Aspex Eyewear, Inc. v. Altair Eyewear, Inc.

• Decision Date: 02 April 2007
• Docket Number: No. 02 Civ. 6195 SCR.,02 Civ. 6195 SCR.
• Citation: 485 F.Supp.2d 310
• Parties: ASPEX EYEWEAR, INC. and Contour Optik, Inc., Plaintiffs v. ALTAIR EYEWEAR, INC., Defendant
• Court: U.S. District Court — Southern District of New York

485 F.Supp.2d 310

ASPEX EYEWEAR, INC. and Contour Optik, Inc., Plaintiffs v. ALTAIR EYEWEAR, INC., Defendant

No. 02 Civ. 6195 SCR.

United States District Court, S.D. New York.

April 2, 2007.

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Brian G. Bodine, Kaustuv M. Das, Merchant & Gould, Seattle, WA and Edward J. Davis, Peter Karanjia, Davis Wright Tremaine LLP, New York City, for Defendant Altair Eyewear, Inc.

Jess M. Collen, Matthew C. Wagner, Jeffrey A. Lindenbaum, Collen IP, Town of Ossining, Westchester County, New York City, for Plaintiffs Aspex Eyewear, Inc. and Contour Optik, Inc.

MEMORANDUM DECISION AND ORDER

ROBINSON, District Judge.

I. Background

Aspex Eyewear, Inc. and Contour Optik, Inc. ("Aspex" or "Plaintiffs") are suing Altair Eyewear, Inc. ("Altair" or "Defendant") for infringing several patents for detachable sunglass lenses. The sunglass lenses are attached to prescription glasses via magnets at the bridges of the glasses and the sunglass.

Defendant has three different product lines that use magnets to, attach sunglass lenses to corrective eyewear: Diamontite Magnetics, Joseph Abboud, and Sunlites. While some of Defendant's Sunlite products contain a rim around the corrective lens portion of the glasses, none of Defendant's products contain a rim around the sunglass lenses. Instead, Defendant's lenses are set in what Defendant refers to as a "one-piece bridge" or a "three-piece mount." While Plaintiffs dispute this terminology, choosing, instead, to call all of the mounts "frames," this Court will use Defendant's terminology for the sake of clarity. The "three-piece mount" is comprised of lenses that are mounted, with pins, to a bridge and the earpieces. A "one-piece bridge" is simply the sunglass lenses mounted to the bridge with pins. In either the one-piece bridge or the three-piece mount, holes are drilled through the lenses and pins extending from the components of the eyewear are inserted through those holes to mount the components to the lenses.

This Court has written two other opinions in this case. In March 2005, this Court denied Defendant's motion to dismiss the distributor as Plaintiff for lack of standing, and denied Plaintiffs' motion for leave to add Altair's parent corporation as a defendant. See Aspex Eyewear, Inc. and Contour Optik, Inc. v. Altair Eyewear, Inc., 361 F.Supp.2d 210, 216, 217-18 (S.D.N.Y.2005). After holding a Markman claim construction hearing, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd 517 U.S. 370, 384-85, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), this Court decided the proper construction of the patent claims. Aspex Eyewear, Inc. and Contour Optik, Inc. v. Altair Eyewear, Inc., 386 F.Supp.2d 526, 534 (S.D.N.Y.2005). Familiarity with those previous opinions is assumed here.

This opinion addresses the parties' cross-motions for summary judgment. Plaintiffs seek summary judgment on the issue of infringement of their three patents; Defendant seeks summary judgment on the issue of noninfringement of the same patents. Additionally, Plaintiffs have submitted two separate motions to exclude the testimony of two of Defendant's experts, Allen Leck and Ogden Webster. Defendant relied on Leek's opinion in its motion for summary judgment on the issue of noninfringement, and accordingly, this Court thus addresses Plaintiffs' motion to exclude Leck here. Because Defendant does not rely on Webster's opinion in the instant motion, however, it is not necessary for this Court to specifically address Plaintiffs' motion with respect to Webster. This Court does address the admissibility of the deposition testimony and affidavits the parties ask the Court to consider as the opinions of persons of ordinary skill in the relevant art.

For the reasons explained below, this Court grants Defendant's motions for summary judgment on the issue of noninfringement of the three patents and denies Plaintiffs' motions for summary judgment on the issue of infringement.

II. Analysis

Courts use a two-step process to determine if a patent has been infringed. The court first interprets the claim to determine its scope, and meaning. See, e.g., Dolly, Inc. v. Spalding & Evenflo Companies, Inc., 16 F.3d 394, 397 (Fed.Cir.1994); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796, 17 U.S.P.Q.2d 1097, 1099 (Fed.Cir.1990). This Court has already interpreted the claims here.¹ Aspex Eyewear, Inc., 386 F.Supp.2d at 534.

In the second step to determine if a patent has been infringed, the court must decide if the accused device is within the scope of the properly construed claim. See, e.g., Dolly, Inc., 16 F.3d at 397; Becton Dickinson & Co., 922 F.2d at 796. To show infringement, the plaintiff must establish that the accused device includes every limitation of the claim or an equivalent of each limitation. See, e.g., Dolly, Inc., 16 F.3d at 397; Becton Dickinson & Co., 922 F.2d at 796.

a. Summary Judgment Standard

While the second step of patent infringement analysis is a question of fact, a court may grant summary judgment, on non-infringement if no reasonable jury could find that every limitation of all of the asserted claims of the patents-in-suit is found in the accused products. See Tech-Search, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371-72 (Fed.Cir.2002). The party opposing the summary judgment must show either that the movant has not established its entitlement to judgment on the undisputed facts or that material issues of fact require resolution by trial. Vivid Techs., Inc. v. American Science & Eng'g, Inc., 200 F.3d 795, 806-07 (Fed.Cir.1999): The plaintiff has the burden of proving that each and every element of, the asserted patent claims is found in the accused device, either literally or by an equivalent. Laitram Corp. v. Rexnord, Inc., 939 F.24 1533, 1535 (Fed.Cir.1991). A court must grant a motion for summary judgment "against a party who has failed to introduce evidence sufficient to establish the existence of an essential element of that party's case, on which the, party will bear the burden of proof at trial." Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed.Cir.2001).

In deciding whether a genuine issue of material fact exists, the court must believe the evidence of the nonmovant and draw all justifiable inferences in the non movant's favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). To defeat a motion for summary judgment, however the opposing party must offer more than "conclusory statements." Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1112, 56 USPQ2d 1225, 1240 (Fed. Cir.2000). "The mere recital of the Graver Tank mantra that the accused device performs the same function, in the same way, to achieve the same result,' without more, does not create a genuine issue of material fact as to whether an accused device infringes by equivalents." Id. at 1113 (quoting Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)). Thus, allegations that a defendant infringed a patent which are "entirely lacking in factual support" are insufficient to withstand a defendant's motion for summary judgment on non-infringement. Id. at 1112.

Here, the Court must apply three different tests to determine if Defendants have infringed Plaintiffs' patents. The first two tests are relevant for the '054 patent. First, a defendant can commit literal patent infringement if "the accused device or method performs an identical function to the one recited in the claim." IMS Tech. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir.), cert. dismissed 530 U.S. 1299, 121 S.Ct. 24, 147 L.Ed.2d 1047 (2000) (citations omitted). Second, a defendant can infringe a patent under the doctrine of equivalents, explained below. See id. The third analysis, often referred to as the means-plus-function (or structure-plus-function) test, is used to determine if the '811 and '896 patents were infringed under 35 U.S.C. § 112 ¶ 6. See id. at 1430.

b. Literal Infringement of '054 Patent

The accused device must "contain each limitation of the claim exactly" to literally infringe a patent. Litton Sys., Inc. v. Honeywell Inc., 140 F.3d 1449, 1454 (Fed.Cir.1998). Any deviation from the claim prevents the court from finding literal infringement. See id. Whether an accused device literally infringes a claim is a question of fact. See IMS Tech., 206 F.3d at 1429.

Defendant argues that, given the claim construction requirement that both primary and sunglasses frames contain rims, Defendant has not literally infringed Plaintiffs' patent. At oral argument, Plaintiffs conceded that in each of Defendant's devices, either the auxiliary or primary frame or both did not contain rims. As rims are a required element of each of the allegedly infringing devices, Defendant has not literally infringed Plaintiffs' '054 patent. Litton Sys., Inc., 140 F.3d at 1454.

c. Doctrine of Equivalents: '054 Patent

To infringe under the doctrine of equivalents, the differences between the patented device and the accused device must be "insubstantial." Oak Tech., Inc. v. Int'l Trade Comm'n, 248 F.3d 1316, 1331 (Fed.Cir.2001). Whether an accused device or method infringes a claim under the doctrine of equivalents is a question of fact. Seachange Int'l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1429 (Fed.Cir.2005). As "equivalence [must] be evaluated from the perspective of one of ordinary skill in the art." Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1357 (Fed. Cir.2004), this Court must first determine the admissibility of the parties' experts' testimony.

i. Admissibility of Expert Testimony

The Federal Circuit has stated that where an evidentiary ruling raises a procedural issue that is not unique to patent law, the law of the regional circuit applies. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1276 ...