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Case 1:04-cv-01373-KAJ

Document 382

Filed 06/16/2006

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

AMPEX CORPORATION, Plaintiff, v. EASTMAN KODAK COMPANY, ALTEK CORPORATION and CHINON INDUSTRIES, INC., Defendants.

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C.A. No. 04-1373-KAJ

PLAINTIFF'S CITATION OF SUBSEQUENT AUTHORITY IN FURTHER SUPPORT OF ITS ANSWERING BRIEF IN OPPOSITION TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT Pursuant to D. Del. LR 7.1.2(c), Plaintiff Ampex Corporation ("Ampex") hereby submits this Citation of Subsequent Authority in further support of its Answering Brief In Opposition to Defendants Motion for Summary Judgment of Non-Infringement, filed on June 13, 2006 (D. I. 366) ("Ampex Opp."). On June 14, the Court of Appeals for the Federal Circuit issued its opinion in Primos, Inc. v. Hunter's Specialties, Inc., 05-1001, -1376 (Fed Cir. June 14, 2006) (Ex. A). In this opinion, the Federal Circuit affirmed a judgment of infringement under the doctrine of equivalence, rejecting two grounds of noninfringement raised by appellants: (1) prosecution history estoppel under Festo; and (2) the "all elements" limitation to equivalents. The claim element at issue in Primos was a "plate" used in a game call apparatus; during prosecution, this claim element "was amended ... by adding the limitation that the plate be `differentially spaced' above the membrane." Id. at *12-13. The Court held, based on a review of the prosecution history and the art which the applicant distinguished during prosecution, that the scope of the disclaimed subject matter was limited to "plates that are not differentially spaced

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above the membrane."

The accused device, by contrast, used "a dome [and not a plate]

extending above the membrane." Id. at *4, *13. Thus, the Court found that Festo did not bar equivalence because the claimed amendment "was merely tangential to the contested element in the accused device." Id. at *13. Defendants' assertions that prosecution history estoppel should bar a finding of infringement as to the "said data" elements of the `121 patent claims should be rejected for the same reasons set forth in Primos, because the amendments to those claim elements bore no more than a tangential relationship to the scope of equivalents asserted. More particularly, the "said data" elements were amended simply to clarify the original source of the data to be stored in the claimed bulk store, and bore no relation to whether the data could be processed or changed prior to storage in the bulk store. (Ampex Opp. pp. 32-33.) In Primos, the appellant also asserted that to find the accused device equivalent to the claimed plate would "vitiate the `plate' limitation and thereby violate the all elements rule." Primos, 05-1001, -1376 at *14. The Court recognized that the appellant was "essentially

contending that there can be no equivalent to the claimed `plate.'" As the Court stated: Our precedent has recognized that "[t]here is no set formula for determining whether a finding of equivalence would vitiate a limitation, and thereby violate the all elements rule. Rather, courts must consider the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless." Id. at *15. The Court then rejected appellant's claim on the grounds that, because the appellee's theory of equivalence (that a dome is equivalent to a plate) does not effectively eliminate the plate limitation in its entirety, "it does not violate the all limitations rule." Id. Addressing the totality of the circumstances as to such elements as "video" and "said data," in each instance a finding that the element is met under the doctrine of equivalents is -2-

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similarly warranted. (Ampex Opp. pp. 26-27, 32-35). Under Ampex's equivalents analysis, the "video image/video pixel data" and "said data" elements are not "effectively eliminated in their entirety," and a finding of equivalence would not violate the all elements rule. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Jack B. Blumenfeld (#1014) Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 [email protected] Counsel for Plaintiff Ampex Corporation OF COUNSEL: Jesse J. Jenner Sasha G. Rao Ropes & Gray LLP 1251 Avenue of the Americas New York, NY 10020 (212) 596-9000 Norman H. Beamer Gabrielle E. Higgins Ropes & Gray LLP 525 University Avenue Palo Alto, CA 94301 (650) 617-4000 James E. Hopenfeld Ropes & Gray LLP One Metro Center 700 12th Street, NW Washington, DC 20005 Dated: June 16, 2006
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CERTIFICATE OF SERVICE I, Jack B. Blumenfeld, hereby certify that on June 16, 2006 I caused to be electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Collins J. Seitz, Jr., Esquire Connolly, Bove, Lodge & Hutz LLP 1007 North Orange Street P.O. Box 2207 Wilmington, DE 19899 and that I caused copies to be served upon the following in the manner indicated: BY HAND Collins J. Seitz, Jr., Esquire Connolly, Bove, Lodge & Hutz LLP 1007 North Orange Street P.O. Box 2207 Wilmington, DE 19899 BY FEDERAL EXPRESS Michael J. Summersgill Wilmer Cutler Pickering Hale and Dorr LLP 60 State Street Boston, MA 02109

/s/ Jack B. Blumenfeld (#1014) Jack B. Blumenfeld (#1014) [email protected]