Rosco, Inc. v. Mirror Lite Co., No. CV-96-5658 (CPS).

CourtUnited States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
Writing for the CourtCharles P. Sifton
Citation626 F.Supp.2d 319
PartiesROSCO, INC., Plaintiff, v. MIRROR LITE COMPANY, Defendant.
Decision Date17 June 2009
Docket NumberNo. CV-96-5658 (CPS).
626 F.Supp.2d 319
ROSCO, INC., Plaintiff,
v.
MIRROR LITE COMPANY, Defendant.
No. CV-96-5658 (CPS).
United States District Court, E.D. New York.
June 17, 2009.

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Irah H. Donner, Paul B. Keller, Rebecca Marie McCloskey, Douglas Quinton Hahn, Wilmer Cutler Pickering Hale & Door LLP, New York, NY, Max Moskowitz, Ostrolenk, Faber, Gerb & Soffen, L.L.P., New York, NY, Wayne L. Stoner, Wilmer Cutler Pickering Hale & Dorr, LLP, Boston, MA, for Plaintiff.

John A. Artz, Dickinson Wright, PLLC, John S. Artz, Bloomfield Hills, MI, Thomas M. Furth, Kudman Trachten Aloe, LLP, New York, NY, for Defendant.

MEMORANDUM OPINION AND ORDER

CHARLES P. SIFTON, Senior District Judge.


Plaintiff, Rosco, Inc., commenced this action, in 1996, against defendant, Mirror Lite Company, asserting claims of design patent infringement, trade dress infringement, false designation of origin, tortious interference with business relationships, misrepresentation in violation of 15 U.S.C. § 1125(a), and common law trademark infringement. In addition to damages, the complaint sought declaratory and injunctive relief pursuant to 29 U.S.C. §§ 2201 and 2202. Mirror Lite asserted a counterclaim of patent infringement in violation of 15 U.S.C. § 1125(a).

The matter was tried before the undersigned sitting without a jury between March 6 and March 10, 2000. After appeal to the Federal Circuit and remand for determination of infringement, I found that Rosco had infringed Mirror Lite's '984 patent. The parties then filed cross motions for summary judgment on the issue of whether Rosco's post trial mirrors continued to infringe Mirror Lite's patent. I granted Mirror Lite's motion for summary judgment in part, determining that two of Rosco's post trial mirrors continued to infringe, and denied Rosco's motion for summary judgement. I found there was a genuine issue of fact as to whether three other Rosco post trial mirrors continued to infringe Mirror Lite's patent. I then scheduled a trial date to hear damage issues.

What remains for determination are (1) the damages resulting from Rosco's infringement of Mirror Lite's '984 patent1; and (2) whether Rosco's mirrors # 1, # 2 and/or # 5 infringe the '984 patent.2

For the reasons set forth below, Mirror Lite is entitled to a reasonable royalty

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damages award in the amount of $397,843.25. Mirrors 1, 2, and 5 do not infringe on Mirror Lite's '984 patent, and Mirror Lite is not entitled to future damages or enhanced damages. Mirror Lite's motions to strike evidence relating to the bisecting test and template test, strike Folan's testimony on patent matters and introduce evidence from pre-2000 that allegedly relates to damages post-2000 are all denied. Mirror Lite's request for an amended proposed permanent injunction, with the exception of paragraph 2(b), is granted.

What follows sets forth the findings of fact and conclusions of law on which these determinations are based as required in Rule 52 of the Federal Rules of Civil Procedure. Fed.R.Civ.P. 52(a)(1).

BACKGROUND

Procedural History

The facts of this case have already been stated several times in the prior opinions in this case. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137 (E.D.N.Y. 2007). It is unnecessary to repeat them here. A procedural history is set forth below.

Rosco's '357 design patent relates to an oval, highly convex cross-view mirror with a black, flat metal backing. Rosco applied for this patent in April of 1992, and the patent issued in April of 1994. Mirror Lite's '984 utility patent relates to an oval cross-view mirror with a varying radius of curvature along the major axis of the convex ellipsoid mirror lens. Mirror Lite applied for this patent in September of 1992, and the patent issued in December of 1996.

In its complaint, Rosco sought a declaratory judgment that all claims of Mirror Lite's '984 patent were invalid and unenforceable due to Mirror Lite's inequitable conduct in procuring the patent and a finding that Mirror Lite infringed its '357 patent. Mirror Lite asserted a counterclaim alleging that Rosco infringed the '984 patent. At trial, Mirror Lite contended that Rosco's patent was invalid as functional and therefore not infringed.

After a bench trial, I held in relevant part that Rosco's '357 patent was invalid as functional and obvious pursuant to 35 U.S.C. § 103.3 I also found Mirror Lite's patent invalid under 35 U.S.C. § 102(e)4 and (g)5. Accordingly, I did not reach the merits of Mirror Lite's patent infringement claim.

The Federal Circuit reversed my conclusions that Rosco and Mirror Lite's patents were invalid. The Court remanded in relevant part for consideration of: 1) whether Mirror Lite had proven by clear and convincing evidence that Rosco's patent was invalid under 35 U.S.C. § 103; 2) whether Mirror Lite had infringed Rosco's patent; 3) whether Mirror Lite's patent was invalid under 35 U.S.C. §§ 102(a),6 (f), and 103;

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4) whether Mirror Lite's patent was unenforceable due to inequitable conduct; and 5) whether Rosco had infringed on Mirror Lite's patent.

On remand, Mirror Lite conceded that Rosco's patent was valid, while Rosco argued that Mirror Lite's '984 patent was invalid. Rosco contended that prior to the date of Mirror Lite's invention, Rosco had conceived, reduced to practice, and sold mirrors containing all the elements of claims 1, 2, 3, 6, 7, and 8 of the '984 patent, thus rendering it invalid under 35 U.S.C. § 102(a). Benjamin Englander, one of Rosco's owners, testified to that effect. Rosco introduced this mirror as Exhibit 110, called a "Hawk Eye Mirror" based on the '357 patent. Mirror Lite responded that: 1) Rosco failed to show that its previous mirror had decreasing radii of curvature along its major and minor axes and did not contain a reflective outer surface and a non-reflective inner surface; or in the alternative, 2) that Rosco could not show that it appreciated these aspects of its mirror; and 3) that Rosco could not prove that it had used this mirror publicly before the priority date of the '984 patent.

I found that Exhibit 110 did have these qualities, that Rosco had used the mirror publicly, and that Rosco had anticipated Mirror Lite's patent under 35 U.S.C. § 102. I also held that Mirror Lite's '984 patent was unenforceable due to Mirror Lite's inequitable conduct in procuring the patent. Specifically, I held that Mirror Lite had intended to mislead the examiner by failing to disclose prior art.

I also held that Rosco failed to prove its claim of infringement. In particular, Rosco sought to prove that four of Mirror Lite's mirrors infringed on Rosco's '357 patent, but Rosco had not proven that the four allegedly infringing mirrors appropriated the novelties that distinguished Rosco's '357 patent from prior art.

On appeal for the second time, the Federal Circuit again reversed this Court's conclusion that Exhibit 110 anticipated Mirror Lite's '984 patent. Specifically, the Circuit Court held that Rosco failed to prove by clear and convincing evidence that Exhibit 110 disclosed every claim limitation of the '984 patent because "[t]estimonial evidence of invalidity must be corroborated." Rosco, Inc. v. Mirror Lite, Co., 120 Fed.Appx. 832 (Fed.Cir.2005) (unpublished). Rosco presented the testimonial evidence of Benjamin Englander to the effect that he had designed Exhibit 110 and that it contained every element of claims 1, 2, 3, 6, 7, and 8 of Mirror Lite's '984 patent. Exhibit 110 itself, the Federal Circuit held, was insufficient to corroborate this testimony. Nor did the testimony of Rosco's expert witness, Harvey Manbeck, suffice because he based his testimony on Benjamin Englander's representations. With regard to my finding of inequitable conduct by Mirror Lite for failing to disclose prior art, the Federal Circuit held that there was insufficient evidence of Mirror Lite's intent to deceive. The Federal Circuit remanded "for further proceedings solely on the issue of infringement, the determination of which should be made on the existing trial record."

I thereafter determined that Mirror Lite had proven that Rosco infringed Mirror Lite's '984 patent. I also ordered limited additional discovery on two issues: (1) whether and to what extent Rosco continued to sell Hawk Eye and Mini Hawk Eye mirrors post-trial; and (2) post-trial revenue, costs, and profits Rosco has earned or incurred through sale or manufacture of Hawk Eye and Mini Hawk Eye mirrors.

Mirror Lite made a motion for a permanent injunction pursuant to 35 U.S.C. § 283 which I granted with the exception of ¶ 2(b), to be entered upon resolution of

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the remaining damages issues. I precluded discovery as to inquiries concerning the period from December 31, 1996 to March 6, 2000 and to the extent it sought information on "all mirrors" or on "mirrors" generally. I also corrected factual finding # 16 of my August 26, 2005 opinion, and adopted the pre-trial sale figure of 90,000 infringing mirrors. In addition, Rosco raised the new argument that some of its post-trial Hawk Eye and Mini Hawk Eye mirrors did not infringe because they have a constant radius of curvature, and thus that Mirror Lite should not be allowed discovery as to these non-infringing mirrors. I stated in the decision that Mirror Lite should be entitled to determine for itself whether some Hawk Eye and Mini Hawk Eye mirrors have a constant radius of curvature but that Mirror Lite would only be permitted to take discovery of revenues and costs on mirrors that are prima facie infringing.

Recent Procedural History

Rosco and Mirror Lite thereafter filed cross motions for summary judgment relating to the Hawk Eye and Mini Hawk Eye mirrors sold by Rosco post-trial. Rosco asserted that its post-trial Hawk Eye and Mini Hawk Eye mirrors have constant radii...

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6 practice notes
  • Pulse Med. Instruments, Inc. v. Drug Impairment Detection Servs., LLC., Civil Action No. DKC 07–1388.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • March 12, 2012
    ...DSU Medical Corp. concerned the calculation of lost profits. Id. at 1308. Similarly, DIDS's citation to Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319 (E.D.N.Y.2009), is of no avail because that case had to do with application of Georgia–Pacific.Id. at 332.6 As already discussed, Mr. Val......
  • In Re Application Of Mobitv Inc.Related To United States Of America, No. 09 Civ. 7071 (DLC)
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 11, 2010
    ...as money damages. Foster v. Am. Machine & Foundry Co., 492 F.2d 1317, 1320 (2d Cir.1974); see also Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319, 328 n. 9 (E.D.N.Y.2009).712 F.Supp.2d 243 ASCAP has been unable to identify any copyright case that has applied the Georgia-Pacific facto......
  • Sargent Mfg. Co. v. Cal-Royal Prods., Inc., CIVIL ACTION NO. 3:08-cv-408 (VLB)
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • February 24, 2012
    ...must produce evidence of 'a causal relation between the infringement and its loss of profits.' " Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319, 328 (E.D.N.Y. 2009) (quoting Bic Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993). Where the evidence p......
  • Sosa v. Cnty. of Fresno, CASE NO. 1:13-CV-2027 AWI GSA
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
    • February 3, 2014
    ...a party to the TAC, see Doc. No. 7 at 2:6-8, this Court's jurisdiction has not been invoked. See Housing, 472 F.2d at 272; Juliano, 626 F.Supp.2d at 319. As a result, the Court must remand this matter. 28 U.S.C. § 1447(c); Gibson v. Chrysler Corp., 261 F.3d 927, 932 (9th Cir. 2001); Bruns v......
  • Request a trial to view additional results
6 cases
  • Pulse Med. Instruments, Inc. v. Drug Impairment Detection Servs., LLC., Civil Action No. DKC 07–1388.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • March 12, 2012
    ...DSU Medical Corp. concerned the calculation of lost profits. Id. at 1308. Similarly, DIDS's citation to Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319 (E.D.N.Y.2009), is of no avail because that case had to do with application of Georgia–Pacific.Id. at 332.6 As already discussed, Mr. Val......
  • In Re Application Of Mobitv Inc.Related To United States Of America, No. 09 Civ. 7071 (DLC)
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 11, 2010
    ...as money damages. Foster v. Am. Machine & Foundry Co., 492 F.2d 1317, 1320 (2d Cir.1974); see also Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319, 328 n. 9 (E.D.N.Y.2009).712 F.Supp.2d 243 ASCAP has been unable to identify any copyright case that has applied the Georgia-Pacific factors, ......
  • Sargent Mfg. Co. v. Cal-Royal Prods., Inc., CIVIL ACTION NO. 3:08-cv-408 (VLB)
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • February 24, 2012
    ...must produce evidence of 'a causal relation between the infringement and its loss of profits.' " Rosco, Inc. v. Mirror Lite Co., 626 F.Supp.2d 319, 328 (E.D.N.Y. 2009) (quoting Bic Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993). Where the evidence presen......
  • Sosa v. Cnty. of Fresno, CASE NO. 1:13-CV-2027 AWI GSA
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
    • February 3, 2014
    ...a party to the TAC, see Doc. No. 7 at 2:6-8, this Court's jurisdiction has not been invoked. See Housing, 472 F.2d at 272; Juliano, 626 F.Supp.2d at 319. As a result, the Court must remand this matter. 28 U.S.C. § 1447(c); Gibson v. Chrysler Corp., 261 F.3d 927, 932 (9th Cir. 2001); Bruns v......
  • Request a trial to view additional results

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