DCT

2:24-cv-04017

Fujifilm Corp v. Eastman Kodak Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-04017, D.N.J., 06/17/2024
  • Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant is incorporated in the state of New Jersey.
  • Core Dispute: Plaintiff alleges that Defendant’s SONORA X and SONORA XTRA processless printing plates infringe four patents related to the structure and chemical composition of lithographic printing plate precursors.
  • Technical Context: The technology concerns "processless" lithographic printing plates, which are developed on the printing press itself, aiming to increase speed and reduce chemical waste in the commercial printing industry.
  • Key Procedural History: The complaint alleges that Defendant has been aware of the asserted patents and technology since at least March 2021, citing USPTO office actions in which Plaintiff's patent applications were used as prior art against Defendant's own pending applications. The complaint also notes that Defendant’s European subsidiaries were sued for infringement of related European counterpart patents in October 2023. The original complaint in this U.S. action was filed on March 20, 2024.

Case Timeline

Date Event
2017-07-13 ’279 Patent Priority Date
2017-08-31 ’346 Patent Priority Date
2017-10-31 ’696 Patent Priority Date
2018-03-30 ’443 Patent Priority Date
2019-10-01 ’443 Patent Issue Date
2020-01-07 ’696 Patent Issue Date
2020-12-29 ’346 Patent Issue Date
2021-03-31 Date of USPTO Office Action citing Plaintiff’s published application against Defendant's application
2022-04-05 ’279 Patent Issue Date
2023-10-10 Alleged date of Defendant's knowledge based on European litigation filings
2024-03-20 Original Complaint Filing Date
2024-06-17 First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,427,443 - “LITHOGRAPHIC PRINTING PLATE PRECURSOR, METHOD OF PREPARING LITHOGRAPHIC PRINTING PLATE, AND LITHOGRAPHIC PRINTING METHOD,” Issued Oct. 1, 2019

The Invention Explained

  • Problem Addressed: In "on-press development" lithographic plates, where the plate is developed directly on the printing press, it has been difficult to visually inspect the image before printing begins (Compl. ¶18). Efforts to improve this inspectability, such as by using an acid color former in the image recording layer, led to a defect called "appearance failure," where unintended coloring occurs over time (Compl. ¶19). This is believed to be caused by components of the image layer infiltrating the anodized film on the aluminum support, causing parts of the aluminum to dissolve and react with the color former (Compl. ¶19). This process can also compromise scratch resistance, leading to stains (Compl. ¶17, 20).
  • The Patented Solution: The invention proposes a lithographic printing plate precursor with a specially designed anodized film on its aluminum support. This film contains micropores with specific dimensional characteristics—including a defined maximum internal diameter and a specific ratio between the average surface pore diameter and the internal maximum diameter—that are claimed to suppress the dissolution of the aluminum support, thereby preventing appearance failure and improving scratch resistance (’443 Patent, col. 2:1-12; Compl. ¶20).
  • Technical Importance: The invention aims to resolve critical quality and reliability issues in processless printing plates, a technology valued for its high speed and reduced environmental impact compared to conventional plate processing (Compl. ¶9, 18).

Key Claims at a Glance

  • The complaint asserts independent claim 3 (Compl. ¶41).
  • The essential elements of claim 3 are:
    • A lithographic printing plate precursor comprising an aluminum support and an image recording layer.
    • The aluminum support includes an anodized film on the surface adjacent to the image recording layer.
    • The anodized film has micropores extending from its surface.
    • The micropores include large-diameter pores with a maximum internal diameter between 0.01 µm and 0.30 µm.
    • The average surface diameter of the micropores is 90% or less than their maximum internal diameter.
    • The anodized film has a thickness between 550 nm and 2850 nm.
    • The image recording layer contains an acid color former.

U.S. Patent No. 10,525,696 - “LITHOGRAPHIC PRINTING PLATE PRECURSOR, LITHOGRAPHIC PRINTING PLATE MANUFACTURING METHOD, PRINTING METHOD AND ALUMINUM SUPPORT MANUFACTURING METHOD,” Issued Jan. 7, 2020

The Invention Explained

  • Problem Addressed: The graining of aluminum supports, a process intended to improve scumming resistance and press life, can introduce defects that cause "chipping and sharpening" of the printing plate (Compl. ¶25). This degradation is particularly detrimental to the "tiny dot press life," which refers to the plate's ability to accurately reproduce very fine details over a long print run (Compl. ¶24-25).
  • The Patented Solution: The invention specifies a particular surface and subsurface structure for the aluminum support to improve durability. The solution involves creating a surface with a specific density of pits of a certain depth, combined with an anodized film containing a two-part micropore structure: a "large-diameter portion" near the surface and a communicating "small-diameter portion" extending deeper into the film, with each portion having defined dimensions (’696 Patent, col. 2:20-36; Compl. ¶26).
  • Technical Importance: This technology seeks to enhance the longevity and precision of lithographic plates, enabling higher quality and more consistent printing of fine details over extended commercial print runs (Compl. ¶24, 26).

Key Claims at a Glance

  • The complaint asserts independent claim 14 (Compl. ¶66).
  • The essential elements of claim 14 are:
    • A lithographic printing plate precursor with an aluminum support and an image recording layer.
    • The aluminum support includes an aluminum plate and an anodized film.
    • The surface of the aluminum support has pits with a depth from centerline of at least 0.70 µm at a density of at least 3,000 pits/mm².
    • Each micropore in the anodized film has a large-diameter portion (10-1,000 nm deep) and a small-diameter portion (20-2,000 nm deep).
    • The average diameter of the large-diameter portion at the surface is 15 to 60 nm.
    • The average diameter of the small-diameter portion at the communication position is not more than 13 nm.

U.S. Patent No. 10,875,346 (“the ’346 Patent”) - “LITHOGRAPHIC PRINTING PLATE PRECURSOR, LITHOGRAPHIC PRINTING PLATE MANUFACTURING METHOD AND PRINTING METHOD,” Issued Dec. 29, 2020

  • Technology Synopsis: The patent addresses the technical challenge of balancing conflicting performance characteristics in lithographic plates, such as image visibility, press life, and resistance to scumming (Compl. ¶30). The invention claims to achieve an optimal balance of these properties through a specific configuration of the anodized film, including defined micropore structures and a specified surface lightness (L*) value (Compl. ¶31-32).
  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶91).
  • Accused Features: The infringement allegations target the physical structure of the accused products, including their aluminum support, anodized film, micropore dimensions (both large and small diameter portions), and the surface lightness value of the anodized film (Compl. ¶94-102).

U.S. Patent No. 11,294,279 (“the ’279 Patent”) - “LITHOGRAPHIC PRINTING PLATE PRECURSOR, AND METHOD FOR PRODUCING LITHOGRAPHIC PRINTING PLATE,” Issued April 5, 2022

  • Technology Synopsis: This patent discloses a method for preparing a lithographic printing plate using on-press development, which avoids separate chemical processing steps (Compl. ¶36). The invention focuses on a specific chemical composition for the image recording layer, claiming a combination of components including a particular infrared absorbent (defined by Formula 1) that achieves both excellent printing durability and color formability (Compl. ¶37-38).
  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶118).
  • Accused Features: The infringement allegations target both the method of using the accused products (imagewise exposure followed by on-press removal of unexposed portions) and the chemical composition of the image recording layer, particularly the alleged inclusion of an infrared absorbent matching the patent's Formula 1 (Compl. ¶120-135).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are processless printing plates marketed under the names “SONORA X” and “SONORA XTRA” (collectively, the “Accused Products”) (Compl. ¶10).

Functionality and Market Context

  • The Accused Products are described as "process free plates" designed for on-press development (Compl. ¶10, 43; Ex. 11). According to product documentation cited in the complaint, their use involves a first step where a thermal laser writes an image by cross-linking a polymer resin to create a hardened image area (Compl. ¶43; Ex. 12). Subsequent steps, performed on a printing press, involve engaging dampening and ink rollers, which physically remove the un-imaged coating from the plate (Compl. ¶44; Ex. 12). A visual in the complaint shows the transfer of this un-imaged coating from the plate to a blanket and then to a substrate (Compl. p. 16). The complaint alleges the products are built on an "electrochemically grained and anodised aluminium substrate" and are manufactured in the U.S. for the offset lithographic printing market (Compl. ¶44; Ex. 11, 13).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,427,443 Infringement Allegations

Claim Element (from Independent Claim 3) Alleged Infringing Functionality Complaint Citation Patent Citation
A lithographic printing plate precursor comprising: an aluminum support; and an image recording layer on the aluminum support... The Accused Products are lithographic printing plate precursors comprising an aluminum support and an image recording layer. ¶43-44 col. 7:55-56
...wherein the aluminum support includes an anodized film on a surface of the image recording layer side... The Accused Products' aluminum support includes an anodized film on the side of the image recording layer. ¶45 col. 8:40-44
...the anodized film has micropores extending in a depth direction from the surface of the anodized film on the image recording layer side... Pre-suit testing allegedly shows the anodized film of the Accused Products has micropores extending in a depth direction. ¶46 col. 8:44-49
...the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 um to 0.30 um... Pre-suit testing allegedly shows the micropores of the SONORA XTRA plate have large-diameter pores with a maximum internal diameter of about 0.033 µm. ¶47 col. 28:34-36
...an average pore diameter of the micropores in the surface of the anodized film is 90% or less of the maximum diameter of the micropores inside the anodized film... Pre-suit testing allegedly shows the average surface pore diameter of the SONORA XTRA plate is about 70% of the maximum internal diameter. ¶48 col. 28:37-40
...a thickness of the anodized film is in a range of 550 nm to 2850 nm... Pre-suit testing allegedly shows the anodized film of the SONORA XTRA plate is about 1332 nm thick. ¶49 col. 28:41-42
...the image recording layer contains an acid color former. Pre-suit testing allegedly shows the image recording layer contains an acid color former identified as LBC-51. ¶50 col. 17:5-17

U.S. Patent No. 10,525,696 Infringement Allegations

Claim Element (from Independent Claim 14) Alleged Infringing Functionality Complaint Citation Patent Citation
A lithographic printing plate precursor having an aluminum support and an image recording layer disposed above the aluminum support... The Accused Products are lithographic printing plate precursors with an aluminum support and an image recording layer. ¶68-69 col. 2:20-23
...wherein when measured over a 400 µm×400 µm region...pits with a depth from centerline of at least 0.70 µm are present at a density of at least 3,000 pits/mm²... Pre-suit testing allegedly shows the SONORA XTRA plate has pits with the required depth at a density of about 6,246 pits/mm². ¶72 col. 30:16-20
...wherein each of the micropores has a large-diameter portion which extends from the surface...to a depth of 10 to 1,000 nm and a small-diameter portion...extends to a depth of 20 to 2,000 nm... Pre-suit testing allegedly shows the SONORA XTRA plate micropores have a large-diameter portion extending to a depth of about 151 nm and a small-diameter portion extending to a depth of about 1164 nm. ¶73 col. 30:21-30
...wherein an average diameter of the large-diameter portion at the surface of the anodized film is 15 to 60 nm... Pre-suit testing allegedly shows the average diameter of the large-diameter portion at the surface is about 24 nm. ¶74 col. 30:31-33
...wherein an average diameter of the small-diameter portion at the communication position is not more than 13 nm. Pre-suit testing allegedly shows the average diameter of the small-diameter portion at the communication position is about 10 nm. ¶75 col. 30:34-36

Identified Points of Contention

  • Evidentiary Questions: The complaint's direct infringement allegations for the structural patents ('443, '696, and '346) rely almost entirely on "Pre-Suit Testing," the results of which are summarized but the methodologies and data are not provided (Compl. ¶39). A primary point of contention will be the factual accuracy of these tests. Key questions for the court will be whether the Accused Products' physical microstructures, as determined through discovery, actually meet the specific quantitative limitations recited in the claims.
  • Scope Questions: For the ’696 Patent, the analysis may turn on the definition of surface features. For example, what is the line between routine surface "graining" and the claimed "pits with a depth from centerline of at least 0.70 µm"? The methodology for measuring pit density and depth will be a critical issue.
  • Technical Questions: The complaint alleges that the Accused Products possess highly specific, multi-part micropore structures, such as the two-tiered large-and-small-diameter portions required by claim 14 of the ’696 Patent (Compl. ¶73). A core technical question will be whether the manufacturing process for the SONORA plates results in this specific claimed structure or a different, non-infringing one.

V. Key Claim Terms for Construction

For the ’443 Patent

  • The Term: "an average pore diameter of the micropores in the surface of the anodized film is 90% or less of the maximum diameter of the micropores inside the anodized film"
  • Context and Importance: This limitation defines a specific geometric relationship between the surface opening of a pore and its widest internal point. Infringement hinges on whether the Accused Products embody this precise ratio. Practitioners may focus on this term because it requires complex cross-sectional analysis (e.g., via scanning electron microscopy), and the definition of "maximum diameter inside" could be contentious if the pores are irregularly shaped.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself provides numerical boundaries. A party might argue that any measurement method that reasonably determines the "average" surface diameter and "maximum" internal diameter and finds the ratio to be ≤90% should suffice.
    • Evidence for a Narrower Interpretation: The specification describes specific anodization and pore-widening treatment steps (’443 Patent, col. 19-21). A party could argue that the term should be understood in the context of the pore shapes produced by these specific processes, potentially limiting the claim's scope to those particular structures.

For the ’696 Patent

  • The Term: "pits with a depth from centerline of at least 0.70 µm are present at a density of at least 3,000 pits/mm²"
  • Context and Importance: This term quantifies the required surface texture of the aluminum support. The entire infringement analysis for this element depends on the definitions of "pit" and "depth from centerline," as well as the methodology used to measure their density. Defendant may argue its product's surface roughness does not meet these quantitative thresholds.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue for the plain and ordinary meaning of "pit" as a surface depression, without limitation to a specific shape or formation process.
    • Evidence for a Narrower Interpretation: The claim itself specifies measurement "using a three-dimensional non-contact roughness tester" (’696 Patent, col. 30:16-19). The patent’s detailed description of surface roughening treatments, such as mechanical brush graining and electrochemical graining, provides context for the types of surface features the inventors contemplated, which could be used to argue for a narrower construction tied to those specific textures (’696 Patent, col. 18-20).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement based on Defendant’s affirmative acts of providing customers with guidance, user manuals, and "Best Practices" documents that allegedly instruct them on how to use the Accused Products in an infringing manner (Compl. ¶55-56, 80-81). Contributory infringement is alleged on the basis that the Accused Products are a material part of the inventions, are not staple articles of commerce, and are especially made for infringing use (Compl. ¶58, 83).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patents-in-suit prior to the lawsuit. The complaint cites several grounds for this knowledge, including European litigation filed against Defendant’s subsidiaries in October 2023 involving counterpart patents, and U.S. patent prosecution history dating back to at least March 2021 where Plaintiff's published applications were cited as prior art against Defendant’s own applications (Compl. ¶11-13). Continued sales after gaining this alleged knowledge are presented as the basis for willfulness (Compl. ¶64, 89, 116, 149).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of evidentiary proof: The infringement allegations for the patents covering physical structures rest on Plaintiff's "Pre-Suit Testing." The central factual question will be whether discovery and expert analysis confirm that the complex, quantitative micro-structural features of the accused SONORA plates—such as specific pit densities, micropore diameter ratios, and multi-part pore structures—fall within the claimed ranges.
  • A key legal question will be one of claim construction: The case will likely turn on the court’s interpretation of highly specific, quantitative limitations, such as "pits with a depth from centerline" (’696 Patent) and the ratio of "average pore diameter" to "maximum diameter inside the anodized film" (’443 Patent). The viability of the infringement claims will depend on whether the precise measurement methodologies and definitions adopted by the court capture the accused products' physical characteristics.
  • A third pivotal question will concern scienter: For indirect and willful infringement, the analysis will focus on what and when Defendant knew. A key issue for the court will be whether knowledge of European counterpart patents or of Plaintiff's published U.S. applications during patent prosecution constitutes sufficient notice of the specific, issued U.S. patents-in-suit to establish the intent required for inducement or the objective recklessness required for willfulness.