The U.S. Court of Appeals for the Federal Circuit upheld a district court ruling that claims that emerge from a reexamination do not create a new cause of action that did not exist before.  Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., Case No. 11-1147 (Fed. Cir., Mar. 14, 2012) (Bryson, J.).  

Aspex Eyewear sued Marchon Eyewear for patent infringement in 2006, alleging Marchon’s old design of eyeglass frames infringed its patent.  While that  case was pending, Marchon began making and selling a new design of frames that were substantially similar to the old design.  In early 2008, Aspex and Marchon entered into a settlement agreement that included a stipulation to dismiss with prejudice all claims that could have been raised in the settled litigation.  The stipulation specifically referred to Marchon’s old design of eye frames, and Marchon agreed to stop producing and selling the old design.

A third party requested a reexamination of the Aspex patent.  After the 2006 case was settled, the reexamination ended with Aspex amending claim 23 and adding new claim 35.  Aspex then filed a new suit against Marchon, accusing Marchon’s old design and new design of infringing the reexamined claims.  Marchon argued that the suit was barred by res judicata and by the 2008 settlement agreement.  The district court held that the newly asserted patent claims were the same as the old claims and the accused products were the same, therefore the suit was barred by res judicata

By statute, claims that emerge from a reexamination cannot be broader in scope than the original claims.  In addition, the district court found that even though the reexamined claims did not exist at the time the 2006 suit was filed, and therefore could not have been brought at that time, the reexamined claims were merely new versions of claims that were part of the Aspex patent prior to its reexamination.  Aspex appealed. 

The Federal Circuit, affirming the district court in part, noted that because the reexamined claims were narrower in scope than the original claims, and because the changes to the claims were insubstantial, the district court’s correctly concluded that Aspex’s allegations against Marchon’s old design was barred by res judicata.

However, the Federal Circuit declined to bar Aspex’s allegation of infringement by Marchon’s new design because those products were not made or sold before the 2006 suit.  Marchon argued that the new design was essentially the same as the old design, therefore the claims should be barred.  However, the Federal Circuit concluded that because a claim for patent infringement against the new design could not have been made at the time the 2006 complaint was filed, res judicata did not apply.  This claim was remanded to the district court.  

The Federal Circuit also concluded that the terms of the 2006 settlement agreement did not bar Aspex from suing Marchon over the new design, regardless of whether they were made or sold before the effective date of the settlement agreement.  The general rule is that the products at issue in a patent suit are those that exist at the time the complaint is filed.  Because there was not an express agreement that the new design was included in the dismissal stipulation, the general rule applied and claims against the new design were not barred.