The opinion of the court was delivered by: ROBERT GETTLEMAN, District Judge
MEMORANDUM OPINION AND ORDER
On November 9, 2004, plaintiff PSN Illinois, Inc. ("PSN") filed
this action alleging infringement of patent number 4,579,530
(`"530 patent"), entitled "Fabrication of Porcelain
Restorations." The `530 patent claims methods for making dental
porcelain veneers. Plaintiff alleges that the Empress system
produced by defendant Ivoclar Vivadent, Inc. ("Ivoclar")
infringes the `530 patent, and that the other defendants, dental
laboratories, contribute to the infringement by using the Empress
system. Ivoclar has filed a motion for summary judgment under
Fed.R.Civ.P. 56 on the its defenses of non-infringement and
The issue of infringement is hotly contested. On September 27,
2005, at defendant's helpful suggestion, the court held a hearing
to allow the parties to present their respective products and
processes. The parties' able demonstrations and explanations were
informative and professional, and will aid any necessary claim
construction. If defendant establishes that plaintiff's claims
are barred by laches, however, there will be no need to
adjudicate infringement because the patent has expired. The court
therefore bifurcates the issues of laches and infringement, and
will hold a bench trial on the issue of laches prior to resolving
the question of infringement. FACTS*fn1
PSN is an Illinois corporation, and the owner of the `530
patent. Ivoclar is a Delaware corporation that manufactures
materials used to fabricate porcelain dental veneer restorations,
including those sold under the "Empress" trade name. The `530
patent was issued to Dr. Gerald G. McLaughlin ("McLaughlin"), the
named inventor, on April 1, 1986. Reexamination Certificate BI
4,579,530 was issued July 11, 1989, which narrowed the scope of
the patent claims to porcelain veneers specifically. The `530
patent expired November 21, 2004.
The process described by the `530 patent is a form of a
technique that is commonly known in the industry as a
"refractory" technique for creating porcelain dental veneers,
which are attached to the surface of a tooth to replace lost
tooth structure and/or enhance the aesthetic appearance. The
patent describes a method of creating a veneer by brushing a
liquid slurry made of porcelain powder and water onto a "statue"
or model of a patient's tooth. The porcelain is hardened on the
statue and the statue is removed by "croding" by blasting it with
glass beads, leaving the veneer. The process used by defendant's
Empress products is commonly known in the industry as a "lost
wax" or "pressable" technique.
On April 20, 1993, Dr. George W. Tysowsky ("Tysowsky"),
defendant's vice president of research and development, gave a
presentation at a conference held by the American Academy of
Cosmetic Dentistry ("AACD"). The seminar was entitled,
"Presenting IPS Empress: A New Ceramic Technology," and was
described in the conference brochure as presenting a "a new ceramic technology and clinical technique associated with the
preparation, lab fabrication, and cementation of the IPS Empress
restoration." McLaughlin attended at least a portion of
Tysowsky's presentation, and later wrote two letters to Tysowsky
dated May 11, 1993, and September 4, 1993, stating that he
"really enjoyed" the presentation and wanted to include it in an
upcoming educational program that he was organizing.
Defendant asserts that after attending the AACD seminar,
McLaughlin knew of defendant's Empress product "in detail."
McLaughlin states that he heard Tysowsky discuss an Empress
inlay,*fn2 not an Empress veneer. McLaughlin denies that the
AACD presentation was detailed, and that it did "not discuss the
specific steps that a laboratory performs in fabricating a
veneer." Defendant does not deny that Tysowsky did not
demonstrate the process of fabricating an Empress porcelain inlay
restoration provided to the AACD participants, but rather
displayed a pre-fabricate inlay.
During discovery in the instant case, McLaughlin produced a
manual from his records regarding Empress products that defendant
claims was mailed to McLaughlin's home in 1994. The manual
describes a "new pressed ceramic system" from Ivoclar, and the
use of glass ingots. It states, "The base glass is melted,
quenched, fried, ground, remelted, and tempered into homogeneous
glass ceramic that is pressed into ingots by the manufacturer and
refired for construction of restoration veneers."
For a period of time the `530 patent was held by a company,
Yukiyo, Ltd. ("Yukiyo"), of which McLaughlin was president.
During the early to mid 1990s, Yukiyo asserted the `530 patent against approximately 27 dental laboratories. Yukiyo did
not assert the patent against defendant or its Empress product.
The cases were consolidated in In re Yukiyo Patent Lit. in the
Northern District of California. The defendants challenged the
validity of the patent under 35 U.S.C. § 102(b), arguing that the
invention was described in a printed publication more than one
year prior to the patent application. After the Yukiyo jury
found the patent was not invalid, the district court determined
it was invalid as a matter of law, but was reversed by the
Federal Circuit. Yukiyo, Ltd. v. Watanabe, 1997 WL 327345,
unpub. op. (Fed. Cir. 1997). The case was settled in 1999, prior
to a second validity adjudication.
From approximately 1995 through 1997, McLaughlin and defendant
engaged in intermittent discussions concerning licensing the `530
patent. McLaughlin traveled to defendant's plant in Buffalo, New
York. During this time period, McLaughlin did not accuse the
Empress product of infringement. Plaintiff asserts that defendant
told McLaughlin on "several occasions that it did not need a
license for his patent because its veneer restoration system was
based on a completely different technology." McLaughlin testified
that in December 1992 and in 1995 defendant told McLaughlin that
the Empress system was different from the `530 patent method
because Empress used different materials, including "liquid
glass," and employed the "lost wax" method. McLaughlin asked
defendant for copies of its Empress instructions, but defendant
refused to provide them unless McLaughlin purchased an Empress
system at a cost of approximately $10,000 to $20,000.
Plaintiff, McLaughlin's assignee, alleges that McLaughlin first
became aware of defendant's infringement in October 2004, a month
before the instant law suit was filed, when he visited
defendant's website and viewed technical information concerning
Empress, including its manual, instructions, and other technical data that McLaughlin
states that he had not previously seen. According to McLaughlin,
the most significant discovery in October 2004 was that the ingot
used by Empress, which defendant had previously said was a liquid
glass, "was in fact porcelain powder pressed into the shape of an
ingot." Plaintiff argues that deposition testimony of other
people in the veneer industry demonstrates that "the veneer
industry did not know that the Empress ingot was made of powder."
Defendant argues that the information available on its website in
2004 was the same information contained in 1994 Empress manual
produced from McLaughlin's files during discovery, and in
Tysowsky's presentation to the AACD in 1993.
SUMMARY JUDGMENT STANDARD
A movant is entitled to summary judgment under Rule 56 when the
moving papers and affidavits show there is no genuine issue of
material fact and the movant is entitled to judgment as a matter
of law. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986); Unterreiner v. Volkswagen of America,
Inc., 8 F.3d 1206, 1209 (7th Cir. 1993). Once a moving party
has met its burden, the nonmoving party must go beyond the
pleadings and set forth specific facts showing there is a genuine
issue for trial. See Fed.R.Civ.P. 56(c); Becker v.
Tenenbaum-Hill Associates, Inc., 914 F.2d 107, 110 (7th Cir.
1990). The court considers the record as a whole and draws ...