Leesona Corporation v. Varta Batteries, Inc.
| Citation | 522 F. Supp. 1304 |
| Decision Date | 08 September 1981 |
| Docket Number | No. 79 Civ. 5874(RJW).,79 Civ. 5874(RJW). |
| Parties | LEESONA CORPORATION, Plaintiff, v. VARTA BATTERIES, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
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Alfred W. Breiner, Arlington, Va., for plaintiff; Theodore A. Breiner, B. W. Norton, Arlington, Va., of counsel.
Weiser, Stapler & Spivak and Dechert, Price & Rhodes, Philadelphia, Pa., for defendant; Gerard J. Weiser, Alfred Stapler, Robert C. Heim, Philadelphia, Pa., of counsel.
This is a patent infringement action brought by plaintiff Leesona Corporation ("Leesona"), a Massachusetts corporation and the owner of the two patents in issue,1 against defendant Varta Batteries, Inc. ("Varta"), a New York corporation and the American seller of the accused device.2 The patents are directed to electrochemical cells using specific electrode structures. The Varta product on which plaintiff bases this infringement action is a 1.4-volt zinc-air battery used to power hearing aids. It is known as the "Premium Plus TYP 4600 1.4V" battery, and because of its size and shape (the diameter of a shirt button and about twice as thick) the Varta battery, and others like it, is often called a "button cell." The matter was tried to the Court sitting without a jury.
The Leesona patents in issue currently are under exclusive license to Gould Inc.,3 which in turn has a nonexclusive sublicense with Berec Group, Ltd., covering the same patents.4 The two patents on which this litigation centers were issued by the United States Patent Office to Glenn V. Elmore and Howard A. Tanner and to Anthony M. Moos. The Elmore and Tanner invention, No. 3,419,900 ("the '900 patent"), was patented on December 31, 1968. The '900 patent issued on an application filed December 22, 1966 (Serial No. 609,985), which was a continuation-in-part of an initial application filed March 4, 1960 (Serial No. 12,758), and a continuation application filed December 23, 1963 (Serial No. 332,812).5 The Moos invention, No. 3,276,909 ("the '909 patent"), was patented on October 4, 1966, pursuant to an application filed April 6, 1961 (Serial No. 101,057).6
In its answer, Varta, denying infringement, claims as affirmative defenses that, on the various grounds addressed further in this opinion, the pertinent claims of the '900 and '909 patents are invalid and unenforceable. Varta also asserts four counterclaims against Leesona. The first counterclaim seeks a declaratory judgment pursuant to 28 U.S.C. § 2201 that the patents are invalid.7 The third counterclaim alleges that Leesona engaged in certain acts of unfair competition in violation of section 43(a) of the Lanham Act, as amended, 15 U.S.C. § 1125(a).8 In its second9 and fourth10 counterclaims, Varta seeks relief for alleged violations of federal and state antitrust laws. The federal antitrust counterclaim alleges violations of sections 1 and 2 of the Sherman Act, as amended, 15 U.S.C. §§ 1-2, and sections 1, 2, 3, 4 and 16 of the Clayton Act, as amended, 15 U.S.C. §§ 12, 13, 14, 15 & 26. The state antitrust counterclaim asserts that plaintiff's actions constitute a violation of New York's antimonopoly provisions, N.Y.Gen.Bus.Law art. 22. In a fifth and final counterclaim, Varta alleges acts of unfair competition under New York state law.11
Prior to trial the Court severed and stayed defendant's antitrust counterclaims and stayed plaintiff's claim for damages, to be litigated after the issues of patent validity and infringement were determined. Because of their close relation to Varta's affirmative defenses, the patent-invalidity and federal and state unfair-competition counterclaims12 remained. At trial, at the close of defendant's case, Leesona moved to dismiss Varta's unfair-competition counterclaims. Conceding that it had not offered sufficient evidence in support of these counterclaims, defendant did not oppose the motion and Varta's unfair-competition counterclaims were dismissed.13 Thus, remaining for decision at this time are the questions of patent infringement and patent validity for the '900 and '909 patents.
For the reasons that follow, the Court finds that the relevant claims of both patents are valid, enforceable, and infringed by the Varta battery.
Shortly after filing the complaint, plaintiff moved for a preliminary injunction to enjoin defendant from selling its allegedly infringing product. At oral argument on this application, held on January 9, 1980, the Court determined that the record before it was not sufficient to enable a decision on the preliminary injunction motion and that an evidentiary hearing was essential. See Dopp v. Franklin National Bank, 461 F.2d 873, 879 (2d Cir. 1972) (). However, because the parties were not prepared to proceed directly to such a hearing, with the parties' consent the Court directed that pursuant to Rule 65(a)(2), Fed.R.Civ.P., the trial of the infringement action on the merits — which has now been held — be advanced and consolidated with the evidentiary hearing on the motion for a preliminary injunction.14 Accordingly, the decision addresses the question of final injunctive relief, and the motion for a preliminary injunction is denied as moot.15
At the same time it ordered that the preliminary injunction application be consolidated with the full trial on the merits, the Court further directed that a court expert be appointed pursuant to Rule 706, Fed.R.Evid., and requested the parties to submit nominations.16 The name of one individual, Elton J. Cairns, Ph.D., appeared on both parties' lists of nominees. Both sides agreed that Dr. Cairns, a professor of chemical engineering at the University of California, Berkeley, is an expert in the field of electrochemistry. There was no dispute that he is fully qualified to give expert testimony and render an opinion on the technical questions at issue in this litigation.
After learning that Dr. Cairns was acceptable to both parties as a court expert, the Court communicated with him by telephone. Before he would agree to serve, Dr. Cairns requested an opportunity to review some background materials on the case and the technical questions presented. The Court then mailed him a package of documents that included a summary of each side's position (prepared by Leesona and Varta independently and submitted to the Court), a copy of each of the patents in issue and copies of other relevant patents, and certain other analytical information and literature references. After reviewing these materials Dr. Cairns agreed to serve, and pursuant to Rule 706(a) the Court entered a consent order designating him as a court-appointed expert.17
Shortly thereafter, at the Court's request the parties prepared the technical questions they wished to have Dr. Cairns consider. The Court forwarded these questions to the expert.18 Dr. Cairns addressed the parties' questions in a preliminary report dated July 29, 1980,19 which he submitted to the Court and copies of which the Court in turn furnished to counsel. The court expert was then examined on oral deposition in two three-day sessions, conducted by counsel without direct supervision by the Court.20 Dr. Cairns did not prepare a final written report subsequent to the July 29th preliminary report, but rather gave his final views, as discussed in detail below, in his oral testimony at trial after he had heard the testimony of the experts called by Leesona and Varta.
The Court found Dr. Cairns' testimony to be of enormous assistance. Not only was the court expert's evaluation and testimony thorough and careful, but he also explained his views with a patience and clarity that any court trying a scientifically difficult patent case would find invaluable. The parties' expert witnesses, as a reading of this opinion should reveal, also were quite helpful. Indeed, without their testimony the value of Dr. Cairns' services, as well as the Court's understanding of the technical issues, would have been severely diminished. But, in an action such as this, a court expert serves not only as a witness on whose opinion the Court can rely for assistance, but also as both a second set of ears for the court and a teacher who, unaffected by his having been called as a witness by one side or the other, can explain the technical significance of the evidence presented.
Naturally a court will rely heavily on and give great weight to the testimony of its own expert, especially as able an expert as Dr. Cairns. Nevertheless, although a scientifically difficult patent case such as this is ideally suited to the appointment of a court expert pursuant to Rule 706, the appointment of such an expert does not remove from the trial court's shoulders the burden of understanding and becoming fully familiar with the technical questions in the case. The court expert serves to enhance the trial court's understanding, but it is the court, and not its expert, that decides the case. Thus, a court appointing a Rule 706 expert must be careful to remind counsel, particularly at the time of the court-appointed expert's deposition, that the case is not to be tried to the court expert. Fortunately for this Court, counsel here well understood the court expert's proper role, and their cooperation and assistance throughout this litigation enabled the Court to get the most benefit out of its decision to appoint Dr. Cairns.21
At trial, on its case-in-chief, plaintiff called two witnesses, Galen R. Frysinger, Ph.D., and Jose D. Giner, Ph.D. Both were qualified as expert witnesses in the field of electrochemistry.
Defendant called four live witnesses, two independent expert witnesses in the field of electrochemistry, and two...
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