CAFC reverses, remands in Aspex v. Marchon
The summary of the outcome:
In sum, we reverse the district court’s grant of summary judgment on res judicata grounds to Revolution and Marchon with respect to products that were not at issue in the California Actions and were not covered by the Marchon settlement agreement, in particular the New Design products sold by Revolution and Marchon. We remand for further proceedings, including a determination as to whether the New Design products that Revolution introduced during the pendency of the Revolution California Action were included within the scope of that litigation, and whether principles of collateral estoppel have any effect of limiting Aspex’s rights to proceed under the ’545 patent against the defendants. If the court determines that Aspex’s action against one or more of the defendants is not barred, the court will be required to determine the issue of infringement based on the con- struction of the critical terms of the two claims at issue in this case.
Aspex’s allegations of induced infringement against Zelman and Nike stem from Revolution’s and Marchon’s alleged direct infringement, respectively. Given our holding above reversing the district court’s grant of sum- mary judgment in favor of Revolution and Marchon, the district court’s grant of summary judgment in favor of Zelman and Nike is likewise reversed and the proceedings against those defendants are included within the scope of the remand.
The eBay case was cited:
Third, the Supreme Court has held that injunctions should not be routinely granted in patent cases. See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). It is therefore likely that there will be many instances in which an injunction has not been issued, but in which an infringer continues with its infringing activities. In that setting, a new action for infringement is the patentee’s only recourse. It would be peculiar (and exceptionally unfair) to invoke res judicata to bar any further relief to a patentee in such a situation, thus effectively giving the infringer an unpaid license for the remainder of the life of the patent based on an earlier judgment of infringement.
Also:
See Forest Labs., Inc. v. Ivax Pharm., Inc., 501 F.3d 1263, 1272 (Fed. Cir. 2007); Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004); Additive Controls Measure- ment Sys., Inc. v. Flowdata, Inc., 986 F.2d 476, 479-80 (Fed. Cir. 1993). A patentee’s right to recover for post- judgment acts of infringement should not depend on the willingness of a court to issue an injunction that would test the permissible limits of injunctive breadth.
As to res judicata:
In patent cases, this court has applied the general rule that res judicata does not bar the assertion of “new rights acquired during the action which might have been, but were not, litigated.” Gillig v. Nike, Inc., 602 F.3d 1354, 1363 (Fed. Cir. 2010), quoting Computer Assocs. Int’l, Inc. v. Altai, Inc., 126 F.3d 365, 370 (2d Cir. 1997); see also Manning v. City of Auburn, 953 F.2d 1355, 1360 (11th Cir. 1992) (“for res judicata purposes, claims that ‘could have been brought’ are claims in existence at the time the original complaint is filed or claims actually asserted by supplemental pleadings or otherwise in the earlier action”). While a party may seek to pursue claims that accrue during the pendency of a lawsuit adjudicated in that lawsuit, the party is not required to do so, and res judicata will not be applied to such accruing claims if the party elects not to have them included in the action. Gillig, 602 F.3d at 1363; In re Piper Aircraft Corp., 244 F.3d 1289, 1298 (11th Cir. 2001); Curtis v. Citibank, N.A., 226 F.3d 133, 139 (2d Cir. 2000). The question to be resolved on remand, then, is whether in the course of the 2002 Revolution action in California, the parties consented to have the court adjudicate their rights as to products that were made and sold during the pendency of that case.
On the impact of a settlement agreement:
In a settlement agreement, the parties to an action can determine for themselves what preclusive effect the settlement of the first action will have as to any potential subsequent actions between the parties. Pactiv Corp. v. Dow Chem. Co., 449 F.3d 1227, 1231 & n.2 (Fed. Cir. 2006); Greenberg v. Bd. of Governors, 968 F.2d 164, 168 (2d Cir. 1992); see generally Restatement (Second) of Judgments § 26(1)(a) (1982).
On the topic of judicial economy:
Because the district court’s claim construction rulings did not result in a judgment of noninfringement, we are not compelled to address those rulings at this time. However, the claim construction issues that the parties have presented to us are likely to be dispositive as to the issue of infringement, and for us not to address those issues at this juncture would in all likelihood result in further proceedings in the district court followed by another appeal in which pre- cisely the same claim construction issues would be pre- sented. In the interest of judicial economy, we therefore exercise our discretion to address the claim construction issues presented by the parties. See Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1379 (Fed. Cir. 2011); Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1383-84 (Fed. Cir. 2005); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437-38 (Fed. Cir. 1988).
As to limitations from a preamble of a claim:
This court has recognized that as a general rule preamble language is not treated as limiting. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
And nothing in the prosecution history suggests that the preamble language was considered necessary to the patentability of the claims. Under those circumstances, this court has found the preamble lan- guage not to be limiting. See Am. Med. Sys., Inc. v. Bio- litek, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
***Also
In order to construe the settlement agreement to reach those New Design products that were introduced during the several-month period before the settlement agreement was executed, we would have to conclude that the parties intended to depart from the normal rule that the products at issue in a patent suit are those in exis- tence at the time the suit is filed. See Gillig, 602 F.3d at 1363. As this court has noted, the parties’ decision to depart from the normal rules of claim preclusion by agreement “must be express.” Pactiv Corp., 449 F.3d at 1231. There was no such express agreement here.
AND
That result would be at odds with the ordinary principles of claim differentiation, as “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
AND
See Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010) (construing “adapted to,” in context, to mean “designed or configured to,” not “having the capacity to”); Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840 (N.D. Cal. Dec. 20, 2006) (construing “adapted to,” in light of patent as a whole, to mean “con- figured to,” not “capable of”).
AND
see generally Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (when different words are used in separate claims, they are presumed to have different meanings); Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987) (same).
***UPDATE. From a press release by Aspex on March 15:
Pembroke Park, FL – March 15, 2012, Aspex Eyewear Group announced today that the Federal Circuit Court of Appeals in Washington DC issued a ruling on March 14, 2012 that will allow its patent infringement litigation in Miami, Florida against several defendants, including Marchon Eyewear, Inc. and Revolution Eyewear, Inc., to proceed.
In the ruling, the Federal Circuit confirmed that the prior successful litigation over one of Aspex’s magnetic clip-on technology patents does not bar the company’s patent infringement claims on products made after those suits were resolved.
An excerpt from the ruling states:
In sum, we reverse the district court’s grant of summary judgment on res judicata grounds to Revolution and Marchon with respect to products that were not at issue in the California Actions and were not covered by the Marchon settlement agreement, in particular the New Design products sold by Revolution and Marchon.
“We applaud the decision by the Federal Circuit, which allows Aspex to proceed with patent infringement claims against Revolution, Marchon and Nike.” said Thierry Ifergan, Executive Vice President, Aspex Eyewear. “This ruling validates our right to prevent others from ‘trespassing’ on Aspex’s valuable intellectual property and sends a clear message that continued infringement will subject the infringer to enforcement actions. We remain resolute in our efforts to enforce our patents and intend to continue to vigorously defend our position in this matter.”
In summarizing the court’s reasoning that Aspex should litigate to defend the company’s intellectual property, the decision states that in the situation where “an infringer continues with its infringing activities… a new action for infringement is the patentee’s only recourse. It would be peculiar (and exceptionally unfair) to invoke res judicata to bar any further relief to a patentee in such a situation, thus effectively giving the infringer an unpaid license for the remainder of the life of the patent based on an earlier judgment of infringement.
In sum, we reverse the district court’s grant of summary judgment on res judicata grounds to Revolution and Marchon with respect to products that were not at issue in the California Actions and were not covered by the Marchon settlement agreement, in particular the New Design products sold by Revolution and Marchon. We remand for further proceedings, including a determination as to whether the New Design products that Revolution introduced during the pendency of the Revolution California Action were included within the scope of that litigation, and whether principles of collateral estoppel have any effect of limiting Aspex’s rights to proceed under the ’545 patent against the defendants. If the court determines that Aspex’s action against one or more of the defendants is not barred, the court will be required to determine the issue of infringement based on the con- struction of the critical terms of the two claims at issue in this case.
Aspex’s allegations of induced infringement against Zelman and Nike stem from Revolution’s and Marchon’s alleged direct infringement, respectively. Given our holding above reversing the district court’s grant of sum- mary judgment in favor of Revolution and Marchon, the district court’s grant of summary judgment in favor of Zelman and Nike is likewise reversed and the proceedings against those defendants are included within the scope of the remand.
The eBay case was cited:
Third, the Supreme Court has held that injunctions should not be routinely granted in patent cases. See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). It is therefore likely that there will be many instances in which an injunction has not been issued, but in which an infringer continues with its infringing activities. In that setting, a new action for infringement is the patentee’s only recourse. It would be peculiar (and exceptionally unfair) to invoke res judicata to bar any further relief to a patentee in such a situation, thus effectively giving the infringer an unpaid license for the remainder of the life of the patent based on an earlier judgment of infringement.
Also:
See Forest Labs., Inc. v. Ivax Pharm., Inc., 501 F.3d 1263, 1272 (Fed. Cir. 2007); Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004); Additive Controls Measure- ment Sys., Inc. v. Flowdata, Inc., 986 F.2d 476, 479-80 (Fed. Cir. 1993). A patentee’s right to recover for post- judgment acts of infringement should not depend on the willingness of a court to issue an injunction that would test the permissible limits of injunctive breadth.
As to res judicata:
In patent cases, this court has applied the general rule that res judicata does not bar the assertion of “new rights acquired during the action which might have been, but were not, litigated.” Gillig v. Nike, Inc., 602 F.3d 1354, 1363 (Fed. Cir. 2010), quoting Computer Assocs. Int’l, Inc. v. Altai, Inc., 126 F.3d 365, 370 (2d Cir. 1997); see also Manning v. City of Auburn, 953 F.2d 1355, 1360 (11th Cir. 1992) (“for res judicata purposes, claims that ‘could have been brought’ are claims in existence at the time the original complaint is filed or claims actually asserted by supplemental pleadings or otherwise in the earlier action”). While a party may seek to pursue claims that accrue during the pendency of a lawsuit adjudicated in that lawsuit, the party is not required to do so, and res judicata will not be applied to such accruing claims if the party elects not to have them included in the action. Gillig, 602 F.3d at 1363; In re Piper Aircraft Corp., 244 F.3d 1289, 1298 (11th Cir. 2001); Curtis v. Citibank, N.A., 226 F.3d 133, 139 (2d Cir. 2000). The question to be resolved on remand, then, is whether in the course of the 2002 Revolution action in California, the parties consented to have the court adjudicate their rights as to products that were made and sold during the pendency of that case.
On the impact of a settlement agreement:
In a settlement agreement, the parties to an action can determine for themselves what preclusive effect the settlement of the first action will have as to any potential subsequent actions between the parties. Pactiv Corp. v. Dow Chem. Co., 449 F.3d 1227, 1231 & n.2 (Fed. Cir. 2006); Greenberg v. Bd. of Governors, 968 F.2d 164, 168 (2d Cir. 1992); see generally Restatement (Second) of Judgments § 26(1)(a) (1982).
On the topic of judicial economy:
Because the district court’s claim construction rulings did not result in a judgment of noninfringement, we are not compelled to address those rulings at this time. However, the claim construction issues that the parties have presented to us are likely to be dispositive as to the issue of infringement, and for us not to address those issues at this juncture would in all likelihood result in further proceedings in the district court followed by another appeal in which pre- cisely the same claim construction issues would be pre- sented. In the interest of judicial economy, we therefore exercise our discretion to address the claim construction issues presented by the parties. See Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1379 (Fed. Cir. 2011); Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1383-84 (Fed. Cir. 2005); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437-38 (Fed. Cir. 1988).
As to limitations from a preamble of a claim:
This court has recognized that as a general rule preamble language is not treated as limiting. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
And nothing in the prosecution history suggests that the preamble language was considered necessary to the patentability of the claims. Under those circumstances, this court has found the preamble lan- guage not to be limiting. See Am. Med. Sys., Inc. v. Bio- litek, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
***Also
In order to construe the settlement agreement to reach those New Design products that were introduced during the several-month period before the settlement agreement was executed, we would have to conclude that the parties intended to depart from the normal rule that the products at issue in a patent suit are those in exis- tence at the time the suit is filed. See Gillig, 602 F.3d at 1363. As this court has noted, the parties’ decision to depart from the normal rules of claim preclusion by agreement “must be express.” Pactiv Corp., 449 F.3d at 1231. There was no such express agreement here.
AND
That result would be at odds with the ordinary principles of claim differentiation, as “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
AND
See Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010) (construing “adapted to,” in context, to mean “designed or configured to,” not “having the capacity to”); Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840 (N.D. Cal. Dec. 20, 2006) (construing “adapted to,” in light of patent as a whole, to mean “con- figured to,” not “capable of”).
AND
see generally Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (when different words are used in separate claims, they are presumed to have different meanings); Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987) (same).
***UPDATE. From a press release by Aspex on March 15:
Pembroke Park, FL – March 15, 2012, Aspex Eyewear Group announced today that the Federal Circuit Court of Appeals in Washington DC issued a ruling on March 14, 2012 that will allow its patent infringement litigation in Miami, Florida against several defendants, including Marchon Eyewear, Inc. and Revolution Eyewear, Inc., to proceed.
In the ruling, the Federal Circuit confirmed that the prior successful litigation over one of Aspex’s magnetic clip-on technology patents does not bar the company’s patent infringement claims on products made after those suits were resolved.
An excerpt from the ruling states:
In sum, we reverse the district court’s grant of summary judgment on res judicata grounds to Revolution and Marchon with respect to products that were not at issue in the California Actions and were not covered by the Marchon settlement agreement, in particular the New Design products sold by Revolution and Marchon.
“We applaud the decision by the Federal Circuit, which allows Aspex to proceed with patent infringement claims against Revolution, Marchon and Nike.” said Thierry Ifergan, Executive Vice President, Aspex Eyewear. “This ruling validates our right to prevent others from ‘trespassing’ on Aspex’s valuable intellectual property and sends a clear message that continued infringement will subject the infringer to enforcement actions. We remain resolute in our efforts to enforce our patents and intend to continue to vigorously defend our position in this matter.”
In summarizing the court’s reasoning that Aspex should litigate to defend the company’s intellectual property, the decision states that in the situation where “an infringer continues with its infringing activities… a new action for infringement is the patentee’s only recourse. It would be peculiar (and exceptionally unfair) to invoke res judicata to bar any further relief to a patentee in such a situation, thus effectively giving the infringer an unpaid license for the remainder of the life of the patent based on an earlier judgment of infringement.
posted by Lawrence B. Ebert at 10:19 AM
0 Comments:
Post a Comment
<< Home