Sterne, Kessler, Goldstein & Fox Scores Significant Defense Victory in Western District of New York for Client Osram Sylvania

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May 17, 2010, 02:29 ET

Washington, May 17 /PRNewswire-USNewswire/ -- Sterne, Kessler, Goldstein & Fox P.L.L.C. (SKGF), an intellectual property law firm in Washington, D.C., scored a significant defense victory today for its client Osram Sylvania Products, Inc., in a complex patent infringement matter pending in the U.S. District Court for the Western District of New York (Civil Action No. 04-CV-6435T).

Judge Telesca granted Sylvania's motion for summary judgment that Sylvania's SilverStar® and Cool Blue® automotive headlight products do not infringe U.S. Patent No. 5,666,017, as was alleged by Tailored Lighting, Inc. of Rochester, New York, and that Tailored Lighting's patent is invalid for failing to enable a person of ordinary skill in the art to make and use the invention without undue experimentation.

The successful SKGF litigation team was led by a trio of Directors in the firm's Litigation Practice Group – David K.S. Cornwell, Donald R. Banowit and Mark Fox Evens. About this decision, Mr. Cornwell said, "Sylvania is pleased with Judge Telesca's ruling. Despite the complexity of this case, the Court fully understood that existing case law and lack of scientific evidence demanded a finding of both non-infringement and invalidity of the patent."

Regarding the infringement issue, the Court said, I find, however, that the plaintiff's inability to produce evidence of the actual values of the variables [recited in the formula of the patent] for the accused Sylvania bulbs is fatal to its claims of infringement. Because TLI can not establish actual values for two of the variables of the accused bulbs, it can not establish that the coating of the bulbs conforms to the formula disclosed in Claim 1 of the '017 patent, and therefore can not establish infringement.

The Court went on to say, Because TLI relies on an assumed value for one of the variables of the formula (and thus cannot establish that the Sylvania bulb actually conforms to this value), and relies on a post-hoc calculation for another variable of the equation (again failing to establish that the accused Sylvania bulbs actually conform to the calculated value), TLI has failed to produce evidence that the accused Sylvania bulbs actually practice the formula set forth in Claim 1 of the '017 Patent, and as a result, has failed to establish infringement.

Regarding the subject of enablement, the Court said, The person attempting to make the bulb can then only engage in trial and error to see if he or she can make a bulb with a coating that emits a light that is substantially similar to a desired daylight. Should the maker be successful in doing so, only then can the maker work backwards to determine whether or not the coating of the bulb comports to the formula disclosed in Claim 1. Because the '017 Patent does not describe how to ascertain the appropriate transmittance level for the coating in a manner that can be followed by a person skilled in the art of bulb making, the Patent is not enabled.

Read a copy of the published opinion here.

Sterne, Kessler, Goldstein & Fox P.L.L.C. - Strategists and Advisors specializing in the protection, transfer and enforcement of Intellectual Property Rights. Founded in 1978 and based in Washington, DC, the firm has over 130 patent attorneys, agents and technical specialists representing a broad range of clients, including emerging and established companies, venture capital firms, universities and select individuals. In the last year, SKGF received the following awards and recognition: The National Law Journal's Midsize Hot List, Working Mother and Flex-Time Lawyers Best Law Firms for Women, Washington Business Journal's Best Places to Work, and was named the most diverse partnership in Washington, DC, by Legal Times / The National Law Journal.

SOURCE Sterne, Kessler, Goldstein & Fox