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Claims Need Not Address All Prior Art Problems Set Out in Specification to Satisfy Written Description Requirement

08-1267
April 29, 2009
Goldberg, Joshua L.

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Last Month at the Federal Circuit - May 2009

Judges: Michel (author), Bryson, Posner (Circuit Judge sitting by designation)

[Appealed from: C.D. Cal., Judge Phillips]

In Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., Nos. 08-1267, -1376 (Fed. Cir. Apr. 29, 2009), the Federal Circuit affirmed the district court’s denial of SJ of invalidity of a claim of U.S. Patent No. RE37,545 (“the ’545 patent”). Additionally, the Federal Circuit affirmed the district court’s grant of SJ of infringement of the ’545 patent. The Federal Circuit also affirmed the district court’s denial of motions for JMOL, a new trial, and remittitur. Lastly, the Federal Circuit affirmed the district court’s denial of a motion for attorneys’ fees based on alleged willful infringement of the ’545 patent.

The ’545 patent is a reissue patent of U.S. Patent No. 5,568,207 (“the ’207 patent”) and is directed to an eyeglass device including a primary frame and an auxiliary frame for fastening a second set of lenses onto the primary frame. According to the ’545 patent, at least two deficiencies existed in prior art frames: the “stable support” issue and the “decreased strength” problem. Revolution Eyewear, Inc. (“Revolution”) sued Aspex Eyewear, Inc. (“Aspex”) and Thierry Ifergan for infringement of U.S. Patent No. 6,343,858. 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 the ’545 patent. The district court dismissed Revolution’s infringement action for lack of standing. Additionally, the district court granted Revolution’s noninfringement SJ motion as to claims 6 and 34 of the ’545 patent, and granted Contour’s infringement SJ motion as to claim 22 of the ’545 patent. The district court also denied Revolution’s invalidity SJ motion as to claim 22 of the ’545 patent and allowed the case to proceed to trial on the damages issue only.

The jury found a royalty rate of 5% and awarded damages of $4,319,530 to Contour. But, the district court concluded that Revolution was entitled to absolute intervening rights and reduced the damages award by $125,964. The district court, however, rejected Revolution’s equitable intervening rights defense, finding that Revolution acted with unclean hands after it learned of the district court’s SJ orders. Additionally, the district court denied Contour’s motion for attorneys’ fees based on Revolution’s alleged willful infringement of the ’545 patent. After entering final judgment, the district court denied Revolution’s motions for JMOL, a new trial, and remittitur. Revolution appealed the issues of validity, infringement, and the denial of its post-trial motions. Contour cross-appealed the denial of attorneys’ fees.

The Federal Circuit then considered Revolution’s invalidity arguments. First, the Court considered Revolution’s argument that claim 22 of the ’545 patent did not satisfy the written description requirement under § 112, ¶ 1, because it did not address both of the prior art deficiencies identified in the specification. The Court rejected this argument, stating that it had previously held that “when the specification sets out two different problems present in the prior art, it is unnecessary for each and every claim in the patent to address both problems.” Slip op. at 10. The Court noted that this principle applied not only in claim construction but also in written description analysis. Since claim 22 was directed solely to a primary frame and addressed the prior art “decreased strength” issue, the Court concluded that the written description requirement was satisfied.

The Court then considered Revolution’s argument that claim 22 of the ’545 patent was invalid for violating 35 U.S.C. § 251, which states that a reissue patent shall be reissued “for the invention disclosed in the original patent.” Id. at 11. Specifically, Revolution argued that claim 22 did not claim the same invention as disclosed in the original ’207 patent. The Court noted that the inquiry for the “original patent” requirement of § 251 was analogous to the inquiry for the written description requirement under § 112, ¶ 1, and held that because the written description requirement was satisfied, claim 22 complied with § 251.

Next, the Court considered whether claim 22 of the ’545 patent was permissible under the recapture rule, which restricts the ability of patentees to broaden the scope of their claims through reissue patents. Since no amendments or arguments were made during prosecution of the original ’207 patent, the Court found that the recapture rule did not apply. The Court then considered Revolution’s argument that the inventor disclaimed certain claim scope. The Court acknowledged that the inventor disclaimed in the specification an auxiliary frame that was not stably supported in top-mounting configuration and a primary frame that had embedded magnetic chambers, but claim 22 was not directed to either. The Court thus held that the inventor did not disclaim the subject matter of claim 22. Because claim 22 satisfied the written description requirement under § 112, ¶ 1, and complied with § 251, and because the inventor did not disclaim the subject matter of claim 22, the Court affirmed the district court’s denial of SJ of invalidity.

 “[W]hen the specification sets out two different problems present in the prior art, it is unnecessary for each and every claim in the patent to address both problems.” Slip op. at 10.

The Federal Circuit then considered Revolution’s infringement arguments. First, the Court considered Revolution’s argument that its primary frame did not infringe because it was not capable of being top-mounted with its counterpart auxiliary frame or any commercially sold auxiliary frame. The Federal Circuit noted that the district court emphasized under its construction of claim 22 of the ’545 patent that the magnetic members of the primary frame need only be capable of magnetically attracting magnetic members of an auxiliary frame. Since claim 22 only required a capacity to perform a function, the Court distinguished the case from High Tech Medical Instrumentation, Inc. v. New Image Industries, Inc., 49 F.3d 1551 (Fed. Cir. 1995), which included a claim requiring structure (a camera “rotatably coupled” to a body member), and which stated that “a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.” Id. at 1555. Moreover, the Court explained that Revolution’s frame did not need to be altered in any way for it to be “capable of engaging” magnetic members. And, since claim 22 was directed to the primary frame, not a method of using the primary frame, whether the usage of the primary frame was modified was irrelevant.

The Court also rejected Revolution’s argument that its primary frame did not infringe because it was not capable of stably supporting an auxiliary frame. According to the district court’s claim construction, “stable support” was not a limitation of claim 22. And, since Revolution did not challenge the claim construction, the Court found that Revolution waived its “stable support” argument. Accordingly, the Federal Circuit affirmed the district court’s grant of SJ of infringement.

Next, the Federal Circuit considered Revolution’s contentions that the district court erred in denying Revolution’s post-trial motions for JMOL, a new trial, and remittitur. The Court reviewed the denial of these post trial motions by applying the law of the regional circuit—in this case, the Ninth Circuit. In particular, the Federal Circuit reviewed de novo the district court’s denial of Revolution’s motion for JMOL. Revolution argued that JMOL was required because the jury verdict awarding damages of $4.3 million to Contour was mathematically impossible given that the jury found a reasonable royalty rate of 5% and Contour’s counsel calculated a total revenue of $55 million. The Court noted, however, that the jury did not need to use the total revenue calculated by Contour to calculate the damages. Revolution also argued that JMOL was required because there was no substantial evidence to support the jury’s finding of the 5% royalty rate. The Federal Circuit agreed with the district court that there was sufficient evidence to support the 5%royalty rate. Accordingly, the Federal Circuit held that the district court did not err in denying Revolution’s motion for JMOL.

The Federal Circuit then reviewed for an abuse of discretion the district court’s denial of Revolution’s motion for a new trial. Revolution argued that the $4.3 million damages award exceeded the royalty for both the infringing primary frame and the noninfringing auxiliary frame. After reiterating that the damages award was within reason, the Court pointed out that a damages award based on a reasonable royalty rate was only the floor, not the exact amount. The Federal Circuit therefore held that the district court did not abuse its discretion in denying Revolution’s motion for a new trial.

Next, the Federal Circuit reviewed for a clear abuse of discretion the district court’s denial of Revolution’s motion for remittitur. The Court noted that the verdict was supported by substantial evidence and therefore found no abuse of discretion. Accordingly, the Federal Circuit affirmed the district court’s denial of Revolution’s post-trial motions for JMOL, a new trial, and remittitur.

Lastly, the Federal Circuit considered Contour’s contention that the district court erred in denying its motion for attorneys’ fees based on Revolution’s alleged willful infringement. Contour argued that there was no distinction between “intervening rights” willfulness and “exceptional case” willfulness, and therefore the district court committed reversible error in denying its motion for attorneys’ fees based on willful infringement. The Court noted that the issue of equitable intervening rights was entirely equitable in nature and, as such, issues of fact underlying the equitable intervening rights were matters for court, not jury disposition. In contrast, the Federal Circuit noted that the issue of willful infringement remained with the fact-finder. In this case, Contour failed to plead willful infringement, and the fact-finder did not examine the issue. This did not prevent the district court from taking into account, as dictated by the equities, facts that would normally be considered under willful infringement analysis. But, as explained by the district court, such a limited finding of willfulness on an equitable issue would not be a sufficient “clear and convincing” finding of willfulness to support finding the case “exceptional.” Thus, finding no clear error in the district court’s conclusion that the case was not exceptional, the Federal Circuit affirmed the district court’s denial of Contour’s motion for attorneys’ fees based on willful infringement.

Summary authored by Joshua L. Goldberg, Esq.