existing need, illuminate the technological and commercial environment of the inventor, and aid in understanding the state of the art at the time the invention was made." Id. In this case, Al-Site convincingly demonstrated at trial that these secondary, objective considerations weigh in favor of non-obviousness.
First, it is clear to this Court that a portion of Al-Site's success in the marketplace is attributable to the '345 patent. Tr. 151 (testimony of Morton Nyman, Al-Site's President); see also Tr. 336-37 (Chovanes concedes on cross-examination that some of Al-Site's commercial success derives from the patented hanger card). Commercial success evidence is filed under seal. Tr. 151-53. Notwithstanding that Opti-Ray seeks to attribute the growth in the reading glasses market to the increasing number of Americans who are ages forty and older and require glasses for magnification of text and to the fact that all fifty states now allow over-the-counter sales of reading glasses, Tr. 162-66; DX82, DX83, DX85, DX86, DX87, DX88 (newspaper clippings), "it is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors." Continental Can, 948 F.2d at 1273. Accordingly, the commercial success evidence supports the conclusion that the '345 patent was not obvious in light of the prior art.
Furthermore, Morton Nyman testified that the non-prescription reading glasses market was plagued for ten to fifteen years with the problem of developing a display method which would enable retailers to sell multiple pairs of reading lasses without replenishing stock. Tr. 142-46 (testimony of Morton Nyman); Tr. 338 (testimony of Eugene Chovanes on cross-examination); Hallerman Deposition at 101-04 (Al-Site's patented hanger card was "a revolutionary new concept" in the reading glasses industry). The '345 patent solved this long-standing problem in the industry. Tr. 147-50. Opti-Ray attempted to challenge both the commercial success of the '345 patent and whether it solved the problems endemic to the reading glasses market by noting that Walgreens, a major drugstore chain, decided to discontinue carrying Al-Site's Magnivision line and chose to sell a competitor's product instead. Tr. 342-43 (testimony of Eugene Chovanes). However, this Court finds completely credible Morton Nyman's explanation that Walgreens decided to stop purchasing reading glasses from Al-Site because the competitor's product was cheaper. Tr. 348-49.
This Court also finds that the patented hanger card was not obvious in light of the prior art because Opti-Ray's design staff copied the version depicted in Al-Site's earlier '532 patent. At trial, Jimmy Vianu, Vice President of Manufacturing for Opti-Ray, was called as an adverse witness by Al-Site. Vianu conceded that he possessed copies of Al-Site's patented hanger card while designing Opti-Ray's version. His testimony was contradictory and flawed. He initially testified that he did not design Opti-Ray's hanger card, but merely designed the plastic injection molds to manufacture that hanger card. Tr. 176. He then admitted to having used Al-Site's hanger card as a reference in designing the Opti-Ray hanger card. Tr. 176-78; see PX25 (a group of hanger cards and labels which Vianu produced in response to a subpoena in this action). This Court is similarly unpersuaded by the testimony of Paul Peckman, a Senior Vice President of Opti-Ray, who testified that he saw a few samples of Al-Site hanger cards -- "less than five" -- at Opti-Ray's corporate headquarters, Tr. 236, and could not recall whether he personally purchased any samples of Al-Site's patented hanger card before Opti-Ray began designing its hanger card. Tr. 236.
In sum, upon considering the evidence of the subjective and objective criteria to be used in ascertaining whether a patented invention was obvious in light of the prior art, this Court is driven to conclude that the '345 patent is valid.
Opti-Ray argues that the '345 patent is invalid for indefiniteness under 35 U.S.C. § 112 because the specification in the '345 patent provides that the means for securing is wrapped loosely around the nose bridge in order to suspend the pair of eyeglasses from a cantilever in a horizontal orientation. This argument is rejected as frivolous. First, this Court has already determined that the means for securing element need not necessarily wrap around the nose bridge. It can be attached to any portion of the eyeglass frame which is specifically defined in claim 1 and dependent claim 2 as comprising two rims, a nose bridge and two eyeglass temples. Furthermore, one skilled in the art would easily recognize that the specification in the '345 patent merely seeks to disclose that, while the hanger card is made from a rigid, inflexible material, the means for securing is to be constructed in a way which allows it to be wrapped around the nose bridge. In fact, the specification later states that the rivet or other fastener is used to close the means for securing element. At that point, the hanger card extension can certainly be tightened in order to support the eyeglasses in a horizontal orientation. Because the language of the '345 patent is sufficiently definite as to enable a person skilled in the art to use the invention disclosed, the '345 patent is valid. See, e.g., Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858, 865-66 (Fed. Cir. 1993); In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 1533-34 (Fed. Cir. 1992) (disclosure in specification is aimed at one skilled in the art and the definiteness of that disclosure varies with the complexity or simplicity of the invention disclosed).
D. Inequitable conduct
Opti-Ray argues that the '345 patent is unenforceable because Al-Site allegedly defrauded the PTO to obtain the '532 patent which is the parent of the '345 patent. In support of this claim, Opti-Ray has designated portions of the transcripts of the depositions of Gordon Hallerman and Jerome Berliner into evidence relating to the inequitable conduct issue. See Tr. 344, 346. This Court need not address this argument once again as it has already determined that Al-Site was not guilty of inequitable conduct before the PTO in prosecuting the '532 and '345 patents. See Memorandum and Order of this Court, dated May 28, 1993, at 15-21. The findings of fact and conclusions of law set forth in that prior memorandum and order are adopted as if fully set forth in this opinion.
Based on the foregoing findings of fact and conclusions of law, this Court holds that the '345 patent is valid and enforceable and that Opti-Ray is liable for patent infringement. The parties shall contact the Court to schedule a trial addressed both to the issue of damages and whether Opti-Ray's infringement was willful.
Dated: Brooklyn, New York
August 31, 1993
I. Leo Glasser, U.S. D. J.