Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

DR Systems, Inc. v. Eastman Kodak Co.

November 9, 2009

DR SYSTEMS, INC., A CALIFORNIA CORPORATION, PLAINTIFF / COUNTERCLAIM-DEFENDANT,
v.
EASTMAN KODAK COMPANY, A NEW JERSEY CORPORATION, DEFENDANT / COUNTERCLAIM-PLAINTIFF.



The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court

ORDER (2) GRANTING PARTIAL SUMMARY ADJUDICATION; AND (3) DENYING MOTIONS TO (1) DENYING SUMMARY JUDGMENT MOTIONS; STRIKE

Before the Court are Plaintiff and Counterclaim-Defendant DR Systems, Inc.'s ("DR Systems") motions for summary judgment and partial summary judgment, and motions to strike.

On September 21, 2009, DR Systems filed its motion for summary judgment of non-infringement. (Doc. No. 148.) Kodak filed its response in opposition on October 9, 2009. (Doc. No. 168.) On October 19, 2009, DR Systems filed its reply. (Doc. No. 182.) On September 21, 2009, DR Systems filed its motion for summary judgment of a finding of invalidity of the '811 patent as indefinite pursuant to 35 U.S.C. § 112. (Doc. No. 147.) Kodak filed its response in opposition on October 9, 2009. (Doc. No. 166.) On October 19, 2009, DR Systems filed its reply. (Doc. No. 183.) On September 21, 2009, DR Systems filed its motion for summary judgment of a finding of invalidity of U.S. Patent No. 5,414,811 pursuant to 35 U.S.C. §§ 102 and 103. (Doc. No. 151.) Kodak filed its response in opposition on October 9, 2009. (Doc. No. 171.) On October 19, 2009, DR Systems filed its reply. (Doc. No. 185.) On the same day, DR Systems also filed its objections to and motion to strike Richard F. Ferraro's declaration in opposition to DR Systems' motion for summary judgment of invalidity under §§ 102 and 103. (Doc. No. 186.) On September 21, 2009, DR Systems filed its motion for partial summary judgment of no willful infringement of U.S. Patent No. 5,414,811. (Doc. No. 146.) On October 9, 2009, Defendant and Counterclaim-Plaintiff Eastman Kodak Company ("Kodak") filed its response in opposition. (Doc. No. 164.) On October 19, 2009, DR Systems filed its reply. (Doc. No. 184.) On September 21, 2009, DR Systems filed its motion to strike the expert report and deposition testimony of Jeffrey M. Silverman, M.D. (Doc. No. 149.) Kodak filed its response in opposition on October 9, 2009. (Doc. No. 161.)

The Court held a hearing on the matter on October 26, 2009. Frederick Laney and Joseph Culig of Niro Scavone Haller & Niro, and Allison Goddard of Jaczko Goddard appeared on behalf of DR Systems. Stephen Hankins and Paul Previde of Schiff Hardin LLP appeared on behalf of Kodak. After the hearing, the Court issued a scheduling order setting deadlines for Kodak to file its opposition to DR Systems' motion to strike the Ferraro declaration, and for DR Systems to file its reply. (Doc. No. 189.) On October 28, 2009, Kodak filed its opposition to DR Systems' motion to strike the Ferraro declaration. (Doc. No. 195.) On October 30, 2009, DR Systems filed its reply in support of its motion to strike the Ferraro declaration. (Doc. No. 197.)

For the reasons set forth below, the Court DENIES DR Systems' motions for summary judgment, GRANTS DR Systems' motion for partial summary judgment, and DENIES DR Systems' motions to strike.

Background

The '811 patent was filed on February 25, 1994 and issued on May 9, 1995. ('811 patent.) It is entitled "Method and Apparatus for Controlling Rapid Display of Multiple Images from a Digital Image Database" and claims a technology that decreases the time necessary for an electronic display device to sequentially display images in a database and allows for multiple images to be displayed and manipulated simultaneously. Claims 1, 10, 15, 16, 17, 18 and 20 in the '811 patent are independent claims, each containing limitations referring to "image memories." ('811 patent.) Claims 2-9, 11-14, and 19 ultimately depend from the above-listed independent claims.

Defendant Eastman Kodak is the owner of U.S. Patent No. 5,414,811 ("the '811 patent") by assignment. (Compl. ¶¶ 1, 10; Ex. A ['811 Patent].) DR Systems first became aware of Kodak's '811 patent in October of 2007, when Kodak sent a letter to Dr. Reicher and Messrs. Porritt and Zuckerman of DR Systems. (Doc. No. 145 at 6.)

DR Systems commenced this action on April 14, 2008 by filing a complaint for declaratory judgment of non-infringement and invalidity of U.S. Patent No. 5,414,811. (Doc. No. 1.) Kodak filed its answer and a counterclaim for patent infringement against DR Systems on May 7, 2008. (Doc. No. 9.) Kodak identified Dr. Jeffrey Silverman ("Dr. Silverman") and Mr. Richard F. Ferraro ("Mr. Ferraro") as experts on the issues of patent validity and infringement.

On January 8, 2009 and February 18, 2009, the Court conducted a claim construction hearing in this matter for the '811 patent. The Court issued a claim construction order on May 22, 2009. (Doc. No. 85.) The matter is set for trial on February 5, 2010.

DR Systems has moved for partial summary judgment of no willful infringement, summary judgment of invalidity of the '811 patent as indefinite, invalidity because of anticipation and obviousness, and non-infringement. DR Systems moved to strike Dr. Silverman's expert report and deposition testimony. Kodak opposes the motions. Kodak relies on the October 9, 2009 declaration of Mr. Ferraro, (Doc. No. 172), to oppose DR Systems' motion for summary judgment of invalidity pursuant to 35 U.S.C. §§ 102 and 103.

(Doc. No. 171.) In its reply, DR Systems moves to strike the October 9, 2009 declaration of Mr. Ferraro. (Doc. No. 186.)

Kodak's response in opposition to DR Systems' motion for summary judgment of invalidity pursuant to 35 U.S.C. §§ 102 and 103 asks the Court to grant summary judgment in Kodak's favor that the Chang patent does not anticipate any Claim of the '811 patent.

I. Summary Judgment Standard

Summary judgment is appropriate under Rule 56 of the Federal Rules of Civil Procedure if the moving party demonstrates the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.1997). A dispute is genuine if a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248.

A party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. The moving party can satisfy this burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to establish an essential element of the nonmoving party's case on which the nonmoving party bears the burden of proving at trial. Id. at 322-23. "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987). Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the nonmoving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 322. The nonmoving party cannot oppose a properly supported summary judgment motion by "rest[ing] on mere allegations or denials of his pleadings." Anderson, 477 U.S. at 256.

When ruling on a summary judgment motion, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The Court does not make credibility determinations with respect to evidence offered. See T.W. Elec., 809 F.2d at 630-31 (citing Matsushita, 475 U.S. at 587). Summary judgment is therefore not appropriate "where contradictory inferences may reasonably be drawn from undisputed evidentiary facts...." Hollingsworth Solderless Terminal Co. v. Turley, 622 F.2d 1324, 1335 (9th Cir. 1980).

II. Discussion

A. Non-Infringement

Literal infringement of a claim is established when it is determined that "every limitation in the claim is literally met by the accused device." Kahn v. General Motors Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998). An accused device "that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 17 (1997). "In determining whether there has been infringement, a two step analysis is required. First, the claims must be correctly construed to determine the scope of the claims. Second, the claims must be compared to the accused device." Kahn, 135 F.3d at 1476. In a motion for summary judgment of non-infringement, "[t]he movant bears the burden of demonstrating absence of all genuine issues of material fact, the district court must view the evidence in a light most favorable to the non-movant and draw all reasonable inferences in its favor, and must resolve all doubt over factual issues in favor of the party opposing summary judgment." SRI Int'l. v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985). Thus, to prevail against DR Systems' motion for summary judgment, Kodak needs to show that a genuine issue of material fact exists as to whether the accused device infringes one or more Claims of the '811 patent. Id.

DR Systems alleges that it is entitled summary judgment of non-infringement because Kodak cannot prove that the accused products meet every limitation of the claims of the '811 patent. (Doc. No. 148, Attach 1 at 4.) Specifically, DR Systems argues that Kodak cannot establish that a triable issue of fact exists as to whether DR Systems' products have the following claim limitations: (1) image memories, (2) allocating or displaying, or (3) manipulating select images at the same time. (Id.)

1. Image Memories

DR first argues that summary judgment of non-infringement is warranted because Kodak cannot prove that DR Systems' products have "image memories" as the Court has construed that term. (Doc. No. 148, Attach. 1 at 4.) The Court construed "image memories" as "[m]emory devices each capable of storing one image." (Doc. No. 85 at 6.) Independent Claims 1, 10, 15, 16, 17, 18 and 20 in the '811 patent each contain limitations referring to "image memories." ('811 patent.) Dependent Claims 2-9, 11-14, and 19 ultimately depend from these independent claims. Therefore, all claims in the '811 patent contain the "image memories" limitation.

In opposition to the motion, Kodak presented screen shots of the accused DR Systems' products, pointing out the words "image memory" in DR Systems' software. (Doc. No. 168 at 5.) Kodak's expert, Richard F. Ferraro, concluded that the accused DR Systems' products have image memories as construed by the Court. Mr. Ferraro observed the operation of the accused DR Systems products and analyzed the DR Systems source code to determine whether the accused products use image memories. (Decl. of Richard F. Ferraro in Opp. of DR Systems' Mot. for Summ. J. of Non-Infringement ("Ferraro Decl.") at ¶ 18.) As a result of his analysis, Ferraro concluded that the accused products operate by reading image data from image files, and loading that image data "from one and only one image" into each image memory. (Ferraro Decl. ¶ 22.) Ferraro also opined that "[u]nique, dedicated, separate and distinct memory that stores the image data for one and only image is the 'image memory' recited in the asserted 20 claims." (Id. ¶ 23.)

Viewing all inferences in favor of the nonmoving party, the Court concludes that a triable issue exists as to whether DR Systems' accused products have "image memories" and therefore infringe on all of the claims in the '811 patent.

2. Allocate or Display

DR next argues that summary judgment of non-infringement is warranted because DR Systems' products cannot be found to infringe Claims 1, 15, or 16 for two additional reasons:

(1) the image memories are not assigned to respective screen sections; and (2) the image data that is displayed is not the same image data that is loaded into the system memory. (Doc. No. 148, Attach 1 at 18.) Claims 1, 15, and 16 of the '811 patent include allocating and displaying limitations. ('811 patent.) Specifically, the Court has construed the term "allocating at least two image memories containing image data to at least two sections of the screen respectively" in Claims 1, 15 and 16 as "assigning image memories to respective screen sections." (Doc. No. 85 at 6.) The Court has construed the term "displaying the image data from the at least two image memories on the respective screen sections" in Claim 1 as "displaying the image data contained in the image memories on the screen sections to which the image memories are assigned." (Id.) Claims 15 and 16 contain similar displaying limitations. (Id. at 17, 19.) Dependent Claims 2-9, ultimately depend from independent Claim 1. Therefore, Claims 1-9, 15, and 16 contain the allocating and displaying limitations.

In its opposition, Kodak presents screen shots of the accused products that appear to show image data being assigned and displayed on respective sections of the accused product's screen. (Doc. No. 168 at 11.) Kodak states that DR Systems' products infringe because "multiple images are read from individual files, their image data is loaded into one image memory for each image, the images are assigned to screen sections, and then the images are displayed in their respective sections." (Id.) Furthermore, Kodak states that the source code in the accused DR Systems' products contains a "DisplayImage" function that "that makes it clear that the software is assigning a screen section to an image and then displaying that image in the screen section." (Id. at 12.)

Viewing all inferences in favor of the nonmoving party, the Court concludes that a triable issue exists as to whether DR Systems' accused products perform the allocating and displaying ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.