaintiff does not dispute the fact that the Wilcox Book disclosed a color printing system that
In support of their argument that the Wilcox Book disclosed the six claimed colors, Defendants offer the testimony of Dr. Hunt. In his declaration, Dr. Hunt points to the following: (1) both the '018 patent and the Wilcox Book disclose the same six spectroscopic curves and identify the curves as representing the same six claimed or principle colors; (2) both the patent and the book disclose the same six pigment numbers as examples of the six claimed or principle colors; (3) both the patent and the book disclose the same "Colour Bias Wheel" that illustrates the six claimed or principle colors; and (4) like the '018 patent, the six spectroscopic curves and six bar graphs in the Wilcox Book, which correspond to the six principle colors disclosed in the book, teach that relative intensity for each component color is measured by determining the area under the curve.
Defendants also rely on Dr. Hunt's analysis of three of the six principle colors found in the Wilcox Book. Dr. Hunt measured the area under the spectroscopic reflectance curves in the Wilcox Book within each of the wavelength ranges in the Court's construction. For every 10 nm range on the horizontal axis of the graph, Dr. Hunt measured the average height of the relevant curve and multiplied this average height by the width to come up with the area for that 10 nm "slice" of the graph. Then, for the entire wavelength range of a given component color, for example, 400-440 nm for "violet," Dr. Hunt calculated the total area for that component color by adding up the appropriate "slices" in that wavelength range. Finally, Dr. Hunt ordered the component colors from greatest to smallest according to the areas under their spectroscopic curves. Based on his calculations, Dr. Hunt concluded that the curves for Pigment Red 108, Pigment Blue 29, and Pigment Blue 15 literally satisfy the '018 patent's definitions of "orange-red," "violet-blue," and "green-blue," respectively.
Plaintiff concedes that the Wilcox Book expressly disclosed one of the three limitations relating to the six claimed colors, specifically, the highest reflectance limitation. The parties dispute, however, whether the Wilcox Book disclosed the area limitation and the wavelength limitation. While there is no doubt that the spectroscopic curves, pigments, and color wheels in the '018 patent and the Wilcox Book are identical, the Court agrees with Plaintiff that the book's inclusion of the same color names and color pigments as the '018 patent is not enough to be an express disclosure of the wavelength and area limitations. The wavelength table found in the '018 patent does not appear in either the first or second editions of the Wilcox Book. (Def. Wilcox Resp. ¶¶ 28, 30.) Further, as Defendants' expert Dr. Hunt has admitted previously in this case, there are no generally-accepted wavelength ranges for colors, and color names themselves are imprecise. (See, e.g., Pl. Wilcox SOF, Ex. 1, at 81-83; [51 at ¶¶ 39-43; 23-27].) Thus, the book's disclosure of color names and pigments alone is not enough for the Court to determine, as a matter of law, that the Wilcox Book expressly disclosed the wavelength limitation.
Nevertheless, Dr. Hunt's conclusion that three of the colors identified in the spectroscopic curves found in the Wilcox Book fall within the scope of the '018 patent's definitions of "orange-red," "violet-blue," and "green-blue" convinces the Court that the Wilcox Book inherently disclosed the two claim limitations at issue here. Under the doctrine of inherency, a prior art reference anticipates if it "necessarily functions in accordance with, or includes, the claimed limitations." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed.Cir.1999); see also King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.Cir.2010). A product that "`would literally infringe if later in time anticipates if earlier.'" Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed.Cir.2005) (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed.Cir.2001)). The critical question for inherent disclosure here is whether at least three of the six colors identified by the Wilcox Book necessarily feature the wavelength and area limitations. See Toro Co. v. Deere & Co., 355 F.3d 1313, 1320 (Fed.Cir.2004); Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed.Cir.2002) (stating that "anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation").
The Court concludes that they do. Dr. Hunt's analysis, the methodology of which Plaintiff does not contest, makes clear that three of the colors the Wilcox Book disclosed necessarily include the disputed claim limitations. See Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991) ("To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence."). According to Dr. Hunt's data, the spectroscopic curve identified in the Wilcox Book for Pigment Red 108 is an "orange-red." In other words, the area under the spectroscopic reflectance curve is greatest for the component color red (610-700 nm), and second highest for orange (590-620 nm). Pigment Blue 29 is a "violet-blue" because the area under the spectroscopic reflectance curve is greatest for the component color blue (420-490 nm), and second highest for violet (400-440 nm). Finally, Pigment Blue 15 is a "green-blue" because the area under the spectroscopic reflectance curve is greatest for the component color blue (420-490 nm), and second highest for green (490-550 nm). The Court concludes, based on Dr. Hunt's analysis, that the wavelength and area limitations are necessarily present in three of the colors disclosed in the Wilcox Book.
Plaintiff argues that Dr. Hunt was only able to reach this conclusion with the benefit of the Court's claim construction. Specifically, Plaintiff claims that before the Court construed the claims, and having no knowledge of the wavelength and area limitations, a person skilled in the art would
However, this does not end the Court's anticipation inquiry. For inherent anticipation, the Wilcox Book also must have enabled one of skill in the art to use the disclosed colors in a printing system. Again, for a reference to be enabled, "contemporaneous recognition of the[] necessary features or results" is not required. Toro Co., 355 F.3d at 1321. In other words, whether those skilled in the field knew that the colors disclosed in the Wilcox Book could be described and measured as they are in the '018 patent is immaterial; what matters is whether an ordinarily skilled person would use the colors disclosed to make a printing system. See In re Gleave, 560 F.3d at 1336 (finding that the prior art reference was enabling and stating that "the fact that [the reference] provides `no understanding of which of the targets would be useful' is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence"); Schering Corp., 339 F.3d at 1381 ("An anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.").
Defendants concede that the Wilcox Book is primarily directed to artists and the imprecise mixing of paints, but they contend that the Wilcox Book also expressly teaches that the six-color combination can be used for printing inks and other applications. The Court agrees. The Wilcox Book was intended to have a wide audience, and was not limited to painting. For example, the first paragraph of the first edition of the Wilcox Book states,
(Def. Wilcox SOF, Ex. B at front inside panel.) Likewise, the introduction to the second edition of the book directs Dr. Wilcox's six-color theory toward the printing industry, stating,
(Def. Wilcox SOF, Ex. C at 3.)
Both editions of the book also specifically state that the preferred colors are applicable to "silk screen inks," a type of screen printing. (See Pl. Wilcox Resp. ¶¶ 38-46, 50.) Screen printing is one embodiment of the '018 patent. (See Pl. Wilcox Resp. ¶ 47-49.) The Wilcox Book further teaches that when the six-color system is used with printing inks, the inks will need to be sufficiently transparent for the six colors to give the appearance of other colors. The first edition of the book states that "most screen inks are opaque when they are applied heavily. Either by thinning or through adding a special base, the inks can be made transparent." (Def. Wilcox SOF, Ex. B at 107.) According to Defendants' expert Dr. Hunt, "[t]he practice of ensuring that inks are of the right transparency * * * is particularly important in the printing industry, because different layers of color are being printed on top of other layers." (Hunt Decl. ¶ 23.) Because the Wilcox Book was directed, at least in part, to those in the printing industry, and because the book specifically teaches how to use the six-color combination in the screen printing industry, the Court concludes that the book enables at least one of the embodiments of the '018 patent. See Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed.Cir.2009) (emphasis added) (stating that to be anticipatory, a prior art reference must "enable one of skill in the art to practice an embodiment of the claimed invention"). In other words, in light of the Wilcox Book, a person of ordinary skill in the art would know how to create a printing system using at least three of the six claimed colors. See In re Gleave, 560 F.3d at 1335. Accordingly, the Court concludes that the Wilcox Book inherently anticipates the remaining asserted claims of the '018 patent.
The Court also concludes that the Viggiano reference inherently anticipates the remaining asserted claims of the '018 patent. The Viggiano reference is a research paper co-authored by Dr. Viggiano, entitled "Colorant Selection for Six-Color Lithographic Printing." (Pl. Berns Resp. ¶ 13.) The reference was published in 1998 in connection with The Sixth Color Imaging Conference: Color Science, Systems, and Applications. (Pl. Berns Resp. ¶ 13.) Because it was published in the United States or a foreign country more than one year before the '018 patent's priority date, the Viggiano reference is part of the prior art. See 35 U.S.C. § 102(b).
(Pl. Berns Resp. ¶ 14.) In his study, Dr. Viggiano used Pantone inks, specifically combining four Pantone Process inks with two inks selected from the 13 Pantone Basic Colors:
(Pl. Berns Resp. ¶ 15.) Dr. Viggiano and his co-author identified several specific six-color combinations that yielded the best performance measured against several criteria. One set of six-color combinations identified in the study was the combination of Pantone Process Yellow, Pantone Process Magenta, Pantone Process Cyan, Pantone Process Black with Pantone Blue 072, and Pantone Yellow 012. The Viggiano reference states that, "[t]he addition of Blue 072 and Yellow 012 to the four process inks increased the proportion of ingamut pixels from 71.1% to 80.9%." (Pl. Berns Resp. ¶ 16.) Unlike the Wilcox Book, the Viggiano reference does not expressly disclose any spectroscopic curves or any reflectance data. (Def. Berns Resp. ¶ 20.)
Plaintiff again concedes that the Viggiano reference expressly disclosed a color printing system that uses at least four colored materials (an ink, dye, or toner, or pigment), each of a different color, and that the reference disclosed using a combination of colors other than cyan, magenta, a yellow and black.
For the same reasons set forth above, the Court concludes that the Viggiano reference inherently disclosed the limitations at issue here. In support of their
As he did with the curves disclosed in the Wilcox Book, Dr. Hunt measured the area under the spectroscopic reflectance curves for each of the specified Pantone and Pantone Process inks within each of the relevant wavelength ranges, and ordered the component colors. Based on his calculations, Dr. Hunt reached the following conclusions:
Dr. Hunt reached the same conclusions when he analyzed Mr. Radencic's April 2011 testing of the same Pantone inks. Thus, when the Court's claim construction is applied to the colors disclosed in the Viggiano reference, at least three of the colors disclosed fall within the scope of three of the six claimed colors in the '018 patent.
As discussed above, that is enough for the Court to reach the conclusion that at least three of the six claimed colors are inherently disclosed in the Viggiano reference. Pantone is an industry color standard, each Pantone color has a unique spectral reflectance curve, and Plaintiff has not challenged the accuracy of the curves generated by Dr. Viggiano or Mr. Radencic's testing. If the prior art discloses a range that falls within the range disclosed in the challenged patent claim, then the prior art disclosure anticipates the patent claim. Atlas Powder Co., 190 F.3d at 1346. Plaintiff's only argument to the contrary is that Dr. Hunt has testified that there is no generally-accepted wavelength range for a particular color, no generally-accepted definition of the term "quantity or intensity" and that, before the '018 patent, one skilled in the art would not have measured the area under a spectral curve to determine the order of reflectance of a component color. The Court cannot accept this argument because
As to enablement, Plaintiff again makes the same argument that the Court rejected above. According to Plaintiff, the Viggiano reference does not provide an enabling disclosure of the wavelength, area, and highest reflectance limitations. The Viggiano reference, however, specifically discusses using the disclosed Pantone ink sets for six-color lithographic printing. One skilled in the art could take the combination that includes at least three inks that fall within the scope of the '018 patent's six claimed colors and use them in a printing system. That is sufficient for enablement. See Schering Corp., 339 F.3d at 1381 ("An anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.") Thus, the Court concludes that the Viggiano reference inherently anticipates the remaining asserted claims of the '018 patent. Having determined that both the Wilcox Book and the Viggiano reference independently anticipate the remaining asserted claims, the Court need not reach the issues of whether (1) the Berns, ederMCS, and Kueppers references anticipate or (2) the Wilcox Book or the Berns, Viggiano, ederMCS, and Kueppers references render the remaining asserted claims obvious.
Finally, as to both of Defendants' invalidity motions, Plaintiff argues that the Court should not disturb the U.S. Patent and Trademark Office's decision to allow the '018 patent over the Wilcox Book or the Viggiano reference. While a patent examiner's decision with respect to anticipation is material evidence that the Court "must consider in determining whether the party asserting invalidity has met its statutory burden by clear and convincing evidence," it is not binding on this Court. Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555 (Fed.Cir.1985); see also Microsoft Corp., 131 S.Ct. at 2251 (stating that "new evidence supporting an invalidity defense may `carry more weight' in an infringement action than evidence previously considered by the PTO"). Here, while it is undisputed that both editions of the Wilcox Book and the Viggiano reference are listed in the "References Cited" section of the '018 patent, (Def. Wilcox Resp. ¶ 33; Def. Berns Resp. ¶ 16), the Court concludes that Defendants have satisfied their burden of proving by clear and convincing evidence that each limitation found in the remaining asserted claims of the '018 patent is at least inherently anticipated by the Wilcox Book and the Viggiano reference.
For the reasons set forth above, the Court grants Defendants' motion for summary judgment of invalidity based on the Wilcox Book [185], grants Defendants' motion for summary judgment of invalidity based on Berns, Viggiano, ederMCS, and Kueppers [189], denies Plaintiff's motion to strike [228], grants Defendants' motion for leave to file a sur-reply [233], and grants Defendants' motion to amend its L.R. 56.1 statement of material facts [238]. This case is set for further status on 10/31/2011 at 9:30 a.m.
