Specticles and Specifications

February 19, 2010
Post by Blog Staff

In April of last year, the Court of Appeals for the Federal Circuit added another layer to the ongoing case between Revolution Eyewear, Inc. ("Revolution") and Aspex Eyewear, Inc. ("Aspex").

The decision primarily concerned the circumstances surrounding the reissue of Aspex's initial patent: whether the reissue was supported by 35 U.S.C. § 112; whether the same invention was claimed between the original and reissue patent; and whether the reissue patent violated the recapture rule. The decision also addressed the proper role of functional language in claim construction.

The case began in 1999 when Aspex sued Revolution for patent infringement of its U.S. Patent number 5,568,207 ("the '207 patent"). Revolution sought and received summary judgment for noninfringement of the '207 patent. In 2002, Revolution sued Aspex based on their U.S. Patent 6,343,858. Aspex and other parties (collectively "Contour") counterclaimed that Revolution had infringed U.S. Patent Number RE37,545 ("the '545 patent"), which was a reissue of the '207 patent. Revolution's suit based on the '858 patent was dismissed for lack of standing, so that the only issue outstanding was Contour's counterclaim against Revolution.

In Contour's counterclaim, they alleged infringement of claims 5, 22, and 34. When Revolution moved for summary judgement of non-infringement, Contour did not oppose the motion as it related to claims 5 and 34. Therefore, this appeal is only concerned with the refusal of the District Court for the Central District of California to grant summary judgment regarding validity and infringement of claim 22 and other related post-trial motions related to Revolution's liability for infringing claim 22.

The first issue addressed by the Court of Appeals in the case of Revolution Eyewear, Inc. vs. Aspex Eyewear, Inc. was whether the District Court properly granted summary judgment to Contour regarding the validity of claim 22.

Revolution first argued that the '545 patent identified two prior art deficiencies, but that claim 22 only solved one of these problems, and therefore claim 22 did not satisfy the written description requirement. The court identified two cases, Resonate and Honeywell, where it held that "it is unnecessary for each and every claim in the patent address both problems." Slip op. at 10, citing Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed. Cir. 2003) and Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317, 1326 (Fed. Cir. 2002). Revolution argued that these cases were inapplicable because they address claim construction, while the present issue concerns the written description requirement. The court rejected this argument, noting that claim construction and written description "serve related functions in determining whether a claim is commensurate with the scope of the specification." Slip Op. at 10.

Revolution next argued that claim 22 was invalid for violating 35 U.S.C. § 251, which requires that a reissue patent only be issued "for the invention disclosed in the original patent." The court held that satisfying the written description requirement, as described above, is sufficient to satisfy this section of the statute.

Revolution finally argued that claim 22 was invalid because it is broader than the claims of the original patent, and therefore violated the recapture rule. Revolution argued that, despite the '545 patent being issued without an office action, the inventor had disclaimed claim scope broader than his original claims in the application. The court pointed out that it is well settled that, absent a clear disclaimer of claim scope in the specification, the scope of the patent is defined by the specification, not by the originally filed claims.

Next, Revolution claimed that it had not infringed claim 22 because its product was not "capable of engaging second magnetic members of an auxiliary spectacle frame," as required by the claim. The Court emphasized that this functional language only requires that it the product is "capable of" or "has the ability to" perform the recited function, and does not require specific structure. Because Revolution's frames were capable of performing the required function, the product was read to satisfy this claim limitation.

The court also dealt with other procedural issues, and concluded that the parties had not met the burden to persuade the Court of Appeals to overrule the decisions by the District Court, and therefore affirmed the decision.

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