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EASTMAN KODAK COMPANY v. AGFA-GEVAERT

June 28, 2005.

EASTMAN KODAK COMPANY, Plaintiff,
v.
AGFA-GEVAERT N.V. and AGFA CORP., Defendants.



The opinion of the court was delivered by: MICHAEL TELESCA, Senior District Judge

DECISION and ORDER

INTRODUCTION

Plaintiff Eastman Kodak Company, ("Kodak"), brings this action against defendant Agfa-Gevaert, N.V. and Agfa Corporation (collectively "Agfa"), claiming that the defendants, by manufacturing, distributing and selling certain radiographic films, have infringed upon seven patents assigned to Kodak. By motion dated May 27, 2005, Agfa moves for partial summary judgment with respect to certain of the accused products contending that the products do not literally infringe three of the seven Kodak patents at issue, (U.S. Patents 4,425,425 (the `425 patent); 4,425,426, (the `426 patent) and 4,439,520 (the `520 patent)) and, as a matter of law, can not be found to infringe those patents under the doctrine of equivalents. Specifically, Agfa contends that because certain claims of the `425, `426, and `520 patents contain specific numerical limitations, the doctrine of equivalents may not be invoked to expand the scope of those claims to cover accused products which fall outside of the prescribed numerical ranges or limitations. Kodak opposes defendant's motion, and contends that the use of precise numerical limitations in the claims does not, as a matter of law, preclude application of the doctrine of equivalents to those claims. Instead, Kodak argues that the question of whether or not Agfa's products infringe the `425, `426, or `520 patents under the doctrine of equivalents is a question of fact that must be submitted to the trier of fact.

  For the reasons set forth below, I find that Kodak is not precluded as a matter of law from asserting claims of infringement under the doctrine of equivalents with respect to the `425, `426, and `520 patents, and therefore deny defendant's motion for partial summary judgment.

  BACKGROUND

  The patents at issue in this motion are U.S. Patents 4,425,425 (the `425 patent); 4,425,426, (the `426 patent) and 4,439,520 (the `520 patent) hereinafter referred to as the "tabular grain" patents. Tabular grains, (also known as T-grains), are tiny light sensitive crystals shaped like table-tops that are embedded in the emulsion of radiographic film. The T-grain patents purportedly disclose advancements in the sizes and shapes of the tabular grains. Kodak contends that because of the physical attributes of its grains, the grains capture more light at a lower cost than grains in other films, and capture that light more accurately, resulting in clearer radiographic images. The `425, `426, and `520 patents disclose the use of T-grains, which are of a particular size and shape, and which have a particular aspect ratio. Specifically, in addition to other elements, the `425 patent discloses the use of T-grains having a thickness of less than .3 micron, a diameter of at least .6 micron, and an average aspect ratio that is greater than 8:1. The "aspect ratio" of a T-grain is the ratio between the T-grain's diameter to its thickness. Similarly, the `520 patent discloses the use of T-grains having a thickness of less than .3 micron, a diameter of at least .6 micron, and an average aspect ratio of 8:1

  The `426 patent discloses, inter alia, an emulsion wherein T-grains having a thickness of less than .2 micron and an average aspect ratio of between 5:1 and 8:1 account for at least 50 percent of the total projected area of the film. The term "projected area" refers to the area of film receives light to form an image.

  Agfa moves for summary judgment seeking a declaration that five of its products, (Agfa CP-BU; Curfix Opthos H HS/LC; Sterling OV-G; Sterling UV-Ci; and Sterling Ultravision G) do not infringe the `520 and `425 patents. Agfa contends that these products do not literally infringe the `520 and `425 patents because according to Kodak's own analysis, the products do not utilize T-grains with an average aspect ratio of greater than 8:1. Rather, Agfa contends that Kodak's data demonstrates that the aspect ratio of Agfa's T-grains range between 7.03:1 to 7.50:1. Moreover, Agfa contends that Kodak may not assert an infringement claim pursuant to the doctrine of equivalents because the written claims specifically require T-grains with an average aspect ratio greater than 8:1, and therefore T-grains with a smaller aspect ratio may not be considered equivalent. Kodak contends that it is not precluded from asserting infringement claims under the doctrine of equivalents, and that the question of whether or not T-grains with aspect ratios ranging from 7.03:1 to 7.50:1 infringe the `425 and `520 patents is a question of fact.

  Agfa also seeks a declaration that 16 of its products do not infringe the `426 patent. Specifically, with respect to those 16 products, Agfa contends that only 3 percent of the T-grains measuring less than .2 micron in thickness make up the total projected area, and therefore those products do not meet the requirement of the `426 patent that more than 50 percent of the total projected area be populated by T-grains measuring less than .2 micron in thickness. Kodak counters that with respect to the 16 products at issue, those products utilize T-grains with a thickness measuring slightly more than .2 micron that make up more than 50 percent of the total projected area, and therefore may be found to infringe under the doctrine of equivalents.

  DISCUSSION

  I. The Doctrine of Equivalents

  A. Generally

  The patent-law doctrine of equivalents was first announced by the Supreme Court in 1854 in Winans v. Denmead 56 U.S. (15 How.) 330. In Winans, the court held that the "scope of a patent is not limited to its literal terms, but instead embraces all equivalents to the claims described." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 732 (2002) (citing Winans, 56 U.S. at 347). Since 1854, courts have struggled to determine what constitutes an "equivalent" to a patent claim. Ninety six years after Winans was decided, the Supreme Court held that when determining whether or not an accused product is "equivalent" to a patented invention, courts must determine whether or not the accused product "performs substantially the same function [as the patented invention] in substantially the same way to obtain the same result." Graver Tank & Manufacturing Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608 (1950)). More recently, the Supreme Court has clarified that the doctrine of equivalents test is to be applied to the individual claims of a patent, not to the patented invention as a whole. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997).

  There are three significant limitations concerning the range of equivalents that may be afforded to a patent claim. First, if the claim language itself, or the specification, specifically preclude the use of certain structures, or if the use of those structures would be "inconsistent with the language of the claim", then those structures may not be deemed equivalents to the claimed structure. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998). Second, if the patentee specifically disclaimed certain structures during the prosecution or reexamination of the patent, the patentee may not then assert those structures as equivalents for purposes of alleging infringement. Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373, 1376 (Fed. Cir. 1999) ("Prosecution history estoppel precludes a patentee from obtaining under the doctrine of equivalents coverage of subject matter that has been relinquished during the prosecution of its patent application.") Finally, the range of equivalents afforded a patent claim may be circumscribed by prior art. Where an alleged equivalent to a patented claim exists in prior art, and therefore could not ...


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