disposable camera with two cartridges, the Examiner decided that the `649
patent was not rendered obvious. The addition of the references not cited
by Fuji, explained the ALJ, did not change the outcome since the art
before the Examiner was in the other patents. Id. at 195. Moreover, the
ALJ noted that secondary considerations such as the length of time
between the Fuji patent and the Prontor — Werk patent and the
commercial success of the Fuji patent weighed against obviousness.
Consequently, the ALJ found that there were no grounds on which to hold
the `649 patent invalid. Id.
The ALJ next reviewed the enforceability of the `649 patent. Jazz
argued that the `649 patent was unenforceable because Fuji intentionally
did not reveal all the relevant art to the Examiner. The ALJ noted that
to prove inequitable conduct both materiality and intent must be
demonstrated by clear and convincing evidence. Id. at 197. However, the
ALJ found no evidence the Fuji intentionally withheld information, and
thus held that inequitable conduct was not established.
The ITC adopted the ALJ's recommendations. On appeal, the Federal
Circuit, reviewing the opinion under the "substantial evidence"
standard, affirmed the ITC's decision. Jazz Photo Corp. at 1108. The
court held that substantial evidence supported the ALJ's finding that the
prior art, via other references, was before the Examiner. The court
therefore affirmed the ALJ's finding regarding patent validity. Id. The
court also affirmed the finding that no inequitable conduct was shown. In
affirming this finding, the court elaborated on the ALJ's analysis,
explaining that failure to cite cumulative references is not inequitable
misconduct. Id. (citing Scripps Clinic & Research Found. v. Genentech,
Inc., 927 F.2d 1565, 1582 (Fed.Cir. 1991)). The Federal Circuit found
that the omitted references were cumulative, and that the omission
therefore did not suffice to establish inequitable misconduct. Id.
Moreover, the court held that Jazz had not established that Fuji
intentionally withheld the reference and the absence of the references
from the record was insufficient as a proof of intent. Id. Consequently,
the court held that there was no evidence of inequitable misconduct. Id.
III. Standard of Review
Pursuant to Rule 56(c), a motion for summary judgment will be granted
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. See Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986);
Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d
265 (1986). In other words, "[s]ummary judgment may be granted only if
there exists no genuine issue of material fact that would permit a
reasonable jury to find for the nonmoving party." Miller v. Indiana
Hosp., 843 F.2d 139, 143 (3d Cir. 1988). All facts and inferences must be
construed in the light most favorable to the nonmoving party. Peters v.
Delaware River Port Auth., 16 F.3d 1346, 1349 (3d Cir. 1994).
The party seeking summary judgment always bears the initial burden of
production. Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. This requires
the moving party to establish either that there is no genuine issue of
fact and that the moving party must prevail as a matter of law, or to
demonstrate that the nonmoving party has not shown the requisite facts
relating to an essential element of an issue on which it bears the
burden. See Id. at 322-23, 106 S.Ct. 2548. Once the party seeking
judgment has carried this initial burden, the burden shifts to the
nonmoving party. To avoid summary judgment, the nonmoving party must
demonstrate facts supporting each element for which it bears the burden,
and it must establish the existence of "genuine issue[s] of material
fact" justifying trial. Miller, 843 F.2d at 143; see also Celotex Corp.,
477 U.S. at 324, 106 S.Ct. 2548.
It is clear that if a moving party satisfies its initial burden of
establishing a prima facie case for summary judgment, the opposing party
"must do more than simply show that there is some metaphysical doubt as
to material facts." Matsushita 475 U.S. at 586, 106 S.Ct. 1348. Instead,
"[w]here the record taken as a whole could not lead a rational trier of
fact to find for the nonmoving party, there is no genuine issue for
trial." Id. at 587, 106 S.Ct. 1348 (quoting First National Bank of
Arizona v. Cities Service Co., 391 U.S. 253, 289, 88 S.Ct. 1575, 20
L.Ed.2d 569 (1968)).
In analyzing the prior decisions in this matter this Court is mindful
of the findings and opinions rendered by the ALJ and ITC, as well as the
opinion rendered by the Federal Circuit on appeal from the ITC. However,
while such findings and opinions serve a persuasive value, they do not
receive any deferential treatment nor do they have a preclusive effect on
any findings and opinions rendered by this Court. Texas Instruments Inc.
v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568 (Fed.Cir. 1996). This
Court therefore renders its opinion based on an independent review of the
facts and law.*fn2
A patent is presumed valid. 35 U.S.C. § 282; Innovative Scuba
Concepts Inc. v. Feder Industries Inc., 26 F.3d 1112, 1115 (Fed.Cir.
1994). A party challenging the validity of a patent must demonstrate
invalidity by clear and convincing evidence. Id. A patent is invalid
under 35 U.S.C. § 103 if:
[T]he differences between the subject matter sought to
be patented and the prior art are such that the
subject matter as a whole would have been obvious at
the time the invention was made to a person having
ordinary skill in the art to which said subject matter
Id. Obviousness is determined the four factors laid out in Graham v. John
Deere Co. (Graham): (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the
level of ordinary skill in the art. 383 U.S. 1, 17, 86 S.Ct. 684, 15
L.Ed.2d 545 (1966) (Graham); Omark Industries, Inc. v. Colonial Tool
Co., Inc., 672 F.2d 362, 364 (3rd Cir. 1982). In addition,
"objective indications of nonobviousness" are also considered. Id. Such
indications include long felt need, commercial success, failure of
others, copying, and unexpected results. Id., Bausch & Lomb, Inc. v.
Barnes — Hind/Hydrocurve, Inc., 796 F.2d 443, 446 (Fed.Cir. 1986),
cert. denied, 484 U.S. 823, 108 S.CL 85, 98 L.Ed.2d 47 (1987). A party
using such objective indications must establish a nexus "between the
merits of the claimed invention and the evidence offered." Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed.Cir. 1983) (citing
Solder Removal Co. v. USITC, 65 C.C.P.A. 120, 582 F.2d 628, 637 (Cust. &
The parties presented evidence of several patents regarding both
disposable and conventional cameras. A number of the patents describe a
disposable camera with two spools, whereby the film is collected in the
second spool after it is exposed. Such are the teachings of Prontor
— Werk and Netherlands patent `486. The Kodak patent describes a
camera where the film is unwound and then rewound when the film is
exposed, but because it is not rewound into a light tight film canister,
the film must be extracted only in a darkroom. On the other hand,
Japanese patent 53-127934 involves a conventional — not disposable
— camera where the film is rewound into a light tight film
The `649 patent describes a method of loading the film into a
disposable camera whereby it is wound onto a spool and then rewound into
a light-tight canister as pictures are taken and exposed. There is no
need to use a darkroom when opening the camera.
The patent examiner found that despite the existence of the Netherlands
`486 Patent and the Japanese patent 53-127934, the `649 patent was not
rendered obvious. This Court agrees. The fact that the `649 patent
involves a light tight canister into which the film is rewound and does
not require a darkroom sets this patent apart from the others. While one
could argue that in hindsight it may seem obvious to combine the
Netherlands and Japanese patents, the examination should not occur in
hindsight Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361,
1371 (Fed.Cir. 2000). In Ecolochem, Inc., the Federal Circuit explained
that "[t]he genius of invention is often a combination of known elements
which in hindsight seems preordained." Id. at 1371. In examining the
prior art to determine if there was a motivation to combine prior art
references, the Court finds that there was no suggestion in the art or
otherwise to combine the references. Plaintiffs expert testimony was not
refuted on this matter. In addition, the objective factors weigh heavily
against a finding that combining the prior art was obvious. The patents
which Jazz asserts make the `649 patent obvious were issued in the
1960's. Fuji's applications started two decades later. Such a time lag
weighs against obviousness. In addition, the commercial success enjoyed
by Fuji's cameras demonstrates that had it been obvious to combine the
references, it would have been done, shortly thereafter.
In sum, the evidence weighs strongly in favor of the validity of the
`649 patent. Defendants are unable to proffer any arguments sufficient to
overcome, by clear and convincing evidence, the statutory presumption of
validity when considered by a reasonable jury. Summary judgement is
therefore granted on the issue of the `649 patent validity.
B. Inequitable Conduct
Inequitable conduct is a question of equity to be decided by Court.
Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190
(Fed.Cir. 1993). It can only be established where the omitted
prior art was both material and intentionally withheld, Scripps Clinic &
Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed.Cir.
1991), and must be demonstrated by clear and convincing evidence. Monon
Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1261 (Fed. Cir. 2001).
Defendants have demonstrated neither materiality nor intent.
Jazz argues that Fuji's failure to cite the co-pending patent
applications for the `130 and `400 patents and Fuji's failure to cite the
Prontor — Werk, Kodak and Voigtlander patents constitute
inequitable conduct. However, the co-pending applications were for
utility patents which were patently distinct from the `649 method
patent, and thus the non-citation of them was not inequitable. On the
other hand, the patent references omitted by Fuji's attorney in analyzing
the `649 patent were relevant to a determination of its patentability.
Nonetheless, Fuji's attorney included other references that covered the
same prior art as the omitted references, which were therefore merely
cumulative. Failure to cite cumulative references is not sufficient for a
finding of inequitable conduct based on withholding material prior art.
Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565,
1582 (Fed.Cir. 1991). The Court therefore concludes that there is no
clear and convincing evidence of inequitable conduct.
Even assuming, arguendo, that the omitted references were material, the
evidence of intent is so speculative that it is impossible to find it
clear and convincing. Jazz argues that intent is demonstrated because
Fuji cited the Prontor — Werk, Kodak and Voigtlander patents during
the `130 and `400 patent prosecutions but not during the `649
prosecution. Jazz asserts that because the omitted references were found
relevant during the `130 and `400 applications, Fuji's failure to cite
the references in prosecuting the `649 patent is evidence of intentional
withholding. In essence, Jazz seeks to prove intent solely from an
inference derived from citations used in some patent prosecutions, but
not other patent prosecutions. Jazz provides no actual evidence that
Fuji's prosecuting attorney intentionally withheld information. While
direct evidence is not always possible, drawing a string of inferences of
misconduct based on inaction, when such inaction might equally be
benignly intended, can not constitute clear and convincing evidence of
intentional withholding.*fn3 Cf. FMC Corp. v. Manitowoc Co., Inc.,
835 F.2d 1411, 1417 (Fed.Cir. 1987)(holding that relying on inferences
was insufficient to prove intent). Plaintiff's motion for summary
judgment on the issue of equitable estoppel is therefore granted.
There is no clear and convincing evidence by which a reasonable jury
could find that the `649 patent is invalid. Likewise, there is no clear
and convincing evidence that Plaintiff engaged in inequitable conduct
Summary judgment on both validity and inequitable conduct is therefore
GRANTED. Moreover, because the antitrust counterclaims asserted by Jazz
necessarily require greater proof than that required for a showing of
inequitable conduct, Plaintiff's motion for summary judgment is GRANTED
with respect to the antitrust claims. Cf FMC, 835 F.2d at 1417-18.
Finally, Defendants' in limine motion to exclude Plaintiff's expert
is DENIED as moot since it pertains exclusively to the validity and
enforceability of the `649 patent.
IT IS on this 15th day of November 2001, hereby
ORDERED that Plaintiffs' Motion for Partial Summary Judgment is GRANTED.