Opinion
02-CV-6564T.
July 2, 2004
DECISION and ORDER
INTRODUCTION
Plaintiff Eastman Kodak Company, ("Kodak"), brings this action against defendant Agfa-Gevaert, N.V. and Agfa Corporation (collectively "Agfa"), claiming that the defendants, by manufacturing, distributing and selling certain radiographic films, have infringed upon seven patents assigned to Kodak.
Before the court are two motions for partial summary judgment filed by Agfa. By motion dated December 5, 2003, Agfa moves for partial summary judgment against Kodak on grounds that Kodak failed to properly notify Agfa or its predecessors in interest of the alleged infringement of Kodak's patents. Agfa seeks an Order limiting its potential liability for infringement of any of the patents in suit to the period running from the date on which it received actual notice of the alleged infringement to the date on which the patents expired, or, if the patents have not expired, to the present.
On December 10, 2003, Agfa filed a second motion for partial summary judgment seeking relief on grounds that Kodak unreasonably delayed bringing this action despite believing that certain of Agfa's products infringed upon Kodak's patents. Agfa argues that because of Kodak's delay in bringing suit, and the resulting prejudice to Agfa, Kodak is barred by the doctrine of laches from recovering its entire measure of alleged damages.
Kodak opposes Agfa's motions, and argues that it provided effective notice to Agfa (and Agfa's predecessors in interest) regarding alleged infringement of its patents as early as 1995. Kodak further argues that it is not barred by the doctrine of laches from seeking its full measure of damages resulting from the alleged infringement. For the reasons set forth below, I deny Agfa's motion for partial summary judgment on the issue of laches, and grant in-part and deny in-part Agfa's motion for partial summary judgment on the issue of notice.
BACKGROUND
A. The Patents in Suit
There are seven patents at issue in this case, all of which are assigned to Kodak. The patents generally fall into one of two categories: the "crossover" patents and the "tabular grain" patents. The crossover patents disclose film emulsion technology which limits the amount of light that can "crossover" from one side of piece of radiographic film to the other side. Limiting the amount of light that crosses-over from one side of the film to the other helps prevent distortion, and allows for a sharper image.
Tabular grains, as described in the tabular grain patents (also referred to as the "T-grain" patents) are tiny light sensitive crystals shaped like table-tops that are embedded in the emulsion of radiographic film. The T-grain patents disclose advancements in the sizes and shapes of the tabular grains. Kodak contends that because of the physical attributes of its grains, the grains capture more light at a lower cost than grains in other films, and capture that light more accurately, resulting in clearer radiographic images.
The four crossover patents at issue in this case are U.S. Patents 4,803,150; (the '150 patent); 4,994,355, (the '355 patent); 4,997,750, (the '750 patent); and 5,108,881 (the '881 patent). None of the crossover patents have expired.
There are three tabular grain patents at issue in this action: U.S. Patents 4,425,425 (the '425 patent); 4,425,426, (the '426 patent) and 4,439,520 (the '520 patent). Each of the T-grain patents has expired. The 425 and 520 patents expired on November 12, 2001, and the 426 Patent expired on September 30, 2002.
B. The Allegedly Infringing Products
Kodak alleges that several products sold by Agfa and Agfa's predecessors infringe upon one or more of the patents in suit. Specifically, Kodak alleges that these products: Sterling Ultravision Ci, Sterling Ultravision L, Sterling Ultravision C, Sterling Ultravision G, Sterling Cronex 10T, Sterling Cronex 10TL, Sterling Orthovision G, Sterling Orthovision L, Agfa Curix Opthos H, Agfa-Ortho HT-G, Agfa Cronex 5, Agfa B Plus, and Agfa CP-BU, infringe upon the T-grain patents
Kodak contends that one product, Agfa Curix Opthos H, infringes upon the crossover patents.
Eight of the thirteen accused products (those identified as "Sterling" products) were originally manufactured and sold by Agfa's predecessors E.I. DuPont de Nemours Co., Inc. ("DuPont"), and/or DuPont's successor, Sterling Diagnostic Imaging ("Sterling"), a company that spun-off from DuPont in January, 1996. On July 30, 1999, Agfa acquired Sterling.
C. Discussions regarding potential infringement between Kodak, and Agfa, and Agfa's Predecessors
In a letter dated September 9, 1995, Kodak informed DuPont that one of DuPont's film products, Cronex 10T, infringed upon Kodak's '425 and '426 (T-grain) patents. Kodak Appendix at tab 9(A). The parties agreed to meet to discuss Kodak's concerns, and on November 10, 1995, Kodak sent a confirmatory letter to DuPont stating, inter alia, that "[t]his will confirm plans of representatives of our companies to meet on November 13, 1995, to discuss technical data pertaining to tabular grains in DuPont x-ray film and claims in Kodak's patents U.S. 4,425,425, and 4,425,426." Kodak Appendix at tab 9(B). The parties met in November, 1995, at which time DuPont: acknowledged Kodak's patents; explained that any prior infringement of those patents was unintentional, and vowed to quickly alter the methods used to produce the film so as not to infringe on Kodak's patents. Kodak subsequently tested DuPont's Cronex 10T film, and concluded that for at least some period of time, the product no longer infringed on Kodak's '425 and '426 patents.
Kodak admits that its September 1995 Notice of Infringement did not allege infringement of the third T-grain patent in this suit, the '520 Patent.
In April 1996, DuPont spun-off Sterling, which became an independent company. Three years later, in 1999, Agfa acquired Sterling.
In November, 2000, Kodak and Agfa representatives met in Rochester, N.Y., to discuss patent and licensing issues. Following that meeting, on December 4, 2000, Kodak informed Agfa in a letter that it had analyzed Agfa's "Curix Opthos H" film and concluded that the "four Kodak [crossover] patents and their counterparts may be relevant . . ." to that product. Kodak Appendix at tab 10(A). By email dated February 7, 2001, a Kodak representative wrote to Agfa following-up on a conversation relating to possible infringement of the crossover patents, and stated that Kodak scientists and patent attorneys "remain convinced that Kodak patents cover certain of your thoracic imaging products" Kodak Appendix at tab 10(B).
Approximately two months later, on April 9, 2001, Kodak wrote to Agfa and informed Agfa that its '425, '426, and '520 patents "covered" 11 Agfa products, including: Sterling Ultravision Ci; Sterling Ultravision L; Sterling Ultravision C; Sterling Ultravision G; Sterling Cronex 10T; Sterling Orthovision G; Sterling Orthovision L; Agfa Ortho Opthos H; Agfa-Ortho HT-G; Agfa Cronex 5; Agfa B Plus; Agfa CP-BU. Kodak Appendix at tab 10(C)
On October 31, 2002, Kodak filed the instant case, alleging that Agfa's products infringed on one or more of Kodak's T-grain and crossover patents in suit.
DISCUSSION
I. Notice
A. Legal Standards regarding Marking and Notice 35 U.S.C. § 287(a) provides generally that where the manufacturer or seller of a patented article fails to mark the article or its packaging with a notice that the item is patented, the patentee shall not be entitled to damages for infringement absent "proof that the infringer was notified of the infringement and continued to infringe thereafter. . . ." The section further provides that where the patentee has not marked a patented article, damages for infringement are limited to the period following the date on which the infringer received actual notice of the infringement. 35 U.S.C. § 287(a).
In the instant case, there is no dispute that Kodak did not mark any of its products with a notice that its products were patented under one or more of the patents in suit. Kodak further admits that for purposes of calculating damages, the damages period commenced when Agfa, or its predecessors in interest, received actual notice of alleged infringement of the patents in suit. The dispute therefore, arises as to when Agfa, Sterling, or DuPont received actual notice that their accused products infringed upon the patents in suit.
Generally, the question of whether or not a patentee has complied with 35 U.S.C. § 287(a), either by marking its patented product or providing actual notice infringement to an accused infringer is a question of fact. Gart v. Logitech, 254 F.3d 1334, 1339 (Fed. Cir. 2001) (citing Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996). However, where there are no material facts in dispute, and "no reasonable jury could find that the patentee either has or has not provided actual notice to the particular defendants by informing them of [its] patent and of [defendant's] infringement of it" the issue of actual notice may be decided on a motion for summary judgment. Gart, 254 F.3d at 1339.
The notice requirement of 35 U.S.C. § 287(a) "is designed to assure that the accused infringer knew of the adverse patent and the alleged infringement during the period in which its liability accrues." Gart, 254 F.3d at 1345 (citation omitted). The notice given by the patentee must be notice of the infringement, not merely the existence of the patentee's patents. Amstead Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1993). As stated by the Amstead court, "[actual notice requires the affirmative communication of a specific charge of infringement by a specific accused product or device."Amstead, 24 F.3d at 187.
In determining whether or not certain communications constitute actual notice of infringement, courts are to consider the entirety of the relevant communications between the patentee and the alleged infringer. Gart 254 F.3d at 1347. Nevertheless, courts must focus on the actions of the patentee, as it is the patentee's obligation to provide notice to an infringer, regardless of whether or not the infringer knew of the patents at issue or its own infringement. Amstead, 24 F.3d at 187. I apply these standards to the analysis below.
B. The September 7, 1995 Notice of infringement of the '425 and '426 Patents was effective as to only Agfa's Cronex 10T product.
On September 7, 1995, Kodak unequivocally informed Agfa's predecessor DuPont that DuPont's Cronex 10T film product infringed upon Kodak's '425 and '426 patents. Specifically, Kodak, in a letter regarding "Cronex 10T Medical X-ray Film", informed DuPont that Kodak "believed] the film directly infringes at least Claim 1 of [the '425 patent] . . . or at least Claim 1 of [the '426 patent]. Such notice constitutes actual notice to DuPont of alleged infringement of the '425 and '426 Patents by the Cronex 10T film product.
Kodak contends that the September 7, 1995 correspondence, when considered in concert with subsequent correspondence, and DuPont's response to Kodak's charge of infringement, constitutes notice of infringement with respect to additional film products produced by DuPont, and therefore the September 1995 notice is not limited to the Cronex 10T product. Specifically, Kodak argues that when considered as a whole, the communications sent by Kodak to DuPont put DuPont on notice that all of DuPont's films which utilized T-grain technology were infringing on the '425 and '426 patents.
In support of this argument, Kodak contends that a November 10, 1995 follow up letter, in which it "confirmed] plans of representatives of our companies to meet on November 13, 1995, to discuss technical data pertaining to tabular grains in DuPont x-ray film and claims in Kodak's patents U.S. 4,425,425, and 4,425,426" expanded its notice of infringement to all DuPont x-ray films, not just Cronex 10T. In further support of its position, Kodak contends that during the November 13, 1995 meeting at which the parties discussed alleged infringement by the Cronex 10T film of Kodak's '425 and '426 Patents, DuPont candidly admitted that all of its T-grain films (including Cronex 10T) were related in that they were manufactured in the same plant, and that correction of the manufacturing flaws that caused Cronex 10T to infringe upon the '425 and '426 Patents would affect all of the T-grain films made by DuPont. According to Kodak, DuPont's admission that its T-grain films were related, and DuPont's promise to correct the manufacturing flaws affecting all of its T-grain films, demonstrates that DuPont was aware that Kodak had alleged infringement of all DuPont T-grain films. Finally, Kodak contends that a 1999 disclosure made by Sterling in connection with Agfa's purchase of that company reveals that DuPont and Sterling were aware that all of their T-grain products were subject to an infringement claim by Kodak. Those disclosures revealed that Sterling had been threatened with an action by Kodak for infringement of the '425 and '426 patents, and that "[on September 7, 1995, [Sterling] received from Eastman Kodak Company notice of infringement of United States Patents US 4,425,425 and US BI 4,425,426."
Kodak's contention that its correspondence combined with DuPont's actions and Sterling's disclosures constitutes notice of infringement with respect to products other than Cronex 10T fails for several reasons. First, the November 10, 1995 correspondence that Kodak contends is a notice of infringement was nothing more than a letter confirming a meeting to discuss the alleged infringement of Cronex 10T on Kodak's '425 and '426 Patents. The November 10, 1995 letter itself does not charge infringement by any product of any patent, but merely confirms that the parties will meet to discuss "technical data pertaining to tabular grains in DuPont X-ray film and claims in Kodak's ['425 and '426] patents. . . ." The fact that the parties were meeting to discuss DuPont technology in light of Kodak's intellectual property does not demonstrate that Kodak had put DuPont on notice that all of its T-grain films infringed Kodak's patents.
Moreover, considering the November 10, 1995 correspondence in conjunction with the September 7, 1995 correspondence, as Kodak urges, only supports Agfa's contention that DuPont received notice of infringement with respect to only its Cronex 10T product. The September 1995 correspondence from Kodak to DuPont, and DuPont's October, 1995 response discuss only the Cronex 10T product. Accordingly, there is no reason to believe that Kodak's November 10, 1995 confirmatory letter was intended to expand the scope of the products at issue, given that the parties had engaged in discussions related only to the Cronex 10T film. The fact that Kodak chose to use a generic term in one confirmatory letter can not operate to transform a specific charge of infringement relating to a single product into a significantly broader charge directed at any product that may fit within that generic term.
There is further evidence that Kodak's September 7, 1995 notice of infringement related solely to the Cronex 10T product, and did not relate to other DuPont T-grain films. Kodak representatives who attended the November 13, 1995 meeting between Kodak and DuPont at which infringement issues were discussed admitted that the only technical data they possessed related to Cronex 10T, and that they did not present any technical data related to any other DuPont product. Jeffrey Hawley, a Kodak patent attorney who attended the November 1995 meeting, testified that the only data he reviewed in preparation for the meeting related to the Cronex 10T product, and that he did not review data for any other DuPont product. See Deposition Testimony of Jeffrey Hawley at p. 78. Theodore VanDam, a Kodak engineer who also attended the meeting testified that he could not recall any product other than Cronex 10T being discussed at the meeting.See Deposition Testimony of Theodore VanDam at pp. 116-117. Accordingly, the evidence reveals that at the November, 1995 meeting Kodak did not charge that any DuPont product other than Cronex 10T infringed either the '425 or '426 Patents.
Kodak asserts, however, that DuPont admitted at the meeting that its T-grain films were all related, and that correcting the problem which caused Cronex 10T to infringe would affect all of its T-grain films. Kodak argues that DuPont's admissions reveal that DuPont believed that all of its t-grain films were subject to infringement of the '425 and '426 patents. However, whether or not DuPont knew that its products infringed the '425 and '426 patents is irrelevant, because the notice requirement of Section 287 requires that a patentee (either through marking or actual notice) provide notice of infringement to an alleged infringer.Amstead, 24 F.3d at 187 ("[t]he correct approach to determining notice under section 287 must focus on the action of the patentee, not the knowledge of the infringer"). Kodak's argument that it gave actual notice of infringement to DuPont with respect to all of DuPont's T-grain products because DuPont allegedly acted in a manner consistent with receiving actual notice is not only factually nondispositive of the notice issue, but under established Federal Circuit law, is irrelevant as a matter of law. American Medical Systems Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1537 n. 18 (Fed. Cir. 1993) ("notice of infringement must . . . come from the patentee, not the infringer."); Gart, 254 F.3d at 1347 ("[d]etermining whether the patentee's communication provides `sufficient specificity' regarding its belief that the recipient may be an infringer cannot take into consideration the knowledge or understanding of the alleged infringer, but must focus on the action of the patentee.") (citing Amstead, 24 F.3d at 187); Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987) ("Absent notice, [infringer's] `knowledge of the patents' is irrelevant.").
Furthermore, the evidence reveals that once Kodak was satisfied that the Cronex 10T product no longer infringed upon the '425 and '426 patents (by buying and testing samples of the film), Kodak took no further action against DuPont. This evidence demonstrates that Kodak was not concerned with DuPont's other T-grain films, and explains why Kodak did not specifically alert DuPont that any product other than Cronex 10T violated its '425 and '426 patents.
Finally, Kodak's argument that Sterling's corporate disclosures revealed Sterling's knowledge that all of its t-grain films were subject to an infringement action is, for the reasons stated above, without merit. Aside from the fact that the disclosures did not specify the Sterling product or products that allegedly infringed the '425 and '426 patents, Sterling's belief regarding which of its products, if any, infringed the '425 and '426 patents is irrelevant to the issue of whether or not Kodak effectively notified Sterling of the existence of Kodak's patents and which of Sterling's products allegedly infringed those patents. Amstead, 24 F.3d at 187
Because I find that there is no evidence upon which a reasonable jury could conclude that the notice of infringement issued by Kodak to DuPont in 1995 applied to any product other than Cronex 10T, I find that with the possible exception of Cronex 10TL, Kodak's 1995 notice was effective as to only the Cronex 10T film. The 1995 notice did not implicate any other DuPont product, and certainly did not notify Agfa, (then a competitor of DuPont), that any of Agfa's products infringed on the '425 and '426 patents. Had Kodak intended to make specific charges of infringement in 1995 against products other than Cronex 10T, it could have done so, just as it did in April 2001, when it charged several of Agfa's products by name with infringement of the 425, 426, and 520 patents. In the alternative, Kodak could have notified DuPont that a class of products violated its patents, as it did with Agfa in February, 2001 when it notified Agfa that its "thoracic imaging products" violated Kodak's crossover patents. The 1995 communications, however, notified DuPont only that its Cronex 10T film infringed upon the '425 and '426 patents.
C. The December 4, 2000 advisory did not put Agfa on notice that its Curix Opthos H product infringed on the crossover patents.
On December 4, 2000, a Kodak representative wrote to Agfa regarding "Kodak-Agfa Patent Matters in Health Imaging and Kodak Professional Business." Following a discussion regarding the possible licensing and trading of patent rights, Kodak stated: "we essentially have completed our own analysis of Agfa's `Curix Opthos H' product and have concluded that at least the following four Kodak patents and their counterparts may be relevant: U.S. 4,803,150; U.S. 4,994,355; U.S. 5,108,881; U.S. 4,997,750." Kodak Appendix at tab 10(A). Kodak contends that this letter constituted notice to Agfa that its Curix Opthos H product was infringing upon the crossover patents.
For actual notice to be effective, however, the notice must do more than notify the infringer of the existence of the patentee's patent rights. As stated above, "[actual notice requires the affirmative communication of a specific charge of infringement by a specific accused product or device." Amstead, 24 F.3d at 187.
In this case, the December 4, 2000 letter did not affirmatively communicate a specific charge of infringement. Rather, the letter merely informed Agfa that the crossover patents (and their "counterparts") "may" be relevant to Agfa's Curix Opthos H product. This is a vague advisory, similar to other vague advisories that have been deemed ineffective at conveying actual notice. For example, in Gart, the court held that a letter in which a patentee informed a party that it would find a patent "particularly interesting" with respect to a product manufactured by that party, did not constitute actual notice of infringement. Similarly, the court in Amstead held that a form letter sent to various manufacturers notifying them of a specific patent and advising them to refrain from supplying or offering to supply component parts "which would infringe or contribute to the infringement of the patent" was vague for failure to identify specific products that allegedly infringed on the patent.Amstead, 24 F.3d at 186. See also Philips Electronics North America Corp. v. Contec Corp., 312 F. Supp.2d 649 (D. Del. 2004) (letter informing infringer of the existence of particular patents and offering to arrange a meeting for purposes of discussing the patents and the potential licensing terms was insufficient, even when considered with other correspondence, to put alleged infringer on notice of an infringement claim).
In this case, the admonition that certain patents are "relevant" to a product is similar to the advisory that a patent would be "particularly interesting" to a specified product. In both cases, the notice is insufficient to clearly advise a party that it is infringing a patent by manufacturing or selling the goods referenced in the notice.
Accordingly, I find that the December 4, 2000 advisory from Kodak to Agfa regarding the crossover patents did not constitute notice of infringement of those patents. In so holding, I decline to adopt the position taken in Hoover v. Bissell Inc., 38 F. Supp.2d 519 (N.D. Ohio 1999), a case not cited by either party, in which the District Court held that letters which informed an accused infringer that the patentee's patents were "relevant" to the accused products, created a question of fact as to whether or not the letters constituted actual notice of infringement.Hoover is not binding on this court, and has not been cited by any other court. In light of the established law requiring "an affirmative communication of a specific charge of infringement by a specific accused product. . . ." and the cases similar to this one in which vague references to a relationship between an identified product and the patentee's patent have been held insufficient to establish actual notice under Section 287, I find that in this case, Kodak's letter notifying Agfa of "relevant" patents failed to establish notice of alleged infringement.
D. The February 2001 Notice was effective as to the Crossover Patents.
In February, 2001, Kodak wrote to Agfa advising Agfa that Kodak "remain[ed] convinced that Kodak patents cover certain of [Agfa's] thoracic imaging products." Kodak Appendix at tab 10(B). Although this notice does not specify which patents were allegedly infringed by Agfa's products, when considered in the course of the communications between Kodak and Agfa, the February 2001 letter provided actual notice to Agfa of Kodak's belief that Agfa's Curix Opthos H product infringed upon the Kodak crossover patents. Accordingly, should Kodak prove infringement with respect to the Curix Opthos H product, and entitlement to damages, Kodak may recover damages for the period beginning February 7, 2001, the date on which it provided actual notice of infringement.
E. The April, 2001 Notice was effective as to the T-grainPatents
On April 9, 2001, Kodak specifically charged Agfa with infringement of Kodak's '425, '426, and '520 patents. Kodak identified 11 Agfa products which infringed these patents including: Sterling Ultravision C; Sterling Ultravision L; Sterling Ultravision C; Sterling Ultravision G; Sterling Cronex 10T; Sterling Orthovision G; Sterling Orthovision L; Agfa Ortho Opthos H; Agfa-Ortho HT-G; Agfa Cronex 5; Agfa B Plus; Agfa CP-BU. Kodak Appendix at tab 10(C). The April, 2001 notice constitutes effective notice for the products identified in the notice.
F. Notice regarding Ultravision G.
Kodak failed to notify Agfa of infringement with respect to Agfa's Ultravision G product prior to the expiration of the T-grain patents, and therefore Kodak is not entitled to damages for the alleged infringement of those patents by the Ultravision G product. Kodak did not accuse Ultravision G of infringing upon the T-grain Patents until it filed its complaint in this action on October 31, 2002. At that time, however, the T-grain patents had expired, and accordingly, the notice of infringement was untimely.
G. The Record is incomplete regarding when effective noticewas received regarding Agfa's Cronex 10TL product.
Kodak did not allege that Agfa's Cronex 10TL product infringed the T-grain patents until it filed its Complaint in this action. As stated above, however, at that time, the T-grain patents had expired. Kodak did, however, notify DuPont in 1995 that Cronex 10T infringed the '425 and '426 patents, and notified Agfa in 2001 that Cronex 10T infringed the '520 patent.
It is not clear from the record whether or not the Cronex 10TL product is sufficiently distinct from Cronex 10T such that notice of infringement with respect to Cronex 10T (which was timely provided) would be ineffective with respect to Cronex 10TL. Because the relationship between Cronex 10T and Cronex 10TL cannot be discerned from the record, Agfa's motion requesting that Kodak's notice with respect to Cronex 10TL be deemed untimely is denied without prejudice.
II. Laches
A. Legal Standards regarding the Doctrine of Laches
To establish the defense of laches, the alleged infringer of a patent must establish by a preponderance of the evidence that: (1) the patent owner unreasonably and inexcusably delayed filing suit for infringement; and (2) that the alleged infringer has been materially prejudiced by the delay. A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992). Generally, the determination of whether or not the doctrine of laches bars recovery in a patent case is a question of fact. See e.g., Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290, 1292 (Fed. Cir. 1992) (finding that defenses of laches and estoppel ultimately turn on underlying factual determinations).
B. Questions of fact preclude granting Defendant's motion for summary judgment.
Agfa contends that if its products are ultimately found to have infringed Kodak's patents, Kodak knew or should have known that Agfa's products infringed on those patents long before it filed the instant suit, and that Agfa has been prejudiced by Kodak's delay in filing suit. Kodak counters that it proceeded reasonably and prudently in investigating the alleged infringement, and did not bring suit until it had a clear basis for doing so. Kodak thus contends that it did not unreasonably delay bringing suit. Additionally, Kodak contends that because Agfa's predecessors affirmatively misled Kodak, Agfa, because of its unclean hands, may not invoke the equitable doctrine of laches.
Agfa's motion for partial summary judgment, filed while discovery in the case is continuing, raises several questions of fact not suitable for resolution on a motion for summary judgment. The question as to when Kodak became aware of the alleged infringement by the various accused products is in dispute, as is the question of whether or not Agfa was prejudiced by any delay in bringing suit. Accordingly, Agfa's motion for partial summary judgment on the issue of laches is denied.
CONCLUSION
For the reasons set forth above, defendants' motion for partial summary judgment with respect to laches is denied. Defendants' motion for partial summary judgment on the issue of notice is granted in-part and denied in-part as follows:
1. The September 1995 notice of infringement of the '425 and '426 patents issued by Kodak to DuPont is effective as to the Cronex 10T product, and with the possible exception of Cronex 10TL, the 1995 notice cannot be imputed to other products;
2. The December, 2000 advisory from Kodak to Agfa indicating that the crossover patents were relevant to Agfa's Curix Opthos H product did not constitute notice of infringement of those patents;
3. The February, 2001 notice of infringement of the crossover patents by Agfa's Curix Opthos H product constituted effective, actual notice of infringement;
4. The April, 2001 notice regarding infringement of the T-grain patents by 11 Agfa products constituted effective, actual notice of infringement;
5. Notice of infringement of the T-grain patents by Agfa's Ultravision G was made after those patents expired, and therefore Kodak is not entitled to damages for the alleged infringement by that product; and
6. The record is insufficient to determine whether Kodak's 1995 notice of infringement regarding Cronex 10T was effective as to Cronex 10TL.
ALL OF THE ABOVE IS SO ORDERED.