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Durel Corporation v. Osram Sylvania Inc.

Judgment of infringement reversed because court erred in its construction of the term "oxide coating," and defendant's coating did not infringe plaintiff's patents as a matter of law; grant of partial summary judgment that plaintiff's patents were not invalid vacated because court erred in its application of enablement law.

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Appealed from: United States District Court for the District of Arizona

Senior Judge Edward Rafeedie

Osram Sylvania Inc. (“Sylvania”) appeals from the judgment of the United States District Court for the District of Arizona holding that Sylvania infringed Durel Corporation’s U.S. Patents 5,418,062, 5,439,705, and 5,156,885. Durel Corp. v. Osram Sylvania Inc., 52 USPQ2d 1418, 1435 (D. Ariz. 1998). Sylvania also appeals from the district court’s grant of partial summary judgment dismissing Sylvania’s counterclaim for declaratory judgment of invalidity for failure to meet the enablement requirement of 35 U.S.C. � 112. Id. Finally, Sylvania appeals from the district court’s denial of its motion for a new trial on damages. Durel Corp. v. Osram Sylvania Inc., No. 95-1750 (D. Ariz. Apr. 13, 2000). Durel cross-appeals from the district court’s denial of its motion for judgment as a matter of law that Sylvania willfully infringed the ’885 patent. Durel Corp. v. Osram Sylvania Inc., No. 95-1750 (D. Ariz. Apr. 21, 2000). Durel also cross-appeals from the denial of its motion to award damages for the period between the close of discovery and entry of the injunction. Durel Corp. v. Osram Sylvania Inc., No. 95-1750 (D. Ariz. May 4, 2000). Because the district court erred in its construction of the term “oxide coating” and Sylvania’s coatings do not infringe Durel’s patents as a matter of law, we reverse.

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