The opinion of the court was delivered by: Sifton, Senior Judge.
MEMORANDUM OPINION AND ORDER
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 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 Rosco*fn1 . 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. Howell*fn2.
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.
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 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.*fn3 I also found Mirror Lite's patent invalid under 35 U.S.C. § 102 (e)*fn4 and (g)*fn5 . 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),*fn6 (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.
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., 03-1562, 120 Fed.Appx. 832 (Fed. Cir. Jan. 19, 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 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 substantially constant radii of curvature and therefore do not infringe Mirror Lite's '984 patent. Rosco submits numerous tests and expert declarations about the contested mirrors to show that the mirrors do not infringe. Mirror Lite argues that all of the post-trial Hawk Eye and Mini Hawk Eye mirrors have varying radii of curvature and all infringe. Mirror Lite submits its own tests and expert declarations as evidence in support of its position. In addition, as noted above, both sides have filed various evidentiary motions relating to Rosco's summary judgment submissions.
Order in which to Address the Motions
Both Rosco and Mirror Lite have filed motions for summary judgment and numerous motions to exclude evidence. Because a court may consider only admissible evidence when ruling on a motion for summary judgment, I first determine whether the testimony of the expert witnesses and their accompanying exhibits and tests are admissible. See Nora Beverages, Inc. v. Perrier Group of Am., 164 F.3d 736, 746 (2d Cir. 1998); Cacciola v. Selco Balers, Inc., 127 F. Supp. 2d 175, 179-80 (E.D.N.Y. 2001).
Declaration of Peter Sinclair and the Mirror Bisecting Test
Mirror Lite moves to strike Mr. Sinclair's declaration on three grounds: (1) that he is not a qualified expert in the field of mirror design and manufacture; (2) that the mirror bisecting test*fn7 is unreliable; and (3) that his definition of a "varying radius of curvature" is not based on a reliable scientific source. I reject each of Mirror Lite's contentions, and will consider Mr. Sinclair's declaration in determining the motion for summary judgment. Paragraphs 1-3 of Sinclair's declaration relate to his retention by Rosco as an expert. Paragraphs 4-12 of Sinclair's declaration consist of his conclusion that the mirrors had a constant radius of curvature based the mirror bisecting tests and the reasons for that conclusion. Paragraphs 13 and 14 consist of Sinclair's definition of "varying radius of curvature."
Federal Rule of Evidence 702 provides:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
The Rules of Evidence assign to the trial judge the task of ensuring that expert testimony is reliable and relevant. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597, 113 S.Ct. 2789, 125 L.Ed.2d 469 (1993). The burden is on the party proffering the expert testimony to lay a foundation for its admissibility. Plourde v. Gladstone, 190 F. Supp. 2d 708, 718 (D.Vt. 2002). A first step in determining the admissibility of expert testimony is to determine whether the witness has the requisite qualifications. See Zaremba v. Gen. Motors Corp., 360 F.3d 355, 360 (2d Cir. 2004) (describing an analysis of the reliability of the witness's ...