Mark I Marketing Corp. v. R.R. Donnelley & Sons Co., 95-1101

• Citation: 36 USPQ2d 1095,66 F.3d 285
• Decision Date: 14 September 1995
• Docket Number: No. 95-1101,95-1101
• Parties: MARK I MARKETING CORPORATION and Mark I Marketing Corporation of America, Plaintiffs-Appellants, v. R.R. DONNELLEY & SONS COMPANY, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 285

66 F.3d 285 36 U.S.P.Q.2d 1095 MARK I MARKETING CORPORATION and Mark I Marketing
Corporation of America, Plaintiffs-Appellants,
v.
R.R. DONNELLEY & SONS COMPANY, Defendant-Appellee. No. 95-1101. United States Court of Appeals,
Federal Circuit. Sept. 14, 1995.

Page 286

Eliot S. Gerber, Wyatt, Gerber, Burke & Badie, New York City, argued for plaintiff-appellant. Of counsel was Terence W. McMillin, Gerstmen, Ellis & McMillin, Ltd., Chicago, IL.

Thomas F. Ryan, Sidley & Austin, Chicago, IL, argued for defendant-appellee. With him on the brief were Constantine L. Trela and John W. Treece. Also on the brief was Richard S. Phillips, Wood, Phillips, VanSanten, Clark & Mortimer, Chicago, IL.

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Before NIES, MAYER, and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Mark I Marketing Corporation and Mark I Marketing Corporation of America (collectively "Mark I") appeal from the order of the United States District Court for the Northern District of Illinois granting summary judgment of noninfringement in favor of R.R. Donnelley & Sons Company ("Donnelley"). Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., No. 92 C 8380, 1994 WL 603884 (N.D.Ill. Nov. 1, 1994). Because prosecution history estoppel precludes Mark I from asserting infringement under the doctrine of equivalents, we affirm.

BACKGROUND

Color images in magazines, books, and newspapers are conventionally formed by a process that uses four printing plates and the four "process" inks (cyan, magenta, yellow, and black). In this process, four films or "separations" are first made by scanning an original color image with an electronic scanner or by photographing the image through different colored filters. ¹ Once the separations are prepared, they are used to make four printing plates, each one corresponding to a process ink color. When used in combination, the printing plates generate a four-color image which, to the naked eye, appears to encompass the entire spectrum of colors and shades.

For certain printing applications, such as the printing of telephone directories, newspapers, and advertising flyers, the conventional four-color separation process is prohibitively expensive due to the need to prepare and use four printing plates. The invention disclosed and claimed in U.S. Patent 4,554,241 ² addresses this problem by providing a process for printing color images on paper using only two printing plates and two "non-process" inks. Wallace Edwards is the inventor of this process and the chairman and chief executive officer of Mark I. Edwards assigned his rights in the invention to Mark I. ³

The '241 patent discloses a process in which each of two printing plates is created by sequentially making two different filter exposures of an original color image on a separation film. The first printing plate, which prints red ink, is made by sequentially exposing a separation film through green and blue filters. The second plate, which prints another non-process ink such as green, blue, or black ink, is made by sequentially exposing a separation film through red and blue filters. Claim 1 of the patent, which is the focus of this litigation, defines the invention as follows:

1. A method of printing on a sheet member a realistic reproduction of a colored original, utilizing a minimum of two different superimposed impressions, each with a different coloring medium, comprising:

(a) providing a colored original,

(b) creating a first printing plate intended to print a non-process red color, by

(1) making a green filter exposure of the original on a first means for recording a first optical image,

(2) making a blue filter exposure of the original on said first means,

steps (1) and (2) being carried out sequentially in any order,

(c) creating a second printing plate intended to print a second color different from that printed by said first plate, by

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(3) making a red filter exposure of the original on a second means for recording a second optical image,

(4) making a blue filter exposure of the original on said second means,

steps (3) and (4) being carried out sequentially in any order,

steps (b) and (c) being carried out in any order,

(d) providing a sheet member to receive two superimposed impressions, and

(e) using said first and second printing plates to print said red color and said different color, respectively, as the said superimposed impressions on said sheet member [emphasis added].

The patent specification indicates that either photographic or scanning techniques may be used to carry out the invention:

Each film is exposed sequentially through the two filters or with the equivalent two lights on [a] conventional scanner.

....

It is emphasized again that the interposition of actual colored filters between the original and a means for recording an optical image (such as a piece of film) is not the only way to create the appropriate printer. The presently available scanner machines accomplish the same effect by illuminating the original with light of a particular color. In the ... claims, reference is made to "making a ... filter exposure", etc., and it is to be understood that this wording is intended to embrace those techniques which do not actually require a physical filter to be interposed, but which achieve exactly the same effect as if the filter had been interposed.

Col. 3, ll. 42-44; col. 6, ll. 6-17.

Donnelley is in the business of producing Yellow Pages telephone directories. It prints color images for its directories using a commercially available Crosfield scanner and two non-process inks. The scanner focuses a single beam of white light on a small area (a "pixel") of the colored original. The light reflects back into the scanner where it is split into three separate light beams. The beams are then simultaneously filtered through red, green, and blue filters within the scanner. Next, the scanner senses the intensities of the beams and converts this information into digital values which are stored in memory. The scanner repeats this process for each pixel until the entire image has been scanned. To create separations, the scanner analyzes the stored data to determine the size and density of the various ink dots needed to replicate each pixel's color. It then converts the data into electrical impulses, sends the impulses to light sources (lasers or lamps), and pulses the light sources to expose tiny spots on separation films. Each spot of film is either exposed only once or is not exposed at all. The resulting separations are used to make printing plates, which in turn are used to print images in Donnelley's telephone directories.

Mark I sued Donnelley alleging infringement of the '241 patent. ⁴ Donnelley denied the allegation and moved for summary judgment of noninfringement, arguing that it did not literally infringe the patent because it did not use filters sequentially or make sequential exposures of film. In addition, Donnelley argued that its process was known and used before the '241 invention and therefore that the doctrine of equivalents was not applicable. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.1990) ("[S]ince prior art always limits what an inventor could have claimed [during prosecution], it limits the range of permissible equivalents of a claim."). Donnelley further argued that prosecution history estoppel precludes Mark I from establishing infringement under the doctrine of equivalents. In response, Mark I essentially conceded that Donnelley did not literally infringe the '241 patent, but argued that genuine issues of material fact precluded summary judgment in Donnelley's favor on Mark I's theory of infringement under the doctrine of equivalents.

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The district court referred Donnelley's motion to a magistrate judge, who issued a Report and Recommendation on June 10, 1994. The magistrate judge determined that prosecution history estoppel precluded Mark I from proving infringement under the doctrine of equivalents and thus recommended that the court grant summary judgment of noninfringement. The district court, deciding the motion independently, granted summary judgment on a different ground. The court determined that Mark I did not refute Donnelley's factual assertion that the accused process was in the prior art and thus that it could not infringe the patent under the doctrine of equivalents. The court found that Mark I, through the affidavit of its expert, had only asserted that the '241 patent was not invalid, even though Donnelley never challenged the patent's validity. Thus, in the court's view Mark I failed to raise a genuine issue of material fact concerning Donnelley's theory of noninfringement. In granting summary judgment, the court found it unnecessary to determine whether prosecution history estoppel precluded Mark I from establishing infringement under the doctrine of equivalents. This appeal followed.

DISCUSSION

Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c);...