The opinion of the court was delivered by: Richard W. Roberts United States District Judge
Plaintiff X-Rite, Inc. filed this action seeking a declaratory judgment that its dental vision system does not infringe United States Patent No. 5,177,694 ("'694 patent"), and that the '694 patent is invalid. Accudent Pty Ltd. ("Accudent"), owner of the '694 patent, filed a counterclaim alleging that XRite's dental vision system infringes the '694 patent. A Memorandum Opinion on Claim Construction and Order ("Claim Construction Order") was issued in accordance with Markman v. Westview Instruments Inc., 517 U.S. 370 (1996), construing the disputed claim language. Accudent now moves for summary judgment on the issue of validity of the '694 patent, and for summary judgment of literal infringement and infringement under the doctrine of equivalents. X-Rite has moved for summary judgment of non-infringement and to strike a portion Accudent's reply in support of its motion for summary judgment of patent infringement. Because X-Rite's accused device does not contain a "reference set of colors," not each and every limitation of the '694 patent is literally present in X-Rite's accused device, and X-Rite's accused device cannot literally infringe the '694 patent. Because the single-color beige reference strip of XRite's accused dental vision system cannot be used to perform a central function of the '694 patent, infringement under the doctrine of equivalents is precluded as a matter of law. XRite's motion for summary judgment of non-infringement will be granted, and Accudent's motion for summary judgment of infringement will be denied. Because X-Rite will not dispute the '694 patent's validity if its motion for summary judgment of non-infringement is granted, Accudent's motion for a declaration that the '694 patent is valid will be denied as moot. X-Rite's motion to strike will be denied.
Accudent is a company existing under the laws of Australia and is the owner of the '694 patent. The '694 patent claims a method and apparatus for computerized color matching that seeks to solve the problem of tooth-color mismatching faced by dentists and dental technicians when preparing dental caps, crowns or bridge work. See '694 patent, col. 1:12-15. Color mismatching occurs, among other reasons, because "the dentist and the technician are most likely to have different colour perceptions of the colours under a standard reference light, let alone under different lights" and "some of the standard shades are very similar and therefore difficult to separate by eye." Id. at col. 1:19-39. Prior to the '694 patent, color matching of a dental patient's tooth with the dental implant was "subjective and the results very much dependent on the skills of the person doing the colour matching." Id. at col. 1:16-18. However, in contrast to the prior art, the computerized color matching system of the '694 patent accomplishes color matching by first photographing the tooth or dental piece adjacent to a reference set of colors. Id. at col. 2:7-10. The photographed reference set of colors is then analyzed and compared with an absolute reference set of colors, and a compensation factor is calculated by a computer and applied to the colors captured on the tooth to produce a corrected picture of the tooth. Id. at col. 2:11-23. This corrected picture, then, makes it more likely that an accurate color match will be made between the tooth and any new dental work, notwithstanding different illuminations when the picture of the tooth is taken and the color match actually is performed.
Specifically, claim 1 of the '694 patent claims:
1. A method of computerized colour matching of a first article with one or more other articles which the first article may be, associated, the method including the steps of: placing a strip displaying a reference set of colours adjacent the associated articles; taking a photograph of the associated articles and the reference set of colours; analyzing the colour data from the photograph; and generating a colour map and/or computer enhanced photograph, of the associated articles, using a computer, the colour map and/or enhanced photograph identifying the colour(s) of the associated articles relative to an absolute set of colours.
'694 patent, col. 6:19-32. Claim 5 of the '694 patent claims:
5. An apparatus for effecting the computerized colour matching of a first article against one or more articles with which the first article may be associated, the apparatus including:
means to support a strip displaying a reference set of colours adjacent the associated articles;
reference light means to illuminate the associated articles and the reference set of colours;
still video camera means to photograph the associated articles and the reference set of colours in machine readable form;
computer means to analyze the reference set of colours against an absolute set of colours, to calculate a compensation factor to compensate for the difference between the reference set and absolute set of colours and to produce a corrected picture where the colours of the associated articles have been corrected by the compensation factor; and
output means to generate a colour map and/or enhanced photograph identifying the colour(s) of the associated articles relative to the absolute set of colours.
Generally, then, the patented method proceeds by (1) comparing the values of a reference set of colors with those of the absolute set of colors; (2) calculating a compensation factor that takes into account differences in illumination; (3) applying that compensation factor to the values for the color (or colors) of the article that is to be color-matched; and (4) determining the matching color (or colors) from the absolute set of colors for the article and producing a color-coded ...