Printguard, Inc. v. Anti-Marking Systems, Inc.

535 F.Supp.2d 189

PRINTGUARD, INC., Plaintiff, v. ANTI-MARKING SYSTEMS, INC., Defendant.

Civil Action No. 07-40256-FDS.

United States District Court, D. Massachusetts.

January 16, 2008.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Heather B. Repicky, Joseph F. Shea, Timothy D. Johnston, Nutter, McClennen & Fish, LLP, Boston, MA, for Plaintiff.

Andrew W. Zeve, John F. Luman, III, Bracewell & Giuliani LLP, Houston, TX, Benjamin M. Welch, Cheryl B. Pinarchick, Brown Rudnick Berlack Israels LLP, Boston, MA, for Defendant.

MEMORANDUM AND ORDER ON PRELIMINARY INJUNCTION

SAYLOR, District Judge.

This is an action for patent infringement. Plaintiff PrintGuard, Inch, alleges that defendant Anti-Marking Systems, Inc. ("AMSI"), infringed two patents owned by plaintiff: U.S. Patent No. 6,811,863 (the "'863' patent") and U.S. Patent, No. 7,270,873 (the '873 patent"). The patents, in general terms, cover a foam-backed anti-marking covering for printing, press transfer cylinders used in high-speed offset printing presses.

Plaintiff has moved for a preliminary injunction to prevent further sales of the accused products by the defendant. Defendant has opposed that motion, and in the alternative has moved for expedited discovery pending a hearing on the preliminary injunction. For the reasons set forth below, the Court will deny plaintiffs motion for preliminary injunction and deny as moot defendant's motion for expedited discovery.

I. Factual Background

A. Plaintiff's Invention

High-speed offset printing presses are' used to print a variety of high-quality printed materials, such as magazines, brochures, and catalogues. In these presses, paper travels over various cylinders or drums, some of which apply ink and some of which, carry inked paper from one printing station to another. These latter cylinders are referred to as "transfer" cylinders. The presses also have a final cylinder, known as a "delivery" cylinder, that delivers the printed material to a stack at the end of the process. Anti-marking sheets are applied to transfer and delivery cylinders to prevent marking or smearing of the freshly printed paper as it travels through the press.

PrintGuard manufactures sheets of polyester anti-marking film with tiny glass beads embedded in the print-facing surface. The majority of PrintGuard's business consists of manufacturing and selling transfer cylinder "jackets" specifically for use with the transfer cylinders of Heidelberg brand printing presses. These "jackets" consist of anti-marking sheets with means (such as metal strips or elastic loops) for affixing the sheet to a transfer cylinder. PrintGuard jackets have a glass bead film; an orange, ink-repellent coating on the glass beads; and a microcellular backing made of foam. The foam backing fills in the low areas or voids due to wear or damage of the cylinder and likewise compresses at any high points on the transfer cylinder. According to PrintGuard, historically press operators would "pack" sheets of paper between the jacket and the transfer cylinder to get a more uniform fit, but the foam-backed jackets eliminate the need for such packing.

According to PrintGuard, the foam-backed jacket is its most popular and highest-margin product. It has apparently accounted for approximately 60-80% of PrintGuard's annual revenue in each of the past three years. PrintGuard sells the most commonly-used version of its jacket (for a Heidelberg model SM74 press) directly to printers for $264 and to dealers at a reduced price.

B. The '863 and '873 Patents

The United States Patent and Trademark Office ("PTO") issued the '863 patent for "Anti-Marking Coverings for Printing Presses" on November 2, 2004. This patent claims a "transfer element" comprised of a transfer cylinder and a "jacket" with two layers: (1) an outer textured surface layer and (2) an inner microcellular layer. ('863 patent at 2:66-67; 10:26-33; Figs. 2A-2B.)

"The outer layer is a durable textured surface [] that provides a raised pattern that supports the wet ink side of the sheet being printed, and prevents the marking or smearing of the wet ink on the sheet during transfer." (Id. at 10:14-17.) In a preferred embodiment of the invention, the textured surface can be created by, among other things, embedding glass beads in the outer surface layer. (Id. at 3:31-33: 10:62-65; Fig. 2B.) The inner microcellular layer makes it easier to apply the jacket uniformly to a transfer cylinder so as to avoid creating ridges, bubbles, or creases in the anti-marking material, which can cause marks. (Id. at 12:1-14; Fig. 4.) Foam is the preferred microcellular layer. (Id. at 6:66-7:5.) Claim 1 of the '863 patent (the only independent claim) provides:

1. A transfer element for to [sic] uniformly support a freshly printed sheet material as the freshly printed sheet material is conveyed from a first print station to a next station without marking, the transfer element comprising:

a transfer cylinder having an outer face for transporting the freshly printed sheet material;

an inner flexible microcellular material that is resilient to compressive forces provided on the outer face of the transfer cylinder; and

an outer flexible substrate layer provided on the flexible microcellular material and having a textured surface protruding from a first side in a direction away from the flexible microcellular material for supporting the freshly printed sheet material.

(Id. at 14:20-33.)

The '873 patent was issued by the PTO on September 18, 2007; according to PrintGuard, it is "a continuation of the application that matured into the '863 patent." The '873 patent differs from the '863 patent primarily in that claim 1 more specifically claims the "transfer cylinder" component of the claimed "transfer element" by requiring that the radius of the transfer cylinder be uniform. ('873 patent at 14:24-28.)

C. The Accused Product

AMSI sells anti-marking materials under the Pearl-Tex brand.¹ Pearl-Tex anti-marking film, Type AF-21, has a glass bead surface with a green, ink-resistant coating. AMSI manufactures and sells transfer cylinder jackets with this film exclusively for use on Heidelberg presses. PrintGuard contends that since at least October 27, 2006, AMSI has sold in the United States infringing foam-backed transfer cylinder jackets specifically for use on a Heidelberg model SM74 press (the "Accused Product"). The Accused Product has allegedly been sold through at least one dealer as "Pearl-Tex Loop Jackets With Foam Backing" for, $210, or $54 less than the price for PrintGuard foam-backed jackets. PrintGuard contends that the Accused Product is nearly identical to its foam-backed jackets, except that the Accused Product has a green surface color and is of allegedly inferior quality. It contends that, just like a PrintGuard foam-backed jacket, the Accused Product: (1) is specifically sized and configured for use on the transfer cylinders of a Heidelberg press; (2) has a foam backing that appears to be identical to the foam backing used on PrintGuard's jackets; and (3) has a flexible plastic substrate layer with an outer textured surface comprised of Pearl-Tex glass bead anti-marking film (Type AF-21), designed to support the freshly printed sheet material.

D. The '404 Patent

On February 18, 1992, Shigeki Matsukawa and his former business partner, Ed MacConnell, obtained U.S. Patent No. 5,088,404 (the "'404 patent") for an offset' printing press delivery apparatus that reduces the marring of wet ink through the use of cylinders covered with a foam layer and glass bead film. (See '404 patent at 5:47-6:15; 8:1-17; 10:21-26, 44-52.) The actual claim language does not specify any particular type of foam to be used as a backing for the glass bead film. One of the preferred embodiments described in the patent calls for reticulated foam. (Id. at 5:44-46.)² There are also references throughout the patent disclosing simply "foam," without specifying reticulated foam or any other particular type. 1 of the patent claims "a delivery apparatus" that grips a sheet as the sheet "exits from said inking means." (Id. at 10:1, 5.) One preferred embodiment of the delivery apparatus includes a leading edge that is fixed in a radially inward position with a wall that tapers from the leading edge to the central portion of the wall to shorten the sheet path around the shaft. (Id. at 8:54-58.) The patent also discloses, and claims, a delivery apparatus with a cylinder that has a leading edge wall`that can be pivoted into various positions, including into a position that apparently allows the cylinder to have a uniform radius. (Id. at 5:20-30; 10:27-34; Fig. 1.) "Inking means" are described as any area containing a blanket cylinder that applies ink to one side of a sheet of paper and an impression cylinder that provides a hard surface for the blanket cylinder to press the sheet against. (Id. at 2:59-66.) Each inking means applies one color of ink to one side of a sheet. (Id. at 2:66-67.) For multiple color printing, the sheets must go through plural inking means. (Id. at 2:66-3:1.)

II. Procedural Background

On September 28, 2007, PrintGuard filed a complaint against Sivex Corporation, AMSI, and Shigeki Matsukawa alleging that defendants' conduct (1) infringed the '863 patent; (2) infringed the '873 patent; and (3) constituted unfair competition in violation of Massachusetts law.³

On October 26, 2007, plaintiff moved for a preliminary injunction. Plaintiff requested that the Court enjoin defendants from further infringing the '863 and '873 patents, directly or indirectly, and that defendants be enjoined from supplying the products that plaintiff contends infringe its patents.

Defendants Sivex, and AMSI opposed the motion on November 13, 2007, and requested in the alternative that the Court order expedited discovery. Defendants Sivex and AMSI answered the complaint on November 19; defendant Shigeki Matsukawa filed a motion to dismiss the...