UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Presstek, Inc.

v. Case No. 05-cv-65-PB Opinion No.

Creo, Inc. & Creo Americas, Inc.

MEMORANDUM AND ORDER

Presstek, Inc., owner of

(filed

Sept. 22, 1993) ("the /705 Patent"), has sued Creo, Inc. and Creo

Americas, Inc. (collectively "Creo"), claiming that Creo's

lithographic printing plate, the Clarus WL, infringes its patent.

Creo now moves for summary judgment on the infringement claim

based largely on its interpretation of several disputed claim

terms. In this Memorandum and Order, I construe the relevant

disputed terms and deny Creo's motion for summary judgment.

I. BACKGROUND

A. The '705 Patent

Presstek's /705 Patent, entitled "Lithographic Printing

Members Having Secondary Ablation Layers For Use With Laser Discharge Imaging Apparatus," discloses a multilayer lithographic

printing plate suitable for laser imaging. During the imaging

process, laser radiation causes one or more layers of the plate

to ablate.1 As a result, imaged features are created on the

plate that have a different affinity for ink than the unimaged

features. After imaging, the plate is inked such that ink

adheres to the oleophilic (ink accepting) surfaces on the plate.

During printing, the inked plate comes into contact with a

blanket cylinder in the press, which transfers the images to the

paper or other medium.

1. The Patent Claims

The /705 Patent contains one independent claim (Claim 1) and

17 dependent claims. Presstek bases its infringement claims on

the independent claim and dependent Claims 2, 6, 11 and 12, which

are reproduced below with the disputed terms in boldface:

1. A lithographic printing member directly imageable by laser discharge, the member comprising: a. a topmost first layer; and b. a second layer underlying the first layer, the second layer being characterized by ablative

1 "Ablate" is defined in the patent to mean "decomposes into gases and volatile fragments." /705 Patent col.5 11.16-19 (Doc. N o . 1-2).

- 2 - absorption of laser radiation; c. a third layer underlying the second layer, the third layer: i. being substantially transparent to the laser radiation; ii. being ablated only partially in response to ablation of the second layer; and ill. differing from the first layer in its affinity for at least one printing liquid selected from the group consisting of ink and a fluid that repels ink.

2. The member of claim 1 further comprising a mechanically strong, durable and flexible substrate underlying the third layer.

6. The member of claim 2 wherein the substrate is polyester.

11. The member of claim 1 wherein the first layer is oleophobic.

12. The member of claim 11 wherein the first layer is a coating comprising silicone.

2. The Specification

The /705 Patent's specification compares imageable printing

plates in the prior art to the lithographic printing plates

claimed within the patent. It describes the problem of debris

- 3 - build-up and charring common in the prior art, which can result

in compromised printing quality and the need for post-imaging

cleaning. /705 Patent col.4, 11.36-55. The primary innovation of

the disclosed plate is the inclusion of a "secondary ablation

layer" that ablates only partially in response to heat generated

by ablation of an overlying layer. I d . at col.4 11.63-67. The

patent claims that this innovation enables the rapid, efficient

production of lithographic printing plates using laser equipment

without the need for post-imaging cleaning. I d . at col.4 11.59-

70 .

The specification discloses several preferred embodiments.2

The first embodiment, depicted in Figure 1, discloses a plate

consisting of (1) a surface layer 100, (2) a radiation-absorptive

layer 102, and (3) a secondary ablation layer 104, all three

layers overlying (4) a substrate 106. I d . at col.7 11.60-67. In

this embodiment, secondary ablation layer 104 may, but need not,

be adhered to substrate 106 by means of an adhesion promoting

layer 10 8.

In this embodiment, surface layer 100 and secondary ablation

2 The embodiments are illustrated in the figures attached as an appendix to this Memorandum and Order.

- 4- layer 104 exhibit opposite affinities for ink. Radiation-

absorptive layer 102 absorbs radiation during laser imaging and,

in response, fully ablates. I d . at col.8 11.39-40. Ideally,

secondary ablation layer 104 should ablate cleanly but only

partially in response, that is, it should undergo rapid and

uniform thermal degradation, evolving primarily gaseous

decomposition products. I d . at col.5 11.44-50, col.10 11.25-26.

The specification provides examples of materials and

processes that can be used to construct this embodiment.

Substrate 106 is preferably mechanically strong, durable and

flexible, and may be a polymer film, or a paper or metal sheet.

I d . at col.11 11.13-16. Preferred materials for secondary

ablation layer 104 are polymeric materials that exhibit limited

thermal stability. I d . at col.10 11.26-30. Secondary ablation

layer 104 is applied to or coated onto the substrate at a

thickness adequate to avoid complete ablation. I d . at col.10

11.37-40, col.11 11.52-53. A composition made up of carbon black

and nitrocellulose can be used for radiation-absorptive layer

102. I d . at col.9 11.10-40. Surface layer 100 is a silicone

polymer that repels ink in contrast to the oleophilic polyester

of secondary ablation layer 104. I d . at col. 8 11.2-6.

- 5 - In a second embodiment, depicted in Figure 2, the radiation-

absorptive layer 102 can be a composite of more than one layer.

I d . at col.9 11.62-63. The patent teaches that this embodiment

can be constructed by "coating the secondary ablation layer [104]

onto a substrate, electron-beam evaporating an aluminum layer

[114] thereon, electron-beam evaporating the TiO layer [112] onto

the aluminum layer, and coating the surface layer onto the

applied TiO layer." I d . at col.10 11.1-7. Figure 2 can also be

constructed by applying other disclosed materials to the

secondary ablation layer using a wire-wound rod. I d . at col.11

11.55-60. After drying, these coatings are deposited at 1 g/m 2 .

I d . at col.11 11.60-62. The silicone coating is applied to this

bilayer construction using a wire-wound rod. The coating is

dried and cured to produce a uniform deposition of 2 g/ m 2 .

at col.11 11.62-65.

In a third embodiment, depicted in Figure 3, the function of

radiation-absorptive layer 102 is merged with that of surface

layer 100. I d . at col.10 11.12-15. The result is a surface

layer 115 that combines the properties of the absorbing and

surface layers.

In a fourth embodiment, depicted in Figure 4, a secondary

- 6 - ablation layer that "exhibits adequate mechanical properties" can

be employed in sufficient thickness to also serve as a substrate.

I d . at col.11 11.45-50.

3. The Prosecution History

The /705 Patent was filed on September 22, 1993 as a

continuation-in-part of U.S. Patent Application Serial No.

08/125,319. The prosecution history included a single office

action from the U.S. Patent and Trademark Office, followed by an

amendment.

Claim 1 as originally filed in the /705 application required

three layers, with three sub-limitations for the third layer.

(Oreo's Memorandum in Support of Summ. J., Ex. 4, /705 Patent

File History at P0000067, Doc. No. 51-6). Sub-limitation (c)(ii)

in the initial application required that the third layer "exhibit

limited thermal stability" rather than "ablate only partially" as

found in the claim as issued. During prosecution, the Examiner

rejected Claim 1 of the initial application as filed based on

and 112. I d . at P0000093-98. The Examiner found

that the initial claim was not patentable in light of

and the vagueness of the language used. In

response to the rejection of its claim, Presstek amended Claim 1

- 7 - to its present form by amending sub-limitation (c)(ii) to require

that the third layer be "ablated only partially" in response to

ablation of the second layer. I d . at P00000108.

Figures 3 and 4 both originally included hand-written

notations. The original version of Figure 4 included a hand­

written notation indicating that layer 106 serves as both the

"secondary ablation layer + substrate." I d . at P0000075.

Similarly, the original version of Figure 3 included hand-written

notations indicating that layer 115 serves as both the "surface

layer + absorptive" layer.

During prosecution, the numerals

and characters in Figs. 1-4 were objected to under

(p) as being difficult to read. I d . at P0000100. In

response, the Applicant submitted "formal drawings" without the

hand written notations. I d . at P0000117-121. The amended

drawings appear in the patent as issued.

B. The Accused Device: The Clarus WL3

The Clarus WL is a multilayer lithographic printing plate

suitable for laser imaging. It is composed of: (1) a topmost

3 The parties have substantially different views concerning the characteristics of the Clarus W L . Where the parties disagree, I have adopted Creo's description of the device to the extent that it is supported by evidence in the record. silicone layer, (2) a second underlying layer of carbon

black/nitrocellulose, (3) a 6-7 micron thick third layer of

amorphous Polyethylene Terephthalate ("PET") underlying the

carbon black/nitrocellulose layer, and (4) a fourth layer of

semi-crystalline PET underlying the amorphous PET layer. When

the product is exposed to laser radiation, the carbon

black/nitrocellulose layer ablates and produces imaged features

in the plate that have a depth ranging from 1.2 to 2.0 microns.

Because the top two layers of the product have a combined

thickness of 1.3 microns, the imaging process produces features

that extend from 0 to 0.7 microns into the amorphous PET layer.

II. STANDARD OF REVIEW

A. Summary Judgment

Summary judgment is appropriate "if 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).

The party moving for summary judgment "bears the initial

- 9- responsibility of . . . identifying those portions of [the

record] which it believes demonstrate the absence of a genuine

issue of material fact." Celotex Corp. v. Catrett,

(1986). Once the moving party has met its burden, the burden

shifts to the adverse party to "produce evidence on which a

reasonable finder of fact, under the appropriate proof burden,

could base a verdict for it; if that party cannot produce such

evidence, the motion must be granted." Avala-Gerena v. Bristol

Mvers-Sguibb Co..

(1st Cir. 1996). The "adverse

party may not rest upon the mere allegations or denials of the

adverse party's pleading, but the adverse party's response . . .

must set forth specific facts showing that there is a genuine

issue for trial." Fed. R. Civ. P. 56(e). See also Anderson v.

Liberty Lobby. Inc..

(1986).

B. Patent Infringement

"A patent infringement analysis involves two steps: 1) claim

construction; and 2) application of the properly construed claim

to the accused product." Techsearch. L.L.C. v. Intel Corp..

(Fed. Cir. 2002) (citing Markman v. Westview

Instruments. Inc..

(Fed. Cir. 1995) (en banc),

aff'd.

(1996)). I decide the first step, claim

- 10 - construction, as a matter of law. See i d . "To prove

infringement, the patentee must show that the accused device

meets each claim limitation, either literally or under the

doctrine of equivalents." Plavtex Products. Inc. v. Procter &

Gamble C o ., 400 F.3d at 901, 906 (Fed Cir. 2005). Determining

whether the accused product meets each claim limitation is a

question of fact. Techsearch.

. Summary

judgment of non-infringement is appropriate "where the patent

owner's proof is deficient in meeting an essential part of the

legal standard for infringement, because such failure will render

all other facts immaterial." I d . at 1369 (citations omitted).

C. Claim Construction

The words of a patent claim "are generally given their

ordinary and customary meaning." Vitronics Corp. v.

Conceptronic. Inc..

(Fed. Cir. 1996). "[T]he

ordinary and customary meaning of a claim term is the meaning

that the term would have to a person of ordinary skill in the art

in question at the time of the invention, i.e., as of the

effective filing date of the patent application." Phillips v.

AWH Corp..

(Fed. Cir. 2005), cert. denied.

(U.S. Feb. 21, 2006).

- 11 - To ascertain this meaning, I examine the so-called intrinsic

evidence, including the claim language, the patent specification,

and the prosecution history. I d . at 1313. The claim language is

a useful starting point.

"[I]he context in which a term is

used in the asserted claim can be highly instructive."

"Differences among claims can also be a useful guide in

understanding the meaning of particular claim terms."

In

addition, "claims ■'must be read in view of the specification, of

which they are a part.'" I d . at 1315 (quoting Markman.

). In fact, the specification is usually "■'the single best

guide to the meaning of a disputed term.'" I d . (quoting Markman.

). Finally, the prosecution history should also be

consulted to clarify "how the inventor understood the invention

and whether the inventor limited the invention in the course of

prosecution, making the claim scope narrower than it otherwise

would be." I d . at 1317. Extrinsic evidence such as

dictionaries, treatises, and expert testimony may also be useful

if "considered in the context of the intrinsic evidence." I d . at

1319 .

Although there is "no magic formula or catechism for

conducting claim construction," i d . at 1324, the Federal Circuit

- 12 - has made clear that /,'/ [t]he construction that stays true to the

claim language and most naturally aligns with the patent's

description of the invention will be, in the end, the correct

construction.'" I d . at 1316 (quoting Renishaw PLC v. Marposs

Societa' per Azioni.

(Fed. Cir. 1998)).

Il l . ANALYSIS

Creo argues that it is entitled to summary judgment on

Presstek's infringement claim because the Clarus WL does not have

a third "layer" as is required by the 'VOS Patent's only

independent claim. Alternatively, it argues that the Clarus WL

does not infringe the 'VOS Patent even if it has a third layer

of amorphous PET because the third layer is not "ablated only

partially" in response to ablation of the second layer. I

address each argument in turn, construing the relevant disputed

claim terms where necessary.4

4 Creo also argues that because the Clarus WL does not infringe independent Claim 1, it cannot be found to infringe dependent Claims 2, 6, 11, and 12. Because I deny Creo's motion as to Claim 1, summary judgment is not proper on dependent Claims 2, 6, 11 and 12. See Wolverine World Wide. Inc. v. Nike. Inc.. 38 F .3d 1192, 1199 (Fed. Cir. 1994).

- 13 - A. Laver

1. Claim Construction

Creo's argument that the Clarus WL lacks a third "layer" of

amorphous PET hinges on its proposed construction of this

disputed term. Relying primarily on dictionary definitions, Creo

argues that "layer" means "a uniform thickness of a material

applied to a surface." Presstek denies that a layer must be

either uniform or applied. Thus, it asserts that a layer is

nothing more than "a thickness of a material." I adopt

Presstek's proposed construction.

Creo cites definitions from two general purpose dictionaries

and one technical dictionary to support its proposed

construction. The American Heritage Dictionary of the English

Language defines "layer" as "a single thickness of a material

covering a surface or forming an overlying part or segment," 4th

ed. 2000, while the Oxford English Dictionary defines it as "a

thickness of matter spread over a surface." 2d ed. 1989. In the

technical realm. Grant & Hack's Chemical Dictionary defines

"layer" as "a mass of uniform thickness covering an area." 5th

ed. 198 7.

These dictionary definitions do not resolve the interpretive

- 14 - problem. Instead, at most, they suggest the possibility that

Creo's proposed interpretation could be correct. First, the

cited definitions are themselves subject to various

interpretations. For example, it is unclear whether "single,"

as used in the first definition, means "uniform," as Creo

contends, or whether it means "one," as opposed to several. The

definitions also fail to clarify whether the terms "covering a

surface" or "spread over a surface" refer to the layer's method

of construction or its relative position. Second, the idea that

a layer must be either uniform in thickness or applied is not

supported by other definitions, which suggest that a layer is

"one thickness course, or fold laid or laying over or under

another," Webster's Third New International Dictionary (1993), or

"a sheet or thickness of a material, typically one of several,

covering a surface. Compact Oxford Dictionary (3d e d ) . More

fundamentally, dictionary definitions alone can never resolve a

claim construction dispute because claim terms must be construed

in the context in which they are used in the claims and

specification. Accordingly, I turn to the language of the patent

itself to discern the contextual meaning of the disputed term.

- 15 - Although "layer" is used numerous times both in the claims

and the specification, nowhere do the inventors use it in a way

that suggests that a layer must be uniform. While the

specification identifies application techniques that can be used

to create layers of uniform thickness (see, e.g.. /705 Patent

col.9 11.37-39, col.10 1.4-5, col.11 11.55-64), these references

merely indicate that layers can be created in ways that produce

layers of uniform thickness. They do not suggest that uniformity

is a definitional characteristic of a layer. For similar

reasons, the inventors' use of figures that are not drawn to

scale to illustrate preferred embodiments does not suggest that a

layer must be of uniform thickness simply because the figures

depict layers that appear to be uniform.

Creo's argument that a "layer" must be applied suffers from

similar deficiencies. While it is clear from numerous references

in the claims and the specification that the layers specified in

the invention can be created through application (see, e.g.. 'iOS

Patent col.5 11.55-68, col.11 11.52-55, col.14 11.3-4), these

references do not imply that this is the only way that layers can

be created. Layers obviously can be formed in other ways and the

specification does not suggest that a thickness of a material

- 16 - that underlies another material cannot be a layer unless it is

formed by application. The /705 Patent claims a device with

layers having specified locations and properties. It does not

claim any particular method of layer formation.

In summary, neither the intrinsic evidence nor the extrinsic

evidence supports Creo's argument that a layer must be either

uniform or applied.5 In each of its construction arguments, Creo

attempts to use the characteristics of preferred embodiments to

give the disputed claim term a meaning that it does not

ordinarily have. This approach violates the core principle of

claim construction that patent claims should not be arbitrarily

limited by preferred embodiments. See Phillips,

. Accordingly, Creo's arguments are unavailing and I

construe the term "layer" to mean "a thickness of a material."

2. Application

Having construed the term "layer," I must now determine

whether Presstek has produced sufficient evidence that the Clarus

WL has a third layer of amorphous PET.

5 Not surprisingly, the parties cite conflicting experts to support their respective positions. Although I have read their opinions, these self-serving reports effectively counter one another. As such, they do not influence my decision.

- 17 - Presstek relies solely on the opinion of its expert. Dr.

Samuel P. Gido, to support its contention that the Clarus WL has

a 6-7 micron thick layer of amorphous PET. (Presstek Opposition

to Motion for Summ. J., Ex. 2, Doc. No. 60-4 ("Gido I")). Dr.

Gido, in turn, bases his opinion on observations he made of the

Clarus WL using selected area electron diffraction ("SAED").

Creo attacks Dr. Gido's conclusion by arguing that it is based on

an insufficient number of samples to support a scientifically

reliable conclusion.6 Although Creo does not characterize its

argument in this way, it appears to contend that Dr. Gido's

opinion is inadmissible under Fed. R. Evid. 702 and should be

stricken. Once the opinion is excluded, it would most likely

argue, what remains is not sufficient to withstand its summary

judgment challenge.

Because Dr. Gido did not make his expert disclosure until

after Creo filed its opening summary judgment brief, Creo

presented its challenge to Dr. Gido's testimony for the first

6 Creo claims that Dr. Gido used SAED to examine only one location on each of three samples. According to Creo, the data collected by Dr. Gido is insufficient to support a scientifically reliable conclusion that the Clarus WL has a 6-7 micron thick layer of amorphous PET.

- 18 - time in its reply brief. While it is conceivable that I could

resolve Creo's argument on a motion for summary judgment if the

issue had been fully briefed, see, e.g.. Poulis-Minott v. Smith.

(1st Cir. 2004), I am unwilling to do so on the

present record. When a party bases a summary judgment challenge

on a contention that the opposing party's expert testimony is

unreliable, it is generally advisable to accompany the summary

judgment motion with a motion in limine pursuant to Fed. R.

Evid. 104(a). Reference Manual on Scientific Evidence. 54-56 (2d

Ed. 2000). Summary judgment can then be granted if the expert's

testimony is excluded and the remaining evidence is insufficient

to carry the opposing party's burden of proof. Because the

parties have not briefed the Rule 702 issue in anything more than

a cursory way, I decline to resolve it now and simply hold that

Dr. Gido's opinion is sufficient to permit Presstek to withstand

Creo's summary judgment challenge unless the opinion is

ultimately determined to be inadmissible. Accordingly, I reject

Creo's motion for summary judgment on this issue without

prejudice to its right to renew the motion if Dr. Gido's opinion

on this point is excluded.

- 19 - B. Partial Ablation

Creo next argues that it is entitled to summary judgment

because Presstek has failed to produce any credible evidence that

the third layer of the Clarus WL partially ablates. Presstek

disputes Creo's proposed construction of "being ablated only

partially" and contends that Dr. Gido's expert report

demonstrates that the amorphous PET layer partially ablates

during imaging.

1. Claim Construction

The parties dispute the meaning of "being ablated only

partially," as that phrase appears in Claim 1. Creo contends

that the phrase means "a portion, but not all, of the third layer

decomposes into gases and volatile fragments in a uniform manner

with limited melting or formation of solid decomposition

products." Creo bases this construction on the patent's internal

definition of "ablate" and its disclosed preference for a third

layer that cleanly ablates with only limited melting or formation

of solid decomposition products. Presstek argues that the phrase

means "a portion, but not all, of the third layer decomposes into

gases and volatile fragments."

"It is well-established that the patentee can act as his own

- 20 - lexicographer," and that it may do so either expressly or by

implication in the specification. Irdeto Access. Inc. v.

Echostar Satellite Corp..

(Fed. Cir. 2004).

Where a patent defines a term by implication, I must be mindful

of "the distinction between using the specification to interpret

the meaning of a claim and importing limitations from the

specification into the claim." Phillips,

. The

Federal Circuit warns against the latter.

The /705 Patent expressly defines "ablate" to mean

"decompose into gases and volatile fragments." /705 Patent col.

11.16-19. The specification also states a preference for clean

ablation of the secondary ablation layer and describes preferred

materials that achieve this effect. /705 Patent col. 5 11.44-54

col.6 11.1-16. Although it is true, as Creo points out, that

these preferences respond to problems associated with the prior

art, they are preferences nonetheless. As such, it would be

improper to treat them as limitations on the claims. See, e.g..

Phillips,

; Taskett v. Dentlinqer,

(Fed. Cir. 2003). Accordingly, I conclude that a person

skilled in the art would understand the phrase "being ablated

only partially," as used in Claim 1, to mean "a portion, but not all, of the third layer decomposes into gases and volatile

fragments."

2. Application

Having construed the disputed phrase, I must now determine

whether Presstek has identified evidence sufficient to show that

the Clarus W L 's third layer partially ablates in response to

ablation of the second layer.

Dr. Gido used Scanning Electron Microscopy ("SEM") and

Atomic Force Microscopy ("AFM") to demonstrate that laser imaging

creates features in the Clarus WL that partially extend into the

amorphous PET layer. He then opined in a conclusory way that the

depressions he observed in the amorphous PET layer are due to

partial ablation rather than some other process. (Gido I at

81, 103, 134).

Creo again challenges Dr. Gido's opinion by arguing that it

is unreliable and I resolve this argument in the same way. Dr.

Gido's opinion on this point is sufficient to permit Presstek to

withstand Creo's motion for summary judgment unless it is

ultimately determined to be inadmissible. Accordingly, I deny

Creo's motion for summary judgment on this issue without

prejudice to Creo's right to renew its motion if Dr. Gido's

- 22 - opinion on this point is excluded.7

Il l . CONCLUSION

For the reasons set forth in this Memorandum and Order, I

deny Creo's motion for summary judgment (Doc. No. 51) without

prejudice.

SO ORDERED.

/s/Paul Barbadoro Paul Barbadoro United States District Judge

March 30, 200 7

cc: Brian Comack, Esq. Kenneth George, Esq. Michael Kasdan, Esq. William Lee, Esq. Gordon MacDonald, Esq. Nora Passamaneck, Esq. Lisa Pirozzolo, Esq. James Rosenberg, Esq. Arpiar Saunders, Esq. Michael Solomita, Esq. S. Calvin Walden, Esq.

7 Creo has asked me to construe additional claim terms but I decline to do so at the present time because I need not do so to resolve the present motion.

- 23 - d In p rt- fl) 0

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