UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Presstek, Inc.
v. Case No. 05-cv-65-PB Opinion No. 2007 DNH 045 Creo, Inc. & Creo Americas, Inc.
MEMORANDUM AND ORDER
Presstek, Inc., owner of U.S. Patent No. 5,353,705 (filed
Sept. 22, 1993) ("the /705 Patent"), has sued Creo, Inc. and Creo
Americas, Inc. (collectively "Creo"), claiming that Creo's
lithographic printing plate, the Clarus WL, infringes its patent.
Creo now moves for summary judgment on the infringement claim
based largely on its interpretation of several disputed claim
terms. In this Memorandum and Order, I construe the relevant
disputed terms and deny Creo's motion for summary judgment.
I. BACKGROUND
A. The '705 Patent
Presstek's /705 Patent, entitled "Lithographic Printing
Members Having Secondary Ablation Layers For Use With Laser Discharge Imaging Apparatus," discloses a multilayer lithographic
printing plate suitable for laser imaging. During the imaging
process, laser radiation causes one or more layers of the plate
to ablate.1 As a result, imaged features are created on the
plate that have a different affinity for ink than the unimaged
features. After imaging, the plate is inked such that ink
adheres to the oleophilic (ink accepting) surfaces on the plate.
During printing, the inked plate comes into contact with a
blanket cylinder in the press, which transfers the images to the
paper or other medium.
1. The Patent Claims
The /705 Patent contains one independent claim (Claim 1) and
17 dependent claims. Presstek bases its infringement claims on
the independent claim and dependent Claims 2, 6, 11 and 12, which
are reproduced below with the disputed terms in boldface:
1. A lithographic printing member directly imageable by laser discharge, the member comprising: a. a topmost first layer; and b. a second layer underlying the first layer, the second layer being characterized by ablative
1 "Ablate" is defined in the patent to mean "decomposes into gases and volatile fragments." /705 Patent col.5 11.16-19 (Doc. N o . 1-2).
- 2 - absorption of laser radiation; c. a third layer underlying the second layer, the third layer: i. being substantially transparent to the laser radiation; ii. being ablated only partially in response to ablation of the second layer; and ill. differing from the first layer in its affinity for at least one printing liquid selected from the group consisting of ink and a fluid that repels ink.
2. The member of claim 1 further comprising a mechanically strong, durable and flexible substrate underlying the third layer.
6. The member of claim 2 wherein the substrate is polyester.
11. The member of claim 1 wherein the first layer is oleophobic.
12. The member of claim 11 wherein the first layer is a coating comprising silicone.
2. The Specification
The /705 Patent's specification compares imageable printing
plates in the prior art to the lithographic printing plates
claimed within the patent. It describes the problem of debris
- 3 - build-up and charring common in the prior art, which can result
in compromised printing quality and the need for post-imaging
cleaning. /705 Patent col.4, 11.36-55. The primary innovation of
the disclosed plate is the inclusion of a "secondary ablation
layer" that ablates only partially in response to heat generated
by ablation of an overlying layer. I d . at col.4 11.63-67. The
patent claims that this innovation enables the rapid, efficient
production of lithographic printing plates using laser equipment
without the need for post-imaging cleaning. I d . at col.4 11.59-
70 .
The specification discloses several preferred embodiments.2
The first embodiment, depicted in Figure 1, discloses a plate
consisting of (1) a surface layer 100, (2) a radiation-absorptive
layer 102, and (3) a secondary ablation layer 104, all three
layers overlying (4) a substrate 106. I d . at col.7 11.60-67. In
this embodiment, secondary ablation layer 104 may, but need not,
be adhered to substrate 106 by means of an adhesion promoting
layer 10 8.
In this embodiment, surface layer 100 and secondary ablation
2 The embodiments are illustrated in the figures attached as an appendix to this Memorandum and Order.
- 4- layer 104 exhibit opposite affinities for ink. Radiation-
absorptive layer 102 absorbs radiation during laser imaging and,
in response, fully ablates. I d . at col.8 11.39-40. Ideally,
secondary ablation layer 104 should ablate cleanly but only
partially in response, that is, it should undergo rapid and
uniform thermal degradation, evolving primarily gaseous
decomposition products. I d . at col.5 11.44-50, col.10 11.25-26.
The specification provides examples of materials and
processes that can be used to construct this embodiment.
Substrate 106 is preferably mechanically strong, durable and
flexible, and may be a polymer film, or a paper or metal sheet.
I d . at col.11 11.13-16. Preferred materials for secondary
ablation layer 104 are polymeric materials that exhibit limited
thermal stability. I d . at col.10 11.26-30. Secondary ablation
layer 104 is applied to or coated onto the substrate at a
thickness adequate to avoid complete ablation. I d . at col.10
11.37-40, col.11 11.52-53. A composition made up of carbon black
and nitrocellulose can be used for radiation-absorptive layer
102. I d . at col.9 11.10-40. Surface layer 100 is a silicone
polymer that repels ink in contrast to the oleophilic polyester
of secondary ablation layer 104. I d . at col. 8 11.2-6.
- 5 - In a second embodiment, depicted in Figure 2, the radiation-
absorptive layer 102 can be a composite of more than one layer.
I d . at col.9 11.62-63. The patent teaches that this embodiment
can be constructed by "coating the secondary ablation layer [104]
onto a substrate, electron-beam evaporating an aluminum layer
[114] thereon, electron-beam evaporating the TiO layer [112] onto
the aluminum layer, and coating the surface layer onto the
applied TiO layer." I d . at col.10 11.1-7. Figure 2 can also be
constructed by applying other disclosed materials to the
secondary ablation layer using a wire-wound rod. I d . at col.11
11.55-60. After drying, these coatings are deposited at 1 g/m 2 .
I d . at col.11 11.60-62. The silicone coating is applied to this
bilayer construction using a wire-wound rod. The coating is
dried and cured to produce a uniform deposition of 2 g/ m 2 . Id.
at col.11 11.62-65.
In a third embodiment, depicted in Figure 3, the function of
radiation-absorptive layer 102 is merged with that of surface
layer 100. I d . at col.10 11.12-15. The result is a surface
layer 115 that combines the properties of the absorbing and
surface layers.
In a fourth embodiment, depicted in Figure 4, a secondary
- 6 - ablation layer that "exhibits adequate mechanical properties" can
be employed in sufficient thickness to also serve as a substrate.
I d . at col.11 11.45-50.
3. The Prosecution History
The /705 Patent was filed on September 22, 1993 as a
continuation-in-part of U.S. Patent Application Serial No.
08/125,319. The prosecution history included a single office
action from the U.S. Patent and Trademark Office, followed by an
amendment.
Claim 1 as originally filed in the /705 application required
three layers, with three sub-limitations for the third layer.
(Oreo's Memorandum in Support of Summ. J., Ex. 4, /705 Patent
File History at P0000067, Doc. No. 51-6). Sub-limitation (c)(ii)
in the initial application required that the third layer "exhibit
limited thermal stability" rather than "ablate only partially" as
found in the claim as issued. During prosecution, the Examiner
rejected Claim 1 of the initial application as filed based on 35
U.S.C. §§ 103 and 112. I d . at P0000093-98. The Examiner found
that the initial claim was not patentable in light of U.S. Patent
No. 4,054,094 and the vagueness of the language used. In
response to the rejection of its claim, Presstek amended Claim 1
- 7 - to its present form by amending sub-limitation (c)(ii) to require
that the third layer be "ablated only partially" in response to
ablation of the second layer. I d . at P00000108.
Figures 3 and 4 both originally included hand-written
notations. The original version of Figure 4 included a hand
written notation indicating that layer 106 serves as both the
"secondary ablation layer + substrate." I d . at P0000075.
Similarly, the original version of Figure 3 included hand-written
notations indicating that layer 115 serves as both the "surface
layer + absorptive" layer. Id. During prosecution, the numerals
and characters in Figs. 1-4 were objected to under 37 C.F.R. §
1.84(p) as being difficult to read. I d . at P0000100. In
response, the Applicant submitted "formal drawings" without the
hand written notations. I d . at P0000117-121. The amended
drawings appear in the patent as issued.
B. The Accused Device: The Clarus WL3
The Clarus WL is a multilayer lithographic printing plate
suitable for laser imaging. It is composed of: (1) a topmost
3 The parties have substantially different views concerning the characteristics of the Clarus W L . Where the parties disagree, I have adopted Creo's description of the device to the extent that it is supported by evidence in the record. silicone layer, (2) a second underlying layer of carbon
black/nitrocellulose, (3) a 6-7 micron thick third layer of
amorphous Polyethylene Terephthalate ("PET") underlying the
carbon black/nitrocellulose layer, and (4) a fourth layer of
semi-crystalline PET underlying the amorphous PET layer. When
the product is exposed to laser radiation, the carbon
black/nitrocellulose layer ablates and produces imaged features
in the plate that have a depth ranging from 1.2 to 2.0 microns.
Because the top two layers of the product have a combined
thickness of 1.3 microns, the imaging process produces features
that extend from 0 to 0.7 microns into the amorphous PET layer.
II. STANDARD OF REVIEW
A. Summary Judgment
Summary judgment is appropriate "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).
The party moving for summary judgment "bears the initial
- 9- responsibility of . . . identifying those portions of [the
record] which it believes demonstrate the absence of a genuine
issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). Once the moving party has met its burden, the burden
shifts to the adverse party to "produce evidence on which a
reasonable finder of fact, under the appropriate proof burden,
could base a verdict for it; if that party cannot produce such
evidence, the motion must be granted." Avala-Gerena v. Bristol
Mvers-Sguibb Co.. 95 F.3d 86, 94 (1st Cir. 1996). The "adverse
party may not rest upon the mere allegations or denials of the
adverse party's pleading, but the adverse party's response . . .
must set forth specific facts showing that there is a genuine
issue for trial." Fed. R. Civ. P. 56(e). See also Anderson v.
Liberty Lobby. Inc.. 477 U.S. 242, 256 (1986).
B. Patent Infringement
"A patent infringement analysis involves two steps: 1) claim
construction; and 2) application of the properly construed claim
to the accused product." Techsearch. L.L.C. v. Intel Corp.. 286
F.3d 1360, 1369 (Fed. Cir. 2002) (citing Markman v. Westview
Instruments. Inc.. 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc),
aff'd. 517 U.S. 370 (1996)). I decide the first step, claim
- 10 - construction, as a matter of law. See i d . "To prove
infringement, the patentee must show that the accused device
meets each claim limitation, either literally or under the
doctrine of equivalents." Plavtex Products. Inc. v. Procter &
Gamble C o ., 400 F.3d at 901, 906 (Fed Cir. 2005). Determining
whether the accused product meets each claim limitation is a
question of fact. Techsearch. 286 F.3d at 1369-70. Summary
judgment of non-infringement is appropriate "where the patent
owner's proof is deficient in meeting an essential part of the
legal standard for infringement, because such failure will render
all other facts immaterial." I d . at 1369 (citations omitted).
C. Claim Construction
The words of a patent claim "are generally given their
ordinary and customary meaning." Vitronics Corp. v.
Conceptronic. Inc.. 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[T]he
ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the art
in question at the time of the invention, i.e., as of the
effective filing date of the patent application." Phillips v.
AWH Corp.. 415 F.3d 1303, 1313 (Fed. Cir. 2005), cert. denied.
2006 WL 386393 (U.S. Feb. 21, 2006).
- 11 - To ascertain this meaning, I examine the so-called intrinsic
evidence, including the claim language, the patent specification,
and the prosecution history. I d . at 1313. The claim language is
a useful starting point. Id. "[I]he context in which a term is
used in the asserted claim can be highly instructive." Id.
"Differences among claims can also be a useful guide in
understanding the meaning of particular claim terms." Id. In
addition, "claims ■'must be read in view of the specification, of
which they are a part.'" I d . at 1315 (quoting Markman. 52 F.3d
at 978). In fact, the specification is usually "■'the single best
guide to the meaning of a disputed term.'" I d . (quoting Markman.
52 F.3d at 979). Finally, the prosecution history should also be
consulted to clarify "how the inventor understood the invention
and whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it otherwise
would be." I d . at 1317. Extrinsic evidence such as
dictionaries, treatises, and expert testimony may also be useful
if "considered in the context of the intrinsic evidence." I d . at
1319 .
Although there is "no magic formula or catechism for
conducting claim construction," i d . at 1324, the Federal Circuit
- 12 - has made clear that /,'/ [t]he construction that stays true to the
claim language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction.'" I d . at 1316 (quoting Renishaw PLC v. Marposs
Societa' per Azioni. 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
Il l . ANALYSIS
Creo argues that it is entitled to summary judgment on
Presstek's infringement claim because the Clarus WL does not have
a third "layer" as is required by the 'VOS Patent's only
independent claim. Alternatively, it argues that the Clarus WL
does not infringe the 'VOS Patent even if it has a third layer
of amorphous PET because the third layer is not "ablated only
partially" in response to ablation of the second layer. I
address each argument in turn, construing the relevant disputed
claim terms where necessary.4
4 Creo also argues that because the Clarus WL does not infringe independent Claim 1, it cannot be found to infringe dependent Claims 2, 6, 11, and 12. Because I deny Creo's motion as to Claim 1, summary judgment is not proper on dependent Claims 2, 6, 11 and 12. See Wolverine World Wide. Inc. v. Nike. Inc.. 38 F .3d 1192, 1199 (Fed. Cir. 1994).
- 13 - A. Laver
1. Claim Construction
Creo's argument that the Clarus WL lacks a third "layer" of
amorphous PET hinges on its proposed construction of this
disputed term. Relying primarily on dictionary definitions, Creo
argues that "layer" means "a uniform thickness of a material
applied to a surface." Presstek denies that a layer must be
either uniform or applied. Thus, it asserts that a layer is
nothing more than "a thickness of a material." I adopt
Presstek's proposed construction.
Creo cites definitions from two general purpose dictionaries
and one technical dictionary to support its proposed
construction. The American Heritage Dictionary of the English
Language defines "layer" as "a single thickness of a material
covering a surface or forming an overlying part or segment," 4th
ed. 2000, while the Oxford English Dictionary defines it as "a
thickness of matter spread over a surface." 2d ed. 1989. In the
technical realm. Grant & Hack's Chemical Dictionary defines
"layer" as "a mass of uniform thickness covering an area." 5th
ed. 198 7.
These dictionary definitions do not resolve the interpretive
- 14 - problem. Instead, at most, they suggest the possibility that
Creo's proposed interpretation could be correct. First, the
cited definitions are themselves subject to various
interpretations. For example, it is unclear whether "single,"
as used in the first definition, means "uniform," as Creo
contends, or whether it means "one," as opposed to several. The
definitions also fail to clarify whether the terms "covering a
surface" or "spread over a surface" refer to the layer's method
of construction or its relative position. Second, the idea that
a layer must be either uniform in thickness or applied is not
supported by other definitions, which suggest that a layer is
"one thickness course, or fold laid or laying over or under
another," Webster's Third New International Dictionary (1993), or
"a sheet or thickness of a material, typically one of several,
covering a surface. Compact Oxford Dictionary (3d e d ) . More
fundamentally, dictionary definitions alone can never resolve a
claim construction dispute because claim terms must be construed
in the context in which they are used in the claims and
specification. Accordingly, I turn to the language of the patent
itself to discern the contextual meaning of the disputed term.
- 15 - Although "layer" is used numerous times both in the claims
and the specification, nowhere do the inventors use it in a way
that suggests that a layer must be uniform. While the
specification identifies application techniques that can be used
to create layers of uniform thickness (see, e.g.. /705 Patent
col.9 11.37-39, col.10 1.4-5, col.11 11.55-64), these references
merely indicate that layers can be created in ways that produce
layers of uniform thickness. They do not suggest that uniformity
is a definitional characteristic of a layer. For similar
reasons, the inventors' use of figures that are not drawn to
scale to illustrate preferred embodiments does not suggest that a
layer must be of uniform thickness simply because the figures
depict layers that appear to be uniform.
Creo's argument that a "layer" must be applied suffers from
similar deficiencies. While it is clear from numerous references
in the claims and the specification that the layers specified in
the invention can be created through application (see, e.g.. 'iOS
Patent col.5 11.55-68, col.11 11.52-55, col.14 11.3-4), these
references do not imply that this is the only way that layers can
be created. Layers obviously can be formed in other ways and the
specification does not suggest that a thickness of a material
- 16 - that underlies another material cannot be a layer unless it is
formed by application. The /705 Patent claims a device with
layers having specified locations and properties. It does not
claim any particular method of layer formation.
In summary, neither the intrinsic evidence nor the extrinsic
evidence supports Creo's argument that a layer must be either
uniform or applied.5 In each of its construction arguments, Creo
attempts to use the characteristics of preferred embodiments to
give the disputed claim term a meaning that it does not
ordinarily have. This approach violates the core principle of
claim construction that patent claims should not be arbitrarily
limited by preferred embodiments. See Phillips, 415 F.3d at
1323. Accordingly, Creo's arguments are unavailing and I
construe the term "layer" to mean "a thickness of a material."
2. Application
Having construed the term "layer," I must now determine
whether Presstek has produced sufficient evidence that the Clarus
WL has a third layer of amorphous PET.
5 Not surprisingly, the parties cite conflicting experts to support their respective positions. Although I have read their opinions, these self-serving reports effectively counter one another. As such, they do not influence my decision.
- 17 - Presstek relies solely on the opinion of its expert. Dr.
Samuel P. Gido, to support its contention that the Clarus WL has
a 6-7 micron thick layer of amorphous PET. (Presstek Opposition
to Motion for Summ. J., Ex. 2, Doc. No. 60-4 ("Gido I")). Dr.
Gido, in turn, bases his opinion on observations he made of the
Clarus WL using selected area electron diffraction ("SAED").
Creo attacks Dr. Gido's conclusion by arguing that it is based on
an insufficient number of samples to support a scientifically
reliable conclusion.6 Although Creo does not characterize its
argument in this way, it appears to contend that Dr. Gido's
opinion is inadmissible under Fed. R. Evid. 702 and should be
stricken. Once the opinion is excluded, it would most likely
argue, what remains is not sufficient to withstand its summary
judgment challenge.
Because Dr. Gido did not make his expert disclosure until
after Creo filed its opening summary judgment brief, Creo
presented its challenge to Dr. Gido's testimony for the first
6 Creo claims that Dr. Gido used SAED to examine only one location on each of three samples. According to Creo, the data collected by Dr. Gido is insufficient to support a scientifically reliable conclusion that the Clarus WL has a 6-7 micron thick layer of amorphous PET.
- 18 - time in its reply brief. While it is conceivable that I could
resolve Creo's argument on a motion for summary judgment if the
issue had been fully briefed, see, e.g.. Poulis-Minott v. Smith.
388 F.3d 354 (1st Cir. 2004), I am unwilling to do so on the
present record. When a party bases a summary judgment challenge
on a contention that the opposing party's expert testimony is
unreliable, it is generally advisable to accompany the summary
judgment motion with a motion in limine pursuant to Fed. R.
Evid. 104(a). Reference Manual on Scientific Evidence. 54-56 (2d
Ed. 2000). Summary judgment can then be granted if the expert's
testimony is excluded and the remaining evidence is insufficient
to carry the opposing party's burden of proof. Because the
parties have not briefed the Rule 702 issue in anything more than
a cursory way, I decline to resolve it now and simply hold that
Dr. Gido's opinion is sufficient to permit Presstek to withstand
Creo's summary judgment challenge unless the opinion is
ultimately determined to be inadmissible. Accordingly, I reject
Creo's motion for summary judgment on this issue without
prejudice to its right to renew the motion if Dr. Gido's opinion
on this point is excluded.
- 19 - B. Partial Ablation
Creo next argues that it is entitled to summary judgment
because Presstek has failed to produce any credible evidence that
the third layer of the Clarus WL partially ablates. Presstek
disputes Creo's proposed construction of "being ablated only
partially" and contends that Dr. Gido's expert report
demonstrates that the amorphous PET layer partially ablates
during imaging.
The parties dispute the meaning of "being ablated only
partially," as that phrase appears in Claim 1. Creo contends
that the phrase means "a portion, but not all, of the third layer
decomposes into gases and volatile fragments in a uniform manner
with limited melting or formation of solid decomposition
products." Creo bases this construction on the patent's internal
definition of "ablate" and its disclosed preference for a third
layer that cleanly ablates with only limited melting or formation
of solid decomposition products. Presstek argues that the phrase
means "a portion, but not all, of the third layer decomposes into
gases and volatile fragments."
"It is well-established that the patentee can act as his own
- 20 - lexicographer," and that it may do so either expressly or by
implication in the specification. Irdeto Access. Inc. v.
Echostar Satellite Corp.. 383 F.3d 1295, 1300 (Fed. Cir. 2004).
Where a patent defines a term by implication, I must be mindful
of "the distinction between using the specification to interpret
the meaning of a claim and importing limitations from the
specification into the claim." Phillips, 415 F.3d at 1323. The
Federal Circuit warns against the latter. Id.
The /705 Patent expressly defines "ablate" to mean
"decompose into gases and volatile fragments." /705 Patent col.
11.16-19. The specification also states a preference for clean
ablation of the secondary ablation layer and describes preferred
materials that achieve this effect. /705 Patent col. 5 11.44-54
col.6 11.1-16. Although it is true, as Creo points out, that
these preferences respond to problems associated with the prior
art, they are preferences nonetheless. As such, it would be
improper to treat them as limitations on the claims. See, e.g..
Phillips, 415 F.3d at 1323; Taskett v. Dentlinqer, 344 F.3d 1337
1340 (Fed. Cir. 2003). Accordingly, I conclude that a person
skilled in the art would understand the phrase "being ablated
only partially," as used in Claim 1, to mean "a portion, but not all, of the third layer decomposes into gases and volatile
fragments."
Having construed the disputed phrase, I must now determine
whether Presstek has identified evidence sufficient to show that
the Clarus W L 's third layer partially ablates in response to
ablation of the second layer.
Dr. Gido used Scanning Electron Microscopy ("SEM") and
Atomic Force Microscopy ("AFM") to demonstrate that laser imaging
creates features in the Clarus WL that partially extend into the
amorphous PET layer. He then opined in a conclusory way that the
depressions he observed in the amorphous PET layer are due to
partial ablation rather than some other process. (Gido I at
81, 103, 134).
Creo again challenges Dr. Gido's opinion by arguing that it
is unreliable and I resolve this argument in the same way. Dr.
Gido's opinion on this point is sufficient to permit Presstek to
withstand Creo's motion for summary judgment unless it is
ultimately determined to be inadmissible. Accordingly, I deny
Creo's motion for summary judgment on this issue without
prejudice to Creo's right to renew its motion if Dr. Gido's
- 22 - opinion on this point is excluded.7
Il l . CONCLUSION
For the reasons set forth in this Memorandum and Order, I
deny Creo's motion for summary judgment (Doc. No. 51) without
prejudice.
SO ORDERED.
/s/Paul Barbadoro Paul Barbadoro United States District Judge
March 30, 200 7
cc: Brian Comack, Esq. Kenneth George, Esq. Michael Kasdan, Esq. William Lee, Esq. Gordon MacDonald, Esq. Nora Passamaneck, Esq. Lisa Pirozzolo, Esq. James Rosenberg, Esq. Arpiar Saunders, Esq. Michael Solomita, Esq. S. Calvin Walden, Esq.
7 Creo has asked me to construe additional claim terms but I decline to do so at the present time because I need not do so to resolve the present motion.
- 23 - d In p rt- fl) 0
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