The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Tailored Lighting, Inc. ("TLI"), as the assignee of United States Patent No. 5,666,017 (the "'017 Patent" or "the Patent"), brings this action pursuant to federal patent law, (codified at 35 U.S.C. § 100 et. seq.), claiming that defendant Osram Sylvania Products, Inc., ("Sylvania") has infringed Claims 1, 2, 3, 4, 9 and 19 of the '017 Patent by manufacturing and selling automobile headlamps, which, according to TLI, replicate certain lighting characteristics in the same manner as taught in the '017 Patent. In general, the '017 Patent teaches the manufacture and use of a light bulb, which, as a result of a special coating applied to the envelope of the bulb, emits light waves at wavelengths similar to wavelengths observed in certain daylight conditions. The inventor claims that the light produced by the bulb disclosed in the patent is superior to light emitted from traditional bulbs because the light from the disclosed bulb more closely approximates natural light at all visible wavelengths.
Sylvania now moves for summary judgment against TLI on grounds that TLI has: (1) failed to produce evidence that Sylvania's bulbs infringe upon the '017 Patent; (2) the '017 Patent is invalid because the Patent fails to meet the enabling requirement of a valid patent; and (3) the '017 Patent is anticipated by prior art which discloses the use of coatings adhered to lamp envelopes for the purpose of creating bulbs that emit light which approximates daylight. TLI opposes defendant's motion contending that it has produced substantial evidence of Sylvania's infringement of the '017 Patent; that the '017 Patent is enabled; and that the '017 Patent is not anticipated by prior art.
For the reasons set forth below, I find that the plaintiff has failed to prove that the defendant's bulbs infringe on the '017 Patent, and therefore, I grant defendant's motion for summary judgment. I further find that the patent is invalid for lack enablement.
On September 9, 1997, the United States Patent Office issued United States Patent 5,666,017, entitled "Daylight Lamp," to Kevin P. McGuire ("McGuire") as the inventor, and plaintiff TLI as the assignee. The Patent teaches a lamp that "produc[es] a special spectral light distribution which is substantially identical in uniformity to the spectral light distribution of a desired daylight throughout the entire visible light spectrum." See TLI's Brief in Support of its Proposed Markman Construction at p. 1. As described in the Patent, such a lamp generally contains a lamp envelope comprised of an exterior surface, a light-producing element substantially centrally disposed within the lamp envelope, and a coating on the surface of the lamp envelope. Id. Typically, the lamp envelope is a glass or "bulb" enclosure and the light-producing element is a metal filament that, when excited by electrical energy, emits radiant energy at least throughout the entire visible spectrum. According to TLI, the coating on the surface of the lamp may be either a reflective or absorptive coating or both, with the light emitted by the filament that is not intended to be transmitted, being either reflected back to the filament or absorbed.
By Decision and Order dated September 24, 2007, pursuant to Markman v. Westview Instr., Inc., 517 U.S. 370 (1996), I construed the disputed terms of the '017 Patent. Familiarity with that decision is presumed, and construction of those terms informs my Decision below.
I. Summary Judgment Standard of Review
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "should be rendered if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." When considering a motion for summary judgment, all genuinely disputed facts must be resolved in favor of the party against whom summary judgment is sought. Scott v. Harris, 550 U.S. 372, 380 (2007). If, after considering the evidence in the light most favorable to the nonmoving party, the court finds that no rational jury could find in favor of that party, a grant of summary judgment is appropriate. Scott, 550 U.S. at 380 (citing Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 586-587 (1986).
To state a claim for patent infringement, the patent holder must establish that the accused infringer made, used, offered to sell, sold, or imported the patented invention within the United States during the term of the patent, and that he or she did so without authority. 35 U.S.C.A. § 271(a)(1994). Generally, an accused product will be found to infringe upon a patent if "each properly construed claim element reads on the accused product or process." Herbert F. Schwartz, Patent Law and Practice 167 (5th ed. 2006).
In the instant case, Sylvania claims that TLI has failed to produce evidence that Sylvania's bulbs read on each claim element of Claim 1 of the '017 Patent, and therefore, TLI can not establish infringement. Specifically, Sylvania argues that TLI has not produced any evidence that the coatings utilized by Sylvania on its bulbs conform to the formula recited in Claim 1 of the '017 Patent, which formula purports to identify the proper transmittance level of the bulb based on several variables, including the color temperature desired, the amount of energy directed towards the envelope surface, and the radiance of lighting element used. TLI contends that it has provided ample evidence of infringement based on spectral analysis of the light output of Sylvania's accused bulbs. Specifically, TLI contends that the accused Sylvania bulbs have a spectral light output and a correlated color temperature that are substantially identical to a selected, desired daylight output at every wavelength within the visible spectrum. According to TLI, because the '017 Patent discloses spectral output that is substantially identical to a desired daylight output, and because the accused bulbs meet each limitation of the asserted claims, the Sylvania products infringe on the '017 Patent.
A. The Asserted Independent Claim
Claim 1 of the '017 patent is an independent claim, and the only independent claim asserted in this action. Claim ...