Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.

• Decision Date: 14 March 2012
• Docket Number: No. 2011–1147.,2011–1147.
• Citation: 101 U.S.P.Q.2d 2015,672 F.3d 1335
• Parties: ASPEX EYEWEAR, INC., and Contour Optik, Inc., Plaintiffs–Appellants, v. MARCHON EYEWEAR, INC., and Nike, Inc., Defendants–Appellees,andRevolution Eyewear, Inc., and Gary Martin Zelman, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

101 U.S.P.Q.2d 2015

672 F.3d 1335

ASPEX EYEWEAR, INC., and Contour Optik, Inc., Plaintiffs–Appellants,

v.MARCHON EYEWEAR, INC., and Nike, Inc., Defendants–Appellees,andRevolution Eyewear, Inc., and Gary Martin Zelman, Defendants–Appellees.

No. 2011–1147.

United States Court of Appeals, Federal Circuit.

March 14, 2012.

Michael A. Nicodema, Greenberg Traurig, LLP, of Florham Park, NJ, argued for plaintiffs-appellants.

Edgar H. Haug, Frommer Lawrence & Haug LLP, of New York, NY, argued for defendants-appellees, Marchon Eyewear, Inc. and Nike, Inc. With him on the brief were Porter Farrar Fleming and Brian S. Goncalves.

Steven M. Hanle, Sheppard, Mullin, Richter & Hampton, LLP, of Costa Mesa, CA, argued for defendants-appellees Revolution Eyewear, Inc. and Gary Martin Zelman. With him on the brief was Jennifer A. Trusso.

Before RADER, Chief Judge, BRYSON and REYNA, Circuit Judges.

BRYSON, Circuit Judge.

Aspex Eyewear, Inc., is the owner of U.S. Patent No. RE37,545 (“the ' 545 patent”). That patent, which is entitled “Auxiliary Lenses for Eyeglasses,” is directed to magnetic clip-on eyewear. It discloses primary eyeglass frames designed so that auxiliary frames, typically containing sunglass lenses, can be attached to the primary frames by magnetic force. The '545 patent claims the combination of an auxiliary frame magnetically secured to a primary frame (claims 1–21 and 25–34), a primary frame capable of magnetically engaging an auxiliary frame (claim 22), and an auxiliary frame capable of magnetically engaging a primary frame (claim 23 as amended in reexamination, claim 24, and new claim 35, added during reexamination). Aspex and Contour Optik, Inc., were co-owners of the '545 patent until June 2010, when Contour assigned its rights to Aspex.

Revolution Eyewear, Inc., is a manufacturer of eyeglass frames and auxiliary sunglass frames that can be attached to the front of eyeglass frames. Revolution's IMF and IMFT products featured eyeglass frames having projections from the temple regions on each side of the frames. The projections on the primary frames housed magnetic elements. Those projections corresponded to projections on Revolution's auxiliary sunglass frames that also contained magnetic elements. The magnetic elements in the primary and auxiliary frames were used to attach the auxiliary frames to the primary frames by magnetic force. Revolution's IMF and IMFT products were designed so that the magnetic elements in the auxiliary frames would attach to the bottom of the magnetized projections on the primary frames. The parties refer to that design as the Old Design.

Aspex and Revolution have been suing one another for more than a decade. In 1999, Aspex sued Revolution for infringement of Aspex's U.S. Patent No. 5,568,207 (“the '207 patent”). The district court in that case ruled that claim 1 of the '207 patent was directed to a combination of frames in which the projections of the auxiliary frame are mounted on top of the projections of the primary frame. Because Revolution's products used a “bottom-mounted” configuration, the court granted Revolution's motion for summary judgment of noninfringement. This court summarily affirmed. Aspex Eyewear, Inc. v. Revolution Eyewear, Inc., 42 Fed.Appx. 436 (Fed.Cir.2002).

In 2002, Revolution sued Aspex in the United States District Court for the Central District of California, charging Aspex with infringement of Revolution's patent, U.S. Patent No. 6,343,858 (“the Revolution California Action”). Aspex counterclaimed, asserting that certain of Revolution's products infringed claims 6, 22, and 34 of the '545 patent, the reissue of Aspex's '207 patent. The district court dismissed Revolution's complaint for lack of standing. On Aspex's counterclaim, the district court granted summary judgment to Revolution as to claims 6 and 34 of the '545 patent, which are directed to primary and auxiliary frame combinations. The court construed claim 6 to read on auxiliary frames having a downwardly facing horizontal surface and claim 34 to require that some portion of each arm of the auxiliary frame extend across the top of the corresponding extension of the primary frame. Because the magnetic surfaces of Revolution's auxiliary frames faced upwardly, not downwardly, and because the arms of Revolution's auxiliary frames extended underneath, not above, the corresponding extensions on the primary frames, the court held that Revolution's products did not infringe those claims. As to claim 22, however, the district court granted Aspex's motion for summary judgment of infringement, holding that Revolution's primary frames literally infringed that claim.

Claim 22 recites a primary spectacle frame that is capable of magnetically engaging an auxiliary spectacle frame, in which the primary frame includes a pair of projections for securing the primary frame magnetic members. The district court construed that claim to require that the primary frame be capable of magnetically engaging an auxiliary frame from the top. Although Revolution's IMF and IMFT primary frames were designed to magnetically engage Revolution's auxiliary frames from the bottom, Revolution did not dispute that an auxiliary frame is capable of engaging Revolution's IMF primary frame from above. Accordingly, the district court held that Revolution's accused products literally infringed claim 22 of the '545 patent.

The court then held, on summary judgment, that claim 22 of the '545 patent was not invalid. Following a jury trial on damages, the court awarded a judgment of more than $4 million to Aspex and Contour. This court affirmed that judgment in 2009. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed.Cir.2009).

In late 2006, while the 2002 case involving Revolution was still pending, Aspex sued Marchon Eyewear, Inc., in the United States District Court for the Central District of California, alleging infringement of the '545 patent (“the Marchon California Action”). Aspex alleged that pursuant to a license from Revolution, Marchon was selling magnetic eyewear incorporating the same Old Design structure as that used by Revolution.

In early 2007, Revolution redesigned its products by embedding the magnetic elements in its primary eyeglass frames rather than securing them in projections, as was done in the Old Design. The parties refer to the modified version as the New Design. The auxiliary frames in the New Design were also modified to accommodate the new placement of the magnets in the primary frames. Marchon also began selling New Design primary and auxiliary frames.

Early in 2008, Aspex and Marchon entered into a settlement agreement that resolved all the claims and counterclaims asserted in the 2006 Marchon California Action. The agreement stated that Aspex and Marchon “stipulate to dismissal with prejudice of [the action], including all claims and counterclaims, and any claim which would have been had by and between the Parties arising from or connected with [the action]....” In another paragraph, the agreement provided that the settlement extended to all causes of action “which exist as of the Effective Date of this Agreement in connection with any Marchon Old Design Magnetic Eyewear made, sold, used, or offered for sale in the United States as of the Effective Date.” Marchon further agreed to discontinue all products embodying the Old Design and substantially similar designs.

In the meantime, the Patent and Trademark Office (“PTO”) reexamined the ' 545 patent at the behest of a third party requester. In April 2008, at the conclusion of the reexamination proceeding, the PTO rejected a number of the claims of the '545 patent for obviousness, but it confirmed the patentability of several of the claims, including claim 23 as amended, and it allowed the patentee to add new claim 35. Claim 23, as amended, reads as follows (the italicized words were added and the bracketed word removed as a result of the amendment):

23. An eyeglass device comprising:

an auxiliary spectacle frame for supporting auxiliary lenses therein, said frame including a front side, a rear side, and oppositely positioned side portions, each of said side portions having an arm extended therefrom, each of said arms having a rearwardly directed free end for securing a magnetic member having a horizontal surface,

and a pair of magnetic members respectively secured in the free ends of said arms, said arms and said pair of magnetic members adapted to extend across respective side portions of a primary spectacle frame so that said pair of magnetic members having a horizontal surface can vertically engage corresponding magnetic [members] member surfaces on a primary spectacle frame.

New claim 35, added during reexamination, reads as follows:

35. The eyeglass device according to claim 23, wherein, said magnetic members of said auxiliary spectacle frame are magnets.

In 2009, Aspex filed the present action, charging the defendants with infringement of amended claim 23 and new claim 35 of the '545 patent. Aspex alleged direct infringement by Revolution and Marchon, and it alleged induced infringement by Nike, Inc., Hardy Life, LLC, and Gary Zelman, Revolution's owner. The accused products were New Design magnetic clip-on eyewear made by Revolution and Marchon.

Revolution moved to dismiss the action against it as barred by res judicata based on its previous litigation with Aspex. Marchon likewise moved to dismiss the action against it based on res judicata; in addition, it contended that the action was barred by the 2008 agreement that had settled the 2006 Marchon California Action.

The district court granted summary judgment to all the defendants. It held that for purposes of res judicata Aspex's claims for infringement were the same as the claims that either were, or could have been, raised in the 2006 and 2008 California Actions. The court ruled that the accused products in this case—the auxiliary frames sold by Revolution and...