Agfa Corp. v. Creo Products, Inc.

451 F.3d 1366
CourtCourt of Appeals for the Federal Circuit
DecidedJune 26, 2006
Docket2005-1079
StatusPublished
Cited by15 cases

This text of 451 F.3d 1366 (Agfa Corp. v. Creo Products, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Agfa Corp. v. Creo Products, Inc., 451 F.3d 1366 (Fed. Cir. 2006).

Opinions

Opinion for the court filed by Circuit Judge RADER.

Dissenting opinion filed by Circuit Judge NEWMAN.

[1369]*1369RADER, Circuit Judge.

After a bench trial, the United States District Court for the District of Massachusetts declared all of Agfa Corporation’s asserted patents unenforceable for inequitable conduct. Agfa Corp. v. Creo Prods., Inc., Civil Action No. 00-10836-GAO (D.Mass. Oct. 5, 2004) (Judgment) (judgment incorporating the trial court’s earlier Findings of Fact, Conclusions of Law and Order for Judgment dated Aug. 24, 2004 {Decision)). Agfa challenges that result and also appeals the trial court’s order granting the defendants’1 request that inequitable conduct be tried to the court, prior to a jury trial on the other issues in the case. Agfa Corp. v. Creo Prods., Inc., Civil Action No. 00-10836-GAO (D.Mass. July 16, 2003) (Bench Trial Order). Finally, Agfa appeals the trial court’s award of attorney fees under 35 U.S.C. § 285. Judgment (incorporating the trial court’s Award of Attorneys’ Fees and Costs, dated Oct. 5, 2004 (Attorney Fees Decision)). Because the trial court did not err in any of those decisions, and because this court agrees with the trial court’s claim construction of the one disputed claim term, this court affirms.

I.

Large scale printing typically uses presses with plates made of materials such as aluminum or polyester. Conventionally, those plates are formed with a two-step method. The first step places a desired image on polyester film. The next step transfers that image to the printing plate. A light-sensitive chemical emulsion on the plate often facilitates that transfer. Mounted on the printing press, the plate then reproduces images in a conventional manner.

Unlike that conventional technique, “computer-to-plate” (CTP) systems take a desired image, which can include both written and graphic content, and transfer that image directly from a computer onto the plate. These plates made with a CTP system then substitute for conventionally formed plates. CTP systems offer clear advantages over conventional methods of forming printing plates.

Agfa owns U.S. Patent Nos. 5,655,452 (the ’452 patent); 5,738,014 (the ’014 patent); 5,788,455 (the ’455 patent); 5,791,250 (the ’250 patent); 5,992,324 (the ’324 patent); and 6,000,337 (the ’337 patent). Those patents claim various features of Agfa’s CTP system, i.e., its “Galileo” system. As taught in the asserted patents, Agfa’s Galileo system further improves CTP automation by facilitating the creation of multiple plates of different sizes. Agfa’s patents all feature the same specification and drawings. Figure 1 of the ’452 patent, reproduced below, is representative of Agfa’s patented system.

[1370]*1370[[Image here]]

As shown in that figure, CTP system 10 includes a computer 12 and image processor 14 linked to a platesetter 16. The platesetter includes a plate handler 18 having a number of cassettes 24, which include stacks of plates 26. During operation, the handler 18 can move the cassettes up or down such that a “picker” 28 can access any particular individual plate. Each cassette can include up to 100 plates, each separated from the adjoining plates by a protective “slip sheet,” which is automatically removed by a slip sheet removal mechanism 25. While each cassette contains plates of the same size, plate size can differ from cassette to cassette. Thus, during operation, the “picker” can change plate size by selecting a different cassette.

Because the plates are light sensitive, an operator loads the cassettes in a darkroom. After receiving the cassettes, the system operates without human intervention. The system selects a plate and transfers it to the imaging engine 22. The imaging engine prints an image directly onto the plate. The claim construction dispute in this case, however, concerns the plate handler 18. More specifically, as discussed below, the claim construction dispute concerns the meaning of the term “stack” that appears in every asserted claim.

Agfa and Creo compete in the CTP market. Agfa sued Creo alleging that Creo’s CTP system infringed all of Agfa’s Galileo patents. As a defense, as well as a counterclaim, Creo asserted that all of Agfa’s Galileo patents are unenforceable due to Agfa’s inequitable conduct before the United States Patent and Trademark Office (PTO). According to Creo, Agfa wrongfully declined to disclose material prior art to the PTO during prosecution of Agfa’s as[1371]*1371serted patents. Specifically, Creo contended that Agfa did not disclose at least three prior art systems, the Creo Plateset-ter 3244, the Barco LithoSetter, and the Gerber Cressent/42. Creo further asserted that this prior art was more relevant to Agfa’s applications than the single reference discussed in the specification common to all of Agfa’s applications, a U.S. Patent on computer-to-film printing. Decision, slip op. at 24-25.

The district court severed the inequitable conduct issue from the rest of the case, and, over Agfa’s objection, conducted a bench trial on that issue. At the conclusion of that trial, the district court declared all of Agfa’s patents unenforceable. The district court further concluded that Agfa’s inequitable conduct rendered the case exceptional and awarded attorneys’ fees under 35 U.S.C. § 285.

II.

“The constitutional question of whether a party is entitled to a jury trial is a question of law,” subject to review without deference. Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed.Cir.2001). In this appeal from a bench trial on inequitable conduct, this court reviews the trial court’s findings of materiality and intent, the underpinnings of inequitable conduct, for clear error. Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd., 394 F.3d 1348, 1351 (Fed.Cir.2005) (citing Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 872 (Fed.Cir.1988)). This court reviews the ultimate determination of inequitable conduct for an abuse of discretion. Id. The trial court’s claim construction, part of its materiality determination, receives plenary review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). An award of attorney fees under 35 U.S.C. § 285 involves a two-part determination. This court reviews the trial court’s decision to declare the case exceptional for clear error. Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1328 (Fed.Cir.2003). Where a trial court has found a case exceptional, its decision to award attorney fees under § 285 is reviewed for an abuse of discretion. Id. (citing Cybor, 138 F.3d at 1460).

A. JURY TRIAL ISSUE

Procedurally, this case is almost indistinguishable from Gardco Manufacturing, Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed.Cir.1987). In Gardco, the plaintiff sought a declaratory judgment on the asserted invalidity, unenforceability, and non-infringement of a patent. Id.

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Agfa Corporation v. Creo Products Inc.
451 F.3d 1366 (Federal Circuit, 2006)

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