The opinion of the court was delivered by: Thomas P. Griesa, U.S. District Judge
Plaintiff Lazare Kaplan International Inc. ("LKI") sued defendants Photoscribe Technologies, Inc. ("Photoscribe") and Gemological Institute of America ("GIA"), alleging patent infringement for diamond inscription machines. Following jury and bench trials, this court entered a final judgment against plaintiff, finding that the patent claims were valid but not infringed by defendants under the claim construction determined in this court. Plaintiff appealed, and the United States Court of Appeals for the Federal Circuit remanded a portion of the case for further proceedings. In its opinion, the Federal Circuit broadened the scope of the patent claims at issue.
Plaintiff has filed a motion for summary judgment, arguing that defendants have infringed the patent under the Federal Circuit's broader claim construction. Defendants also move for summary judgment, arguing that the patent claims are invalid under this broader claim construction. Defendants have also filed a motion for relief from the prior judgment of validity of the patent claims.
Defendants' motions for relief from the prior judgment of validity and for summary judgment of invalidity are granted. Plaintiff's motion for summary judgment of infringement is denied.
The following facts are taken from the parties' submissions in support of their motions for summary judgment. For the purposes of these motions, they are assumed to be true.
LKI is the owner of United States Patent No. 6,476,351 ("the '351 patent"), which claims a method of laser microinscription of gemstones, as well as an apparatus for microinscribing gemstones. The patent was issued November 5, 2002. It claims priority to a patent filed on July 30, 1996 and a provisional patent application filed on January 5, 1996. Thus, January 5, 1996 is the earliest possible effective filing date of the '351 patent. This date is relevant to the validity issue discussed in this opinion.
The '351 patent discloses a system that uses a laser to create a series of microscopic spots on the surface of a gemstone, such as a diamond. Together these spots form a "microinscription" that is visible with the aid of a jeweler's loupe and can be used to authenticate and track gemstones.
Only claims 1 and 7 of the patent remain relevant on remand. Claim 1 reads as follows:
1. A method of microinscribing a gemstone with laser energy from a pulse laser energy source, focused by an optical system on the workpiece, comprising the steps of: mounting a gemstone in a mounting system; directing the focused laser energy onto a desired portion of the gemstone; imaging the gemstone from at least one vantage point; receiving marking instructions as at least one input; and controlling the directing of the focused laser energy based on the marking instructions and the imaging, to selectively generate a marking on the gemstone based on the instructions.
(Emphasis added.) Claim 7 reads as follows: 7. A laser energy microinscribing system, for gemstones, said system comprising: a laser energy source; a gemstone mounting system, allowing optical access to a mounted workpiece; an optical system for focusing laser energy from the laser energy source, onto the gemstone to create an ablation pattern thereon; means for directing said focused laser energy onto a desired portion of the gemstone, having a control input; an imaging system for viewing the gemstone from at least one vantage point and obtaining image information from the gemstone; an input for receiving marking instructions; and a processor for controlling said directing means based on said marking instructions and said imaging system, to selectively generate a marking based on said instructions and a predetermined program.
During the process of applying for the patent, LKI submitted an amendment to the United States Patent and Trademark Office ("Patent Office") stating that issued claim 1: provides the step of: "controlling the directing of the focused laser energy based on the marking instructions and the imaging, to selectively generate a marking on the gemstone based on said instructions," which therefore requires an analysis of the image.
None of the prior art references disclose using the imaging as a basis for controlling the inscription process.
Allcock Decl., ¶ 5, Ex. D. LKI did not assert that the other limitations of claims 1 and 7 were not in the prior art. The Patent Office subsequently allowed the claims to issue.
The patent specification includes additional language regarding controlling the directing of the laser based on the marking instructions and the imaging. For example, the patent specification states:
The user-entered portion of the content of the inscription is typed on a keyboard or entered by a bar-code reader into a computer. . . . The entered inscription and logo are shown on the video screen superimposed on an area corresponding to the girdle of the diamond. Using the mouse and keyboard, the user can change all inscription characteristics in order to fit it correctly in the girdle. '351 patent, 17:9-18. The patent specification also describes how the projection of a complete inscription on an image of the desired area of the gemstone provides the user with the ability to interactively change all characteristics of the inscription before marking:
The complete inscription . . . is projected on an image from a vertically oriented camera of the girdle providing the user with the ability to interactively change length of inscription, height of characters [sic] remove and align the whole inscription. . . .
The operator can thus observe the inscription before making; observe the marking process itself, and then observe the result and decide if the inscription is complete or not.
Id. at 20:52-62. A portion of this language was quoted in the Federal Circuit's opinion in its interpretation of the "controlling the directing" language of the claims. Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., et al., 628 F.3d 1359, 1369 (Fed. Cir. 2010). Finally, the specification also describes the ability to store a combined image of the gemstone and the inscription: "The optical feedback system also allows the operator to design an inscription, locate the inscription on the workpiece, verify the marking process and archive or store an image of the workpiece and formed markings." '351 patent, 3:14-17. In their submissions, the parties refer to the projection of an image of the inscription onto an image of the gemstone as a "graphic overlay."
As discussed in more detail below, the language of claims 1 and 7 has now been construed by the Federal Circuit.
This case was brought to trial in early 2008. Prior to trial, the court held a hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), to construe the "controlling the directing" language of claims 1 and 7 of the '351 patent. The court noted that "the patent language describing control based on the imaging made no mention of a role for the operator of the machine in that process." Lazare Kaplan Int'l, Inc. v. GIA Enters., Inc., et al., 2008 U.S. Dist. LEXIS 8228, at *3 (S.D.N.Y. Feb. 5, 2008). The court therefore defined "controlling the directing" to mean "that the controlling is based on the marking instructions generated by the operator of the machine, and automatic feedback derived from optical images of the gemstone during the laser burn process." Id.
Based on this claim construction and the fact that the Photoscribe machines do not have an automatic feedback feature, the court determined that claims 1 and 7 of the '351 patent were not literally infringed. On February 5, 2008, the court therefore granted summary judgment of no literal infringement of these claims in favor of defendants. The court, however, permitted LKI to argue at trial that these claims were infringed under the doctrine of equivalents. The court denied the parties' cross-motions for summary judgment on validity.
The case was brought to trial on February 25, 2008. At trial, the court instructed the jury that the "controlling the directing" language required automatic feedback. After a two-week jury trial, the jury found that claims 1 and 7 of the '351 patent were not invalid and that defendants had not infringed those claims under the doctrine of equivalents.
LKI appealed the noninfringement findings to the Federal Circuit. In its appeal, LKI argued that the court erroneously construed the "controlling the directing" language to require automatic feedback derived from optical images of a gemstone during the laser burn process. LKI asserted that the claims do not specify what "control[s] the directing" or when this type of control occurs. LKI contended that the specification makes clear that "controlling the directing . . . based on the marking instructions and the imaging" encompasses control based on both automated and manual feedback that occurs either before or during the laser burn process. LKI also argued that it was entitled to judgment as a matter of law that the accused devices infringe claim 1 of the '351 patent under a proper construction of the claim. Alternatively, LKI requested a new trial on both literal infringement and infringement under the doctrine of equivalents.
Defendants did not appeal the finding on validity.
In a decision filed February 1, 2011, the Federal Circuit affirmed-in-part, vacated-in-part, and remanded-in-part for further proceedings. The Federal Circuit reviewed the court's claim construction de novo, and construed the "controlling the directing" language to include control based on either automated or manual feedback derived from optical images of a gemstone, before or during the laser burn process. The Federal Circuit quoted the patent specification, noting that: the specification discloses that where a single pass of the laser is sufficient to inscribe a gemstone "an automated optical feedback system may reliably control operation." The specification goes on to explain, however, that when multiple passes are necessary ...