The opinion of the court was delivered by: Judge Virginia M. Kendall
MEMORANDUM OPINION AND ORDER
PSN Illinois, LLC ("PSN") has sued Ivoclar Vivadent, Inc. ("Ivoclar") and numerous other defendants for infringement of PSN's Patent No. 4,579,530 (the "'530 Patent"). Defendant Ivoclar moves for summary judgment on the issues of non-infringement and laches separately from the other defendants. This Court ruled on October 11, 2005 that a genuine issue of material fact exists with respect to the affirmative defense of laches.*fn1 This opinion addresses Ivoclar's Motion for Summary Judgment on non-infringement. Because Ivoclar's product does not infringe on the '530 Patent either literally or under the doctrine of equivalents, summary judgment for Ivoclar on the issue of non-infringement is granted.
The '530 Patent The '530 Patent describes an innovation in the design and construction of porcelain tooth veneers. The original '530 Patent was filed on November 21, 1984 and issued on April 1, 1986 to Dr. Gerald G. McLaughlin ("McLaughlin"), the named inventor. It was later reexamined by the United States Patent and Trademark Office, which narrowed the scope of the claims to porcelain veneers via a reexamination certificate issued July 11, 1989. The '530 Patent expired November 21, 2004.
Rather than describe the patent in the Court's own words because the claimed terms are in dispute, the '530 Patent claims the following:
1. A method of fabricating a custom-made porcelain veneer restoration for a tooth without the use of a metal matrix comprising the steps of:
a. preparing an impression of said tooth;
b. forming from said impression a statue of said tooth out of an investment material;
c. applying porcelain powder to the surface of said statue to build a veneer restoration conforming to the shape of the bonding surface of said tooth;
d. firing the porcelain veneer restoration on said statue; and
e. eroding away said statue from said porcelain veneer restoration leaving said restoration ready for mounting on said tooth. '530 Patent, Def. Ex. 1 at col.6 ll.35-50; '530 Reexamination, Pltf. Ex. D at col 1, ll. 14-31. The specification of the '530 Patent describes the application of porcelain powder to the surface of the statue via an opaque water "slurry" containing the porcelain powder. '530 Patent, col. 4, ll. 4-12. The specification also describes bevelling, glazing, and providing other finishing treatment to the veneer while the veneer remains attached to the statue. The '530 Patent specification states that "the support provided by the statue with the casing still mounted while such treatment is conducted is a feature of this invention." '530 Patent, col. 4, ll. 44-47.
Ivoclar markets and sells its trademarked Empress veneer technique ("Empress"), also known as the "Lost Wax" technique, for the creation of porcelain tooth veneers.*fn2 The Empress process takes an impression of the customer's teeth and makes a mold from the impression out of a hard stone material. After the mold has been created, the Empress process coats the front and sides of a molded tooth with a wax substance to make a new mold, and attaches a wax sprue, or handle, to the top of each wax mold. The wax mold of the tooth veneer is then placed into the center of a cylindrical container with the sprues attached to the base of the container. More than one tooth can be placed in the cylindrical container at the same time; for example, Ivoclar's description of its process in its own literature shows 4 wax molds in one cylindrical container at the same time.
Once the wax molds are in the cylindrical container and anchored to the base, the cylindrical container is filled with an investment material until it completely covers the wax molds and sprues. When the investment material has hardened, the container and anchoring base are removed, leaving the wax molds and wax sprues suspended in the hardened cylinder of investment material with the ends of the sprues just reaching the outer surface of the investment material. The cylinder of investment material is placed in a kiln and heated to the point that the wax molds melt away, leaving a negative mold of the tooth veneer suspended in the investment material and a passage to the exterior of the cylinder.
After the reverse mold of the tooth veneers has been created, the cylinder is placed into a plunger with the passages facing up. A solid ceramic ingot is also placed in the plunger, suspended above the cylinder. The plunger, with cylinder and ingot in place, is placed into a press furnace. When the ceramic ingot becomes sufficiently hot it reaches a "flowable" or molten state, at which time the ingot is pressed downward by the plunger so that the flowable material moves through the passages and fills the negative molds of the tooth veneers.
Once cooled, the investment material is stripped away, revealing porcelain sprues attached to porcelain veneers. The Empress process grinds away the porcelain sprues, and then glazes, polishes, and contours each porcelain veneer, after which it can be prepared for and mounted on the customer's tooth.
As discussed in the October 11, 2005 opinion, during the mid 1990's the '530 Patent was held by Yukiyo, Ltd. ("Yukiyo"). McLaughlin was president of Yukiyo. In the mid-1990's, Yukiyo asserted the '530 Patent against multiple dental laboratories, but did not assert the patent against Ivoclar or the Empress product. The cases were consolidated in the Northern District of California, In re Yukiyo Patent Lit. The Yukiyo court bifurcated trial on infringement and patent invalidity. After a ruling on claim construction, the invalidity case went to trial and a jury trial upheld the '530 Patent's validity. The Federal Circuit upheld the jury verdict on validity in an interlocutory appeal, after which the defendant dental laboratories settled with Yukiyo. Both parties have used the claim construction in the Yukiyo court as a basis for their proposed claim constructions to this Court, and have submitted the Yukiyo court's claim construction order as a supporting document in this case.
After Yukiyo and McLaughlin assigned the '530 Patent to PSN, PSN asserted the patent before this Court against Ivoclar and several dental laboratories for their sale and use of the Empress product. Ivoclar moved for summary judgment that its Empress product does not infringe the '530 Patent, and that any claim against Ivoclar by PSN is barred by the affirmative defense of laches. In the October 11, 2005 opinion and order, the Court addressed solely the affirmative defense of laches and determined that a genuine issue of material fact exists as to the extent and time period of ...