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IMATEC, LTD. v. APPLE COMPUTER
January 17, 2000
IMATEC, LTD. AND HANOCH SHALIT, PLAINTIFFS,
APPLE COMPUTER, INC., DEFENDANT.
The opinion of the court was delivered by: Koeltl, District Judge.
The plaintiffs, Imatec, Ltd. ("Imatec") and Hanoch Shalit
("Dr.Shalit"), bring this action alleging that the defendant,
Apple Computer, Inc. ("Apple"), has infringed a series of patents
owned by Dr. Shalit and, for a period, exclusively licensed or
assigned to Imatec. Now pending before the Court are two motions
brought by the defendant: a motion to dismiss for lack of
standing, and a motion for summary judgment.
The technologies at issue in this action concern "color
matching ." Color matching technologies are intended to ensure
that an image displayed by one electronic output device (such as
a computer monitor) appears identically, or as close thereto as
possible, when displayed by another electronic output device
(such as a laser printer). Such technologies are necessary
because different output devices have different color
characteristics. Color characteristics vary across classes of
output devices, and across particular devices within any given
class. Laser printers, for example, produce colors differently
than do computer monitors, and one laser printer may render a
given source image differently from another laser printer. See
Declaration of Maureen C. Stone, dated April 12, 1999 ("Stone
Decl."), ¶¶ 7-9, 14; see also U.S. Patent No. 5,345,315, col.
Perceived color is produced in two fundamentally different
ways. "Additive color" is produced when a light source is caused
to glow with a combination of the primary colors red, green, and
blue. Devices that generate additive color, such as computer
monitors, are referred to as "RGB" devices because they combine
the primary colors red, green, and blue to produce a given color.
"Subtractive color" is produced when light from a light source is
reflected by a surface whose pigments absorb certain wavelengths
but not others. Devices that generate subtractive color, such as
laser printers, are referred to as "CMYK" devices because they
combine the primary colors cyan, magenta, and yellow, as well as
black, to produce a given color. See Stone Decl., ¶¶ 9-11.
Every electronically generated image comprises many "pixels,"
much as a pointillist painting comprises many discrete brush
stokes. Each individual pixel is characterized by a particular
combination of red, green and blue, or, depending on the output
device, cyan, magenta, yellow and black. The relative amounts of
red, green and blue or cyan, magenta, yellow and black describe
the color of a given pixel as generated by a particular output
device. Such descriptions, however, are "device-dependent,"
describing how the color is generated by a particular output
device, not how the color is perceived by a viewer. Thus, a
particular combination of red, green and blue values displayed on
one monitor may appear differently when displayed on another
monitor. See id., ¶¶ 10-12.
In contrast to device-dependent values, which describe how a
color is generated by a particular device, "device-independent"
values describe how a color is perceived by a standard,
hypothetical viewer. Device-independent color values are
expressed as points in a three-dimensional coordinate system
known as a "color space." One such device-independent color space
is called "CIE XYZ," where "CIE" refers to the Commission
Internationale de l'Eclairage, the scientific organization that
sponsored its development, and "XYZ" refers to the three axes of
the coordinate system. See id., ¶¶ 15-17.
No electronic output device can generate all of the colors
perceptible to the human eye. Moreover, the range of colors that
an output device is capable of producing, known as the device's
color "gamut," varies across devices. RGB devices, such as
monitors, are incapable of generating all of the colors that CMYK
devices can produce; conversely, CMYK devices, such as printers,
are incapable of generating all of the colors that RGB devices
can produce. Because of each device's inherent limitations, a
given source image may not be fully reproducible on a given
output device. As a result, certain colors in the source image
may have to be approximated, through a process known as "gamut
mapping," when displayed on certain output devices. See id., ¶
The pending action involves three patents: U.S. Patents Nos.
4,939,581 (the "'581" patent), 5,115,229 (the "'229" patent), and
5,345,315 (the "'315" patent). In each instance the plaintiff
Hanoch Shalit is listed as the sole inventor. The '229 and '315
patents are each a continuation-in-part of the '581 patent. See
U.S. Patents Nos. 4,939,581, 5,115,229, and 5,345,315.
The '581 patent, entitled "Method and System in Video Image
Hard Copy Reproduction," was filed on November 23, 1988 and
granted on July 3, 1990. According to the patent, an objective of
the claimed invention is "to provide a more accurate black-white
photographic image taken from the image on a video screen in
which the photographic image more accurately maintains the
relative and absolute (for luminance reproduction) tonal scale of
gray tones." U .S. Patent No. 4,939,581, col. 3:61-66.
The '229 patent, entitled "Method and System in Video Image
Reproduction," was filed on June 26, 1990 and granted on May 19,
1992. According to the patent, an objective of the claimed
invention is "to provide a more accurate black-white video image
on a second video monitor from the image on a first video screen
in which the second image more accurately maintains the relative
and absolute (for luminance reproduction) tonal scale of gray
tones." U.S. Patent No. 5,115,229, col. 3:8-13.
The '315 patent, entitled "Method and System for Improved Tone
and Color Reproduction of Electronic Image on Hard Copy Using a
Closed Loop Control," was filed on March 20, 1992 and granted on
September 6, 1994. According to the patent, an objective of the
claimed invention is "to provide a more accurate black-white and
color hard copy taken from the image on an original video monitor
screen in which the hard copy reproduced image more accurately
maintains the relative and absolute tonal scale of gray tones . .
. regardless of the distortions or inaccuracy of that original
screen image as compared to an ideal image or the object from
which the image is taken." Patent No. 5,345,315, col. 3:50-58.
Claim 13 of the '315 patent, the only claim pressed in the
briefs and at argument, is typical of the patent claims allegedly
infringed by the defendant.*fn1 See Plaintiffs' Memorandum in
Opposition to Defendant's Motion for Summary Judgment, at 11.
Claim 13 of the '315 patent claims a "method of producing a
series of color hard copy images which are accurate reproductions
of the colors of video images on a video monitor screen without
affecting the video monitor screen images." Id., col. 17:58-61.
Claim 13 of the '315 patent includes the steps of:
forming a test video image on the screen of the video
monitor, measuring the colors of the test image on
the monitor screen using an electronic meter to
provide a set of monitor screen color values, and
entering the set of monitor screen values into a
forming a test image on the hard copy using a hard
copy printing system, said printing system including
electronic means to vary the control signals to
control the color intensity printed by said printing
system on a dot-by-dot basis, the hard copy test
image having predetermined colored areas including
defined areas differing color intensities; [and,]
printing said hard copy test image to produce a color
printed image of said hard copy test image using the
same batch of hard copy color reproduction materials
as will be thereafter used by the printing system to
print the images from the video monitor; sensing the
color differences on the hard copy test image using a
photoelectric densitometer and entering the sensed
color differences into the computer; comparing said
entered hard copy color difference values with the
set of monitor color values stored in computer
memory; using the computer to calculate and generate
a set of corrections to said control signals for each
color value for each dot printed by said printing
system based on the said comparison, and altering the
colors printed by said printing system according to
said set of computer produced corrections using the
electronic means of said printing system.
entered into the computer. The computer, using its
look-up table memory, will determine the required
compensation on a dot-by-dot basis. . . . The
computer memory includes a `standard' set of density
values corresponding to the luminance values for each
tone. That `standard' set is obtained by measuring
the luminances on the original monitor screen using a
spot photometer, of a tonal test pattern. . . . Those
standard values are compared to the actual values,
from the densitometer, to provide the required
Id., cols. 4:55-5:15. The comparison used to generate the
"required compensation" is, according to the specifications, a
subtractive function. See id., cols. 9/10:40-64 (stating that
corrected pixel value is "obtained from" "calc. col. 7 minus 5").
The specifications also disclose that when the claimed invention
is used to correct a color (as opposed to black-and-white) image,
the three primary color components — red, green, and blue — are
"separately corrected." Id., col. 15:62-63; see also id.,
The '315 patent discloses subject matter not previously
disclosed in either the parent '581 patent or the '229 patent. In
particular, the specification of the '315 patent discloses in
detail the method by which color, as opposed to black-and-white,
images are to be matched. See id. cols. 14:61-16:6, figs. 8A-C,
9; see also Defendant Apple Computer, Inc.'s Revised
Supplemental Statement Pursuant to S.D.N.Y. Civ. R. 56.1(a), ¶¶
51-52; Plaintiffs' Response to Defendant Apple Computer, Inc.'s
Supplemental Statement Pursuant to S.D.N.Y. Civ. R. 56.1(a), ¶¶
51-52; compare U.S. Patent No. 5,345,315, cols. 14:61-16:6,
figs. 8A-C, 9, with U.S. Patent No. 4,939,581, col. 11:15-35.
In order to obtain the patents-in-suit, Dr. Shalit was required
by the United States Patent and Trademark Office ("PTO") to amend
his claims and to distinguish his claimed invention from prior
art. The PTO initially rejected what was to become the '581
patent on the grounds that the claimed invention was anticipated
by U.S. Patent No. 4,757,334 (the "Volent" patent). See
Rejection, Ser. No. 07/275,218 (Sept. 11, 1989), at 4-7. In
response, Dr. Shalit amended his claim. Whereas his original
application compared the density values of the hard copy test
image with "predetermined numerical correction values," the
amended application compared the density values of the hard copy
test image with "monitor gray scale luminance values." Amendment,
Ser. No. 07/275,218 (Dec. 5, 1989), at 3.
The PTO also initially rejected what was to become the '315
patent, citing among other grounds the prior art disclosed by
U.S. Patent No. 4,794,460 (the "Shiota" patent). See Rejection,
Ser. No. 07/855,619 (May 21, 1993), at 5. In response, Dr. Shalit
distinguished his invention from the Shiota patent, noting that:
(i) "Shiota compares his hard copy with a standard — not with the
monitor gray scale luminance values"; (ii) "Shiota points away
from applicant's use of the monitor screen as the target — by
using another standard for both the screen and the hard copy";
and, (iii) "applicant's system is completely objective,
measurement alone determines the output of the system based on
the absolute (not operator ...