United States District Court, E.D. Wisconsin
[Copyrighted Material Omitted]
National Graphics Inc, Plaintiff: Brad L Meyer, John P
Fredrickson, Sarah M Wong, Michael T Griggs, Boyle
Fredrickson SC, Milwaukee, WI.
Brax Ltd, Defendant: Joseph S Heino, LEAD ATTORNEY, Matthew R
McClean, Patrick M Bergin, Davis & Kuelthau SC, Milwaukee,
Dynamic Drinkware LLC, Defendant: Joseph S Heino, LEAD
ATTORNEY, Aaron E Hall, Matthew R McClean, Patrick M Bergin,
Davis & Kuelthau SC, Milwaukee, WI.
Service Litho-Print Inc, Defendant: Joseph S Heino, LEAD
ATTORNEY, Matthew R McClean, Patrick M Bergin, Davis &
Kuelthau SC, Milwaukee, WI; Joseph T Leone, Joseph A Ranney,
DeWitt Ross & Stevens SC, Madison, WI.
C. Griesbach, Chief United States District Judge.
parties in this infringement action have filed cross motions
for summary judgment. The Plaintiff seeks summary judgment as
to both validity and infringement, while the Defendants'
motion limits itself to validity. This court previously
addressed the patents in an April 24, 2014 Decision and Order
addressing claim construction as well as validity and
infringement of some of the claims. For the reasons given
below, the motions for summary judgment will be denied in
judgment is proper " 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."
Fed.R.Civ.P. 56(c). Summary judgment of infringement or
non-infringement can only be granted if, after viewing the
alleged facts in the light most favorable to the non-movant,
there is no genuine issue whether the accused device is
encompassed by the claims. Fed.R.Civ.P. 56(c); Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304
(Fed. Cir. 1999). As for validity, because patents are
presumed valid, " a moving party seeking to invalidate a
patent at summary judgment must submit such clear and
convincing evidence of facts underlying invalidity that no
reasonable jury could find otherwise." SRAM Corp. v.
AD--II Eng'g, Inc., 465 F.3d 1351, 1357 (Fed. Cir.
relevant here, the '185 patent teaches a method of
producing a corresponding lenticular image comprising the
providing an output device in connection with a computer;
receiving into the computer memory an interlaced image file;
converting the interlaced image file into an output having an
varying the resolution of the output to define a varied
and creating a corresponding lenticular image using the
output at the varied output resolution;
wherein the varying is accomplished using a Mainscale Scan
Adjustment (" MSA" ) clock.
(ECF No. 156-5.)
While the ultimate question of patent validity is one of law,
there are a number of underlying inquiries that raise
questions of fact. In addition to obviousness, these include
anticipation, [and] prior public use or sale."
Markman v. Westview Instruments, Inc., 52 F.3d 967,
989 n.1 (Fed. Cir. 1995) aff'd, 517 U.S. 370, 116 S.Ct.
1384, 134 L.Ed.2d 577 (1996).
Defendants argue that claim 1 of the '185 patent is
invalid as obvious and / or anticipated by prior art. The
Defendants' expert, David Roberts, reviewed the patents
and the prior art and concluded that correspondence between
the resolution of the interlaced image and the pitch of the
lenticular lens was well known in the art, and it was also
well known that variable resolution output devices could
produce correspondence. In addition, he opined that NGI's
previous use of something called a Hell Scanner, and its more
recent use of a Kodak Trendsetter, performed essentially the
same function as its patented technology did. In short, he
believes it would have been obvious to one skilled in the art
to vary the resolution of variable output devices to produce
a corresponding lenticular image, and in fact that is exactly
what NGI had been doing itself for years prior to its patent
reaching the merits of the dispute, I must address NGI's
arguments as to why the merits of the Defendants' prior
use defense should not even be reached.
Summary Judgment Already Granted
first argues that this court already granted summary judgment
on the prior use defense, concluding that the Defendants had
failed to produce sufficient evidence to allow a jury to find
in their favor on it. Accordingly, it argues that the present
round of summary judgment briefing was not an opportunity to
re-litigate that issue. The Defendants respond, however, that
the previous summary judgment motion was filed by NGI at a
much earlier stage of discovery. They cannot be faulted, they
argue, for the fact that the evidence was not fully developed
at that time.
satisfied that, given the somewhat unusual circumstances of
this case, the better practice is to reach the merits rather
than become bogged down in procedural details, particularly
when no suggestion of prejudice has been raised. The fact is
that the evidence upon which the Defendants now rely had not
been fully available in 2014, and the previous ruling came in
the context of claim construction and partial summary
judgment motion filed by NGI, a motion that did not give the
Defendants a full opportunity to advance their defenses.
Public Use of Trendsetter
35 U.S.C. § 102(b), " [a] person shall be entitled
to a patent unless ... the invention was in public use or on
sale in this country, more than one year prior to the date of
the application for patent in the United States...." 35
U.S.C. § 102(b).
We look to the totality of the circumstances when evaluating
whether there has been a public use within the meaning of
section 102(b). The totality of the circumstances is
considered in conjunction with the policies underlying the
public use bar. The circumstances may include: the nature of
the activity that occurred in public; the public access to
and knowledge of the public use; whether there was any
confidentiality obligation imposed on persons who observed
the use; whether persons other than the inventor performed
the testing; the number of tests; the length of the test
period in relation to tests of similar devices; and whether
the inventor received payment for the testing.
Netscape Commc'ns Corp. v. Konrad, 295 F.3d
1315, 1320 (Fed. Cir. 2002) (citations omitted).
argues that the Creo/Kodak Trendsetter was not used "
publicly" because the third party who used it (a company
called Travel Tags) was using it in a confidential and
propriety fashion, not shared with anyone outside of that
except under a non-disclosure agreement. The Defendants
respond that although confidentiality might be an exception
to the " on sale" bar on patentability, 35 U.S.C.A.
§ 102(a)(1), it is not an exception to the public use
bar, which is the defense the Defendants are relying on. That
is, even if the third party took steps to keep its use of the
Trendsetter private, that would not render that use a
non-public use. The point of the public use bar is to prevent
B from patenting a product or method that A had already been
using, and thus it does not matter whether A kept its own use
a secret. " Public" does not mean the use had to be
openly known, but merely that the use was by someone other
than the inventor or his agents.
Public use includes " any use of [the claimed] invention
by a person other than the inventor who is under no
limitation, restriction or obligation of secrecy to the
inventor." " The public use bar serves the policies
of the patent system, for it encourages prompt filing of
patent applications after inventions have been completed and
publicly used, and sets an outer limit to the term of
Netscape Commc'ns Corp. v. Konrad, 295 F.3d
1315, 1320 (Fed. Cir. 2002) (citations omitted).
Netscape does not stand for the proposition that a
completely private use by a third party could be viewed as an
invalidating " public use," however. " [W]hen
an asserted prior use is not that of the applicant, §
102(b) is not a bar when that prior use or knowledge is not
available to the public." Woodland Trust v.
Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
1998). In W.L. Gore & Associates, Inc. v. Garlock,
Inc., for example, the court found no public use when
the claimed invention was used by third parties pursuant to a
confidentiality agreement. 721 F.2d 1540, 1550 (Fed. Cir.
1983) (" It was error to hold that Budd's activity
with the Cropper machine . . . was a " public" use
of the processes claimed in the '566 patent, that
activity having been secret, not public." ) And in
Baxter Int'l, Inc. v. COBE Labs., Inc., the
court found that a lack of confidentiality was crucial to its
finding of a public use. 88 F.3d 1054, 1059 (Fed. Cir. 1996)
(" Suaudeau's lack of effort to maintain the
centrifuge as confidential coupled with the free flow into
his laboratory of people . . . who observed the centrifuge in
operation and who were under no duty of confidentiality
supports only one conclusion: that the centrifuge was in
public use." ) The court went on to find that, "
[a]s between a prior inventor who benefits from a process by
selling its product but suppresses, conceals, or otherwise
keeps the process from the public, and a later inventor who
promptly files a patent application from which the public
will gain a disclosure of the process, the law favors the
Travel Tags' Rule 30(b)(6) witness testified that his
company considered its process to be confidential, and did
not disclose it to customers or third parties, except
possibly when a nondisclosure agreement would govern. (ECF
No. 167-4 at 121-122.) That evidence is unrebutted.
Accordingly, I must conclude that Travel ...