Research Frontiers Inc. v. E Ink Corp.
| Decision Date | 31 March 2016 |
| Docket Number | Civil Action No. 13-1231-LPS |
| Parties | RESEARCH FRONTIERS INCORPORATED, Plaintiff, v. E INK CORPORATION, E INK HOLDINGS INC., SONY ELECTRONICS INC., SONY CORPORATION, BARNES & NOBLE INC., BARNESANDNOBLE.COM LLC, and AMAZON.COM INC., Defendants. |
| Court | U.S. District Court — District of Delaware |
In this action filed by Plaintiff Research Frontiers Inc. ("RFI" or "Plaintiff") against Defendants E Ink Corp. and E Ink Holdings Inc. (collectively, "E Ink"), Sony Corp., Sony Electronics Inc., Barnes & Noble Inc., BarnesandNoble.com LLC and Amazon.com Inc. (collectively with E Ink, "Defendants"), Plaintiff alleges infringement of three patents—United States Patent No. 6,606,185, United States Patent No. 6,271,956 and United States Patent No. 5,463,491 (the "'491 patent"). Presently before the Court is Defendants' "Motion for Partial Summary Judgment that the Asserted Claims of U.S. Patent No. 5,463,491 are Invalid in View of Plaintiff RFI's Own Written Admissions" ("Motion"). (D.I. 77) For the reasons set out below, the Court recommends that Defendants' Motion be DENIED in the manner described below.
RFI is a Delaware corporation with its principal place of business in Woodbury, New York. (D.I. 22 at ¶ 2) Since its founding in 1965, RFI has worked exclusively on "developing suspended particle technology applicable for use in display and light control applications ('SPD')." (Id. at ¶ 3) It is the owner of the '491 patent. (Id. at ¶ 6)
E Ink Corp. is a Delaware corporation with is principal place of business in Billerica, Massachusetts. (Id. at ¶ 10) E Ink Corp. supplies electronic paper displays that are incorporated into eBooks, eReaders, and other display products. (Id. at ¶¶ 11-17) E Ink Holdings Inc. is a Taiwanese corporation with its principal place of business in Taiwan. (Id. at ¶ 19) It is alleged that E Ink Holdings Inc. provides further assistance in the manufacture and/or assembly of E Ink Corp.'s products in Asia. (Id. at ¶ 20) It is furthered alleged that the remaining Defendants manufacture, use, offer for sale and/or import eReader and eBook devices incorporating E Ink-manufactured components. (Id. at ¶¶ 27, 35, 43)
The focus of the instant Motion is the '491 patent, entitled "Light Valve Employing a Film Comprising an Encapsulated Liquid Suspension, and Method of Making Such Film[.]" That patent, which was issued on October 31, 1995, contains 24 claims (four of which—claims 1, 10, 16 and 24—are independent), and 11 figures. (Id.)
The '491 patent relates in general to light valves, and more specifically, to improvements relating to incorporating within a plastic film a light valve suspension used to control light transmission in a light valve. ('491 patent, col. 1:15-18) The '491 patent describes conventional light valves as a cell containing "a 'light valve suspension[,]' namely small particles suspended in a liquid suspending medium." (Id., col. 1:23-30) The patent claims, inter alia, a film suitable for use in a light valve. (Id., col. 2:14-15; see also id., col. 38:39-44) The film is described asbeing comprised of a "cross-linked polymer matrix having droplets of a light valve suspension distributed in the matrix[.]" (Id., col. 2:15-17) The particles dispersed in the liquid light valve suspension may be organic or inorganic particles and may have other characteristics (e.g., they may be light-polarizing). (Id., col. 2:61-67)
Figures 9A and 9B, reproduced below, illustrate the "closed" and "open" states of one type of the film in an embodiment of the invention:
Image materials not available for display.
FIG. 9A
Image materials not available for display.
(Id., col. 10:13-15) In these figures, the film (24) contains microdoplets (26) of the liquid suspension in which the particles (33) are dispersed. (Id., col. 11:51-54) In Fig. 9A, the light valve is in the "closed" state, and much of the light (31) striking it is absorbed. (Id., col. 11:51-58) Conversely, Fig. 9B depicts the light valve in its "open" state, so that a considerable portionof the light (31) passes through the film as indicated by the arrows (32). (Id., col. 11:58-61)
Claim 1, a key claim implicated by the current Motion, reiterates the components of the invention set out therein as follows:
1. A film suitable for use as the light-modulating unit of a light valve, comprising a cross-linked polymer matrix having droplets of a liquid light valve suspension distributed in and in direct contact with the cross-linked [polymer] matrix, said liquid light valve suspension comprising organic particles suspended in a liquid suspending medium.
(Id., col. 38:39-44 (emphasis added))
RFI first brought a Complaint for patent infringement against Defendants on July 12, 2013. (D.I. 1) RFI filed an Amended Complaint on December 2, 2013. (D.I. 22)
On April 2, 2015, Defendants filed an unopposed motion for leave to file the instant Motion, (D.I. 75), which this Court subsequently granted, (D.I. 76); Defendants thereafter filed the instant Motion, (D.I. 77). The parties completed briefing on the Motion on May 18, 2015. (D.I. 91) On September 8, 2015, Chief Judge Leonard P. Stark referred the Motion to the Court for resolution. (D.I. 122) The Court heard oral argument on the Motion on November 2, 2015, in conjunction with oral argument on claim construction. (D.I. 142 (hereinafter, "Tr."))
A grant of summary judgment is appropriate where "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of agenuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585 n.10 (1986). If the moving party meets this burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Id. at 587 (emphasis in original) (internal quotation marks omitted). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). During this process, the Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
In order to defeat a motion for summary judgment, however, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) () (internal quotation marks and citation omitted). 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." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). Facts that could alter the outcome are "material," and a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248. "If the evidence is merely colorable . . . or is not significantly probative . . . summary judgment may be granted." Id. at 249-50 (internal citations omitted). A party asserting that a fact cannot be—or,alternatively, is—genuinely disputed must support the assertion either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials"; or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(A) & (B).
A claim is anticipated under 35 U.S.C. § 102(a) or (b) if:
35 U.S.C. § 102.1 A patent claim is anticipated if each and every limitation is found, either expressly or inherently, in a single prior art reference. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1321-22 (Fed. Cir. 2003). This test mirrors, to some extent, the test for infringement, and "it is axiomatic that that which would literally infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben VenueLabs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001).
In order to anticipate, however, a reference must, inter alia, enable one of skill in the art to make the invention without undue experimentation. In re Gleave, 560 F.3d at 1334. On that score, the United States Court of Appeals for the Federal Circuit has made clear that "a prior art reference need not enable its full disclosure; it only needs to enable the portions of its disclosure alleged to anticipate the claimed invention." In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012).
With regard to the enablement-related question as to whether ...
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