The assertion of different claims in a subsequent suit—when those claims all contain a limitation that has already been construed, in the same context, in an earlier lawsuit—does not create a new “issue” to defeat collateral estoppel.
Aspex Eyewear, Inc. & Contour Optik, Inc. v. Zenni Optical LLC, No. 2012-1318 (Fed. Cir. 2013).
Countour Optik, Inc. and sublicensee Aspex Eyewear, Inc. (collectively “Aspex”) sued Zenni Optical, LLC (“Zenni”) for infringement of U.S. Patents No. 5,737,054 (the “'054 patent”), No. 6,012,811 (the “'811 patent”), and No. 6,092,896 (the “'896 patent”), all relating to magnetic clip-on eyewear, such as sunglasses. The district court held that Aspex was collaterally estopped from pursuing this lawsuit, based on earlier litigation between Aspex and Altair Eyewear, Inc. for infringement of the same patents (the “Altair litigation”).
The Altair litigation involved the same three patents and many of the same claims now in suit. In that litigation, the district court had construed the term “retaining mechanisms” in the ‘811 and ‘896 patents as requiring supporting frames—such as rims—around the lenses and construed the term “frame” in the ‘054 patent as requiring rims. The Federal Circuit affirmed the construction of “retaining mechanisms,” and held that the patents were not infringed because Altair’s magnetic clip-ons were rimless. However, it remanded on the construction of “frame,” finding the ‘054 patent did not limit that term to one with rims. On remand, the district court held that the ‘054 claim was invalid for obviousness. The Federal Circuit affirmed.
Here, the district court applied the Altair rulings, finding the Zenni rimless magnetic clip-on sunglasses to be materially indistinguishable from the Altair ones. Thus, the district court held that collateral estoppel barred this suit. Aspex appealed, arguing that the issues at stake were not identical because the same claims were not at issue.
The Federal Circuit affirmed the holding of the district court. The district court correctly defined the issue as infringement by magnetic rimless clip-on eyewear in view of the final construction of “retaining mechanisms” as requiring rims. The district court correctly found that Aspex had a full and fair opportunity to litigate the issue. While the newly asserted claims at issue in this litigation were not all previously construed and applied in Altair, every claim asserted against Zenni contained the same “retaining mechanism” limitation, in the same context, that the Federal Circuit found dispositive of non-infringement in Altair. More, the Zenni and Altair products were materially identical. In such circumstances, the assertion of different claims in a subsequent suit does not create a new “issue” to defeat preclusion. Further, there were no changed circumstances here: the selection of additional claims for litigation and additional terms for construction does not override the prior holding of non-infringement. The Federal Circuit thus affirmed that Aspex was collaterally estopped from re-litigating infringement of these patents against Zenni.
A copy of the opinion can be found here.