Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.
ORDER denying 231 Motion for Attorney Fees; denying 236 Motion for Reconsideration ; granting 238 Motion to Alter Judgment. Signed by Hon. Michael A. Telesca on 5/16/2011. (BMB)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
TAILORED LIGHTING, INC.,
OSRAM SYLVANIA PRODUCTS, INC.,
Plaintiff Tailored Lighting, Inc. (“TLI”) brings this patent
infringement action against defendant Osram Sylvania Products,
Inc., (“Sylvania”) claiming that Sylvania has infringed United
States Patent No. 5,666,017, assigned to TLI, which discloses a
“Daylight Lamp,” which purports to produce a special spectral light
distribution which is substantially identical in uniformity to the
spectral light distribution of a desired daylight throughout the
entire visible light spectrum.
By Decision and Order dated May 14, 2010, I held that the ‘017
Patent is invalid for lack of enablement, and that even if the
patent were valid, TLI had failed to establish infringement of the
patent by Sylvania.
TLI now moves for reconsideration of my May
14, 2010 Decision and Order on grounds that the court overlooked
facts found in the record, and by doing so, improperly granted
summary judgment in favor of the defendant.
contends that I failed to consider the opinion of plaintiff’s
expert Dr. Mark Fairchild, who explained why the ‘017 Patent is
enabled, and overlooked data provided by TLI which establishes that
disclosed in the ‘017 Patent for creating a bulb coating that
produces the daylight characteristics disclosed in the ‘017 Patent.
Also before the Court are defendant’s motions for an award of
attorneys’ fees, and to alter or amend the judgment.
to defendant’s motion for attorneys’ fees, defendant contends that
it is entitled to an award of its fees in defending this action
because it is an exceptional case warranting such an award.
respect to the judgment issued by this court, Sylvania asks the
court to amend the judgment to reflect that all of the asserted
claims of the ‘017 patent (Claims 1, 2, 3, 4, 9 and 19) are invalid
for lack of enablement.
For the reasons set forth below, I deny plaintiff’s motion for
reconsideration, deny defendant’s motion for an award of fees, and
grant defendant’s motion to alter the judgment.
Plaintiff’s Motion for Reconsideration
Standard for Reconsideration
A motion for reconsideration pursuant to Federal Rule of Civil
Procedure 59(e) may be properly brought if it appears that the
court overlooked controlling decisions or factual matters which
might reasonably be expected to alter the court’s decision.
standard for granting [a motion for reconsideration] is strict, and
reconsideration will generally be denied unless the moving party
overlooked – matters, in other words, that might reasonably be
expected to alter the conclusion reached by the court.” Shrader v.
CSX Transportation, Inc., 70 F.3d 255, 257 (2d Cir. 1995).
motion for reconsideration, however, may not be used to relitigate
matters already considered by the court, and may not be used to
introduce new evidence that could have been brought to the court’s
attention during the original proceedings.
Films by Jove, Inc. v.
Berov, 250 F.Supp.2d 156, 175 (E.D.N.Y., 2003).
In my May 14, 2010 Decision and Order, I held that TLI had not
establish that Sylvania’s allegedly infringing bulbs read on the
formula disclosed in Claim 1 of the ‘017 Patent.1
Claim 1 of the ‘017 Patent discloses in part a bulb
“containing at least one coating . . . having a transmittance
level in substantial accordance with the formula T(l) = [D(l)[S*(l)x(1-N)]] / [S(l)x N] wherein T(l) is the transmission of said
envelope coating for said wavelength l from about 380 to about
780 nanometers, D(l) is the radiance of said wavelength for the
desired daylight, S(l) is the radiance of said element at said
wavelength at normal incidence to said lamp envelope, S*(l) is the
radiance of said element at said wavelength at non-normal
incidence to said lamp envelope, and N is the percentage of
visible spectrum radiant energy directed normally towards said
exterior surface of said lamp envelope. The formula was
discussed at length in may May 14, 2010 Decision and Order, and
familiarity with the formula and all other relevant facts is
held that because TLI was unable to produce the actual values for
the S*(l) or N variables of the accused Sylvania bulbs, TLI was
unable to establish that the Sylvania Bulbs practiced the formula
of Claim 1 of the ‘017 Patent.
arguing that it did in fact provide actual values for the variables
as measured through its analysis of the accused Sylvania Bulbs, and
that this court overlooked TLI’s evidence.
alleges that the evidence provided establishes that the Sylvania
bulbs infringe the ‘017 Patent.
Plaintiff contends that the values for the N and S* variables
were provided in TLI’s Response to Interrogatory Number 3.
Reconsideration at p. 3.
In my May 14, 2010 Decision and Order,
however, I specifically addressed this evidence, and explained why
the S* and N values disclosed in those responses fail to constitute
actual evidence of infringement.
Order at pp. 17-18.
See May 14, 2010 Decision and
As stated therein, I found that the S* and N
values were either assumed or calculated (based in part on an
assumption), and therefore could not establish infringement.
calculated values based in part on assumptions for actual, observed
and measured evidence establishing infringement.
TLI’s attempt to
reargue the merits of this evidence, which was already considered,
is inappropriate on a motion for reconsideration. Films by Jove,
250 F.Supp.2d at 175 (E.D.N.Y., 2003). Similarly, TLI’s contention
that this court misapplied the plain language of the ‘017 Patent is
not proper for reconsideration.
misapprehended the evidence submitted by Dr. Mark Fairchild, Ph.D.,
a scientist, and an expert in the field of color science, who
opined in his deposition testimony how a person skilled in the art
of coated-bulb making could
determine the values for the equation
set forth in the ‘017 patent, and upon doing so, could make a bulb
engaging in undue trial and error.
Plaintiff alleges that this
evidence establishes that the ‘017 Patent is enabled, or, at the
very least, creates a question of fact as to whether or not the
‘017 Patent is enabled.
As I stated in my May 14, 2010 Decision and Order, the
determination of whether or not a patent is enabled is a question
of law based on factual determinations. May 14, 2010 Decision and
Order at p. 21 (citing Boston Scientific Corp. v. Johnson & Johnson
Inc., 679 F.Supp.2d 539, 552 (D.Del., 2010).
In finding that, as
a matter of law, the ‘017 Patent is invalid, I relied on the
factual finding that the formula set forth in the patent for
producing a coating that would achieve the desired results could
not be followed (absent undue trial and error) because two of the
variables set forth in the equation could not be determined without
first creating a coating, analyzing the coating, and then, through
trial and error, creating additional coatings in an attempt to
approximate the formula.
Just as enablement is a question of law,
invention” is also a matter of law for the court to decide.
Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1369 (Fed. Cir.,
Dr. Fairchild’s testimony does not contradict this court’s
legal conclusion based on the factual findings made.
testimony confirms that a person of ordinary skill in the field of
coated-bulb making attempting to make a bulb by following the
teachings of the ‘017 Patent would be required to make a an initial
values, and assumptions.
This testimony confirms the court’s
finding that the ‘017 patent, at best, describes an iterative
And while an iterative process for making an invention
described in a patent will not render the patent un-enabled per se,
the instant patent lacks enablement because even in the subsequent
attempts to recreate the disclosed bulb, a person of ordinary skill
would not be able to determine whether or not the coating he or she
created conforms to the formula disclosed in the patent until after
the coating is made, the resulting bulb is tested, and calculations
based on assumptions, observations, and mathematical formulae are
In other words, a bulb maker can not follow any
“recipe” disclosed in the ‘017 Patent for making a bulb, but
instead must apply his or her own knowledge to make a coating, and
then determine whether or not the finished bulb contains all of the
“ingredients” disclosed in the patent.
It is the lack of ability
to apply the formula prospectively to make a coating that renders
the ‘017 patent invalid for lack of enablement.
That one can
create a bulb and then test it to see if it conforms to the
specified criteria does not render the bulb enabled.
Plaintiff, however, continues to characterize the formula
disclosed in Claim 1 of the ‘017 patent as superfluous, describing
distribution in conformance with that of the desired daylight
spectra necessarily has a coating with a transmissivity level
Memorandum of Law in Support of Motion for reconsideration at p. 4
(emphasis in the orginal).
As I stated in my previous decision,
however, a patent may be issued only for a “distinctive means” of
accomplishing a result, not for the result itself.
May 14, 2010
Decision and Order at p. 14 (citing Wheeling Stamping Co. V.
Standard Cap & Molding Co., 155 F.2d 6, 8 (4th Cir., 1946).
instant case, the distinctive means of accomplishing the result
characteristics throughout the entire visible spectrum) is the
creation of a coating conforming to the formula disclosed in
For the ‘017 Patent to be valid, the methodology for
creating the coating must be sufficiently explained within the
patent document itself so that a person skilled in the relevant art
can, without undue experimentation, achieve the same results as
described in the patent. Accepting plaintiff’s characterization of
the formula as a “tautology”, that is, “a needless or meaningless
repetition in close succession of an idea, statement, or word”
(Webster’s Third New International Dictionary, unabridged, p. 2344
(2002)), the ‘017 Patent is reduced to a description of a bulb
sufficient guidance for a person skilled in the art of bulb making
attempting to achieve the result disclosed in the ‘017 Patent.2
Plaintiff notes that the court has declined to identify,
the skills and abilities, and education level, of a person
skilled in the art of bulb making. Indeed this court has not
identified the hypothetical bulb maker because, as is now
conceded by the plaintiff, no bulb maker, regardless of his or
her skills, could replicate the coating disclosed in the ‘017
without trial and error and experimentation. The court finds
that the experimentation required of any bulb maker is undue, and
that the inability of a bulb maker of any skill level to follow
the formula of Claim 1 to achieve the result disclosed in the
Patent renders the patent invalid. Accordingly, identification
of the specific skills and abilities and education of a person
skilled in the art of bulb making is irrelevant.
Indeed, the formula is the only guidance given with respect to the
creation of the coating.
Rather than describing the coating as a
mixture of different elements or compounds applied in a certain
manner, the patentee chose to describe the coating in terms of its
light transmissivity, and specifically as having a transmission
value in a accordance with the formula disclosed.
Because I find
that a person of skill in bulb making can not follow that formula
prospectively, and instead must experiment in an attempt to find a
coating that corresponds to the disclosed formula, I continue to
find that the ‘017 is invalid for lack of enablement.
Motion for Fees
Defendant seeks attorneys fees and costs as a prevailing party
in this litigation, alleging that this is an “exceptional” case,
and as such, an award of fees and costs is warranted.
of this claim, Sylvania contends that TLI acted in bad faith in
bringing and prosecuting this action, because there was no credible
evidence to suggest that Sylvania had infringed the ‘017 Patent,
and because TLI refused to perform testing that would have revealed
that the accused bulbs do not in fact infringe the patent.
35 U.S.C. § 285 provides that “in exceptional cases” the Court
“may award reasonable attorney fees to the prevailing party.”
Whether a case is “exceptional” or not, for purposes of Section
285, must be established by clear and convincing evidence, and is
a matter of discretion to be determined by the trial judge.
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1380
(Fed. Cir., 2005).
Matters to be considered by the court in
determining whether or not the case is exceptional may include “the
closeness of the case, the tactics of counsel, the flagrant or good
faith character of the parties' conduct, and any other factors
allocation of the burdens of litigation.” Id., at 1380-81 (quoting
Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Intern.,
Inc., 389 F.3d 1370, 1379 (Fed. Cir., 2004).
See also, Q-Panel Co.
V. Newfield, 482 F.2d 210, 211 (holding that an award of fees is
the exception to the rule, and should be considered only when the
losing party has engaged in misconduct that constitutes fraud, or
where the losing party has been “unfair and reckless as to make it
unconscionable for the prevailing party to sustain the expense of
I find that defendant has failed to establish that TLI has
engaged in conduct so egregious that it would warrant a finding
that this is an exceptional case.
While the record reveals
numerous disputes between the parties during the course of this
litigation, nothing in the record demonstrates that TLI behaved in
a manner that would warrant the imposition of a fee award against
Accordingly, I deny defendant’s motion for an award of
III. Motion to Amend or Alter the Judgment
Defendant moves the court to amend the judgment to reflect
that all of the asserted claims of the ‘017 Patent (Claims 1, 2, 3,
4, 9 and 19) are invalid.
In my May 14, 2010 Decision and Order,
I held that Claim 1 of the ‘017, an independent claim, was invalid
for lack of enablement.
Defendant contends that because Claims 2,
3, 4, 9 and 19 of the ‘017 Patent are all dependent claims of Claim
1, these claims should be declared invalid by the court.
35 U.S.C. § 282 provides in relevant part that: “[e]ach claim
dependent form) shall be presumed valid independently of the
validity of other claims; dependent or multiple dependent claims
shall be presumed valid even though dependent upon an invalid
claim.” Accordingly, this Court’s finding that Claim 1 of the ‘017
is invalid does not, without further analysis or explanation,
render the asserted dependent claims invalid.
“This is so because
although a dependent claim includes all of the limitations of the
independent claim from which it depends, the dependent claim adds
limitations and might not be subject to the same asserted ground of
F.Supp.2d 1045, 1061 (N.D. Cal., 2008).
In the instant case, however, the additional limitations set
forth in each of the asserted dependent claims do not save the
claims from a finding of invalidity.
Each of the dependent claims
requires as a prerequisite the creation of a coating as set forth
in Claim 1, and any additional limitation or limitations found in
each of the dependent claims does not change or dispense with this
Because I have found that Claim 1 is invalid for lack
of enablement, I find that dependent Claims 2, 3, 4, 9 and 19 are
invalid for lack of enablement as well. See e.g. National Recovery
Technologies, Inc., v. Magnetic Separation Systems, Inc., 166 F.3d
1190, (Fed. Cir., 1999)(finding dependent claims invalid where the
dependent claims “stand or fall” with an independent claim found to
be invalid). Accordingly, I grant defendant’s motion to amend, and
declaring Claims 1, 2, 3, 4, 9 and 19 of the ‘017 Patent to be
For the reasons set forth above, plaintiff’s motion for
reconsideration is denied, defendant’s motion to amend the judgment
is granted, and the defendant’s motion for an award of attorneys
fees is denied.
ALL OF THE ABOVE IS SO ORDERED.
s/Michael A. Telesca
MICHAEL A. TELESCA
United States District Judge
Rochester, New York
May 16, 2011
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