Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.
| Decision Date | 29 April 2009 |
| Docket Number | No. 2008-1376.,No. 2008-1267.,2008-1267.,2008-1376. |
| Citation | 563 F.3d 1358 |
| Parties | REVOLUTION EYEWEAR, INC., Plaintiff/Counterclaim Defendant-Appellant, v. ASPEX EYEWEAR, INC. and Thiery Ifergan, Defendants/Counterclaimants-Appellees, and Manhattan Design Studio, Inc., Contour Optik, Inc., and Asahi Optical Co. Ltd., Counterclaimants-Cross Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
R. Joseph Trojan, Trojan Law Offices, of Beverly Hills, CA, argued for plaintiff/counterclaim defendant-appellant. Of counsel was Dylan C. Dang.
Michael A. Nicodema, Greenberg Traurig, LLP, of Florham Park, NJ, argued for defendants/counterclaimants-appellees, and counterclaimants-cross appellants.
Before MICHEL, Chief Judge, BRYSON, and POSNER,* Circuit Judges.
In 2002, Revolution Eyewear, Inc. ("Revolution") initiated a patent infringement action against Aspex Eyewear, Inc. ("Aspex") and Thierry Ifergan in the United States District Court for the Central District of California. Aspex, together with Contour Optik, Inc., Manhattan Design Studio, Inc., and Asahi Optical Co. Ltd. (collectively, "Contour"), counterclaimed that Revolution infringed claims 6, 22, and 34 of U.S. Patent No. RE37,545 ("`545 patent"). This appeal only relates to the counterclaim. Revolution appeals the district court's orders (1) denying Revolution's motion for summary judgment of invalidity of claim 22 of the '545 patent, (2) granting Contour's motion for summary judgment of infringement of claim 22 of the '545 patent, and (3) denying Revolution's motions for judgment as a matter of law ("JMOL"), for a new trial, or for remittitur. Contour cross-appeals the district court's order denying Contour's motion for attorney fees based on Revolution's alleged willful infringement of the '545 patent. For the reasons set forth below, we affirm.
The technology in this case involves a spectacle frame that supports an auxiliary frame, enabling the user to securely fasten a second set of lenses (e.g., sunglass lenses) onto the primary frame (often holding prescription lenses). Contour is the assignee of the '545 patent, the reissue patent of U.S. Patent No. 5,568,207 ("'207 patent"). The sole inventor for both patents is Richard Chao.
According to the '545 patent, at the time of the invention, at least two deficiencies existed in conventional spectacle frames: the "stable support" issue and the "decreased strength" problem. The former refers to the fact that because the auxiliary lenses were simply attached to the frames by magnetic materials, the auxiliary lenses might easily move downward relative to the frames and might be easily disengaged from the frames when the users conducted jogging or jumping exercises. '545 patent col.1 ll.26-32. Chao's invention addresses this issue through an auxiliary frame that may be stably supported on the primary frame, i.e., the "top-mounted" design. Id. col.2 ll.49-56. The "decreased strength" problem originated from the design of the prior art frames, in which the magnetic materials were embedded in the frames, thus requiring the excavation of four or more cavities in a frame. Id. col.1 ll.33-37. In Chao's invention, the magnetic members are supported by projections located at the rear/side portions of both the primary frame and the auxiliary frame. Id. col.2 ll.36-38, ll.43-44. Because the magnetic members are not embedded in the frames, the strength of the frames is not decreased. Id. col.3 ll.24-26.
The original '207 patent discloses an eyeglass device comprising a primary frame and an auxiliary frame. The only two claims of the '207 patent are both directed to the primary frame and auxiliary frame combination. The '545 patent has thirty-four claims. The only claim at issue, claim 22, recites:
22. An eyeglass device comprising:
a primary spectacle frame for supporting primary lenses therein and having two side portion extensions extending rearwardly therefrom and having a front side, a rear side, a top side, and a rear end, each of said rear ends pivotally coupling a leg configured to conform to a user at a distal end thereof, each of said extensions of said primary spectacle frame further having a projection attached to each of said rear sides, and a pair of first magnetic members respectively secured in said projections, said first magnetic members capable of engaging second magnetic members of an auxiliary spectacle frame so that lenses of an auxiliary spectacle frame are located in front of said primary lenses.
'545 patent col.6 ll.46-59.
The alleged infringer, Revolution, makes and sells IMF and IMF/T magnetic clip-on eyewear. These products include a primary frame and an auxiliary frame, with the auxiliary frame magnetically mounted at the bottom of the primary frame. Both the primary frame and the auxiliary frame include a pair of projections secured to the rear/sides of the frame. Each projection supports a magnetic member. None of the magnetic members is embedded in the frames.
In 1999, Aspex sued Revolution for infringement of the '207 patent. Aspex Eyewear, Inc. v. Revolution Eyewear, Inc., No. 99-CV-1623, 2001 WL 34852697, at *1, 2001 U.S. Dist. LEXIS 25831, at *1-2 (C.D. Cal. June 4, 2001). The district court found that claim 1 of the '207 patent was directed to the "top-mounted" primary and auxiliary frame combination and that Revolution's products were in a "bottom-mounted" configuration. Id. 2001 WL 34852697, at *2-3, 2001 U.S. Dist. LEXIS 25831, at *5, 10. Thus, the court granted Revolution's motion for summary judgment of non-infringement. Id. 2001 WL 34852697, at *9, 2001 U.S. Dist. LEXIS 25831, at *27. This court summarily affirmed. Aspex Eyewear, Inc. v. Revolution Eyewear, Inc., 42 Fed.Appx. 436 (Fed.Cir.2002).
In 2002, Revolution sued Aspex for infringement of U.S. Patent No. 6,343,858 ("'858 patent"). Contour counterclaimed that Revolution infringed claims 6, 22, and 34 of the '545 patent. Later, the district court dismissed Revolution's '858 patent infringement action for lack of standing. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087 (C.D.Cal. Apr. 13, 2005). Thus, the only matter left in this lawsuit is Contour's '545 patent infringement action.
Because Contour offered no opposition, the district court granted Revolution's motion for summary judgment of non-infringement as to claims 6 and 34.1 Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087, slip op. at 6 (C.D.Cal. Aug. 7, 2003) (). The court, however, denied the motion for summary judgment of non-infringement of claim 22. Id. at 11-19.
Later, Contour filed a motion for summary judgment of infringement of claim 22. Revolution conceded in its initial brief that its primary frames included all of the elements of claim 22 except that a top-mounted auxiliary frame would not be "stably supported." However, in its supplemental brief, Revolution abandoned the argument that claim 22 included a "stable support" limitation. Therefore, the court found that Revolution's primary frames literally infringed claim 22 and granted Contour's motion. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087 (C.D.Cal. Apr. 30, 2007) ("SJ Order of Infringement of Claim 22").
In a separate order issued on the same day, the court denied Revolution's motion for summary judgment of invalidity of claim 22. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087 (C.D.Cal. Apr. 30, 2007) ("SJ Order of Validity"). It concluded that even though the specification of the '545 patent addressed two deficiencies in the prior art, claim 22 need not include a "stable support" limitation because the claim was directed solely to the "decreased strength" problem. Id. at 22-23. The court observed that the drawings of the '545 patent "appear[ed] to convey to a person of ordinary skill in the art the fact that the substance of claim 22 was in the possession of the inventor at the time he applied for the patent." Id. at 17. Similarly, it found that "a person skilled in the art would have identified the subject matter of claim 22 as having been disclosed in the '207 patent." Id. at 25-26.
The district court further entertained Revolution's argument under the recapture rule even though no claim amendments or arguments were made during the prosecution of the '207 patent. Id. at 29. The court held that Revolution failed to establish that Contour surrendered claims without a "stable support" limitation because such a limitation was directed to the auxiliary frame while claim 22 was directed to the primary frame only. Id. at 35-37.
As Revolution's infringement liability was established by the summary judgment rulings, the case proceeded to trial on the damages issue only. After a four-day trial, the jury returned a verdict, finding a royalty rate of 5% and awarding damages of $4,319,530 to Contour. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087, 2007 WL 5478798, slip op. at 2 (C.D.Cal. Sept. 21, 2007) ("Special Verdict"). Afterwards, the district court concluded that Revolution was entitled to absolute intervening rights and reduced the damages award by $125,964. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087, slip op. at 28 (C.D.Cal. Jan. 3, 2008) ("Order on Intervening Rights"). However, the court rejected Revolution's equitable intervening rights defense. Id. at 32. Specifically, the court found that "Revolution acted with `unclean hands' after it learned of the Court's April 30, 2007, Order Granting Summary Judgment in favor of Contour and finding that Revolution's products infringed Claim 22 of the '545 patent." Id. at 29.
On February 25, 2008, the district court issued an order granting in part Contour's motion for attorney fees. Revolution Eyewear,...
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