Jeneric/Pentron, Inc. v. Dillon Company, Inc., No. 3:98cv818(EBB) (D. Conn. 8/27/2001), No. 3:98cv818(EBB).

CourtUnited States District Courts. 2nd Circuit. United States District Court (Connecticut)
Writing for the CourtEllen Bree Burns
Decision Date27 August 2001
Docket NumberLead No. 3:99cv1775 (EBB).,No. 3:98cv818(EBB).

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No. 3:98cv818(EBB).
Lead No. 3:99cv1775 (EBB).
United States District Court, D. Connecticut.
August 27, 2001.
Ruling on Cross Motions for Summary Judgment

ELLEN BREE BURNS, Senior District Judge.

Plaintiff Jeneric/Pentron, Inc. ("Jeneric") brought this patent infringement action against Defendants Dillon Company, Inc. ("Dillon"), Chemichl, Inc. ("Chemichl"), and Chemichl AG ("Chemichl AG"), pursuant to 35 U.S.C. § 271 (1998), alleging that Defendants sell two products that infringe United States Patent No. 5,653,791 entitled "Two-Phase Dental Porcelain Composition" ("'791 Patent") and United States Patent No. 5,944,884 entitled "Dental Porcelain Composition" ("'884 Patent"). Jeneric seeks an injunction, damages, and attorney's fees as remedies. In turn, Dillon and Chemichl have asserted federal and state counterclaims against Jeneric. This ruling addresses Defendants' Combined Motions for Summary Judgment [doc. no. 84], and Plaintiff's Cross Motion for Partial Summary Judgment [doc. no. 92]. For the reasons that follow, Defendants' combined motions are granted in part and denied in part, and Plaintiff's cross motion is denied.


A. Parties and Competing Products

Plaintiff manufactures dental materials and related oven equipment, which it markets to dentists and dental technicians for the construction of dental restorations such as inlays, crowns, and bridges. Plaintiff is the owner by assignment of the `791 and `884 patents. Inventors Carlino Panzera and Lisa Kaiser filed the `791 Patent application on March 12, 1996, and the `884 Patent application on May 28, 1998. The United States Patent and Trademark Office (PTO) issued the `791 Patent on August 5, 1997 and issued the `884 Patent on August 31, 1999.

Both patents relate to dental porcelain compositions, which have specified ingredients and which exhibit certain properties. Porcelain is a type of ceramic material, which has a crystalline phase and a glass phase. Ceramics prove useful in dental restorations because they can be colored to resemble teeth and they resist degradation inside the oral cavity. The `791 and `884 patents both teach a two-phase porcelain composition, which comprises a leucite crystallite phase disbursed in a glass phase. According to Plaintiff, the critical feature of both patents is that they direct a composition where the leucite crystals in a completed dental restoration must all be smaller than 10 microns. Indeed, both patents provide that "[i]t is essential to the practice of the present invention that the leucite crystallites present in the two-phase porcelain composition herein possess diameters not exceeding about 10 microns." ('791 Patent, col. 2, lines 48-50; `884 Patent, col. 2, lines 54-57.) This has the effect of reducing abrasive wear against natural teeth and discomfort inside the mouth. (Id.)

Defendants Dillon, based in Rhode Island, and Chemichl, based in Washington, sell two dental porcelain products used in conjunction with each other that Plaintiff accuses of infringing both the `791 and the `884 patents. The first product, known as Cerpress SL ("Cerpress"), constitutes a ceramic pellet used as a core or base material in a dental restoration. The second product, known as Sensation SL ("Sensation"), is applied over the Cerpress core to form a complete dental implant. Dillon and Chemichl import Cerpress and Sensation into the United States from Chemichl's parent company, Chemichl AG of the Country of Liechtenstein. Dillon then resells the two products to dental technicians and dentists for the construction of dental restorations.

B. Procedural Background

Plaintiff's first action charges Defendants with infringement of the `791 Patent, asserting that Sensation literally infringes claims 1 and 2, and that Cerpress infringes claim 1 under the doctrine of equivalents. [Doc. 3:98cv818(EBB)] As relief, Plaintiff seeks an injunction pursuant to 35 U.S.C. § 283, treble damages pursuant to 35 U.S.C. § 284, and reasonable attorney's fees and costs under 35 U.S.C. § 285. Defendants respond with the affirmative defenses that Sensation and Cerpress do not infringe any claim of the `791 Patent, that each claim of the `791 Patent is invalid and void, and that the `791 Patent is unenforceable.

In addition, Dillon has asserted the following counterclaims against Jeneric: (1) tortious interference with contractual relations; (2) tortious interference with business relations; (3) violation of the Connecticut Unfair Trade Practices Act, Conn. Gen. Stat. §§ 42-110a et seq.; and (4) wrongful attempt to monopolize in violation of Section 2 of the Sherman Antitrust Act, 15 U.S.C. § 2 (1998). To this end, Dillon seeks a declaratory judgment of noninfringement, a declaratory judgment that the `791 Patent is invalid, treble damages, punitive damages, and attorney's fees and costs. Jeneric responds to the counterclaims by arguing that Dillon failed to state a claim upon which relief can be granted, that the counterclaims are unduly vague, and that Dillon is guilty of unclean hands.

On June 26, 1998, Plaintiff moved for a preliminary injunction, seeking to enjoin Defendants from making, using, selling, offering to sell, or importing the two accused products into the United States. Pursuant to this motion, the Court held a three-day hearing where the parties presented oral testimony and over 500 exhibits. On February 3, 1999, the Court denied Plaintiff's preliminary injunction motion on the ground that it failed to demonstrate a reasonable likelihood of success in proving that either Sensation or Cerpress infringed the `791 Patent. See Jeneric/Pentron, Inc. v. Dillon Co., No. 3:98cv818(EBB), 1999 WL 66537 (D.Conn. Feb. 3, 1999). On March 20, 2000, the Federal Circuit affirmed this Court's decision. See Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377 (Fed. Cir. 2000).

During the pendency of the preliminary injunction proceedings and its appeal, Plaintiff prosecuted the application that ultimately issued as the `884 Patent. This application was filed on May 28, 1998, four weeks after Plaintiff initiated the `791 Patent infringement action. The PTO issued the `884 Patent on August 31, 1999, and on September 9, 1999, Plaintiff filed a second action against Defendants for infringement of the `884 Patent. [Doc. No. 3:99cv1775(EBB)] Defendants deny the allegations and filed counterclaims against Plaintiff for 1) a declatory judgment regarding the relative rights of the parties with respect to infringement of the `884 Patent; 2) fraudulent procurement of the `884 Patent; 3)"attempt to monopolize," in violation of the Sherman Act, 15 U.S.C. § 2; 4) unfair competition under Connecticut Common law; and 5) unfair practices in violation of CUTPA.

Under the first action, Defendants had filed two motions for partial summary judgment. On April 7, 2000, following a conference in Chambers, this Court consolidated the two actions. Defendants then withdrew their pending motions for summary judgment without prejudice in order to refile the motions directed at both the `791 and the `884 Patents. In a letter dated May 2, 2000, Plaintiff identified its asserted claims. Plaintiff now asserts claim 1 of the `791 Patent against Cerpress under the doctrine of equivalents, and asserts claims 1-8, 13-15 and 18 of the `884 Patent against both Cerpress and Sensation. Defendants' Combined Motions for Summary Judgment and Plaintiff's Cross Motion for Summary Judgment are before the Court.


A motion for summary judgment will be granted when "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); see also Anderson v. Liberty Lobby, 477 U.S. 242, 256 (1986). The moving party carries the burden of showing the absence of any genuine issue of material fact. Fed. R. Civ. P. 56. The court must "resolve all ambiguities and draw all inferences in favor of the nonmoving party. . . ." Aldrich v. Randolph Cent. Sch. Dist., 963 F.2d 520, 523 (2d Cir.).

"[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact. As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted." Anderson, 477 U.S. at 247-48 (emphasis in original).

In addition, if the nonmoving party has failed to make a sufficient showing on an essential element of his case with respect to which he has the burden of proof at trial, then summary judgment is appropriate. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "In such a situation, there can be `no genuine issue as to any material fact,' since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Id. at 322-23; accord Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d. Cir. 1995) (movant's burden satisfied if it can point to an absence of evidence to support an essential element of nonmoving party's claim).

In a patent infringement case, summary judgment is appropriate when it is apparent that only one conclusion as to infringement could be reached by a reasonable jury. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 540 (Fed. Cir. 1998). Summary judgment of noninfringement is appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, since...

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