The opinion of the court was delivered by: P. Kevin Castel, District Judge
United States Philips Corporation ("U.S. Philips") is the owner of U.S. Patent No. 5,109,181 (the "'181 Patent"). On January 8, 2003, it commenced an action against Iwasaki Electric Co., Ltd ("Iwasaki") claiming infringement of the '181 patent and two other patents, relating to super high pressure mercury vapor discharge lamps and associated devices. The lamps are used in projection televisions and digital projectors. Discovery in this action proceeded for an extended period and has concluded. On November 22, 2005, I conducted a claims construction hearing and issued a written ruling. U.S. Philips Corp. v. Iwasaki Electric Co., 2006 WL 20504 (S.D.N.Y. Jan. 3, 2006).
Defendant Iwasaki now moves for partial summary judgment on the ground of non-infringement of the '181 patent. It asserts that, it has not manufactured or sold lamps that literally infringe the '181 patent since first receiving notice of the patent in compliance with 35 U.S.C. § 287(a). It also asserts that there is no literal infringement and that the theory advanced by U.S. Philips under the doctrine of equivalents is foreclosed on the facts of record. For the reasons set forth herein, I conclude that Iwaskaki is entitled to summary judgment in its favor on the '181 patent.
The '181 patent was issued on April 28, 1992, and Drs. Hanns Ernst Fischer and Horst Hoerster are the named inventors. It describes a high pressure mercury vapor discharge lamp operating at a pressure in excess of 200 bar.*fn1 The '181 patent describes how tungsten which has evaporated from the electrodes causes blackening of the wall of the lamp and leads to undesirably high temperatures and a shortened useful life. The introduction of a halogen (chlorine, iodine or bromine) creates a tungsten transport cycle by which the evaporated tungsten is transported back to the electrodes.
The tungsten transport cycle was well known in the art at the time of the '181 application. (Devonshire Report, p. 9; Devonshire Answering Report, pp. 20-21) The Holmes patent,*fn2 a German prior art reference for a super high pressure mercury discharge lamp, taught that the introduction of a halogen increased the life of the lamp. The Holmes patent claimed the introduction "between 5 x 10-5 and 5 x 10-7 grams-atoms/cm3 of a halogen" into the discharge space. (Claim 1 of the '396 patent) As converted into micromoles per cubic millimeter and described by U.S. Philips's own expert, "[t]he Holmes Patent teaches a halogen range of 5 x 10-4 to 5 x 10-2 umol/mm3 " (Devonshire Answering Report, p.27) As will be more fully discussed, claim 1 of the '181 patent requires that a halogen be "present in a quantity between 10-6 and 10-4 umol/mm3 ".
In this action, U.S. Philips asserts infringement solely on claim 1 of the '181 patent. (JPTO, p.3, ¶ 1) Claim 1 recites as follows:
A high-pressure mercury vapor discharge lamp comprising a discharge envelope, a pair of discharge electrodes comprising tungsten between which a discharge is maintained during lamp operation, and a filling essentially consisting of mercury, a rare gas, and a halogen for maintaining a tungsten transport cycle during lamp operation, characterized in that: the quantity of mercury is larger than 0.2 mg/mm3, during lamp operation the mercury vapor pressure is higher than 200 bar and the wall load is higher than 1 W/mm2, and in that at least one of the halogens Cl, Br or I is present in a quantity between 10-6 and 10-4 umol/mm3 .
After full discovery and with a trial date looming, the parties briefed and argued the instant partial summary judgment motion on the issue of non-infringement. On the motion, I conclude that: (1) damages are limited to the period following commencement of this action; (2) based upon this court's claim construction and facts which are not in dispute, there is no literal infringement of claim 1 of the '181 patent; and (3) the doctrine of equivalents is not available in this case as a matter of law. Summary Judgment Rule 56, Fed. R. Civ. P., governs a motion for summary judgment. In the context of a patent case, interpretive issues arising under Rule 56 are viewed as procedural and not unique to the areas that are exclusively assigned to the Federal Circuit. Thus, the court applies the law of the regional circuit. See Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300 (Fed. Cir. 2004); National Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1188 (Fed. Cir. 1996).
Summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). It is the initial burden of a movant on a summary judgment motion to come forward with evidence on each material element of his claim or defense, demonstrating that he is entitled to relief. A fact is material if it "might affect the outcome of the suit under the governing law . . . ." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The evidence on each material element must be sufficient to entitle the movant to relief in its favor as a matter of law. See Vt. Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir. 2004).
When the moving party has met this initial burden and has asserted facts to demonstrate that the non-moving party's claim cannot be sustained, the opposing party must "set forth specific facts showing that there is a genuine issue for trial," and cannot rest on "mere allegations or denials" of the facts asserted by the movant. Fed. R. Civ. P. 56(e). In order to defeat summary judgment, the non-movant carries only "a limited burden of production," but "must 'demonstrate more than some metaphysical doubt as to the material facts,' and come forward with 'specific facts showing that there is a genuine issue for trial.'" Powell v. Nat'l Bd. of Med. Exam'rs, 364 F.3d 79, 84 (2d Cir. 2004) (quoting Aslandis v. U.S. Lines, Inc., 477 U.S. 242, 252 (1986)).
An issue of fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248. The court must "view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor, and may grant summary judgment only when no reasonable trier of fact could find in favor of the nonmoving party." Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir. 1995) (quotations and citations omitted); accord Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88 (1986). In reviewing a motion for summary judgment, the court must scrutinize the record, and grant or deny summary judgment as the record warrants. Fed. R. Civ. P. 56(c). In the absence of any disputed material fact, summary judgment is appropriate. Id. Mere "conclusory statements, conjecture, or speculation by the party resisting the motion will not defeat summary judgment." Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir. 1996) (citing Matsushita Elec. Indus. Co., 475 U.S. at 587). See also Anderson, 477 U.S. at 249-50 (noting that summary judgment should be granted if the evidence is "merely colorable" or "not significantly probative").
Defendant asserts that damages may not be recovered by plaintiff for any alleged infringement in the period prior to the commencement of this lawsuit because defendant did not have "notice" of the patent, a precondition to recovery of damages.
35 U.S.C. § 287(a). U.S. Philips urges that the pre-complaint notice that was given -- a June 7, 2000 letter from Philips International B.V. -- was tantamount to notice by U.S. Philips, the owner of the '181 patent.
Ordinarily, the determination of the period for which infringement damages may be recovered is an issue reached only after there has been a determination of infringement. Here, it will greatly assist the infringement analysis to address this issue first. There is no dispute that defendant Iwasaki's target concentration of bromine since the commencement of this action was 1.6-0.4 x 10-4 which is greater than the upper limit of the '181 patent. Because it may have significant bearing on the infringement analysis, I will first address the notice issue.
Section 287(a) provides in relevant part as follows:
[P]ersons making, offering for sale, or selling . . . any patented article . . . may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent . . . In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
It is undisputed that U.S. Philips sold no lamps. The lamps sold by licensees of U.S. Philips were not marked with a reference to the patent.
Here, the letter on which U.S. Philips exclusively relies as evidence of notice is a one-page letter, dated June 7, 2000. It is addressed to "Iwasaki Electric Co., Ltd." and asserts that "[w]e have become aware" of certain lamps manufactured by Iwasaki and that "[t]hese products appear to us to resemble closely UHP type lamps sold by Philips Lighting and described in at least four of our patents and patent applications." Twelve patents or patent applications are referenced, including the '181 patent and eight European or Japanese patent or patent applications. The letter encloses the patents and application publication. It further recites that "[w]e would be willing to offer you a non-exclusive license" under agreed upon terms. The letter closes "[w]ith kind regards" followed by the name "PHILIPS INTERNATIONAL B.V." ("B.V."). Underneath the name of B.V. it states, "Corporate Intellectual Property" and is followed by the signature and typed name of "J.G.A. Rofles" under whose name appears the title "Patent Portfolio Manager". In the lower right hand corner, appears the full name of the B.V. and its address in Eindhoven, The Netherlands. A telephone number and fax number in the Netherlands appears on the letter. The name U.S. Philips does not appear anywhere on the face of the letter.
The First Amended Complaint alleges that U.S. Philips is a Delaware corporation with its principal place of business in New York and that it is the owner of the '181 patent. (AC ¶¶ 1,3) The face of the patent identifies the two inventors by name and states that they are "both of Fed. Rep. of Germany." The "Assignee" is identified as U.S. Philips Corporation, New York, N.Y.
It had long been the law that notice requires an affirmative act by the patent owner. See Dunlap v. Schofield, 152 U.S. 244, 248 (1894). In Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001), the Court had occasion to address the question of the efficacy of notice by a person who is not the patent owner but who is closely affiliated with the patent owner. Mr. Håkan Lans was the sole inventor of the patent at issue and was managing director and sole shareholder of the patent owner, the company to whom he had assigned the patent. Lans sent a letter to the defendants accusing them of infringing the patent at issue. He identified himself as the inventor and owner of the patent but did not mention the name of the entity, holding title to the patent. The Federal Circuit ...