229 F.Supp.2d 332 (D.Del. 2002), Civ.A. 95-8, Bayer AG v. Sony Electronics, Inc.

Docket NºCiv.A. 95-8
Citation229 F.Supp.2d 332
Party NameBayer AG v. Sony Electronics, Inc.
Case DateNovember 04, 2002
CourtUnited States District Courts, 3th Circuit, District of Delaware

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229 F.Supp.2d 332 (D.Del. 2002)

BAYER AG, a corporation, Plaintiff,

v.

SONY ELECTRONICS, INC., a corporation, Defendant.

Bayer AG, a corporation, Plaintiff,

v.

Sony Corporation, Inc., a corporation, and Dowa Mining Co., a corporation, Defendants.

Nos CIV.A.95-8-JJF, CIV.A.97-401-JJF.

United States District Court, D. Delaware.

Nov. 4, 2002

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[Copyrighted Material Omitted]

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Rudolf E. Hutz, Esquire, R. Eric Hutz, Esquire, Helena C. Rychlicki, Esquire, Daniel C. Mulveny, Esquire of Connolly Bove Lodge & Hutz, LLP, Wilmington, DE, for Plaintiff. Douglas E. Whitney, Esquire, Thomas C. Grimm, Esquire, Mary B. Graham, Esquire, Rodger D. Smith, Esquire of Morris, Nichols, Arsht & Tunnell, Wilmington, DE, for Defendants.

MEMORANDUM OPINION

FARNAN, District Judge.

This action was brought by Plaintiff, Bayer AG ("Bayer"), against Defendants, Sony Electronics Inc. ("SEL"), Sony Corporation, Inc. ("Sony") and Dowa Mining Co. ("Dowa") (collectively "the Sony Defendants"), for infringement of U.S. Patent No. 4,290,799 (the " '799 Patent"). The '799 Patent issued to Bayer on September 22, 1981 and expired on February 25, 2000. The '799 Patent describes and claims a magnetic metal powder suitable for use in magnetic recording media such as in audio and video tapes. Bayer contends that SEL infringed the '799 Patent by making, using or selling magnetic record tapes containing the metal powders claimed in the '799 Patent. In addition, Bayer contends that Sony and Dowa actively induced direct infringement in the United States through their activities and relationship with each other and with SEL.

Page 337

The Sony Defendants have denied Bayer's allegations of infringement and have counterclaimed for a declaratory judgment of non-infringement. In addition, the Sony Defendants have counterclaimed that the '799 Patent is invalid and unenforceable. Specifically, the Sony Defendants allege that the '799 Patent is invalid on the grounds of anticipation, obviousness, enablement, lack of written description and indefiniteness and unenforceable due to inequitable conduct by Bayer before the United States Patent and Trademark Office ("PTO").

The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338, because this action arises under the patent laws of the United States. In addition, the Court has subject matter jurisdiction over the Sony Defendants' counterclaim action pursuant to 28 U.S.C. §§ 1338, 2201, and 2202, because the Sony Defendants seek declaratory judgment with regard to claims arising under the patent laws of the United States. Personal jurisdiction over the parties exists pursuant to 10 Del. C. § 3104, the Delaware long-arm statute. Likewise, venue in this district is appropriate under 28 U.S.C. §§ 1391 and 1400. Neither jurisdiction nor venue is contested by the parties.

The Court conducted a nine day bench trial on the issues presented by the parties. This Memorandum Opinion constitutes the Court's findings of fact and conclusions of law on the claims and counterclaims presented by Bayer and the Sony Defendants.

BACKGROUND

I. The Parties

Bayer is a German corporation having a principal place of business in Leverkusen, Germany. Bayer operates approximately 350 companies world-wide and is principally involved in the health care and chemicals industries. (DX 671).

Defendants Sony and Dowa are Japanese corporations with principal places of business in Tokyo, Japan. (DX 672, 673). In addition to other businesses not related to this action, Dowa is involved in the manufacture of high quality metal powders used in the manufacturing of magnetic recording tapes. Defendant Sony is involved in audio and video electronics, information technology, music, and motion picture and television production and distribution. Defendant Sony purchases magnetic metal powders from Dowa for use in manufacturing magnetic recording tapes.

Defendant SEL is a Delaware corporation with a principal place of business in Park Ride, New Jersey. (D.I.412, Ex. 1, ¶ A). SEL is a wholly owned subsidiary of Sony. SEL sells metal tape products that are purchased from Sony and magnetic recording tapes that are manufactured using Dowa metal powders at its facility in Dothan, Alabama.

II. The '799 Patent And The Technology Generally

The '799 Patent claims a metal powder suitable for magnetic recording which consists essentially of iron. ('799 Patent, Abstract & col. 1, 11. 5-7). The individual particles of the powder are acicular and contain for purposes of Claim 1 an average of no more than 5 pores and no more than 2 metal cores and for purposes of Claim 2 an average of no more than 1 pore and 1 metal core. The particles are produced by precipitating and oxidizing an aqueous iron-salt solution to produce finely divided acicular iron-oxide-hydroxide. The particles are stabilized by treatment with a variety of metals and compounds like cadmium, lead, calcium, magnesium, zinc, aluminum, chromium, tungsten, a

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phosphorous oxide and/or a boron oxide, and converted into ferromagnetic iron oxide of low pore content. The iron oxide is then reduced to a metallic iron with a gaseous reducing agent at about 300° to 600° C. ('799 Patent, Abstract).

The magnetic powder is used to make magnetic recording tapes. The purpose of magnetic powder for recording purposes is to achieve higher storage densities. Magnetic recording tapes consist of an underlying base film and a coating containing the magnetic particles. (O'Grady Tr. 660-664). The coating is produced from a mixture containing magnetic particles and other ingredients and is filtered to eliminate agglomerates that might occur because of the magnetic attraction of individual particles. (O'Grady Tr. 660-664). A coating machine applies a uniform layer of the coating to the base film. Before the coating is dried, a powerful magnetic field orients the particles so that each particle is as parallel to the direction of the magnetic tape as possible. The coated film is then dried and the surface is smoothed through a process called calendering. (O'Grady Tr. 660-664, 515). During the calendering process, the tape is pressed between heated, polished rollers to produce a smooth tape surface. The tape is then cured, and cut into strips to be wound into reels or cassettes.

Among the important properties of magnetic tape are its remanence, coercivity and squareness ratio. (DX 280 at 000101-02). Remanence is the magnetization remaining on the tape following the effects of a magnetic field, which determines the strength of a recording. (DX 280 at 000101-02). Coercivity is a measure of the tape's resistance to demagnetization or its "magnetic hardness." (DX 280 at 000101-02). The squareness ratio compares the strength of the recording (remanence) with the amounts of magnetization required to make the recording. (DX 280 at 000101-02).

Among the important qualities for the magnetic particles used in the coating for magnetic tapes are a high coercivity to resist being demagnetized, chemical stability to prevent rusting and the concomitant loss of information, and dispersability so that they can be uniformly coated on the tape. (O'Grady Tr. 658-661, 754). Different types of magnetic particles have been used over the years in the manufacture of magnetic tapes. Gamma iron oxide particles were used in 1937 and continue to be used today. However, as technology progressed, particles with a higher magnetization than the traditional iron oxides was needed. (DX 619 at 12-14). Companies like Defendant Sony experimented with metal tape formulations and the use of particles that were an alloy of three metals, iron, cobalt and nickel. (DX 481 at S2828). Some manufactures worked with chromium dioxide particles and others with cobalt epitaxial doped iron oxide particles. The cobalt epitaxial doped iron oxide particles predominated in the industry and are still used today in home VCR applications, because they can be produced at a lower cost than the chromium dioxide particles. (DX 619 at 12-14).

The newer generation of magnetic recording technology focuses on metal particle coatings. (DX 619 at 12-14). The efforts of several companies were aimed at producing metal particle coatings for tape applications in hand-held video cameras and professional video and audio use. A need also developed for higher densities for data storage applications, like backing up computer systems. Bayer and the Sony Defendants were among the corporations engaging in extensive research regarding these metal particles.

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DISCUSSION

I. Claim Construction

A. The Legal Principles of Claim Construction

Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed.Cir.1995), aff'd, 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When construing the claims of a patent, a court considers the literal language of the claim, the patent specification and the prosecution history. Markman, 52 F.3d at 979. A court may consider extrinsic evidence, including expert and inventor testimony, dictionaries, and learned treatises, in order to assist it in construing the true meaning of the language used in the patent. Id. at 979-80 (citations omitted). A court should interpret the language in a claim by applying the ordinary and accustomed meaning of the words in the claim. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984). However, if the patent inventor clearly supplies a different meaning, the claim should be interpreted accordingly. Markman, 52 F.3d at 980 (noting that patentee is free to be his own lexicographer, but emphasizing...

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7 practice notes
  • 778 F.Supp.2d 487 (D.Del. 2011), Civ. 06-091-SLR, Callaway Golf Co. v. Acushnet Co.
    • United States
    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • 21 avril 2011
    ...defendant rectified this deficiency, this is not a focus of plaintiff post trial. [18] Compare Bayer AG v. Sony Electronics, Inc., 229 F.Supp.2d 332, 351 (D. Del. 2002) (following bench trial, finding expert's testimony too conclusory to support a finding of inherent The court need not reac......
  • 65 Pa. D. & C.4th 143 (Pa.Com.pl. 2004), 1264, High Concrete Structures Inc. v. Nat'l Union Fire Ins. Co.. of Pittsburgh
    • United States
    • 3 février 2004
    ...action. See Trueposition Inc. v. Allen Telecom Inc., 2003 WL 151227 (D. Del. January 21, 2003); Bayer AG v. Sony Electronics Inc., 229 F.Supp.2d 332 (D. Del. 2002), aff'd without opinion, 2003 WL 22961198 (Fed. Cir. December 5, 2003). However, a patent holder that obtained a patent from the......
  • 529 F.Supp.2d 1215 (D.Or. 2007), CV 01-1655, Adidas America, Inc. v. Payless Shoesource, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit District of Oregon
    • 21 décembre 2007
    ...1255 establish evidentiary prejudice. See Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed.Cir.1992); Bayer AG v. Sony Elecs., Inc., 229 F.Supp.2d 332, 367-68 (D.Del.2002) (both rejecting claims of evidentiary prejudice because defendant failed to demonstrate the absence of specific witnesse......
  • 546 F.Supp.2d 1029 (D.Or. 2008), 01-1655, adidas-America, Inc. v. Payless Shoesource, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit District of Oregon
    • 22 février 2008
    ...to establish evidentiary prejudice. See Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed.Cir.1992); Bayer AG v. Sony Elecs., Inc., 229 F.Supp.2d 332, 367-68 (D.Del.2002) (both rejecting claims of evidentiary prejudice because defendant failed to demonstrate the absence of specific witnesses ......
  • Free signup to view additional results
7 cases
  • 778 F.Supp.2d 487 (D.Del. 2011), Civ. 06-091-SLR, Callaway Golf Co. v. Acushnet Co.
    • United States
    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • 21 avril 2011
    ...defendant rectified this deficiency, this is not a focus of plaintiff post trial. [18] Compare Bayer AG v. Sony Electronics, Inc., 229 F.Supp.2d 332, 351 (D. Del. 2002) (following bench trial, finding expert's testimony too conclusory to support a finding of inherent The court need not reac......
  • 65 Pa. D. & C.4th 143 (Pa.Com.pl. 2004), 1264, High Concrete Structures Inc. v. Nat'l Union Fire Ins. Co.. of Pittsburgh
    • United States
    • 3 février 2004
    ...action. See Trueposition Inc. v. Allen Telecom Inc., 2003 WL 151227 (D. Del. January 21, 2003); Bayer AG v. Sony Electronics Inc., 229 F.Supp.2d 332 (D. Del. 2002), aff'd without opinion, 2003 WL 22961198 (Fed. Cir. December 5, 2003). However, a patent holder that obtained a patent from the......
  • 529 F.Supp.2d 1215 (D.Or. 2007), CV 01-1655, Adidas America, Inc. v. Payless Shoesource, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit District of Oregon
    • 21 décembre 2007
    ...1255 establish evidentiary prejudice. See Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed.Cir.1992); Bayer AG v. Sony Elecs., Inc., 229 F.Supp.2d 332, 367-68 (D.Del.2002) (both rejecting claims of evidentiary prejudice because defendant failed to demonstrate the absence of specific witnesse......
  • 546 F.Supp.2d 1029 (D.Or. 2008), 01-1655, adidas-America, Inc. v. Payless Shoesource, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit District of Oregon
    • 22 février 2008
    ...to establish evidentiary prejudice. See Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed.Cir.1992); Bayer AG v. Sony Elecs., Inc., 229 F.Supp.2d 332, 367-68 (D.Del.2002) (both rejecting claims of evidentiary prejudice because defendant failed to demonstrate the absence of specific witnesses ......
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