CVI/Beta Ventures, Inc. v. TURA LP, 91-CV-1710(SMG).

• Decision Date: 29 November 1995
• Docket Number: No. 91-CV-1710(SMG).,91-CV-1710(SMG).
• Parties: CVI/BETA VENTURES, INC., Plaintiff, v. TURA LP, Brodart Co. and Bracken Opticians, Defendants. MARCHON EYEWEAR, INC., Marcolin U.S.A., Inc., and Rothandberg, Inc., Plaintiffs, v. TURA LP, Brodart Co. and Arthur Brody, Defendants.
• Court: U.S. District Court — Eastern District of New York

905 F. Supp. 1171

CVI/BETA VENTURES, INC., Plaintiff, v. TURA LP, Brodart Co. and Bracken Opticians, Defendants.

MARCHON EYEWEAR, INC., Marcolin U.S.A., Inc., and Rothandberg, Inc., Plaintiffs, v. TURA LP, Brodart Co. and Arthur Brody, Defendants.

No. 91-CV-1710(SMG).

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

November 13, 1995.

As Amended November 29, 1995.

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James J. Maune, Brumbaugh, Graves, Donohue & Raymond, New York City, for Plaintiffs CVI/Beta Ventures, Inc.

Edgar H. Haug, Curtis, Morris & Safford, P.C., New York City, for Plaintiffs Marchon Eyewear, et al.

Steven B. Pokitilow, Stroock Stroock & Lavan, New York City, for Defendants Tura LP, et al.

MEMORANDUM AND ORDER

GOLD, United States Magistrate Judge.

INTRODUCTION

Plaintiffs CVI/Beta Ventures, Inc. ("CVI/Beta") and Marchon Eyewear, Inc., Marcolin U.S.A., Inc., and Rothandberg, Inc. (collectively referred to herein as "Marchon") bring this action, charging that defendants Tura LP ("Tura"), Brodart Co. ("Brodart") and Arthur Brody ("Brody") (collectively referred to herein as the "Tura defendants") infringed two patents: United States Patent 4,772,112 (the "'112 patent") and United States Patent 4,896,955 (the "'955 patent"). The '112 patent was issued on September 20, 1988. On January 30, 1990, the '955 patent was issued as a continuation-in-part of the '112 patent. The two patents in suit claim an eyeglass frame with components made from nickel-titanium based shape-memory alloys having highly elastic properties.

Plaintiff CVI/Beta is the assignee, and plaintiff Marchon the licensee, of the suit patents. Plaintiffs contend in this action that Tura sold eyeglass frames which infringe both the '112 and the '955 patents, and that defendants Brodart and Brody induced Tura's infringement. Defendants contend that the patents are invalid and were not infringed, and have in addition asserted counterclaims under the antitrust laws.

This case was tried to a jury beginning on November 30, 1994. On December 22, 1994, the jury returned a verdict finding that the suit patents were valid, that defendant Tura infringed the patents but did not do so willfully, and that defendants Brodart and Brody induced Tura's infringement. The jury awarded plaintiff Marchon $14,085,093 in compensatory damages, representing $2,944,024 in profits on lost sales, $9,641,069 in profits lost as a result of depressed prices, and $1,500,000 in attorney's fees. The jury awarded plaintiff CVI/Beta $3,319,000, comprised of $819,000 in lost royalties and $2,500,000 in attorney's fees.

Several matters are currently pending before the Court. Defendants have moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50 or, in the alternative, for a new trial pursuant to Federal Rule of Civil Procedure 59. In addition, defendant Brody seeks dismissal, asserting that venue is not properly asserted over him in this district. Finally, the parties dispute the provisions appropriately included in a final judgment and order.

DISCUSSION

I. Construction of the Claim Term "3% Elasticity"

Defendants first assert that they are entitled to judgment as a matter of law that the accused eyeglass frames, marketed under the name Turaflex, do not infringe the patents in suit because they do not meet the elasticity requirements of the patent claims. This aspect of defendants' motion hinges upon the meaning of the terms "3% elasticity" and "4% elasticity" as used in claims 1 and 5 of the suit patents.

A. Background of the Dispute

The term "3% elasticity" appears in claims 1 and 5 of the '955 patent and in claim 5 of the '112 patent. The term "4% elasticity" appears in claim 1 of the '112 patent. Claim 1 of the '955 patent describes

an eyeglass frame having at least a portion thereof fabricated from nickel-titanium based shape-memory alloy, said portion being in the work-hardened pseudo-elastic metallurgical state, said portion having been subjected to work-hardening and having a low effective elastic modulus giving a soft, springy feel, said portion having greater than 3% elasticity over a temperature range from -20°C to +40°C.

955:13:33 — 14:5 (emphasis added).¹ Claim 1 of the '112 patent is similar in all material respects, but refers to 4%, rather than 3%, elasticity. 112:12:14-22. Claim 5 as it appears in both the '112 and '955 patents describes

an eyeglass frame having at least a portion thereof fabricated from nickel-titanium based shape-memory alloy, ... and having a minimum of 3% heat-recoverable shape-memory, a yield strength greater than 30,000 psi and at least 3% elasticity.

112:12:33-41; 955:14:16-24 (emphasis added). The primary dispute between the parties concerns the meaning to be attributed to the terms "3% elasticity" and "4% elasticity," particularly in connection with the construction of Claim 1 as it appears in the suit patents. For purposes of this decision, the parties' dispute is discussed in the context of the construction to be given the term "3% elasticity."

Each party has advanced a different interpretation of the claim term "3% elasticity." Plaintiffs assert that "elasticity" describes "the ability or tendency of a given material to recover or `spring-back' to its original shape, partially or completely, after a deforming force is removed." Pl.Mem. at 9.² Defendants argue that the term elasticity describes the ability of a material to return completely and spontaneously to its precise original shape after a deforming force is released. Def.Mem. at 5.

As demonstrated by the undisputed evidence at trial, metallurgists use specific techniques for measuring the elasticity of metals. Simply put, the metal being tested for elasticity is pulled, and the pulling force, or stress, is then released. Measurements are made of the degree to which the metal is strained, or stretches when pulled, and the degree to which it recovers from that strain, or returns to its original shape, after the stress is released.

The parties agree that data developed by applying these measurement techniques are typically expressed in graphic form. These graphic depictions of elasticity are referred to as stress-strain curves. The stress to which the metal being tested is subjected, or the force with which it is pulled, is measured on the vertical axis of a stress-strain curve. The horizontal axis is used to plot the strain which the metal being tested exhibits at any given amount of force, or the degree to which it stretches when pulled and returns to its original shape when the pulling force is reduced or released. The strain is measured as a percentage of the tested item's original length. For example, a metal rod 100 centimeters long which stretches to 103 centimeters when pulled with 1000 pounds per square inch of force is said to exhibit 3% strain when subjected to a stress of 1000 pounds per square inch. Similarly, if the same rod, when pulled with a force of 1200 pounds per square inch stretched to 105 centimeters, the rod would be said to exhibit 5% strain when subjected to a stress of 1200 pounds per square inch. These percentages are calculated by dividing the change in the length of the rod (3 centimeters and 5 centimeters, respectively) by the original length of the rod, which in this example is 100 centimeters.

The difference in the definitions of elasticity advanced by the parties concerns the behavior exhibited when the stresses on the rod are released. Plaintiffs assert that the term 3% elasticity refers to the ability of a metal item to "spring back" or recover in an amount equal to 3% of its original length after being subjected to stress. For example, to exhibit 3% elasticity as interpreted by plaintiffs, a metal rod 100 centimeters in length, after being stretched to a length of 105 centimeters when stressed, must, when the stress is released, "spring back" by an amount equal to 3% of its original length, or 3 centimeters, to a length of 102 centimeters.

According to defendants, 3% elasticity requires that a metal item return precisely to its original shape after being strained by at least 3% of its original length. In other words, to exhibit 3% elasticity as interpreted by defendants, a rod 100 centimeters in length, after being stretched to a length of 103 centimeters when stressed, would be required to recover fully and return spontaneously to its original length of 100 centimeters when the stress was released. (The behavior of the rod upon the release of stress after having been pulled to 105 centimeters is irrelevant to defendants' interpretation.) In contrast, while plaintiffs' definition would encompass full recovery from a 3% strain as one example of 3% elasticity, plaintiffs contend that any "springing back" of at least 3%, whether or not the component returns to its original shape, is sufficient to meet this element of the patent claims.

Prior to trial, plaintiffs moved for summary judgment on infringement and asserted, among other things, that defendants' frames exhibited more than 3% elasticity over the sixty-degree temperature range required by claim 1 of the suit patents. By Memorandum and Order dated November 21, 1994, this Court denied plaintiffs' motion for summary judgment, and permitted the parties to proceed to trial and argue their competing contentions about the meaning of the disputed claim term to the jury. The verdict returned after trial indicates that the jury accepted plaintiffs' definition of the term.

After the trial of this case, the Federal Circuit issued its decision in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995), cert. granted, ___ U.S. ___, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995). The Court held in Markman that it was improper to allow a jury to decide the meaning of disputed claim terms. Although the Court in Markman acknowledged that some of its prior holdings indicated that "claim construction may have...