E.I. du Pont de Nemours & Co. v. Macdermid Printing Solutions

Determination of a claim of infringement involves a two-step inquiry. First, the patent claim is construed—a question of law in which the scope of the asserted claim is defined. Second, the claim is compared to the allegedly infringing product to determine whether the product contains every limitation contained in the claim or the substantial equivalent of any limitation not literally present.

Opinion ("COOPER"): Plaintiff, E.I. DuPont de Nemours & Company (“DuPont”), brought suit against defendants, MacDermid, Inc. and MacDermid Printing Solutions, L.L.C. (“MacDermid”), alleging patent infringement on Patent No. 6,171,758 B1 (the “‘758 Patent”) and on Patent No. 6,773,859 B2 (the “‘859 Patent”).

DuPont introduced its commercial embodiment of claim 1 of the ‘859 Patent, Digital Cyrel® FAST (“Cyrel”), in 2001. DuPont asserted that Cyrel pioneered and first commercialized the “market for the thermal development of digital flexographic printing plates.” MacDermid launched its LAVA products in April 2004. DuPont contended that MacDermid markets its LAVA equipment as providing the same benefits and having the same features as Cyrel.

Determination of a claim of infringement involves a two-step inquiry. First, the patent claim is construed—a question of law in which the scope of the asserted claim is defined. Second, the claim is compared to the allegedly infringing product to determine whether the product contains every limitation contained in the claim or the substantial equivalent of any limitation not literally present. A patent is presumed to be valid. A party asserting the invalidity of a patent or one or more of its claims must establish such invalidity by clear and convincing evidence.

MacDermid contended that DuPont’s asserted claims were invalid as “obvious.” Considerations of objective evidence of non-obviousness include evidence of long-felt but unmet need, failures of others, commercial success, copying, unexpected results, and industry acclaim. DuPont relied specifically on three considerations of objective evidence of non-obviousness: (1) commercial success; (2) long-felt but unmet need; and (3) industry praise. The court disagreed with all of DuPont’s arguments and ultimately found in favor of MacDermid, granting MacDermid’s motion for summary judgment of invalidity of those claims of the ‘859 Patent.

DuPont further alleged that MacDermid infringed claims 1, 3, 4, 7, and 8 of its ‘758 Patent by making, selling, and using its Digital CST plates in the United States.

Using the same inquiry standard as above, the court held that MacDermid’s Digital CST plates do not infringe the ‘758 Patent. Digital CST does not contain every limitation contained in claim 1 of the ‘758 Patent because its dimensional stability is not controlled through a “special annealing process,” as is required by the claim construction. The court therefore GRANTED MacDermid’s motion for summary judgment of noninfringement.