May 2013
Prior Suit Involving Materially Identical Products and Same Claim Term Collaterally Estops Relitigation of Infringement
| Judges: Newman (author), Prost, Reyna |
| [Appealed from S.D. Fla., Judge Zloch] |
In Aspex Eyewear, Inc. v. Zenni Optical LLC, No. 12-1318 (Fed. Cir. Apr. 19, 2013), the Federal Circuit affirmed that a first lawsuit involving certain eyewear patents collaterally estopped a second lawsuit involving the same patents, where the same claim term was dispositive of infringement.
Specifically, the Court concluded that Contour Optik, Inc. and sublicensee Aspex Eyewear, Inc. (collectively “Aspex”) were collaterally estopped from suing Zenni Optical, LLC (“Zenni”) for patent infringement, based on earlier litigation between Aspex and Altair Eyewear, Inc. (“Altair”). Both litigations involved the same three patents—U.S. Patent Nos. 5,737,054 (“the ’054 patent”); 6,012,811 (“the ’811 patent”); and 6,092,896 (“the ’896 patent”)—and many of the same claims. The ’054, ’811, and ’896 patents are directed to clip-on eyewear in which magnets secure the bridge portions of the eyewear.
The Altair district court construed the term “retaining mechanism” in the ’811 and ’896 patents as requiring supporting frames, such as rims around the lenses. The Altair district court granted SJ of noninfringement because none of Altair’s products contained a rim around the sunglass lens. After the Federal Circuit held on appeal that the term “frame” in the ’054 patent was not limited to one with rims, the Altair district court held that the only ’054 claim asserted, claim 1, was invalid for obviousness under that construction.
In the present litigation, the district court cited Eleventh Circuit precedent, under which collateral estoppel applies when (1) the issue at stake is identical to the one involved in the prior proceeding; (2) the issue was actually litigated in the prior proceeding; (3) the determination of the issue in the prior litigation was a critical and necessary part of the judgment; and (4) the party against whom collateral estoppel is asserted had a full and fair opportunity to litigate the issue in the prior proceeding. The district court held that the Altair decision settled the question of whether rimless magnetic clip-on sunglasses can infringe the ’811 and ’896 patents. The district court concluded that collateral estoppel barred this suit against Zenni because its accused rimless magnetic clip-on sunglasses were materially indistinguishable from Altair’s.
On appeal, Aspex argued that the issues at stake were not identical because the claim terms construed and applied in the Altair litigation were not the same. Specifically, Aspex argued that the question of infringement turned on the meaning of the claim terms “primary frame,” “auxiliary frame,” “first frame,” and “second frame,” and that those terms were not at issue in the Altair litigation. Aspex also argued that the issues at stake were different because some of the claims of the ’896 patent that were asserted against Zenni were not asserted against Altair.
“The selection of additional claims for litigation and additional terms for ‘construction’ does not override the holding of non-infringement. In determining whether Aspex had a full and fair opportunity to litigate the dispositive claim limitations in the prior proceeding, ‘[i]t is the issues litigated, not the specific claims around which the issues were framed, that is determinative.’” Slip op. at 8-9 (alteration in original) (quoting Westwood Chem., Inc. v. United States, 525 F.2d 1367, 1372 (Ct. Cl. 1975)).
The Federal Circuit observed that every claim asserted against Zenni contained the same “retaining mechanism” limitation, in the same context, which was dispositive of noninfringement in the Altair litigation. The Court held that in such circumstances, the assertion of different claims in a subsequent suit does not create a new issue to defeat preclusion. The Court determined that the construction of “retaining mechanism” was determinative of noninfringement by the Zenni eyewear and that it was irrelevant whether the additional claims contained additional terms that were not previously construed.
The Federal Circuit held that the district court correctly defined the issue as infringement by magnetic rimless clip-on eyewear in view of “retaining mechanism” being construed as requiring rims, and correctly found that Aspex had a full and fair opportunity to litigate that issue. In determining whether Aspex had a full and fair opportunity to litigate the dispositive claim limitations in the prior proceeding, the Court explained that “[i]t is the issues litigated, not the specific claims around which the issues were framed, that is determinative.” Slip op. at 8-9 (quoting Westwood Chem., Inc. v. United States, 525 F.2d 1367, 1372 (Ct. Cl. 1975)).
On that basis, the Federal Circuit affirmed that Aspex was collaterally estopped from relitigating infringement of the patents against Zenni.
