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CVI/BETA VENTURES v. TURA LP

November 13, 1995

CVI/BETA VENTURES, INC., Plaintiff, against TURA LP, BRODART CO. and BRACKEN OPTICIANS, Defendants. MARCHON EYEWEAR, INC., MARCOLIN U.S.A., INC., and ROTHANDBERG, INC., Plaintiffs, -against- TURA LP, BRODART CO. and ARTHUR BRODY, Defendants.


The opinion of the court was delivered by: GOLD

 GOLD, S., U.S.M.J.:

 INTRODUCTION

 Plaintiffs CVI/Beta Ventures, Inc. ("CVI/Beta") and Marchon Eyewear, Inc., Marcolin U.S.A., Inc., and Rothandberg, Inc. (collectively referred to herein as "Marchon") bring this action, charging that defendants Tura LP ("Tura"), Brodart Co. ("Brodart") and Arthur Brody ("Brody") (collectively referred to herein as the "Tura defendants") infringed two patents: United States Patent 4,772,112 (the "'112 patent") and United States Patent 4,896,955 (the "'955 patent"). The '112 patent was issued on September 20, 1988. On January 30, 1990, the '955 patent was issued as a continuation-in-part of the '112 patent. The two patents in suit claim an eyeglass frame with components made from nickel-titanium based shape-memory alloys having highly elastic properties.

 Plaintiff CVI/Beta is the assignee, and plaintiff Marchon the licensee, of the suit patents. Plaintiffs contend in this action that Tura sold eyeglass frames which infringe both the '112 and the '955 patents, and that defendants Brodart and Brody induced Tura's infringement. Defendants contend that the patents are invalid and were not infringed, and have in addition asserted counterclaims under the antitrust laws.

 This case was tried to a jury beginning on November 30, 1994. On December 22, 1994, the jury returned a verdict finding that the suit patents were valid, that defendant Tura infringed the patents but did not do so willfully, and that defendants Brodart and Brody induced Tura's infringement. The jury awarded plaintiff Marchon $ 14,085,093 in compensatory damages, representing $ 2,944,024 in profits on lost sales, $ 9,641,069 in profits lost as a result of depressed prices, and $ 1,500,000 in attorney's fees. The jury awarded plaintiff CVI/Beta $ 3,319,000, comprised of $ 819,000 in lost royalties and $ 2,500,000 in attorney's fees.

 Several matters are currently pending before the Court. Defendants have moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50 or, in the alternative, for a new trial pursuant to Federal Rule of Civil Procedure 59. In addition, defendant Brody seeks dismissal, asserting that venue is not properly asserted over him in this district. Finally, the parties dispute the provisions appropriately included in a final judgment and order.

 DISCUSSION

 I. Construction of the Claim Term "3% Elasticity"

 Defendants first assert that they are entitled to judgment as a matter of law that the accused eyeglass frames, marketed under the name Turaflex, do not infringe the patents in suit because they do not meet the elasticity requirements of the patent claims. This aspect of defendants' motion hinges upon the meaning of the terms "3% elasticity" and "4% elasticity" as used in claims 1 and 5 of the suit patents.

 A. Background of the Dispute

 The term "3% elasticity" appears in claims 1 and 5 of the '955 patent and in claim 5 of the '112 patent. The term "4% elasticity" appears in claim 1 of the '112 patent. Claim 1 of the '955 patent describes

 
an eyeglass frame having at least a portion thereof fabricated from nickel-titanium based shape-memory alloy, said portion being in the work-hardened pseudo-elastic metallurgical state, said portion having been subjected to work-hardening and having a low effective elastic modulus giving a soft, springy feel, said portion having greater than 3% elasticity over a temperature range from -20 [degrees] C to [degrees] C.

 955:13:33 - 14:5 (emphasis added). *fn1" Claim 1 of the '112 patent is similar in all material respects, but refers to 4%, rather than 3%, elasticity. 112:12:14-22. Claim 5 as it appears in both the '112 and '955 patents describes

 
an eyeglass frame having at least a portion thereof fabricated from nickel-titanium based shape-memory alloy, . . . and having a minimum of 3% heat-recoverable shape-memory, a yield strength greater than 30,000 psi and at least 3% elasticity.

 112:12:33-41; 955:14:16-24 (emphasis added). The primary dispute between the parties concerns the meaning to be attributed to the terms "3% elasticity" and "4% elasticity," particularly in connection with the construction of Claim 1 as it appears in the suit patents. For purposes of this decision, the parties' dispute is discussed in the context of the construction to be given the term "3% elasticity."

 Each party has advanced a different interpretation of the claim term "3% elasticity." Plaintiffs assert that "elasticity" describes "the ability or tendency of a given material to recover or "spring-back" to its original shape, partially or completely, after a deforming force is removed." Pl. Mem. at 9. *fn2" Defendants argue that the term elasticity describes the ability of a material to return completely and spontaneously to its precise original shape after a deforming force is released. Def. Mem. at 5.

 As demonstrated by the undisputed evidence at trial, metallurgists use specific techniques for measuring the elasticity of metals. Simply put, the metal being tested for elasticity is pulled, and the pulling force, or stress, is then released. Measurements are made of the degree to which the metal is strained, or stretches when pulled, and the degree to which it recovers from that strain, or returns to its original shape, after the stress is released.

 The parties agree that data developed by applying these measurement techniques are typically expressed in graphic form. These graphic depictions of elasticity are referred to as stress-strain curves. The stress to which the metal being tested is subjected, or the force with which it is pulled, is measured on the vertical axis of a stress-strain curve. The horizontal axis is used to plot the strain which the metal being tested exhibits at any given amount of force, or the degree to which it stretches when pulled and returns to its original shape when the pulling force is reduced or released. The strain is measured as a percentage of the tested item's original length. For example, a metal rod 100 centimeters long which stretches to 103 centimeters when pulled with 1000 pounds per square inch of force is said to exhibit 3% strain when subjected to a stress of 1000 pounds per square inch. Similarly, if the same rod, when pulled with a force of 1200 pounds per square inch stretched to 105 centimeters, the rod would be said to exhibit 5% strain when subjected to a stress of 1200 pounds per square inch. These percentages are calculated by dividing the change in the length of the rod (3 centimeters and 5 centimeters, respectively) by the original length of the rod, which in this example is 100 centimeters.

 The difference in the definitions of elasticity advanced by the parties concerns the behavior exhibited when the stresses on the rod are released. Plaintiffs assert that the term 3% elasticity refers to the ability of a metal item to "spring back" or recover in an amount equal to 3% of its original length after being subjected to stress. For example, to exhibit 3% elasticity as interpreted by plaintiffs, a metal rod 100 centimeters in length, after being stretched to a length of 105 centimeters when stressed, must, when the stress is released, "spring back" by an amount equal to 3% of its original length, or 3 centimeters, to a length of 102 centimeters.

 According to defendants, 3% elasticity requires that a metal item return precisely to its original shape after being strained by at least 3% of its original length. In other words, to exhibit 3% elasticity as interpreted by defendants, a rod 100 centimeters in length, after being stretched to a length of 103 centimeters when stressed, would be required to recover fully and return spontaneously to its original length of 100 centimeters when the stress was released. (The behavior of the rod upon the release of stress after having been pulled to 105 centimeters is irrelevant to defendants' interpretation.) In contrast, while plaintiffs' definition would encompass full recovery from a 3% strain as one example of 3% elasticity, plaintiffs contend that any "springing back" of at least 3%, whether or not the component returns to its original shape, is sufficient to meet this element of the patent claims.

 Prior to trial, plaintiffs moved for summary judgment on infringement and asserted, among other things, that defendants' frames exhibited more than 3% elasticity over the sixty-degree temperature range required by claim 1 of the suit patents. By Memorandum and Order dated November 21, 1994, this Court denied plaintiffs' motion for summary judgment, and permitted the parties to proceed to trial and argue their competing contentions about the meaning of the disputed claim term to the jury. The verdict returned after trial indicates that the jury accepted plaintiffs' definition of the term.

 After the trial of this case, the Federal Circuit issued its decision in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), cert. granted, U.S. , 116 S. Ct. 40 (1975). The Court held in Markman that it was improper to allow a jury to decide the meaning of disputed claim terms. Although the Court in Markman acknowledged that some of its prior holdings indicated that "claim construction may have underlying factual inquiries that must be submitted to a jury," 52 F.3d at 976, it nevertheless held that the meaning of a patent claim is a question of law and, as such, must be resolved by the Court.

 This Court's Memorandum and Order denying plaintiffs' motion for summary judgment on infringement addressed the parties' dispute over the meaning of the term 3% elasticity. After reviewing the specifications and the prosecution history of the suit patents, the definition advanced by defendants was determined to be correct. As this Court has made clear in the course of prior proceedings in this action, however, because the decision was to deny summary judgment, it has little or no precedential significance. Moreover, since rendering that decision, the Court has had the opportunity to review the specifications and prosecution history at great length, to hear testimony from experts about the meaning of technical terms, including elasticity, and to consider additional arguments made by the parties, both at trial and in connection with the motions now pending. Accordingly, the meaning of the patent terms in dispute is now reviewed de novo, without regard or reference to the discussion in the Memorandum and Order issued prior to trial.

 The Federal Circuit's decision in Markman, which now requires this Court to decide the meaning of the claims in the patents in suit, offers guidance to Courts attempting to construe technical terms in a patent claim. The primary sources for determining the meaning of a patent claim are the claim language itself, the patent specification and the prosecution history. In addition, the Court in Markman specifically held that "expert and inventor testimony ... may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history." 52 F.3d at 979-81.

 B. The Language of the Patent Claims

 The claims of the suit patents, quoted above, use the terms 3% elasticity and 4% elasticity without elaboration. Accordingly, standing alone, the language of the patent claims is of no assistance in resolving the definitional dispute between the parties.

 Defendants assert that the commonly understood ordinary meaning of the term "elasticity" supports the definition they advance. In their memorandum, defendants recount the trial testimony of several witnesses, including John Krumme, Dr. Daniel Beshers, and Yuichi Suzuki, each of whom presented their own interpretation of elasticity. Def. Mem. at 6 n.6. Defendants assert that the testimony cited in their memorandum establishes that the term elasticity is typically used to refer to the ability of a strained material to return to its original shape when the stress causing the strain is removed.

 The testimony relied upon by defendants, however, is taken out of context. Krumme, one of the two inventors, and Beshers, plaintiffs' trial expert, testified that the term elasticity, particularly when used in the context of shape memory alloys like those described in the suit patents, refers to the ability of material to spring back towards its original shape, and not necessarily to return precisely to its original dimensions. Tr. 571 (Krumme), 966-67, 1207 (Beshers). Even Suzuki, who was called as a witness on behalf of the defendants at trial, described elasticity as "meaning that the recovery power for it to return to its original shape is extremely great." Tr. 1640-41. Suzuki's definition suggests that materials with great, but not necessarily complete, power to return to their original shape nevertheless exhibit elasticity.

 More importantly, the real issue of claim interpretation presented by this case is not the meaning of elasticity in the abstract, but rather the meaning of a measure of elasticity expressed as a percentage. In other words, whatever elasticity may mean, the term 3% elasticity clearly means something less than, for example, 100% elasticity. Thus, even assuming that defendants are correct in their assertion that the term elasticity refers in general to the ability of a material to return to its original shape, the question of what behavior constitutes 3% elasticity remains.

 C. The Specifications of the Patents in Suit

 As discussed above, elasticity measurements are frequently displayed in graphic form as stress-strain curves. The suit patents contain several such curves, labelled as figures 2A through 2H. *fn3" The parties each contend that the graphs contained in the suit patents, as well as the patent specifications, *fn4" support their respective definitions of the term 3% elasticity.

 Defendants point in particular to figures 2F and 2H, and to passages taken from the specifications indicating that these graphs illustrate the properties of the invention described in claim 1 of the suit patents. Figures 2F and 2H depict materials which, having been strained by approximately 6% of their original length, return completely to their original shape when the stress upon them is released. The use of these figures in the patent specifications thus lends strong support to defendants' definition of the term 3% elasticity. Defendants further correctly assert that the patent specifications suggest that the behavior illustrated in figures 2F and 2H -- spontaneous return precisely to original shape from strains of up to 6% -- can be achieved by the claimed invention at temperatures as low as -20 [degrees] C.

 While it is certainly appropriate to consider a patent specification when construing a disputed claim term, it is not proper to read limitations into a claim from the specification. SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985); see also Markman, 52 F.3d at 980 (noting that the specification "does not delimit the right to exclude. That is the function and purpose of the patent claims."); Electro Medical Sys. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)(holding that "claims are not to be interpreted by adding limitations appearing only in the specification"). Figures 2F and 2H are therefore relevant only insofar as they inform the meaning of the term "3% elasticity," and not simply because the patent specifications in the suit patents suggest -- even if inaccurately -- that the behavior which these curves illustrate can be achieved by the claimed invention. *fn5"

 For this reason, it is particularly noteworthy that the specifications do not describe figures 2F and 2H as illustrating 6% elasticity. *fn6" Rather, in the course of discussing a particular embodiment of the claimed invention, the specifications assert that these figures depict a "component [which] acts completely elastically up to strains of 6% or mow." 112:5:25-26; 955:6:2-3 (emphasis added). Similarly, in connection with another embodiment, the specification of the '955 patent refers to a component which can be subjected to a "4% tensile strain and show complete elastic spring back at room temperature." 955:6:12-14 (emphasis added). Using the language of the specifications, then, had the inventors intended to use the term elasticity as defendants argue, they would have written a claim requiring that a component behave "completely elastically" or exhibit "complete elastic spring back" when subjected to stresses causing strains of at least 3% of original length. For these reasons, this Court cannot agree that figures 2F and 2H, and the discussion of them in the specifications, compels the conclusion that 3% elasticity requires that a component return spontaneously and completely to its original shape.

 In fact, when carefully reviewed in their entirety, the specifications and figures in the suit patents in fact provide persuasive support for plaintiffs' definition of 3% elasticity. This support derives in particular from the language of claim 5 and the discussion of figure 2G in the specifications. In both the '112 and '955 patents, claim 5 uses the same term -- "3% elasticity" -- which appears in claim 1 of the '955 patent. *fn7" When describing the behavior constituting 3% elasticity in the context of claim 5, the specifications use this term precisely as do plaintiffs in connection with the motions now pending before the Court. For example, the '112 patent describes an embodiment of claim 5 which provides "a fully recoverable strain potential of at least 6%." 112:5:45-46. In the text immediately following, it is further explained that this 6% recovery is comprised of "a minimum of 3% heat-recoverable shape-memory ... and at least 3% elasticity." 112:5:53-55. Thus, the '112 patent specification describes a component as exhibiting 3% elasticity even though the component retains a 3% strain recoverable only with the application of heat.

 Similarly, the '955 patent, in discussing an embodiment of claim 5, describes a component which has been subjected to a 7.5% strain. This strain is completely recovered when, "upon unloading[,] the component gives 3.7% elastic spring back and imparts 3.8% shape memory recovery when heated." 955:6:60-62. The specification further states that "from the above, it can be seen [that eyeglass frame components may be made] . . . having a minimum of 3% heat-recoverable shape-memory . . . and at least 3% elasticity." 955:7:10-14. The reference to "3.7% elastic spring back" is the only behavior described in the text which could possibly support the conclusion that "from the above . . . 3% elasticity [can be seen]." A second embodiment of claim 5 using similar language and providing similar support for the definition of 3% elasticity advanced by plaintiff is described at 955:6:63-955:7:9.

 Clearly, then, the 3% elasticity described in the cited text of the '112 patent, and the 3.7% "elastic spring back" described in the cited text of the '955 patent, are provided as examples of the 3% elasticity required by claim 5. It is also clear that this elastic behavior must be combined with at least 3% "heat-recoverable shape-memory" behavior before the components, having been subjected to strains of 6% and 7.5%, respectively, return to their original shape. Thus, the term "3% elasticity," as it is used in claim 5, plainly does not require that a component return spontaneously and completely to its original shape. The same claim term, 3% elasticity, is of course used in claim 1, and cannot be consistently construed to require that a component spontaneously return to zero.

 Defendants contend that the portions of the specifications discussed above do not support plaintiffs' definition of 3% elasticity. Rather, according to defendants, the heat-recoverable shape-memory and elasticity described in claim 5 are separate and distinct characteristics, each of which must be measured independently by straining a component to about 3% of its original length.

 The cited portions of the specifications discussed above, however, demonstrate that the shape-memory and elasticity components of claim 5 are intended to operate in tandem upon an eyeglass frame subjected to strains in excess of 6% of original length. This construction of the shape-memory and elasticity elements of claim 5 is further supported by the references to figure 2G in the specifications of the suit patents. Figure 2G depicts a component which has been strained slightly less than 8%. When the deforming stress is released, the component springs back by almost 5%, with a strain of about 3% remaining. This remaining 3% strain is then recovered with heat, which returns the component to its original shape. Consistent with plaintiffs' definition of the term 3% elasticity, the specifications describe the "spring back" of 5%, from 8% strain to the remaining 3% strain, as illustrating the component's elastic properties. 112:3:23-24; 955:3:47-48. Furthermore, the specifications make it clear that figure 2G is intended to illustrate the behavior of a component covered by claim 5. 955:6:26, 35.

 As discussed above, the '955 specification uses the phrase "spring back" to describe the behavior of a component which meets the requirement of 3% elasticity in claim 5. Moreover, the suit patents each employ figure 2G, which illustrates only a partial return toward original shape absent heat, to depict the "at least 3% elasticity" described in claim 5. It therefore follows that the term 3% elasticity as used in claim 5 refers not to the spontaneous return of a component to its original shape, but rather to the ability of a component to "spring back" by an amount equal to 3% of its original length. Moreover, the term is used in claim 5 precisely as it is used in claim 1, and there is no reasoned basis to apply different definitions to the same term used in two claims of the same patent. See Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995), petition for cert. filed, 60 U.S.L.W. 3250 (Sept. 19, 1995) (No. 95-475); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed. Cir. 1983) (holding that "evidence of the scope of a particular claim can be found on review of other claims"). This Court concludes, therefore, that the specifications support plaintiffs' contention that the 3% elasticity requirement in the claims of the suit patents is satisfied by a component which, upon the application of force, is strained in excess of 3% of its original length, and which, when the deforming force is released, springs back by at least 3% of its original length.

 D. The Prosecution History

 Defendants rely upon cited passages from several documents generated during the prosecution history in which the inventors emphasized the highly elastic properties claimed for their invention by referring to figures 2F and 2H and to the term "optimized elasticity." Defendants argue that these passages demonstrate that the inventors attempted to persuade the patent examiners that frames made pursuant to their patent would spontaneously return to their original shape when a deforming stress was released.

 The documents cited by defendants, however, do not purport to define the claim term 3% elasticity or otherwise express a measure of elasticity in percentage terms. *fn8" Indeed, when describing pseudoelastic behavior, the inventors did not refer to a percentage of elasticity, but instead used the phrase, "the strain will spontaneously return to zero." PX 3 at 14. *fn9" Similarly, when describing the behavior depicted in figure 2H during the prosecution history, the inventors did not describe that figure as illustrating 6% elasticity, but rather as depicting the behavior of "totally elastic" material. Id. Thus, when describing the ability of an item to return to its original shape -- a behavior characteristic of pseudoelasticity and depicted in figure 2H -- the inventors used terminology, such as spontaneous return to zero or total elasticity, which does not express elasticity as a percentage. The terms used by the inventors during the prosecution history thus support the conclusion that the claim terms, which do express elasticity as a percentage, do not require the complete and spontaneous return of an item to its original shape.

 The only discussion of elasticity expressed in percentage terms which the Court has found among the prosecution history documents cited by the parties supports plaintiffs' definition of the term 3% elasticity. In a request for reexamination, the inventors discussed a prior art reference referred to as the "Mercier article." The inventors described a stress-strain curve in the Mercier article as illustrating a component strained by a deforming force to 11.1% which returns, or springs back, approximately 8.1% after the deforming stress is released. The request for reexamination describes this curve as illustrating 8.1% elasticity at the expense of a 3% retained strain. PX 3 at 19. (The 3% retained strain refers to the difference between the 11.1% strain to which the component was subjected and the 8.1% spring back exhibited by the component when the stress upon it was released.) Clearly, the inventors' statement to the PTO, describing a component which recovered only partially when stress was released as exhibiting 8.1% elasticity, supports plaintiffs' interpretation of 3% elasticity.

 Defendants argue in their reply that the inventors' discussion of Mercier was based upon an inaccurate reading of the defendants' position during the reexamination proceeding. More specifically, defendants contend that it was their position on reexamination that the Mercier curve did not depict any retained strain. Def. Reply at 23 n. 15. Even assuming that defendants are correct in this regard, plaintiffs' misunderstanding has no bearing on the proper construction of the claim term in dispute. The significance of the statements made by the inventors during the prosecution history about the Mercier curve does not depend upon the accuracy or persuasiveness of their arguments about the curve, but instead upon the meaning attributed by the inventors to the expression of elasticity in percentage terms. It is clear that, in the passage from the prosecution history cited above, the inventors argued to the PTO that the curve in Mercier depicted a retained strain, yet nevertheless characterized that curve as illustrating 8.1% elasticity. The description of a stress-strain curve which is understood to depict a component which only partially returns to its original shape as exhibiting 8.1% elasticity supports the definition of 3% elasticity advanced by plaintiffs.

 E. The Extrinsic Evidence At Trial

 As noted above, the Court in Markman specifically held that expert testimony may be helpful to explain scientific principles and the meaning of technical terms. 52 F.3d at 979-81. Dr. Daniel Beshers, who has been a professor of metallurgy and material science at Colombia University since 1957, testified for plaintiffs as an expert at trial. In the course of his testimony, Beshers stated that elasticity expressed as a percentage, particularly when discussing shape memory alloys, is widely understood to refer to the ability of a component to "spring back" upon the release of stress to a degree indicated by the percentage of elasticity stated. Tr. 966-67, 1157, 1160. *fn10" Beshers' expert opinion thus supports the definition of 3% elasticity advanced by plaintiffs.

 Defendants argue that, because Beshers is not one of ordinary skill in the art, his expert opinion should have no bearing upon the construction of the disputed claim language. Beshers, however, testified that the definition he gave at trial was "universal" and that "everybody would agree to [it]," and that it was "widely recognized" as an accurate definition in the context of shape memory alloys. Tr. 1157, 1160. Moreover, Beshers testified that he had little experience with or specialized knowledge of shape memory alloys and their properties before he was retained by plaintiffs, he devoted special study to the subject, particularly in connection with the fabrication of eyeglass frames, after plaintiffs engaged him. Tr. 949-50, 952. Presumably, one of ordinary skill in the art -- a fabricator of metal eyeglass frames lacking detailed familiarity with shape-memory alloys -- would undertake a similar course of study and investigation. Finally, defendants offered no evidence at trial that one of ordinary skill in the art would, by virtue of training and experience, understand the term 3% elasticity differently than did Beshers. *fn11" Accordingly, I conclude that it is appropriate to consider Beshers' expert testimony about the meaning of the term 3% elasticity.

 * * *

 II. Elasticity and Shape-Memory Requirements of Claim 5

 Claim 5 of both the '112 and '955 patents describes an eyeglass frame with a component which has "a minimum of 3% heat-recoverable shape-memory . . . and at least 3% elasticity." Defendants argue that the evidence presented at trial was insufficient to support the jury's finding that these claim elements were infringed.

 Defendants' contention that the evidence at trial was insufficient to establish that the accused frames have 3% elasticity is premised upon the same construction of that claim term which is rejected in Point I of this Memorandum and Order. Accordingly, for the reasons stated above, this aspect of defendants' motion must be denied.

 Defendants now assert for the first time that the evidence at trial was also insufficient with respect to the heat-recoverable shape-memory element of claim 5. In two written motions dated December 12, 1994, defendants sought a directed verdict on several specifically stated grounds. Defendants did not, however, seek judgment as a matter of law on any ground related to the "3% heat-recoverable shape memory" element of claim 5. *fn12" Defendants' failure to raise this basis for relief during trial bars their post-trial motion for judgment as a matter of law. See, e.g., Lambert v. Genesee Hosp., 10 F.3d 46, 53-54 (2d Cir. 1993), cert. denied, 128 L. Ed. 2d 339, U.S. , 114 S. Ct. 1612 (1994) (emphasizing that the rule is designed to protect a party's right to "notice of potential deficiencies in its proof before the case is submitted to the jury"); Fed. R. Civ. P. 50(a), Advisory Committee's Notes to 1991 Amendment.

 With respect to virtually every ground on which they seek judgment as a matter of law, defendants in their post-trial motion contend that they are entitled in the alternative to a new trial pursuant to Fed. R. Civ. P. 59. Although the failure to seek a directed verdict during trial does not procedurally bar a motion for a new trial, such a motion should be granted only to prevent manifest injustice. See, e.g., Baskin v. Hawley, 807 F.2d 1120, 1134 (2d Cir. 1986); Russo v. State of N.Y., 672 F.2d 1014, 1022 (2d Cir. 1982), modified on reh'g, 721 F.2d 410 (2d Cir. 1983); 6A Moore's Federal Practice P 59.08[5] at 59-150 - 59-152. Defendants, having failed to raise their contentions at a time when plaintiffs might have cured any asserted insufficiency in their proof, have not presented arguments which warrant granting them a new trial.

 Finally, even if this Court were to reach the merits of defendants' motion with respect to heat-recoverable shape-memory, the motion would be denied. Defendants' position is premised upon a construction of this claim term which would require an accused frame component to return completely and precisely to its original shape. Def. Mem. at 33. *fn13" This Court has already rejected the defendants' contention that elasticity, expressed in percentage terms, requires a complete return to original shape. There is no reason to construe a statement of heat-recoverable shape-memory expressed in percentage terms any differently.

 For these reasons, defendants' motion for judgment as a matter of law, or in the alternative for a new trial, on grounds that there was insufficient proof at trial to support the jury's verdict with respect to the elasticity and heat-recoverable shape-memory elements of claim 5, is denied.

 III. Infringement of Claims 1 and 5 by the Same Component

 The jury found that four of defendants' frames infringe both claims 1 and 5 of the suit patents. Defendants contend that these patent claims are irreconcilably inconsistent, and that any verdict finding that an accused product infringes both must therefore be set aside.

 Defendants make four arguments in support of their contention that it is not logically possible for one product to infringe both claims 1 and 5 of the patents in suit. First, defendants argue that the specifications indicate that frames exhibiting the characteristics of claim 1 should be made by subjecting the frames to work-hardening and avoiding subsequent anneals, whereas frames intended to behave as described in claim 5 should be subjected to heat treatment during fabrication. Second, defendants assert that, during the prosecution of the suit patents, the inventors indicated to the PTO that the shape memory alloys best used to fabricate components intended to behave as described in claim 1 and those suitable for making frames with the characteristics listed in claim 5 have different transformation temperatures. Third, defendants point to portions of the specifications indicating that claim 1 frames have a yield strength greater than that of claim 5 frames. Finally, defendants rely upon a licensing agreement and correspondence authored by an employee of plaintiff CVI/Beta as evidence that the plaintiffs conceived of claims 1 and 5 as describing separate and distinct eyeglass frame components.

 The purported inconsistencies relied upon by defendants are not irreconcilable. Claim 1 does not include an element requiring or precluding anneals or heat treatments. Neither claim 1 nor claim 5 specifies the transformation temperature of the shape memory alloy from which the patented frame component is to be fabricated. Claim 1 does not require a minimum yield strength, and claim 5 does not impose a maximum. In short, defendants' attempt to impugn the jury's findings as irreconcilably inconsistent relies upon a reading of limitations into claims 1 and 5 from the specifications and the prosecution history of the suit patents, despite the complete absence of words in the claims themselves which would support such limitations. This is plainly improper. SRI Int'l., 775 F.2d at 1121; see also Markman, 52 F.3d at 980; Electro Medical Sys., 34 F.3d at 1054. Moreover, even assuming that plaintiffs did not contemplate manufacturing or marketing frame components which exhibited the characteristics of both claims 1 and 5, this would not render the jury's verdicts irreconcilably inconsistent. An inventor's decision to exercise his patent rights by marketing separate claim-specific products in no way bars a jury from concluding that an accused product simultaneously infringes two claims of the same patent.

 Defendants have failed to establish that claims 1 and 5 contain irreconcilably inconsistent terms. Accordingly, the motion to set aside the jury's verdict on this ground is denied.

 IV. Yield Strength

 Claim 5 of the suit patents requires that a frame component have "a yield strength greater than 30,000 psi." '112:12:40-41; '955:14:24-25. Defendants argue that this claim term should be interpreted to require a component to exhibit the stated yield strength at a temperature at which 3% heat recoverable shape-memory and elasticity occurs, i.e., at - 20 [degrees] C, and that the evidence presented at trial was insufficient to ...


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