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Only the First, Ltd v. Seiko Epson Corporation

September 30, 2011

ONLY THE FIRST, LTD., PLAINTIFF,
v.
SEIKO EPSON CORPORATION,
DEFENDANT.
SOC-USA, LLC, PLAINTIFF,
v.
OFFICE DEPOT, INC., AND EPSON AMERICA, INC., DEFENDANTS.



The opinion of the court was delivered by: Judge Robert M. Dow, Jr.

MEMORANDUM OPINION AND ORDER

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, 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").

Now before the Court are Office Depot, Inc. and Epson America, Inc.'s (collectively, "Defendants") two motions for summary judgment of invalidity on anticipation and obviousness grounds, as well as the parties' related discovery motions. Defendants argue that the remaining asserted claims of the '018 patent are invalid in light of certain references in the prior art. For the reasons set forth below, 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 Local Rule 56.1 statement of material facts [238].

I. Background

A. Factual Background

The Court takes the relevant facts primarily from the parties' Local Rule ("L.R.") 56.1*fn1 statements of material facts. Throughout this opinion, the Court will refer to the parties' L.R. 56.1 statements as follows: Defendants' statement of facts in support of their motion for summary judgment of invalidity based on the Wilcox Book ("Def. Wilcox SOF") [187]; Defendants' statement of facts in support of their motion for summary judgment of invalidity based on Berns, Viggiano, ederMCS, and Kueppers ("Def. Berns SOF") [191, 238]; Plaintiff's response to Defendants' statement of facts in support of their motion for summary judgment of invalidity based on the Wilcox Book and Plaintiff's Wilcox Book statement of additional facts ("Pl. Wilcox Resp." and "Pl. Wilcox SOF") [245]; Plaintiff's response to Defendants' statement of facts in support of their motion for summary judgment of invalidity based on Berns, Viggiano, ederMCS, and Kueppers and Plaintiff's Berns, Viggiano, ederMCS, and Kueppers statement of additional facts ("Pl. Berns Resp. and "Pl. Berns SOF") [244]; Defendants' Response to Plaintiff's Wilcox Book statement of additional facts ("Def. Wilcox Resp.") [249]; and Defendants' Response to Plaintiff's Berns, Viggiano, ederMCS, and Kueppers statement of additional facts ("Def. Berns Resp.") [250].

1. The '018 Patent

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:

A color printing system comprising a combination of at least four, and preferably six coloring materials, each of a different color, wherein these colors are selected from (1) an orange-red; (2) a violet-red; (3) a violet-blue; (4) a green-blue; (5) a green-yellow; and (6) an orange-yellow; as well as white and black. This system may be incorporated into a wide range of printing devices and provides a means of achieving a wide range of colors. '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: A colour printing system comprising a combination of at least four coloured materials, each of a different colour, wherein at least three of the four colours are selected from:

(1) a violet-red * * *

(2) an orange-red * * *

(3) a violet-blue * * *

(4) a green-blue * * *

(5) a green-yellow * * * and

(6) an orange-yellow * * * provided the combination is other than cyan, magenta, a yellow and black.

'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."*fn2 Claim 27 defines the colors in terms of the "area under a graph of reflectance (percent) versus wavelength."*fn3 Claims 13 and 29 depend from claims 11 and 27, respectively, and add the limitation, "wherein each colouring material is an ink, dye, toner or pigment." '018 patent, col. 14, ll. 60--61; col. 18, ll. 56--57. While the preferred embodiment of the '018 patent is the use of all six disclosed colors in a printing system, "where necessary a selection from amongst these colours may be made, and the selection may comprise three or four of the colours, combined with black or white." (Pl. Wilcox Resp. ¶ 10.)

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:

2. The Court's Construction of the Claims

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"*fn4 in that phrase refers to the six claimed colors plus black and white. For example, both magenta and light magenta are violet-reds, and therefore not "different colors" for purposes of the remaining asserted claims.

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 then noted that each claimed color is defined by the order (measured in terms of, relevant here, "intensity" or "area under a graph of reflectance (percent) versus wavelength") in which it reflects three specific component colors. (See Pl. Wilcox Resp. ¶¶ 30--35.) For orange-red, for example, the order is red followed by orange followed by violet. The Court construed claims 11 and 27 of the '018 patent as requiring that the first two component colors of each claimed color have the two highest "intensities" or greatest "areas under a graph of reflectance (percent) versus wavelength" out of all six basic colors. (Def. Berns Resp. ¶ 4; Def. Wilcox Resp. ¶ 24.)

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:

 A color which, when analyzed spectroscopically, reflects in order of quantity or intensity, red followed by orange and then violet, wherein red and orange have the two highest quantities or intensities, respectively. The Court will refer to this limitation as the "highest reflectance limitation."

 The relative quantities or intensities of each color are determined by comparing the areas under the spectroscopic graph of reflectance (percent) versus wavelength occupied by the specified color. The Court will refer to this limitation as the "area limitation."

 The wavelength occupied by each specified color is as follows: violet: 400--440 nm; blue: 420--490 nm; green: 490--550 nm; yellow: 550-590 nm; orange: 590--620 nm; red: 610-- 700 nm. The Court will refer to this limitation as the "wavelength limitation."

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.

B. Procedural Background

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 conducting discovery related to the declarations of its experts-including Dr. Hunt and Mr. Radencic-Plaintiff moved for discovery pursuant to Federal Rule of Civil Procedure 56(f), now Rule 56(d) pursuant to non-substantive rule changes effective December 1, 2010. On January 7, 2011, this Court granted Plaintiff's request for additional discovery pursuant to Rule 56(d). The parties agreed that Rule 56(d) discovery would close on May 6, 2011, and that Plaintiff's response to Defendants' invalidity summary judgment motions would be due on June 17, 2011.

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' ...


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