United States District Court, D. Massachusetts
CRANE SECURITY TECHNOLOGIES, INC. and VISUAL PHYSICS, LLC, Plaintiffs,
ROLLING OPTICS AB, Defendant.
ORDER ON MOTIONS FOR SUMMARY JUDGMENT (DOC. NOS. 325
Sorokin United States District Judge.
Crane Security Technologies, Inc. and Visual Physics, LLC
have moved for summary judgment of infringement by various RO
products on the following 22 claims across five patents:
1. Claims 57, 58, 59, 76, 77, 78, 79 of Pat. No. 7, 468, 842
(the “'842 Patent);
2. Claims 62, 63, 73, 74, 76 of Pat. No. 8, 009, 360 (the
3. Claims 158 of Pat. No. 8, 111, 462 (the “'462
4. Claims 56, 95, 96 of Pat. No. 8, 120, 855 (the
“'855 Patent”); and
5. Claims 167, 175, 176, 177, 178, 181 of Pat. No. 8, 254,
030 (the “'030 Patent”).
Rolling Optics AB has cross-moved for summary judgment on the
1. The term “a given plane” in all claims of the
'360 and '030 Patents is indefinite, such that those
claims are invalid;
2. The term “substantially regular array spacing”
in claims 62 and 63 of the '360 Patent and claim 56 of
the '855 Patent is indefinite, such that those claims are
3. Claims 62 and 63 of the '360 Patent are invalid as
anticipated by the prior art;
4. The allegedly infringed claims of the '842 Patent are
invalid under the on-sale bar;
5. RO's products have not infringed claims 62 and 63 of
the '360 Patent (requiring “substantially regular
6. RO's products have not infringed claims 177, 178, and
181 of the '030 Patent, claims 74 and 76 of the '360
Patent, or claim 67 of the '855 Patent (requiring
7. RO has not actively induced infringement by third parties;
8. Crane failed to provide RO with actual notice of
infringement prior to December 6, 2012.
reasons below, the Court DENIES RO's motion for summary
judgment with respect to its invalidity claims; ENTERS
summary judgment in Crane's favor as to the validity of
claims requiring “a given plane” and
“substantially regular array spacing”; ALLOWS
Crane's motion for summary judgment of infringement;
DENIES RO's motion for summary judgment of
non-infringement; DENIES RO's motion for summary judgment
of no liability for active inducement of infringement; and
DENIES RO's motion for summary judgment limiting damages
accrual on the basis of any failure to provide actual notice
following facts are undisputed. Plaintiff Crane Security
Technologies, Inc. (“Crane Security”) is a New
Hampshire corporation with its principal place of business in
Nashua, New Hampshire. Crane Security manufactures
anti-counterfeiting technologies that attach to banknote
papers and security devices. One such technology, central in
this patent infringement action, is a micro-optics system
that projects synthetically magnified images.
Visual Physics, LLC (“Visual Physics”) is a
Georgia corporation with its principal place of business in
Alpharetta, Georgia. Visual Physics is both the wholly-owned
subsidiary of Crane Security since 2008, Doc. No. 1 ¶ 3,
and the exclusive owner of all five patents in suit, Doc. No.
34 at 2 n.2. Visual Physics licenses these patents to its
parent, Crane Security.
Rolling Optics (“RO”) is a Swedish nanotechnology
company with an office and production facility near
Stockholm, Sweden. It makes and sells micro-optic foils and
delivers them to third-parties who turn the foils into labels
for products. Doc. No. 34 at 2.
patents-in-suit are the '842 Patent, issued on December
23, 2008; the '360 Patent, issued on August 30, 2011; the
'462 Patent, issued on February 7, 2012; the '855
Patent, issued on February 21, 2012; and the '030 Patent,
issued on August 28, 2012. Each of these patents is either a
continuation-in-part or divisional from one patent, Pat. No.
7, 333, 268 (the “'268 Patent”), issued
February 19, 2008. Each patent covers a structure comprising
a planar array of image icons and a planar array of focusing
elements, separated by an optical spacer or substrate. Doc.
No. 155 at 2. The technology is described in detail in
Crane Sec. Techs., Inc. v. Rolling Optics AB, 166
F.Supp.3d 76, 79-80 (D. Mass. 2016) (the “Markman
February, 2010, Crane learned that “[a] Swedish company
called Rolling Optics” had approached Hewlett Packard
(“HP”) and “solicited  business
there.” Doc. No. 341-1 ¶ 90. The following month,
Crane obtained a copy of a Swedish magazine,
Inspire, that featured a sample of RO's
micro-optic system on the cover. Based on its analysis of the
sample, Crane concluded that RO's products infringed the
patents-in-suit. Id. ¶ 91.
April 26, 2010, Crane sent a letter to RO's then-CEO,
Fredrik Blomquist, to “alert [him] to a possible patent
infringement situation regarding the manufacture and sale of
your optical products in relation to our UNISON
patents.” Crane's letter pointed specifically to
RO's “film products […] that produce
three-dimensional images that appear to exist on a plane
other than the surface of the film.” Id.
¶ 89. On May 14, 2010, RO responded that the company was
“not involved in any activities in conflict with
[Crane's] patent rights[.]” Doc. No. 22-2 at 2.
from Crane and RO met in Stockholm on December 10, 2010. Doc.
No. 341-1 ¶ 92. At the meeting, Scott Palm, Crane's
representative, commented that “there may be conflicts
or overlap of intellectual property.” Id. At
the end of the meeting, the parties discussed possibilities
of collaboration. Three days after the meeting, Palm drafted
a response to an inquiry from HP stating: “We have seen
no evidence that [RO is] either producing or selling thin
film authentication products. As a courtesy, earlier this
year, when we became aware the [sic] Rolling Optics was
conducting research in micro-optics, we advised them of our
extensive intellectual property position in the field.”
Id. ¶ 94.
around November 2011, RO and Connecticut-based CMR Associates
LLC (“CMR”) began negotiating the production of
3D micro-optic foils for use in labels for UGG Australia
footwear products. Doc. No. 15 ¶ 2. Between November
2011 and May 2012, RO made and delivered the foils to CMR.
CMR took title in Sweden and arranged for the foils to be
delivered to a converter in New York, which produced labels
from the foils. Id. ¶ 4. CMR then shipped these
labels to China, where they were incorporated into UGG
products. Id. RO completed its sale of foils for the
UGG products on July 2, 2012. Doc. No. 341-1 ¶ 96.
in February 2012, RO began working with France-based
Société Jas Hennessy & Co., an affiliate of
Moët Hennessy, USA, Inc., to produce labels for use in
special edition Hennessy VSOP cognac bottles destined for the
United States. Doc. No. 29 ¶ 3; Doc. No. 13 ¶ 17.
RO completed this sale on July 13, 2012. Doc. No. 341-1
¶ 96. By May 2013, Moët Hennessy had distributed in
the United States 18, 000 bottles with labels containing
RO's films. Doc. No. 22-17 at 2.
December 3, 2012, Crane wrote a letter to RO's CEO and to
UGG. Doc. No. 22-1 at 2; Doc. No. 22 ¶ 3. The letter
noted that “the UNISON patent family has expanded and
continues to expand around the world” and enumerated
all five of the patents-in-suit. Doc. No. 22-1 at 2. The
letter also alleged RO as the source of the infringing labels
and reminded the recipients of their receipt of the prior
April 26, 2010 letter. Id. at 3.
to 2013, RO produced its foils with a technology that formed
icons as voids or recesses. Doc. No. 341-1 ¶ 25. In
2013, RO ceased using this technology and began instead to
form icons by printing the inverse of recesses onto a
substrate. Doc. No. 327-40 at 9-10.
and Visual Physics filed this complaint on June 9, 2014. The
Court held a hearing pursuant to Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996), on December 11,
2015 and issued the Markman Order, which construed five claim
terms, on February 9, 2016. See Crane Sec. Tech.,
166 F.Supp.3d 76. Fact discovery closed on May 9, 2016.
Expert discovery closed on November 11, 2016. The parties
filed motions for summary judgment in April and May of 2017.
The Court held a hearing on January 12, 2018, at the
conclusion of which each side submitted a booklet of
judgment is appropriate when “the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). “A ‘genuine' issue is one
that could be resolved in favor of either party, and a
‘material fact' is one that has the potential of
affecting the outcome of the case.” Calero-Cerezo
v. U.S. Dep't of Justice, 355 F.3d 6, 19 (1st Cir.
2004). The moving party bears the burden of establishing that
there is no genuine issue of material fact. See Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). “The
evidence of the non-movant is to be believed, and all
justifiable inferences are to be drawn in his favor.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242
Court addresses each of the parties' arguments below.
“A Given Plane”
moves for summary judgment of invalidity as to Crane's
patent claims that use the term “a given plane,
” which RO argues is indefinite. Claim 1 of
the '360 Patent is representative:
1. A synthetic magnification micro-optic system comprising:
(a) an array of image icons with a substantially regular
array spacing between a substantial number of image icons
within at least a portion of the image icon array; and
(b) an array of image icon focusing elements, the array of
image icon focusing elements being disposed a substantially
uniform distance from the array of image icons and forming at
least one synthetically magnified image of at least a portion
of the image icons,
wherein at least a portion of the image icons are arranged in
relation to at least a portion of the focusing elements in a
manner such that the at least one synthetically magnified
image appears to lie above a given plane,
wherein the system has a thickness of less than 50 microns,
or image icon focusing elements having an effective base
diameter of less than 50 microns, or both.
Doc. No. 327-16 at 50-51 (emphasis added). RO contends that
the claims' use of the term “a given plane”
as a point of reference provides “no objective
boundaries, ” such that “a person of ordinary
skill in the art cannot translate the definition ...