The opinion of the court was delivered by: Michael A. Telesca United States District Judge
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.
Before the court are four motions. By motion dated April 11, 2006, Agfa moves for partial summary judgment against Kodak with respect to the accused product Cronex 10TL on grounds that Kodak failed to provide Agfa or its predecessors with notice of infringement prior to the expiration of the patents that were allegedly infringed. (Docket item no. 185) Agfa contends that because Kodak failed to provide notice of infringement with respect to Cronex 10TL, Kodak may not recover damages for alleged infringement related to that product. By a second motion dated April 11, 2006, Agfa moves for partial summary judgment on grounds that Kodak unreasonably delayed bringing this action despite believing that certain of Agfa's products infringed upon Kodak's patents. (Docket item no. 187) Agfa argues that because of Kodak's delay in bringing suit, Kodak is barred by the doctrine of laches from recovering its entire measure of alleged damages with respect to Agfa's Cronex 10T and Cronex 10TL products.
Kodak opposes Agfa's motions, and by motions dated June 14, 2006, cross moves for summary judgment in its favor with respect to the issue of notice of infringement, and for attorneys' fees with respect to defendants' motion under the laches doctrine. (Docket item nos. 204, 205)
There are seven patents at issue in this case, all of which are assigned to Kodak. The patents generally fall into one of two categories: the "crossover patents" and the "tabular grain patents." The crossover patents disclose film emulsion technology which limits the amount of light that can "crossover" from one side of radiographic film to the other side. Limiting the amount of light that crosses-over from one side to the other helps prevent distortion, and allows for a sharper image.
Tabular grains, as described in the tabular grain patents (also referred to as the "t-grain" patents) are tiny light sensitive crystals shaped like table-tops that are embedded in the emulsion of radiographic film. The t-grain patents disclose advancements in the sizes and shapes of the tabular grains. Kodak contends that because of the sizes and shapes of its grains, the grains capture more light than grains in other films, and capture that light more accurately, resulting in clearer radiographic images.
There are four crossover patents at issue in this case: U.S. Patents 4,803,150; (the '150 patent); 4,994,355, (the '355 patent); 4,997,750, (the '750 patent); and 5,108,881 (the '881 patent).
There are three tabular grain 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).
In September 1995, Kodak informed Dupont that one of its products, Cronex 10T, infringed upon Kodak's '425 and '426 (t-grain) patents. The parties met in November, 1995, at which time Dupont acknowledged Kodak's patents; explained that any prior infringement of those patents was unintentional; and vowed to quickly alter the formulation of the film so as not to infringe on Kodak's patents. Kodak subsequently tested DuPont's Cronex 10T, and concluded that the product no longer infringed on Kodak's '425 and '426 patents. At that time, Kodak did not raise any infringement claims regarding the other T-grain patent in suit, the '520 patent.
In April 1996, DuPont spun-off a company named Sterling which became an independent company. Three years later, in 1999, Agfa acquired Sterling. In November, 2000, Kodak and Agfa representatives met in Rochester, N.Y., to discuss patent and licensing issues. The parties, however, were unable to negotiate a licensing agreement. On October 31, 2002, Kodak filed the instant case, alleging that Agfa's products infringed on one or more of Kodak's t-grain and crossover patents in suit.