Pitney Bowes, Inc. v. Hewlett-Packard Co.
| Decision Date | 23 March 1998 |
| Docket Number | No. Civ. 3:95CV01764AVC.,Civ. 3:95CV01764AVC. |
| Citation | 69 F.Supp.2d 325 |
| Court | U.S. District Court — District of Connecticut |
| Parties | PITNEY BOWES, INC., Plaintiff and Counterclaim, Defendant, v. HEWLETT-PACKARD COMPANY, Defendant and Counterclaim Plaintiff. |
Michael J. Dorney, Jacqueline D. Bucar, Tyler, Cooper & Alcorn, New Haven, CT, Michael V. Ciresi, James L. Harlow, Jan M. Conlin, Thomas L. Hamlin, Robins, Kaplan, Miller & Ciresi, Minneapolis, MN, for plaintiff.
Thomas J. Rechen, James G. Green, Jr., Pepe & Hazard, Hartford, CT, Jonathan A. Marshall, John J. Lauter, Jr., Steven I. Wallach, Pennie & Edmonds, New York City, for defendant.
RULING ON THE DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
This is an action for infringement and damages brought pursuant to 35 U.S.C. § 271(a). It concerns the alleged infringement of a patent describing a method for generating printed images. The defendant has now filed the within motion for summary judgment, claiming that it does not infringe the plaintiff's patent since the accused devices do not employ "spots of different sizes."
The sole issue presented is whether the defendant's printers employ "spots of different sizes" as described in United States Patent 4,386,272 (the '272 patent). For the reasons hereinafter set forth, the court concludes that the phrase "spots of different sizes" as used in the '272 patent means light spots of various sizes. Since it is undisputed that the accused devices do not employ light spots of different sizes, the defendant's motion for summary judgment (document no. 178) is granted.
Examination of the complaint, patent records, exhibits, Rule 9(c) statements, and supplemental materials accompanying the motions for summary judgment, and the responses thereto, discloses the following undisputed material facts.
The plaintiff, Pitney Bowes, Inc. (hereinafter "PB"), is a Delaware corporation. The defendant, Hewlett-Packard Company (hereinafter "HP"), is a California corporation.
On March 4, 1981, PB filed patent application Ser. No. 240,532 with the United States Patent and Trademark Office (PTO). Claims 15 and 16 of this application would eventually become claims 1 and 2 of the '272 patent.
On September 23, 1981, the patent examiner rejected claims 15 and 16 of the '532 application on the grounds that the specification was insufficient to enable one of ordinary skill in the art to practice the invention.1 PB responded that the application contained an extensive description of the apparatus which sufficiently delineated its operation. In January 1982, apparently unpersuaded by PB's arguments, the examiner issued a second office action which reiterated the rejection of claims 15 and 16 of the '532 application.
On March 2, 1982, representatives from PB met with the examiner to discuss the application. As a result of the meeting, the examiner changed his position relating to the patentability of claims 15 and 16 and agreed with PB that the specification adequately described the invention. On April 12, 1982, the examiner issued a Notice of Allowance for claims 15 and 16.
On June 22, 1982, PB filed application Ser. No. 391,029 (the '029 application), a continuation of the '532 application. The '029 application contained claims 15 and 16 from the '532 application in addition to five new claims. On March 7, 1983, a Notice of Allowance issued for all of the claims of the '029 application. The cover sheet of the Notice contained a handwritten note indicating that, pursuant to § 606.01 of the Manual of Patent Examining Procedure (M.P.E.P.), the examiner changed the title from "Apparatus and Method for Correcting Imperfections in a Polygon Used For Laser Scanning" to "Apparatus and Method for Generating Images by Producing Light Spots of Different Sizes." On May 31, 1983, the PTO granted PB United States Patent 4,386,272 (the '272 patent).
As disclosed and claimed in the '272 patent, the invention describes an apparatus and a method for generating printed images by producing light spots of different sizes. Specifically, the technology is designed for application in a laser printing device.
Laser printers, such as the accused devices manufactured by HP in the instant case, convert electronic information into hard copy representations of words and numbers. They function by directing laser light onto a photoreceptor. A photoconductive surface, such as the surface of a drum, is evenly covered with an electrical charge. When the laser light strikes the drum, it dissipates a small area of the charge on the drum surface. These discharged areas attract toner, which is then transferred from the drum to the paper to create the final permanent image. Each image, whether it be a letter or a number, is composed of hundreds or thousands of these small spots.
Historically, spots of the same size were utilized to produce printed images. The result of this approach was that the corners and edges of many characters had a stair-stepped effect, which is commonly referred to in the printing industry as the "jaggies" problem. The '272 patent describes a technique for creating spots of different sizes. The specification of the '272 patent teaches that this approach can be used "to avoid roughened edges and improve character formation."
The PB inventors achieved this result by employing the device shown in Figure 1 of the '272 patent (see Exhibit 1). A laser source [10] sends a beam of light through a modulator [16] and a series of optical elements [20, 22, and 24] toward a rotating multi-faceted polygon mirror [26]. As the mirror spins, multiple light beams [12] are reflected toward the photoreceptor [32]. Each beam strikes the photoreceptor at a different location, causing the formation of a small discharged area on the drum. Toner is attracted to each of these discharged areas and the image is transferred to paper.
The '272 patent teaches that spots of different sizes can be formed by one of two methods. In an embodiment which employs a single laser source, "the intensity modulator could be used for control of spot size by varying the intensity [of the beam of light]." Alternatively, the invention "can also employ two power sources using parallel laser beams with each of the beams being of a different diameter and corresponding spot size." These different applications are respectively referred to as the one laser and two laser embodiments of the '272 patent.
Claims 1, 2, and 3 of the '272 patent reference the contested phrase "spots of different sizes." They read
1. A method for producing on a photoreceptor an image of generated shapes made up of spots, comprising: directing a plurality of beams of light toward a photoreceptor, each beam of light generating a spot on the photoreceptor and controlling a parameter of the light beams to produce spots of different sizes whereby the appearance of smooth edges are given to the generated shapes.
2. The method of claim 1 wherein the parameter controlled is light beam intensity.
3. Apparatus for producing on a photoreceptor an image of generated shapes made up of spots, comprising: means for directing a plurality of beams of light toward a photoreceptor to generating a plurality of spots on the photoreceptor and means for generating spots of different sizes whereby the appearance of smooth edges are given to the generated shapes. (emphasis added)
It is undisputed that the accused HP printers use the same prior art light scanning system as that shown in Figure 1 of the '272 patent. The HP printers employ light from a single laser source which is reflected off a polygonal mirror to a photoreceptor mounted on a drum. However, instead of adjusting either the beam's intensity or diameter, as is described in the '272 patent, the accused printers solve the "jaggies" problem by modifying the duration of time the laser beam is on. The HP printers employ laser light spots of one size which are turned on and off for different periods of time. Beams which are on for a longer period of time create larger discharged areas on the photoreceptor. By modifying the amount of time a beam is on, the HP printers create different sized discharged areas on the photoreceptor. These areas translate into different sized printed dots, which give the final image a smoother appearance.
In 1990, PB notified HP that several of HP's marketed laser printers infringed the claims of the '272 patent. This action followed.
Summary judgment is appropriately granted when the evidentiary record reveals that there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R.Civ.P. 56(c). In determining whether the record presents genuine issues for trial, the court must view all inferences and ambiguities in a light most favorable to the non-moving party. See Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir.), cert. denied, 502 U.S. 849, 112 S.Ct. 152, 116 L.Ed.2d 117 (1991). A plaintiff raises a genuine issue of material fact if "the jury could reasonably find for the plaintiff." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Rule 56(c) "provides that the 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." Liberty Lobby, supra, at 247-48, 106 S.Ct. 2505. The Supreme Court noted that:
Rule 56 must be construed with due regard not only for the rights of persons asserting claims and defenses that are adequately based in fact to have those claims and defenses tried to a jury, but also for the rights of persons opposing such claims and defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and defenses have no factual basis.
Celotex v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "One of the principal purposes of the summary...
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Pitney Bowes, Inc. v. Hewlett-Packard Co.
...in favor of Hewlett on "spots of different sizes," and the case was dismissed on this basis. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 69 F.Supp.2d 325 (1998) [hereinafter Pitney II]. Pitney appealed the ruling of the district court and, on June 23, 1999, the Federal Circuit reversed t......