Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.
672 F.3d 1335
| Fed. Cir. | 2012Background
- Aspex owns U.S. Patent No. RE37,545 for magnetic clip-on eyewear; claims cover magnetic engagement between primary and auxiliary frames.
- Revolution and Marchon sold Old Design products with top-mounted magnetic projections; later designs (New Design) embedded magnets in primary frames.
- Aspex sued Revolution for earlier infringement and later sued Marchon; resolutions included a 2006 California Action and a 2008 settlement dismissing Old Design claims with prejudice.
- PTO reexamined the '545 patent (2008) allowing amended claim 23 and adding new claim 35; Aspex then pursued infringement actions based on amended/new claims.
- District court granted summary judgment for res judicata against Revolution and Marchon, and against induced infringement claims against Zelman and Nike; court described need for remand to address post-settlement and post-action products.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether reexamination created new causes of action for res judicata purposes. | Aspex argues amended/new claims are new actions. | Revolution/Mar wh argue no new action; same patent rights. | No new action; res judicata applies only to existing claims. |
| Whether post-settlement/New Design products are barred by res judicata. | Aspex argues New Design rights not barred. | Defendants contend products after California Actions are barred. | Res judicata does not bar post-settlement/New Design claims; remand required. |
| Whether settlement with Marchon precludes New Design infringement actions. | Settlement limited to Old Design; New Design not barred. | Settlement precludes all claims arising from Marchon actions. | Settlement does not bar New Design claims; scope limited to Old Design. |
| Whether preamble and claim terms limit the scope of the '545 patent claims. | Preamble broad; should not limit auxiliary-frame-only claims. | Preamble limits claims to combined primary+auxiliary frame. | Preamble not limiting; claims interpreted with other terms. |
| Whether collateral estoppel may affect remand issues. | Collateral estoppel could limit Aspex’s rights. | Collateral estoppel not fully addressed below. | Collateral estoppel issues reserved for remand. |
Key Cases Cited
- Nystrom v. Trex Co., 580 F.3d 1281 (Fed. Cir. 2009) (collateral estoppel may bar relitigation of issues from prior action)
- Gillig v. Nike, Inc., 602 F.3d 1354 (Fed. Cir. 2010) (res judicata does not bar new rights accrued during pendency of action)
- Lawlor v. Nat'l Screen Serv. Corp., 349 U.S. 322 (1955) (prior judgment cannot extinguish claims that did not exist at time of trial)