Banhazl v. The Am. Ceramic Soc'y, Civil Action 16-cv-10791-ADB

CourtUnited States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
Writing for the CourtALLISON D. BURROUGHS, U.S. DISTRICT JUDGE
PartiesTERRIE BANHAZL d/b/a Heirloom Ceramics, Plaintiff, v. THE AMERICAN CERAMIC SOCIETY, Defendant.
Decision Date10 May 2022
Docket NumberCivil Action 16-cv-10791-ADB

TERRIE BANHAZL d/b/a Heirloom Ceramics, Plaintiff,
v.

THE AMERICAN CERAMIC SOCIETY, Defendant.

Civil Action No. 16-cv-10791-ADB

United States District Court, D. Massachusetts

May 10, 2022


FINDINGS OF FACT AND CONCLUSIONS OF LAW

ALLISON D. BURROUGHS, U.S. DISTRICT JUDGE

Table of Contents

I. INTRODUCTION ................................................................................................................. 2

II. PROCEDURAL HISTORY ................................................................................................. 2

III. FINDINGS OF FACT ........................................................................................................... 3

A. The Parties .......................................................................................................................... 3

B. The '237 Patent, Prosecution History, and Claim Construction ......................................... 4

C. The Prior Art Processes ...................................................................................................... 7

D. The '237 Process ................................................................................................................. 8

E. The '237 Patent Teaches a Novel and Counterintuitive Method ...................................... 10

F. The Accused Media .......................................................................................................... 12

G. Plaintiff's Commercial Endeavors and Awards ................................................................ 15

H. Plaintiff's Communications with Defendant .................................................................... 16

IV. CONCLUSIONS OF LAW ................................................................................................. 18

A. Counterclaim Count I: Declaratory Judgment that the '237 Patent is Invalid .................. 19

1. Invalid as Obvious Under 35 U.S.C. § 103 ................................................................ 19

2. Invalidity for Lack of Written Description under 35 U.S.C. § 112 ............................ 21

3. Invalid for Lack of Enablement under 35 U.S.C. § 112 ............................................. 24

B. Count I: Infringement; Counterclaim Count II: Declaratory Judgment of No Infringement; & Counterclaim Count III: Declaratory Judgment of Unenforceability ............ 26

1. Direct Infringement .................................................................................................... 26

2. Induced Infringement ................................................................................................. 29

3. Damages ..................................................................................................................... 35

4. Equitable Estoppel, Laches, and Counterclaim Count III .......................................... 47

V. CONCLUSION .................................................................................................................... 48

VI. APPENDIX .......................................................................................................................... 49

1

I. INTRODUCTION

Plaintiff Terrie Banhazl (“Plaintiff”) brings this action against Defendant The American Ceramic Society (“Defendant”), alleging that it directly and indirectly infringed U.S. Patent No. 7, 622, 237 (“the '237 patent”) (Count I).[1], [2] [ECF No. 128 (Second Amended Complaint (“SAC”))]. Defendant asserts counterclaims of invalidity (Counterclaim Count I), noninfringement (Counterclaim Count II), and unenforceability due to Plaintiff's delay in bringing suit (Counterclaim Count III). [ECF No. 131 (First Amended Answer)].

II. PROCEDURAL HISTORY

On April 28, 2016, Plaintiff filed suit against Defendant, [ECF No. 1], and then filed her first amended complaint on September 6, 2016, [ECF No. 13]. On September 20, 2016, Defendant filed its answer to the amended complaint and its counterclaims. [ECF No. 15].

Plaintiff answered the counterclaim complaint on September 27, 2016. [ECF No. 16].

After briefing and a hearing, the Court entered its claim construction order on July 26, 2019, which construed eight disputed terms in the '237 patent. [ECF No. 46]. Defendant then moved for summary judgment on the theory that Plaintiff would be unable to prove infringement. [ECF No. 64]. The Court denied the motion on March 5, 2021. [ECF No. 71].

As the case moved toward trial, Defendant sought a pretrial ruling that Plaintiff could not prove infringement because of Defendant's responses to Plaintiff's requests for admission, and a

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2004 post on an internet discussion group which allegedly recites the process disclosed in the '237 patent. [ECF No. 121]. The Court denied Defendant's request on November 1, 2021. [ECF No. 123].

After the parties filed amended pleadings, [SAC, ECF No. 131, ECF No. 133], the case proceeded to trial on Count I and on Counterclaim Counts I, II, and III. A nine-day trial took place between November 15 and December 9, 2021. [ECF Nos. 135-36, 138-41, 143, 145-46]. The Court heard testimony from six witnesses. [Id.]. After closings, the parties submitted proposed findings of fact and conclusions of law. [ECF Nos. 164, 165].

Having considered the evidence presented at trial and the parties' post-trial submissions, the Court makes the following findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).

III. FINDINGS OF FACT

A. The Parties

Plaintiff is a ceramist that has practiced and been involved in the ceramic arts for several decades. [Nov. 15 Tr. 5:20-6:21]. Defendant is a non-profit organization that caters to the ceramic community. [Dec. 6 Tr. 901:17-18]. The organization is divided into two parts: an art side focused on ceramic arts and creativity, and a science side with a mission related to the scientific uses of ceramics. [Dec. 6 Tr. 770:16-19]. Defendant's art side publishes two magazines, Ceramics Monthly (“CM”) and Pottery Making Illustrated (“PMI”). [Dec. 6 Tr. 770:12-15]. It also publishes books, produces videos, operates a video streaming service called Clayflicks, maintains a website called the Ceramic Arts Network that publishes a blog and newsletters, and hosts conferences and workshops through its International Ceramic Arts Network. [Nov. 16 Tr. 72:3-13; Dec. 6 Tr. 805:16-808:8, 864:23-25, 874:11-13, 876:7-15]. Defendant's art side earns income through subscriptions, advertising, membership fees, and

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product sales, but it does not earn income through practicing any particular ceramic technique. [Dec. 6 Tr. 771:8-13].

B. The '237 Patent, Prosecution History, and Claim Construction

Plaintiff is the inventor on the '237 patent, which is titled “System, Apparatus, and Method for the Permanent Transfer of Images onto Glossy Surfaces.” [Ex. 21 at 1]. Plaintiff filed the application that led to the issuance of the '237 patent on September 26, 2006. [Id. at 1].

The '237 patent explains that the invention relates to systems and methods for transferring high quality two-dimensional images permanently onto kiln fire able glossy substrates by printing on a film covered transfer agent using toner containing iron oxide. The ability to easily economically and safely apply one of a kind high quality photographic images onto a transfer agent and permanently affix these images on to functional kiln fire able ceramic or glass surfaces without specialty manufacturing equipment, potentially toxic cover-coats or specialized training, has heretofore been impossible.

[Id. at Col. 1, Lns. 17-26]. The patent discloses nine claims, two independent claims and seven dependent claims. [Id. at Claims 1-9]. Independent claim 1 of the patent is directed to:

[a] method of permanently transferring an image to a substrate having a glossy surface, including: providing a sheet of film-covered transfer paper having the image printed on the film side of the transfer paper, wherein the image is printed with an iron-oxide based toner; transferring the film to the glossy surface; and heating the substrate with the film to a temperature sufficient to evaporate the film and to embed the image into the glossy surface.

[Id. at Claim 1].

Dependent claims 2-7 claim:

2. The method of claim 1, wherein the temperature is at least 1000 degrees Fahrenheit.
3. The method of claim 1, wherein the glossy surface is a glass.
4. The method of claim 1, wherein the glossy surface is a ceramic glaze.
5. The method of claim 1, wherein the substrate is a ceramic.
6. The method of claim 1, wherein the step of providing the transfer paper includes printing the image on the film side of the transfer paper with a laser printing device.
7. The method of claim 1, wherein transferring the film includes wetting the transfer paper and sliding the film onto the glossy surface.
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[Id. at Claims 2-7].

Independent claim 8 is directed to:

[a] [method] of permanently transferring an image to a substrate having a glossy surface, including: printing the image onto the film side of a sheet of transfer paper using a laser printing device using an iron-oxide based toner; transferring the film with the image onto the glossy surface; heating the substrate with the film to a temperature such that the film evaporates and the image embeds into the glossy surface.

[Id. at Claim 8].

Finally, dependent claim 9 claims:

The method of claim 8, wherein the glossy surface is one of a glass or a ceramic glaze.

[Id. at Claim 9].

Before the patent issued, the U.S. Patent and Trademark Office (“USPTO”) initially rejected some of the proposed claims in the patent application. [Ex. 20 at 70-76]. In relevant part, the patent application originally claimed a method for “permanently affixing images onto glossy substrates...

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