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 CourtSifton
Citation506 F.Supp.2d 137
PartiesROSCO, INC., Plaintiff, v. MIRROR LITE COMPANY, Defendant.
Decision Date06 August 2007
Docket NumberNo. CV-96-5658 (CPS).

Page 137

506 F.Supp.2d 137
ROSCO, INC., Plaintiff,
v.
MIRROR LITE COMPANY, Defendant.
No. CV-96-5658 (CPS).
United States District Court, E.D. New York.
August 6, 2007.

Page 138

COPYRIGHT MATERIAL OMITTED

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COPYRIGHT MATERIAL OMITTED

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Max Moskowitz, Ostrolenk, Faber, Gerb & Soffen, L.L.P., New York, NY, for Plaintiff.

John S. Artz, Artz & Artz, Southfield, MI, Thomas M. Furth, New York, NY, for Defendant.

MEMORANDUM OPINION AND ORDER

SIFTON, Senior District Judge.


In 1996, plaintiff, Rosco, Inc., commenced this action 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

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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. Now before this Court is (1) Rosco's Motion for "Summary Judgment of No Patent Infringement Relative to Oval Mirrors Sold Post-Trial"; and (2) Mirror Lite's Motion for Summary Judgment of Infringement as to all post-trial Hawk Eye and Mini Hawk Eye mirrors sold by Rosco1. In addition to the summary judgment motions, a forage of related motions have been filed and responded to, namely (3) Mirror Lite's Motion to Strike Rosco's Memorandum on Claim Construction Concerning Varying Radius of Curvature; (4) Mirror Lite's Motion to Strike the Declaration of Peter Sinclair Submitted by Rosco in Support of its Opposition to Mirror Lite's Motion for Summary Judgment; (5) Mirror Lite's Motion to Strike Rosco's New Evidence and Reliance on a Lomar Mirror; (6) Mirror Lite's Motion to Strike Rosco's Newly Offered CMM Tests and Accompanying Supporting Declaration of Professor Folan; and (7) Rosco's Motion to. Strike the Declaration of Dr. Howell2.

For the reasons set forth below, Rosco's Motion for Summary Judgment is denied, Mirror Lite's Motion for Summary Judgment is granted in part and denied in part. Mirror Lite's Motions to Strike Rosco's Memorandum on Claim Construction and Rosco's New Evidence and Reliance on a Lomar Mirror are denied as moot. Mirror Lite's Motion to Strike the Declaration of Peter Sinclair is denied. Mirror Lite's Motion to Strike Rosco's Newly Offered CMM Tests and Accompanying Supporting Declaration of Professor Folan is denied in part and granted in part. Rosco's Motion to Strike the Declaration of Dr. Howell is granted only with respect to paragraph 10.

BACKGROUND

Procedural History

The facts of this case have already been stated several times in the prior opinions in this case. Rosco v. Mirror Lite, 139 F.Supp.2d 287 (E.D.N.Y.2001); Rosco v. Mirror Lite, 304 F.3d 1373 (Fed.Cir.2002). It is unnecessary to repeat them fully again here. A procedural history is offered 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

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that Mirror Lite infringed its '357 patent. Mirror Lite filed 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 both 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; 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.

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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 Federal Circuit 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.

Recent Factual History

Mirror Lite then made a motion for a permanent injunction pursuant to 35 U.S.C. § 283 which I granted with the exception of ¶ 2(b). The injunction will be entered upon resolution of the remaining damages issues. Rosco then requested limitations on the scope of post-trial damages discovery and correction of factual finding # 16 of my August 26, 2005 opinion, that Rosco sold "in excess of 150,000 Hawk Eye mirrors." I precluded discovery as to inquiries concerning the period from December 31, 1996 to March 6, 2000 and to the extent it requests 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 is entitled to determine for itself whether some Hawk Eye and Mini Hawk Eye mirrors have a constant radius of curvature but that Mirror Lite was only permitted to take discovery of revenues and costs on mirrors that are prima facie infringing.

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

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20 practice notes
  • Bee v. Novartis Pharm. Corp., No. 12–CV–1421 (JFB)(WDW).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • May 9, 2014
    ...court should look at the totality of the witness' qualifications in making this assessment. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144–45 (E.D.N.Y.2007) (“A court must consider the ‘totality of a witness's background when evaluating the witness's qualifications to tes......
  • Rosco, Inc. v. Mirror Lite Co., No. CV-96-5658 (CPS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • June 17, 2009
    ...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 Rosco's '357 design patent relates to an oval, highl......
  • Bee v. Novartis Pharm. Corp., No. 12–CV–1421 JFBWDW.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • May 9, 2014
    ...court should look at the totality of the witness' qualifications in making this assessment. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144–45 (E.D.N.Y.2007) (“A court must consider the ‘totality of a witness's background when evaluating the witness's qualifications to tes......
  • Humphrey v. Diamant Boart, Inc., No. 06-CV-2771 (JFB)(AKT).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • February 13, 2008
    ...look at the totality of the witness' qualifications in making this assessment. See, e.g., Page 175 Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144-45 (E.D.N.Y.2007) ("A court must consider the `totality of a witness'[] background when evaluating the witness'[] qualifications to testi......
  • Request a trial to view additional results
20 cases
  • Bee v. Novartis Pharm. Corp., No. 12–CV–1421 (JFB)(WDW).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • May 9, 2014
    ...court should look at the totality of the witness' qualifications in making this assessment. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144–45 (E.D.N.Y.2007) (“A court must consider the ‘totality of a witness's background when evaluating the witness's qualifications to tes......
  • Rosco, Inc. v. Mirror Lite Co., No. CV-96-5658 (CPS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • June 17, 2009
    ...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 Rosco's '357 design patent relates to an oval, highl......
  • Bee v. Novartis Pharm. Corp., No. 12–CV–1421 JFBWDW.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • May 9, 2014
    ...court should look at the totality of the witness' qualifications in making this assessment. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144–45 (E.D.N.Y.2007) (“A court must consider the ‘totality of a witness's background when evaluating the witness's qualifications to tes......
  • Humphrey v. Diamant Boart, Inc., No. 06-CV-2771 (JFB)(AKT).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • February 13, 2008
    ...look at the totality of the witness' qualifications in making this assessment. See, e.g., Page 175 Rosco, Inc. v. Mirror Lite Co., 506 F.Supp.2d 137, 144-45 (E.D.N.Y.2007) ("A court must consider the `totality of a witness'[] background when evaluating the witness'[] qualifications to testi......
  • Request a trial to view additional results

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