Aspex Eyewear, Inc. v. Altair Eyewear, Inc., Civil Action No. 10–12202–WGY.

• Decision Date: 12 October 2011
• Docket Number: Civil Action No. 10–12202–WGY.
• Parties: ASPEX EYEWEAR, INC. and Contour Optik, Inc., Plaintiffs, v. ALTAIR EYEWEAR, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

2011 Markman 4840468

818 F.Supp.2d 348

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

v.ALTAIR EYEWEAR, INC., Defendant.

Civil Action No. 10–12202–WGY.

United States District Court, D. Massachusetts.

Oct. 12, 2011.

Ira R. Hatton, Greenberg Traurig, Mary Olga Lovett, Greenberg Traurig, LLP, Dwayne L. Mason, Greenberg Traurig, Houston, TX, Michael A. Nicodema, Greenberg Traurig, LLP, Florham Park, NJ, Victor H. Polk, Jr., Greenberg Traurig LLP, Boston, MA, Todd Lawrence Schleifstein, Greenberg Traurig LLP, Florham Park, NJ, for Plaintiffs.

Erik Paul Belt, Bonnie A. Vanzler, McCarter & English, LLP, Boston, MA Brian G. Bodine, Seed and Berry, Seattle, WA, Michael P. Bregenzer, Reed Smith LLP, Chicago, IL, Kaustuv M. Das, Merchant & Gould P.C., Seattle, WA, Edward J. Davis, Davis Wright Tremaine LLP, Herbert F. Kozlov, Reed Smith LLP, Eugene Ledonne, Reed Smith, New York, NY, Benton J. Gaffney, Davis Wright Tremaine LLP, Seattle, WA, Scott W. Hansen, Reinhart Boerner Van Deuren S.C., Milwaukee, WI, Daniel Mateo, Reed Smith LLP, Princeton, NJ, Carl Howard Pierce, Tracey Zurzulo Quinn, Reed Smith, LLP, Philadelphia, PA, Matthew C. Wagner, Diserio Martin O'Connor & Castiglioni, LLP, Stamford, CT, Kimberly A. Warshawsky, Greenberg Traurig LLP, Phoenix, AZ, Tara M. Williams, Greenberg Traurig, Houston, TX, for Defendant.

MEMORANDUM

YOUNG, District Judge.I. PRIOR PROCEEDINGS

This lengthy litigation began in 2002, when the plaintiffs, Aspex Eyewear, Inc. and Contour Optik, Inc. (collectively “Aspex”), filed suit under 35 U.S.C. § 271 against Altair Eyewear, Inc. (“Altair”) in the United States District Court for the Southern District of New York for infringement of three United States patents: Nos. 5,737,054 (filed Dec. 18, 1996) (the “'054 patent”); 6,012,811 (filed Nov. 3, 1997) (the “'811 patent”); and 6,092,896 (filed Aug. 4, 1999) (the “'896 patent”). Pls.' First Am. Com pl. 2–5, ECF No. 3. This Court has general federal question jurisdiction over these claims under 28 U.S.C. § 1331.

In a written opinion, the district court denied Altair's motion for partial summary judgment for lack of standing and Aspex's motion for leave to add Altair's parent corporation as a party defendant. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 361 F.Supp.2d 210, 218 (S.D.N.Y.2005). After reviewing the briefs and conducting a Markman hearing, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 384–85, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the district court construed the disputed claim terms. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 386 F.Supp.2d 526, 533–42 (S.D.N.Y.2005). Based on the court's claim construction, Altair moved for summary judgment of non-infringement of all three patents, and Aspex moved for summary judgment of literal infringement of the same. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 485 F.Supp.2d 310, 315 (S.D.N.Y.2007). The district court granted Altair's motion for summary judgment of non-infringement and denied Aspex's motion. Id. at 327. Aspex appealed the district court's grant of summary judgment to the United States Court of Appeals for the Federal Circuit, while Altair appealed the district court's denial of summary judgment on the standing issue. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed.Appx. 697, 700–01 (Fed.Cir.2008). The Federal Circuit reversed the district court's construction of “frame” and thus its summary judgment of non-infringement as to the '054 patent, but affirmed the district court's summary judgment of non-infringement on the '811 and '896 patents and the district court's denial of summary judgment on the standing issue. Id. at 706.

In July 2010, the case was reassigned to this Court sitting by designation in the Southern District of New York, and subsequently in December 2010, the parties transferred the case by argument to the United States District Court for the District of Massachusetts pursuant to 28 U.S.C. § 1404(a). Order, ECF No. 160; Stipulation & Order, ECF No. 166.

Meanwhile, Altair sought reexamination of the '054 patent by the U.S. Patent and Trademark Office (the “USPTO”). The USPTO found the original claims to be patentable and notified Aspex of its intent to issue a reexamination certificate.

The parties have proceeded with commendable promptitude since the case was transferred to this Court. They first sought further construction of the ' 054 patent. Notice Markman Hr'g, ECF No. 162. Aspex then moved for summary judgment of literal infringement, while Altair moved for summary judgment of invalidity. Pls.' Mot. Summ. J. Literal Infringement, ECF No. 171; Def.'s Mot. Summ. J. Invalidity, ECF No. 178. Aspex subsequently filed a cross motion for summary judgment of validity, while Altair filed a cross motion for non-infringement. Pls.' Cross Mot. Summ. J. Validity, ECF No. 185; Def.'s Cross Mot. Summ. J. Non–Infringement, ECF No. 190. Because the cross motions are virtual mirror images, Aspex and Altair agreed to resolve the liability phase of this litigation as a “case stated.” ¹ The Markman hearing took place on March 31, 2011, followed immediately by arguments on the “case stated.”

II. FINDINGS OF FACT AND RULINGS OF LAW ²A. The '054 Patent

The '054 patent is entitled “Auxiliary Lenses for Eyeglasses.” '054 patent 1, Def.'s Local Rule 56.1 Statement Undisputed Material Facts Supp. Mot. Summ. J. Invalidity (“Def.'s SOF”), Ex. 3, ECF No. 180–3. The invention's primary objective is “to provide auxiliary lenses which may be easily engaged on the primary spectacle frame.” Id. at col.1 1.28–30. The eyeglass device is comprised first of a primary spectacle frame “including a middle bridge portion, a first magnetic or magnetizable member secured in the middle bridge portion of the primary spectacle frame.” Id. at col.1 l.32–36. It is also comprised of an auxiliary spectacle frame “including a middle bridge portion having a projection extended therefrom for extending over and for engaging with the middle bridge portion of the primary spectacle frame.” Id. at col.1 l.38–41. The second magnetic or magnetizable member is “secured to the projection of the auxiliary spectacle frame” so that it can engage with the first magnet or magnetized material. Id. at col.1 l.41–44. Finally, the invention allows the auxiliary frame to be attached to the primary frame with only one hand. Id. at col.1 l.45–46.

Only Claim 1 of the '054 patent is at issue in this litigation. It reads:

An eyeglass device comprising:

a primary spectacle frame for supporting primary lenses therein, said primary spectacle frame including a middle bridge portion,

a first magnetic member secured in said middle bridge portion of said primary spectacle frame,

an auxiliary spectacle frame for supporting auxiliary lenses therein, said auxiliary spectacle frame including a middle bridge portion having a projection extended therefrom for extending over and for engaging with said middle bridge portion of said primary spectacle frame, and

a second magnetic member secured to said projection of said auxiliary spectacle frame for engaging with said first magnetic member of said primary spectacle frame and for allowing said auxiliary spectacle frame to be attached to said primary spectacle frame with only one hand by a user.

Id. at col.2 1.64 to col.3 1.14.

B. Claim Construction

Before this Court confronts the issues of invalidity and infringement, disputed claim terms must be construed. See Vizio, Inc. v. International Trade Comm'n, 605 F.3d 1330, 1336 (Fed.Cir.2010). Claims are construed as matter of law. Markman, 52 F.3d at 979. Claim terms “are generally given their ordinary and customary meaning,” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)), as understood by “a person of ordinary skill in the art in question at the time of the invention,” id. at 1313. See generally Edward D. Manzo, Patent Claim Construction in the Federal Circuit (2010).

1. Prior Claim Construction

During the March 31, 2011, Markman hearing, both Aspex and Altair agreed to the Court's proposed construction of the terms “secured in” as “embedded within” and “extending over” as “extending above and partially covering the middle bridge of the primary frame.” Tr. Markman Hr'g & Case Stated 6–7, ECF No. 223. The only term that this Court took under advisement is the phrase “secured to.”

2. Construction of “secured to”

The construction of the term “secured to” is significant because Altair's accused products have a magnet embedded in the bridge portion of the auxiliary frame, which could be found non-infringing of the '054 patent if “secured to” is construed to mean only “attached to” instead of the broader construction (that Aspex is requesting) which would encompass a magnet embedded within.

Claim 1 of the '054 patent specifies “a second magnetic member secured to said projection of said auxiliary spectacle frame for engaging with said first magnetic member ....” '054 patent col.3 l.9–11. The specification additionally states that “[t]he auxiliary spectacle frame also includes a magnetic or magnetizable connector member secured in the projection,” id. at col.2 l.13–15, and describes the second magnet as “secured to” the projection, id. at col.1 l.42.

Aspex has construed the term “secured to” to mean “stably embedded within or attached to.” Pls.' Opening Mem. P. & A. Supp. Mot. Summ. J. Literal Infringement 12, ECF No. 172. Aspex argues that the definition of “to” is broad and that therefore the definition should not be limited to situations in which one part attaches to another. Id. at 13–14. Figure 4 of the '054 patent shows the second magnetic member both embedded and attached to the projection of the auxiliary spectacle frame. Id. at 14. Aspex states that the term “secured to” is a genus term that encompasses the species term “secured in.” Id.

Altair explains that there...