United States Court of Appeals
for the Federal Circuit
__________________________
ASPEX EYEWEAR, INC., AND CONTOUR OPTIK,
INC.,
Plaintiffs-Appellants,
v.
MARCHON EYEWEAR, INC., AND NIKE, INC.,
Defendants-Appellees,
and
REVOLUTION EYEWEAR, INC., AND GARY
MARTIN ZELMAN,
Defendants-Appellees.
__________________________
2011-1147
__________________________
Appeal from the United States District Court for the
Southern District of Florida in Case No. 09-CV-61515,
Judge Marcia G. Cooke.
___________________________
Decided: March 14, 2012
___________________________
MICHAEL A. NICODEMA, Greenberg Traurig, LLP, of
Florham Park, New Jersey, argued for plaintiffs-
appellants.
ASPEX EYEWEAR v. MARCHON EYEWEAR 2
EDGAR H. HAUG, Frommer Lawrence & Haug LLP, of
New York, New York, argued for defendants-appellees,
Marchon Eyewear, Inc. and Nike, Inc. With him on the
brief were PORTER FARRAR FLEMING and BRIAN S.
GONCALVES.
STEVEN M. HANLE, Sheppard, Mullin, Richter &
Hampton, LLP, of Costa Mesa, California, argued for
defendants-appellees Revolution Eyewear, Inc. and Gary
Martin Zelman. With him on the brief was JENNIFER A.
TRUSSO.
__________________________
Before RADER, Chief Judge, BRYSON and REYNA, Circuit
Judges.
BRYSON, Circuit Judge.
Aspex Eyewear, Inc., is the owner of U.S. Patent No.
RE37,545 (“the ’545 patent”). That patent, which is
entitled “Auxiliary Lenses for Eyeglasses,” is directed to
magnetic clip-on eyewear. It discloses primary eyeglass
frames designed so that auxiliary frames, typically con-
taining sunglass lenses, can be attached to the primary
frames by magnetic force. The ’545 patent claims the
combination of an auxiliary frame magnetically secured to
a primary frame (claims 1-21 and 25-34), a primary frame
capable of magnetically engaging an auxiliary frame
(claim 22), and an auxiliary frame capable of magnetically
engaging a primary frame (claim 23 as amended in reex-
amination, claim 24, and new claim 35, added during
reexamination). Aspex and Contour Optik, Inc., were co-
owners of the ’545 patent until June 2010, when Contour
assigned its rights to Aspex.
Revolution Eyewear, Inc., is a manufacturer of eye-
glass frames and auxiliary sunglass frames that can be
3 ASPEX EYEWEAR v. MARCHON EYEWEAR
attached to the front of eyeglass frames. Revolution’s
IMF and IMFT products featured eyeglass frames having
projections from the temple regions on each side of the
frames. The projections on the primary frames housed
magnetic elements. Those projections corresponded to
projections on Revolution’s auxiliary sunglass frames that
also contained magnetic elements. The magnetic ele-
ments in the primary and auxiliary frames were used to
attach the auxiliary frames to the primary frames by
magnetic force. Revolution’s IMF and IMFT products
were designed so that the magnetic elements in the
auxiliary frames would attach to the bottom of the mag-
netized projections on the primary frames. The parties
refer to that design as the Old Design.
Aspex and Revolution have been suing one another for
more than a decade. In 1999, Aspex sued Revolution for
infringement of Aspex’s U.S. Patent No. 5,568,207 (“the
’207 patent”). The district court in that case ruled that
claim 1 of the ’207 patent was directed to a combination of
frames in which the projections of the auxiliary frame are
mounted on top of the projections of the primary frame.
Because Revolution’s products used a “bottom-mounted”
configuration, the court granted Revolution’s motion for
summary judgment of noninfringement. This court
summarily affirmed. Aspex Eyewear, Inc. v. Revolution
Eyewear, Inc., 42 F. App’x 436 (Fed. Cir. 2002).
In 2002, Revolution sued Aspex in the United States
District Court for the Central District of California,
charging Aspex with infringement of Revolution’s patent,
U.S. Patent No. 6,343,858 (“the Revolution California
Action”). Aspex counterclaimed, asserting that certain of
Revolution’s products infringed claims 6, 22, and 34 of the
’545 patent, the reissue of Aspex’s ’207 patent. The
district court dismissed Revolution’s complaint for lack of
ASPEX EYEWEAR v. MARCHON EYEWEAR 4
standing. On Aspex’s counterclaim, the district court
granted summary judgment to Revolution as to claims 6
and 34 of the ’545 patent, which are directed to primary
and auxiliary frame combinations. The court construed
claim 6 to read on auxiliary frames having a downwardly
facing horizontal surface and claim 34 to require that
some portion of each arm of the auxiliary frame extend
across the top of the corresponding extension of the pri-
mary frame. Because the magnetic surfaces of Revolu-
tion’s auxiliary frames faced upwardly, not downwardly,
and because the arms of Revolution’s auxiliary frames
extended underneath, not above, the corresponding exten-
sions on the primary frames, the court held that Revolu-
tion’s products did not infringe those claims. As to claim
22, however, the district court granted Aspex’s motion for
summary judgment of infringement, holding that Revolu-
tion’s primary frames literally infringed that claim.
Claim 22 recites a primary spectacle frame that is ca-
pable of magnetically engaging an auxiliary spectacle
frame, in which the primary frame includes a pair of
projections for securing the primary frame magnetic
members. The district court construed that claim to
require that the primary frame be capable of magnetically
engaging an auxiliary frame from the top. Although
Revolution’s IMF and IMFT primary frames were de-
signed to magnetically engage Revolution’s auxiliary
frames from the bottom, Revolution did not dispute that
an auxiliary frame is capable of engaging Revolution’s
IMF primary frame from above. Accordingly, the district
court held that Revolution’s accused products literally
infringed claim 22 of the ’545 patent.
The court then held, on summary judgment, that
claim 22 of the ’545 patent was not invalid. Following a
jury trial on damages, the court awarded a judgment of
5 ASPEX EYEWEAR v. MARCHON EYEWEAR
more than $4 million to Aspex and Contour. This court
affirmed that judgment in 2009. Revolution Eyewear, Inc.
v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009).
In late 2006, while the 2002 case involving Revolution
was still pending, Aspex sued Marchon Eyewear, Inc., in
the United States District Court for the Central District
of California, alleging infringement of the ’545 patent
(“the Marchon California Action”). Aspex alleged that
pursuant to a license from Revolution, Marchon was
selling magnetic eyewear incorporating the same Old
Design structure as that used by Revolution.
In early 2007, Revolution redesigned its products by
embedding the magnetic elements in its primary eyeglass
frames rather than securing them in projections, as was
done in the Old Design. The parties refer to the modified
version as the New Design. The auxiliary frames in the
New Design were also modified to accommodate the new
placement of the magnets in the primary frames. Mar-
chon also began selling New Design primary and auxil-
iary frames.
Early in 2008, Aspex and Marchon entered into a set-
tlement agreement that resolved all the claims and coun-
terclaims asserted in the 2006 Marchon California Action.
The agreement stated that Aspex and Marchon “stipulate
to dismissal with prejudice of [the action], including all
claims and counterclaims, and any claim which would
have been had by and between the Parties arising from or
connected with [the action] . . . .” In another paragraph,
the agreement provided that the settlement extended to
all causes of action “which exist as of the Effective Date of
this Agreement in connection with any Marchon Old
Design Magnetic Eyewear made, sold, used, or offered for
sale in the United States as of the Effective Date.” Mar-
ASPEX EYEWEAR v. MARCHON EYEWEAR 6
chon further agreed to discontinue all products embodying
the Old Design and substantially similar designs.
In the meantime, the Patent and Trademark Office
(“PTO”) reexamined the ’545 patent at the behest of a
third party requester. In April 2008, at the conclusion of
the reexamination proceeding, the PTO rejected a number
of the claims of the ’545 patent for obviousness, but it
confirmed the patentability of several of the claims,
including claim 23 as amended, and it allowed the pat-
entee to add new claim 35. Claim 23, as amended, reads
as follows (the italicized words were added and the brack-
eted word removed as a result of the amendment):
23. An eyeglass device comprising:
an auxiliary spectacle frame for supporting auxil-
iary lenses therein, said frame including a front
side, a rear side, and oppositely positioned side
portions, each of said side portions having an arm
extended therefrom, each of said arms having a
rearwardly directed free end for securing a mag-
netic member having a horizontal surface, and a
pair of magnetic members respectively secured in
the free ends of said arms, said arms and said
pair of magnetic members adapted to extend
across respective side portions of a primary spec-
tacle frame so that said pair of magnetic members
having a horizontal surface can vertically engage
corresponding magnetic [members] member sur-
faces on a primary spectacle frame.
New claim 35, added during reexamination, reads as
follows:
7 ASPEX EYEWEAR v. MARCHON EYEWEAR
35. The eyeglass device according to claim 23,
wherein, said magnetic members of said auxiliary
spectacle frame are magnets.
In 2009, Aspex filed the present action, charging the
defendants with infringement of amended claim 23 and
new claim 35 of the ’545 patent. Aspex alleged direct
infringement by Revolution and Marchon, and it alleged
induced infringement by Nike, Inc., Hardy Life, LLC, and
Gary Zelman, Revolution’s owner. The accused products
were New Design magnetic clip-on eyewear made by
Revolution and Marchon.
Revolution moved to dismiss the action against it as
barred by res judicata based on its previous litigation
with Aspex. Marchon likewise moved to dismiss the
action against it based on res judicata; in addition, it
contended that the action was barred by the 2008 agree-
ment that had settled the 2006 Marchon California Ac-
tion.
The district court granted summary judgment to all
the defendants. It held that for purposes of res judicata
Aspex’s claims for infringement were the same as the
claims that either were, or could have been, raised in the
2006 and 2008 California Actions. The court ruled that
the accused products in this case—the auxiliary frames
sold by Revolution and Marchon—were essentially the
same as the products from the earlier cases. The court
stated that the “accused infringement of claim 23 could
have been litigated with the California Actions because
Plaintiffs knew how . . . Revolution’s and Marchon’s
auxiliary frame interfaced with the primary frame.” The
court noted that the Revolution California Action had
been fully adjudicated on the merits, and it held that the
settlement agreement in the Marchon California Action
ASPEX EYEWEAR v. MARCHON EYEWEAR 8
had “made clear that the settlement dismissed with
prejudice as to any causes of action ‘any claim which could
have been had by and between the Parties arising from or
connected with’” that action. The court explained that the
reexamination of the ’545 patent did not entitle the plain-
tiffs to avoid claim preclusion “because the amended
claims relate back to the original ’545 Patent reissue
date.” Because the court concluded that the claims
against Revolution and Marchon “relate to the same set of
transactions as those litigated in the California Actions,”
the court held that Aspex’s action is barred by claim
preclusion. See Aspex Eyewear, Inc. v. Marchon Eyewear,
Inc., Case No. 09-61515-CIV (S.D. Fla. Nov. 3, 2010).
Aspex appealed.
I
Aspex first challenges the district court’s judgment
dismissing its infringement actions against Revolution
and Marchon based on the doctrine of res judicata, or
claim preclusion. Aspex’s main argument is that res
judicata does not bar this action, because Aspex’s claims
in this case are based on claims 23 and 35, as amended
and added in reexamination. Because those claims were
not in existence (at least not in the same form) at the time
the prior actions were filed against Revolution and Mar-
chon, Aspex argues that the new claims created new
causes of action that Aspex could not have pursued in the
previous cases. Accordingly, Aspex argues, res judicata
does not bar it from pursuing the claims in this case. 1
1 Because the general principles of res judicata are
not unique to patent law, we look to regional circuit law
for guidance in applying those principles. Acumed LLC v.
Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008).
However, the question whether a particular claim in a
9 ASPEX EYEWEAR v. MARCHON EYEWEAR
We reject Aspex’s argument as to the effect of the re-
examination. Amended claim 23 and new claim 35 of the
reexamined ’545 patent did not create new causes of
action for Aspex, separate from the causes of action
created by the original ’545 patent. Those two claims
were merely new versions of claims that were part of the
’545 patent prior to its reexamination. Amended claim 23
tracked original claim 23 in all respects except for the
addition of the limiting words “having a horizontal sur-
face” at two points in referring to the “pair of magnetic
members,” and the substitution of the phrase “member
surfaces” for the word “members” in referring to the
corresponding structure on the primary spectacle frame.
New claim 35 recited “[t]he eyeglass device according to
claim 23, wherein, said magnetic members of said auxil-
iary spectacle frame are magnets.”
We agree with the district court that the changes
made to claim 23 in reexamination were insubstantial.
As the district court explained, the ’545 patent had al-
ready been interpreted to disclose an invention featuring
a top-mounted auxiliary frame that vertically engages a
primary frame, and the claims had been construed to
require top mounting by the auxiliary frame. The pres-
ence of a pair of magnetic members “having a horizontal
surface” was therefore already implicit in claim 23 before
its reexamination, as was the presence of magnetic
“member surfaces” on the primary frame. As for new
claim 35, the limitation requiring the magnetic members
of the auxiliary frames to be “magnets” is an insignificant
patent case is the same as or separate from another claim
has special application to patent cases, and we therefore
apply our own law to that issue. See Roche Palo Alto LLC
v. Apotex, Inc., 531 F.3d 1372, 1379 (Fed. Cir. 2008).
ASPEX EYEWEAR v. MARCHON EYEWEAR 10
change that, at most, narrows the scope of the claim in a
way that does not affect the products here at issue.
Given the relationship between the original claims of
the ’545 patent and the amended and new claims that
Aspex relies upon in this litigation, there is no force to
Aspex’s argument that the reexamination of the ’545
patent created entirely new causes of action on which
Aspex could freely sue, even though it had previously had
an opportunity to sue on the corresponding original
claims of the ’545 patent. Aspex could have sought relief
for infringement of original claim 23 of the ’545 patent in
the previous litigation against Revolution and Marchon,
but it elected not to do so. To allow Aspex to pursue
amended claim 23 and new claim 35 in this case would
thus present a clear instance of “claim splitting,” which is
forbidden by the principles of res judicata. Mars Inc. v.
Nippon Conlux Kabushi-Kaisha, 58 F.3d 616, 619 (Fed.
Cir. 1995).
In arguing that the reexamination of the ’545 patent
created new causes of action not barred by res judicata,
Aspex relies on cases involving reissue patents. There are
two problems with Aspex’s argument, however. First, as
noted above, the two claims on which Aspex relies are not
materially different from original claim 23, and thus they
do not create a new cause of action that was not previ-
ously available to Aspex. Second, the differences between
reissue and reexamination make the reissue cases on
which Aspex relies inapposite. Unlike reissue, reexami-
nation does not result in the surrender of the original
patent and the issuance of a new patent. Moreover, by
statute, new claims that emerge from reexamination must
not be broader than the original claims. See 35 U.S.C.
§ 305 (“No proposed amended or new claim enlarging the
scope of a claim of a patent will be permitted in a reex-
11 ASPEX EYEWEAR v. MARCHON EYEWEAR
amination proceeding under this chapter.”); In re Free-
man, 30 F.3d 1459, 1464 (Fed. Cir. 1994). Consistent
with that rule, the claims on which Aspex relies are not
broader than their predecessor; they therefore did not
create a new legal right against infringement that Aspex
lacked under the original version of the patent. Accord-
ingly, claims that emerge from reexamination do not
create a new cause of action that did not exist before. See
Hoffman v. Wisner Classic Mfg. Co., 927 F. Supp. 67, 73
(E.D.N.Y. 1996). We therefore reject Aspex’s argument
that the issuance of amended claim 23 and new claim 35
had the effect of negating the res judicata effect of the
prior litigation by Aspex against Revolution and Marchon
under the original ’545 patent claims.
II
While we reject Aspex’s principal argument regarding
res judicata, we find merit in one of its secondary argu-
ments. The extent to which this issue will affect the
ultimate outcome of the case is unclear, but it is a legal
issue that requires us to remand the case to the district
court for further proceedings. Both Revolution and Mar-
chon argue that because the accused products at issue in
this case are “essentially the same” as the allegedly
infringing products that were at issue in the earlier
litigation, the district court properly invoked res judicata
to hold that all of Aspex’s claims against both Revolution
and Marchon are barred. At oral argument, the defen-
dants made clear that they regarded that argument as
applicable even with respect to particular goods that were
made and sold after the initiation and conclusion of the
California Actions and thus were not in existence at the
time of that earlier litigation.
ASPEX EYEWEAR v. MARCHON EYEWEAR 12
We hold that res judicata does not bar Aspex’s lawsuit
with respect to accused products that were not in exis-
tence at the time of the California Actions for the simple
reason that res judicata requires that in order for a par-
ticular claim to be barred, it is necessary that the claim
either was asserted, or could have been asserted, in the
prior action. If the claim did not exist at the time of the
earlier action, it could not have been asserted in that
action and is not barred by res judicata.
In this case, Aspex contends that it is asserting in-
fringement by products that were made and sold only
after the California Actions were brought, and in the case
of some of the products, after the California Actions were
over. Although the parties debate whether the design of
those products is essentially the same as the design of the
products that were the subjects of the California Actions,
that does not matter with respect to products that were
made or sold after the time of the previous lawsuits.
Under well-settled principles, a party who sues a tort-
feasor is ordinarily not barred by a prior judgment from
seeking relief for discrete tortious action by the same
tortfeasor that occurs subsequent to the original action.
That rule is based on the principle that res judicata
requires a party to assert all claims that the party could
have asserted in the earlier lawsuit; it follows that if the
party could not have asserted particular claims—because
the tortious conduct in question had not occurred at that
time—those claims could not have been asserted and
therefore are not barred by res judicata. See Lawlor v.
Nat’l Screen Serv. Corp., 349 U.S. 322, 328 (1955) (a prior
judgment “cannot be given the effect of extinguishing
claims which did not even then exist and which could not
possibly have been sued upon in the previous case”);
Manning v. City of Auburn, 953 F.2d 1355, 1359 (11th
13 ASPEX EYEWEAR v. MARCHON EYEWEAR
Cir. 1992) (res judicata does not bar claims for conduct
occurring after judgment); Blair v. City of Greenville, 649
F.2d 365, 368 (5th Cir. 1981) (res judicata “does not . . .
bar a suit based on acts of the defendant that have oc-
curred subsequent to the final judgment asserted as a
bar”); Kilgoar v. Colbert Cnty. Bd. of Educ., 578 F.2d 1033
(5th Cir. 1978) (claims based on conduct transpiring after
the close of prior litigation were not precluded by res
judicata even though earlier litigation involved the same
kind of conduct); see generally 18 Charles Alan Wright,
Arthur R. Miller & Edward H. Cooper, Federal Practice &
Procedure § 4409, at 227 (2002) (“A substantially single
course of activity may continue through the life of a first
suit and beyond. The basic claim-preclusion result is
clear: a new claim or cause of action is created as the
conduct continues.”); 18 James Wm. Moore, Moore’s
Federal Practice § 131.23[3][c] (2011) (“It is clear that
wrongful conduct that occurs after the judgment is en-
tered in a prior action is not within the scope of claim
preclusion . . . .”).
That principle has been applied to patent cases, and
in particular to cases involving sequential acts of in-
fringement; in that setting, this court and others have
characterized the “claim” that gives rise to preclusion as
encompassing only the particular infringing acts or prod-
ucts that are accused in the first action or could have been
made subject to that action. See Young Eng’rs, Inc. v.
U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1316 (Fed. Cir.
1983) (“With respect to patent litigation, we are unper-
suaded that an ‘infringement claim,’ for purposes of claim
preclusion, embraces more than the specific devices before
the court in the first suit.”); Cordis Corp. v. Boston Scien-
tific Corp., 635 F. Supp. 2d 361, 369-70 (D. Del. 2009)
(claim preclusion will not bar a second suit for damages
for conduct occurring after the first judgment); Williams
ASPEX EYEWEAR v. MARCHON EYEWEAR 14
v. Gillette Co., 887 F. Supp. 181, 183-85 (N.D. Ill. 1995)
(because second lawsuit seeks damages only for infringe-
ment after the dismissal of the first, it is not barred by res
judicata); MGA, Inc. v. Centri-Spray Corp., 699 F. Supp.
610, 614 (E.D. Mich. 1987) (“if the plaintiff claimed that
different products infringed the patent in suit, the prior
adjudication would not act as a bar to the subsequent
claim”). As a result, Aspex’s claims, which stem from
alleged infringement of products created after the Cali-
fornia Actions, are not barred.
In arguing to the contrary, Revolution relies on this
court’s decision in Nystrom v. Trex Co., 580 F.3d 1281,
1285-86 (Fed. Cir. 2009), to support its claim that res
judicata bars Aspex’s claims in this case. The Nystrom
court held that particular claims were barred based on
previous litigation between the same parties. The previ-
ous litigation in that case, however, had resolved certain
issues against the appellant, and the appellant sought to
litigate those issues again in the second case, hoping for a
different outcome. Because those issues had been re-
solved against the appellant in the first case, this court
held that the appellant was precluded from relitigating
them. In so doing, the court applied the doctrine gener-
ally referred to as collateral estoppel or issue preclusion.
Although the Nystrom court characterized its analysis as
falling under the general rubric of res judicata or claim
preclusion, the principle that the court applied was that
when a party that has had a full and fair opportunity to
litigate an issue and has lost on that issue, it may not
relitigate that issue in a later case. See Comm’r v. Sun-
nen, 333 U.S. 591, 597-98 (1948) (in a second action “upon
a different cause or demand, the principle of res judicata
is applied much more narrowly,” only as to “matters
which were actually litigated and determined in the first
proceeding”; in that setting, “res judicata is usually and
15 ASPEX EYEWEAR v. MARCHON EYEWEAR
more accurately referred to as estoppel by judgment, or
collateral estoppel”).
As we note below, collateral estoppel principles may
have a role to play in this case, but that is an issue that
must be addressed on remand. However, the separate res
judicata argument that Revolution and Marchon have
made—that the California Actions bar Aspex from obtain-
ing relief for acts of infringement post-dating those ac-
tions—is not based on collateral estoppel principles, as it
does not depend on any effort by Aspex to relitigate any
issue on which it lost in the California Actions. The
Nystrom case is therefore of no help to the defendants on
that issue.
At oral argument, Revolution contended that in order
to preserve its right to relief for subsequent acts of in-
fringement, Aspex should have pursued injunctive relief
in the California actions rather than seeking to bring a
new infringement action. There are several problems
with that argument.
First, as a factual matter, Aspex did seek and the dis-
trict court in the California case did issue, an injunction
against Revolution. The injunction, however, covered
only the Old Design products, the IMF and IMFT frames,
which were the only types of frames at issue in that
litigation. That injunction does Aspex no good with
respect to New Design products, which are the products
at issue in this case.
Second, as to Revolution’s suggestion that Aspex
should have obtained a broader injunction, district courts
are frequently admonished not to issue sweeping injunc-
tions against potentially infringing activities in patent
cases, but to restrict the scope of the injunction to the
ASPEX EYEWEAR v. MARCHON EYEWEAR 16
particular adjudicated infringing activity. 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.
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.
Finally, the Supreme Court in the Lawlor case re-
jected essentially the same argument, pointing out that
there was “no merit” to the respondents’ contention in
that case that the petitioners were precluded from bring-
ing a second action “by their failure to press their demand
for injunctive relief” in the first. 349 U.S. at 329. “Accep-
tance of the respondents’ novel contention,” the Court
observed, “would in effect confer on them a partial immu-
nity from civil liability for future violations.” Id. The
same would be true here.
Our resolution of the res judicata issue leaves open
two questions, both of which will need to be addressed by
17 ASPEX EYEWEAR v. MARCHON EYEWEAR
the trial court. The first is what to do about the products
that were made or sold during the pendency of the Cali-
fornia Action between Aspex and Revolution. 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 supple-
mental 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 judi-
cata 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 con-
sented to have the court adjudicate their rights as to
products that were made and sold during the pendency of
that case. That is a matter for the district court to deter-
mine on remand based on a presentation by the parties as
to the record in the California Revolution case.
A second issue that must be reserved for remand is
the effect, if any, of collateral estoppel, or issue preclu-
sion, in this case. As noted above, Revolution has sug-
gested that collateral estoppel may apply in this case
based on the resolution of other issues between the par-
ties at some point in the complex course of their litigation
ASPEX EYEWEAR v. MARCHON EYEWEAR 18
with one another. We do not address that contention,
because the district court did not base its judgment on
collateral estoppel and the parties have not fully briefed
it. If either Revolution or Marchon wishes to press that
issue on remand, they will have to make an appropriate
record regarding any issues that were resolved against
Aspex in earlier litigation that may bear on the issues in
this case.
III
Aspex next argues that the district court erred in
granting Marchon’s motion for summary judgment of
noninfringement in light of the settlement agreement that
terminated Aspex’s 2006 action against Marchon. In a
settlement agreement, the parties to an action can deter-
mine 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).
Aspex argues that the effect of the settlement agree-
ment was limited to the Old Design products that were
the subject of the California Marchon action. According to
Aspex, the agreement terminated the California Marchon
Action and barred further litigation as to any actual or
potential claims that could have been brought with regard
to the Old Design products. Aspex interprets the settle-
ment agreement to carve out New Design products from
the reach of the agreement, and thus not to bar any
subsequent actions involving New Design products, which
were first introduced after the Marchon suit was brought
but before the date of the settlement agreement. Mar-
19 ASPEX EYEWEAR v. MARCHON EYEWEAR
chon, on the other hand, argues that the settlement
agreement precluded Aspex from ever suing Marchon for
infringement of the ’545 patent based on either the Old
Design or New Design products.
The settlement agreement between Aspex and Mar-
chon expressly provided for the dismissal of the California
Action, including “any claim which could have been had
by and between the Parties arising from or connected
with the California Action.” The agreement further
provided that the parties would release one another from
any claims “which exist as of the Effective Date of this
Agreement in connection with any Marchon Old Design
Magnetic Eyewear made, sold, used, or offered for sale in
the United States as of the Effective Date.” In addition,
the agreement stated that the mutual releases exchanged
by the parties were inapplicable to “any cause of action . .
. arising from and after the Effective Date of this Agree-
ment.” Finally, the agreement provided that Marchon
would stop importing and selling Old Design products and
would use its remaining inventory of Old Design products
only for replacement purposes as part of its warranty
services to customers.
The agreement plainly extinguishes any claims per-
taining to Old Design products made or sold as of the
effective date of the agreement. Equally plainly, it does
not apply to New Design products (or potential products
of other, undesignated designs) that had not been made or
sold as of the effective date of the agreement. The only
real question regarding the scope of the agreement is
whether it bars infringement actions as to New Design
products that were made and sold between early 2007,
when the New Design products were first introduced, and
the effective date of the agreement, February 4, 2008.
ASPEX EYEWEAR v. MARCHON EYEWEAR 20
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. The
focus of the settlement agreement is on the Old Design
products; the only provision that could be understood to
reach the New Design products is the parties’ agreement
to dismiss the California Action, “including . . . any claim
which could have been had by and between the Parties
arising from or connected with the California Action.”
Because the California Action was directed at the Old
Design products, and the New Design products were not
in existence at the time that action was filed, the most
natural interpretation of that clause is that it refers to
claims that “could have been had” at the time the action
was brought. That interpretation is buttressed by other
portions of the agreement, all of which pertain only to Old
Design products: the mutual release, Marchon’s agree-
ment to withdraw from the market for Old Design prod-
ucts, and the agreed-upon disposition of Marchon’s
remaining inventory of Old Design products. We there-
fore conclude that the settlement agreement does not bar
Aspex from suing Marchon based on New Design prod-
ucts, regardless of whether those products were in exis-
tence as of the agreement’s effective date.
21 ASPEX EYEWEAR v. MARCHON EYEWEAR
IV
The parties argue that if we do not affirm the judg-
ment in this case on res judicata grounds, we should
address several claim construction issues that have been
decided by the district court and that will affect subse-
quent proceedings on remand. 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).
1. “An eyeglass device”
All of the independent claims of the ’545 patent begin
with the preamble language, “An eyeglass device compris-
ing.” The ’545 patent Abstract states, “An eyeglass device
includes a primary and an auxiliary spectacle frames [sic]
for supporting lenses.” The parties disagree about
whether the preamble language constitutes a limitation of
the claim so that the claims are limited to accused prod-
ucts comprising both a primary and an auxiliary frame.
That argument matters because the body of the two
claims at issue in this case recites only an auxiliary
ASPEX EYEWEAR v. MARCHON EYEWEAR 22
frame. If the “eyeglass device” is properly defined to
include both the primary and auxiliary frames, and if the
preamble language is limiting, as the defendants argue, a
party would not be liable for infringement for making or
selling the auxiliary frame alone.
While we agree that the term “eyeglass device” is de-
fined in the patent to refer generally to the combination of
a primary and an auxiliary frame, we do not agree with
the defendants that the term “eyeglass device” adds a
limitation to any of the claims. 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). In this case, the defen-
dants have not pointed to anything that persuades us that
this case falls outside of that general rule, and in fact all
of the considerations that ordinarily inform the decision
whether to treat preamble language as limiting support
the conclusion that the preamble in this case does not
limit the claims.
First, most of the claims of the ’545 patent are drawn
to both a “primary spectacle frame” and an “auxiliary
spectacle frame.” One claim is drawn only to the primary
frame, and three claims are drawn only to the auxiliary
frame. The fact that among numerous claims to the
combination of primary and auxiliary frames the patentee
chose to include some claims limited to auxiliary frames
and some limited to primary frames supports the infer-
ence that the claims drawn to primary or auxiliary frames
alone are not intended, by operation of the preamble, to
require the presence of the other frame as well.
Moreover, the preamble language in the ’545 patent is
not needed to give meaning to the claims, which recite
structurally complete inventions without the preamble
23 ASPEX EYEWEAR v. MARCHON EYEWEAR
language. And nothing in the prosecution history sug-
gests that the preamble language was considered neces-
sary 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). Absent any countervailing
reason to hold that the preamble language in this case is
limiting, we conclude that it should not be construed as
limiting in this case.
2. “magnetic member”
The defendants argue that the district court correctly
concluded that the term “magnetic member” in amended
claim 23 means a permanent magnet. Aspex disagrees
and argues that the term refers either to a magnet or to a
ferromagnetic member, i.e., a substance that is affected
by a magnetic field. We agree with Aspex. The disposi-
tive argument in favor of Aspex’s construction is one of
claim differentiation. New claim 35 is dependent from
amended claim 23; the sole distinction between the two is
that in new claim 35, the “magnetic members of the
auxiliary spectacle frame are magnets.” If “magnetic
member” meant magnet, new claim 35 would be entirely
duplicative of amended claim 23. That result would be at
odds with the ordinary principles of claim differentiation,
as “the presence of a dependent claim that adds a particu-
lar limitation gives rise to a presumption that the limita-
tion in question is not present in the independent claim.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc). The defendants offer no reason not to
apply that rule of claim differentiation in this case. We
therefore hold that the term “magnetic member” in
amended claim 23 must be construed not to be limited to
ASPEX EYEWEAR v. MARCHON EYEWEAR 24
a permanent magnet, but to include ferromagnetic mate-
rials as well.
3. “rearwardly directed free end”
The district court construed the term “rearwardly di-
rected free end” in the limitation of amended claim 23
that recites “each of said arms having a rearwardly di-
rected free end” to mean a “rearwardly directed end
portion.” Aspex argues that the district court’s construc-
tion effectively reads the term “free” out of the limitation.
We agree. The specification describes the arms by stating
that the auxiliary frame “includes two side portions each
having an arm 21 extended rearward therefrom.” ’545
patent, col. 2, ll. 40-41. While the specification does not
use the term “free” in reference to the rearwardly directed
end portion of the arm, the figures illustrate that each
arm has a “free” end. Figure 4, which depicts the refer-
enced arms, shows that each of the arms has a first end
that is attached to the side portion of the auxiliary frame
and a second end that is not attached to any other struc-
ture, i.e., it is “free.” The claim language, taken in con-
text, makes clear that the free end of the arm is
distinguished from the end that is attached to the side
portion of the frame. Accordingly, we conclude that the
term “rearwardly directed free end” should be construed
to mean the end of the arm that extends rearwardly from
the frame and is not attached to the side portion of the
frame.
4. “said arms and said pair of magnetic members
adapted to extend across respective side portions of a
primary spectacle frame”
The plaintiffs separately challenge the district court’s
construction of the term “adapted to” in the above-quoted
25 ASPEX EYEWEAR v. MARCHON EYEWEAR
limitation of amended claim 23 as well as the court’s
interpretation of the entire limitation. We address the
two together.
The district court construed the quoted limitation to
mean that the arms and the pair of magnetic members
are made to extend across the top of the respective side
portions of the primary frame. In light of its interpreta-
tion of that limitation, the court construed the last clause
of amended claim 23 to require that the magnetic mem-
bers of the auxiliary frame have downwardly facing
horizontal surfaces that permit them to be “stably sup-
ported and secured on top of the upwardly facing non-
embedded magnetic member surfaces on a primary spec-
tacle frame.”
Aspex’s first objection to the court’s ruling on that
limitation is that it construes the phrase “adapted to” too
narrowly; that phrase, according to Aspex, should be
interpreted to mean “suitable for” rather than “made to.”
As the parties have noted, the phrase “adapted to” is
sometimes used in claim drafting to carry the broader
meaning proposed by Aspex, and sometimes to carry a
narrower meaning closer to that proposed by the defen-
dants. In this case, we conclude that the narrower mean-
ing is correct.
In common parlance, the phrase “adapted to” is fre-
quently used to mean “made to,” “designed to,” or “config-
ured to,” but it can also be used in a broader sense to
mean “capable of” or “suitable for.” See Webster’s Third
New International Dictionary 24 (1968) (“suited by na-
ture, character, or design to a particular use, purpose, or
situation”); 1 Oxford English Dictionary 139 (2d ed. 1989)
(“fitted; fit, suitable . . . modified to fit new situations”).
The way the phrase is used in amended claim 23 of the
ASPEX EYEWEAR v. MARCHON EYEWEAR 26
’545 patent supports the district court’s conclusion that a
narrower definition, such as “configured to,” applies here.
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”).
Amended claim 23 refers to the arms and magnetic
members as “adapted to extend across respective side
portions” of a primary frame. In that context, the phrase
“adapted to” is most naturally understood to mean that
the arms and magnetic members are designed or config-
ured to accomplish the specified objective, not simply that
they can be made to serve that purpose.
Other intrinsic evidence from the ’545 patent supports
that narrower interpretation of the phrase “adapted to.”
The specification refers to the magnetic members of the
auxiliary frame as being “for engaging” with the magnetic
members of the primary frame. ’545 patent, Abstract; id.,
col. 2, line 45. That expression suggests that the mag-
netic members of the auxiliary frame are meant to engage
with the magnetic members of the primary frame, not
simply that they are capable of doing so. Moreover, claim
22—the claim immediately preceding amended claim 23
in the patent—recites first magnetic members that are
“capable of engaging” second magnetic members. The fact
that the two adjacent claims use different terms in paral-
lel settings supports the district court’s conclusion that
the two terms were not meant to have the same meaning
and thus that “adapted to” was intended to have a differ-
ent meaning from “capable of.” See Boston Scientific
Corp., 2006 WL 3782840, at *2 (relying on use of phrase
27 ASPEX EYEWEAR v. MARCHON EYEWEAR
“capable of” in another claim in same patent to construe
the phrase “adapted to” more narrowly); 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).
Aspex next objects to the district court’s conclusion
that the claim language “extend across respective side
portions of a primary spectacle frame” means “extend
across the top of the respective side portions of a primary
spectacle frame.” We reject Aspex’s argument. In con-
struing the requirement that the arms and magnetic
members “extend across respective side portions” of the
primary frame, the district court first relied on the speci-
fication of the ’545 patent. In particular, the court
pointed to the statement in the specification that the
arms of the auxiliary frame are “engaged with and sup-
ported on the upper portion” of the primary frame so that
the auxiliary frame will be “stably supported on the
primary spectacle frame and so as to prevent the auxil-
iary spectacle frame from moving downward . . . from
being disengaged from the primary spectacle frame.” ’545
patent, col. 1, line 63, to col. 2, line 2; see also id., col. 2, ll.
49-56. That passage from the specification provides
substantial support for the district court’s interpretation
of the disputed claim language.
The district court also relied on this court’s statement
in its opinion addressing the California Actions, in which
this court referred to the invention as one in which “an
auxiliary frame . . . can be top-mounted onto the primary
frame to address the ‘stable support’ issue.” Moreover,
this court agreed with the district court in that case that
the inventor had “disclaimed an auxiliary frame that is
ASPEX EYEWEAR v. MARCHON EYEWEAR 28
not stably supported in top-mounting configuration.”
Revolution Eyewear, 563 F.3d at 1368. In light of the
language of the claims, the description of the invention in
the specification, and this court’s previous decision, we
agree with the district court’s construction of the limita-
tion that recites “said arms and said pair of magnetic
members adapted to extend across respective side por-
tions of a primary spectacle frame.”
V
In sum, we reverse the district court’s grant of sum-
mary 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 determina-
tion as to whether the New Design products that Revolu-
tion 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
29 ASPEX EYEWEAR v. MARCHON EYEWEAR
Zelman and Nike is likewise reversed and the proceedings
against those defendants are included within the scope of
the remand.
Each party shall bear its own costs for this appeal.
REVERSED AND REMANDED