United States Court of Appeals for the Federal Circuit
2008-1267, -1376
REVOLUTION EYEWEAR, INC.,
Plaintiff/Counterclaim Defendant-
Appellant,
v.
ASPEX EYEWEAR, INC. and THIERY IFERGAN,
Defendants/Counterclaimants-
Appellees,
and
MANHATTAN DESIGN STUDIO, INC., CONTOUR OPTIK, INC.,
and ASAHI OPTICAL CO. LTD.,
Counterclaimants-Cross
Appellants.
R. Joseph Trojan, Trojan Law Offices, of Beverly Hills, California, argued for
plaintiff/counterclaim defendant-appellant. Of counsel was Dylan C. Dang.
Michael A. Nicodema, Greenberg Traurig, LLP, of Florham Park, New Jersey,
argued for defendants/counterclaimants-appellees, and counterclaimants-cross
appellants.
Appealed from: United States District Court for the Central District of California
Judge Virginia A. Phillips
United States Court of Appeals for the Federal Circuit
2008-1267, -1376
REVOLUTION EYEWEAR, INC.,
Plaintiff/Counterclaim Defendant-
Appellant,
v.
ASPEX EYEWEAR, INC. and THIERY IFERGAN,
Defendants/Counterclaimants-
Appellees,
and
MANHATTAN DESIGN STUDIO, INC., CONTOUR OPTIK, INC.,
and ASAHI OPTICAL CO. LTD.,
Counterclaimants-Cross
Appellants.
Appeal from United States District Court for the Central District of
California in case no. 02-CV-01087, Judge Virginia A. Phillips.
__________________________
DECIDED: April 29, 2009
__________________________
Before MICHEL, Chief Judge, BRYSON, and POSNER, * Circuit Judges.
MICHEL, Chief Judge.
*
The Honorable Richard A. Posner, Circuit Judge, United States Court of
Appeals for the Seventh Circuit, sitting by designation.
In 2002, Revolution Eyewear, Inc. (“Revolution”) initiated a patent infringement
action against Aspex Eyewear, Inc. (“Aspex”) and Thierry Ifergan in the United States
District Court for the Central District of California. Aspex, together with Contour Optik,
Inc., Manhattan Design Studio, Inc., and Asahi Optical Co. Ltd. (collectively, “Contour”),
counterclaimed that Revolution infringed claims 6, 22, and 34 of U.S. Patent No.
RE37,545 (“’545 patent”). This appeal only relates to the counterclaim. Revolution
appeals the district court’s orders (1) denying Revolution’s motion for summary
judgment of invalidity of claim 22 of the ’545 patent, (2) granting Contour’s motion for
summary judgment of infringement of claim 22 of the ’545 patent, and (3) denying
Revolution’s motions for judgment as a matter of law (“JMOL”), for a new trial, or for
remittitur. Contour cross-appeals the district court’s order denying Contour’s motion for
attorney fees based on Revolution’s alleged willful infringement of the ’545 patent. For
the reasons set forth below, we affirm.
I. BACKGROUND
The technology in this case involves a spectacle frame that supports an auxiliary
frame, enabling the user to securely fasten a second set of lenses (e.g., sunglass
lenses) onto the primary frame (often holding prescription lenses). Contour is the
assignee of the ’545 patent, the reissue patent of U.S. Patent No. 5,568,207 (“’207
patent”). The sole inventor for both patents is Richard Chao.
According to the ’545 patent, at the time of the invention, at least two deficiencies
existed in conventional spectacle frames: the “stable support” issue and the “decreased
strength” problem. The former refers to the fact that because the auxiliary lenses were
simply attached to the frames by magnetic materials, the auxiliary lenses might easily
2008-1267, -1376 2
move downward relative to the frames and might be easily disengaged from the frames
when the users conducted jogging or jumping exercises. ’545 patent col.1 ll.26–32.
Chao’s invention addresses this issue through an auxiliary frame that may be stably
supported on the primary frame, i.e., the “top-mounted” design. Id. col.2 ll.49–56. The
“decreased strength” problem originated from the design of the prior art frames, in which
the magnetic materials were embedded in the frames, thus requiring the excavation of
four or more cavities in a frame. Id. col.1 ll.33–37. In Chao’s invention, the magnetic
members are supported by projections located at the rear/side portions of both the
primary frame and the auxiliary frame. Id. col.2 ll.36–38, ll.43–44. Because the
magnetic members are not embedded in the frames, the strength of the frames is not
decreased. Id. col.3 ll.24–26.
The original ’207 patent discloses an eyeglass device comprising a primary
frame and an auxiliary frame. The only two claims of the ’207 patent are both directed
to the primary frame and auxiliary frame combination. The ’545 patent has thirty-four
claims. The only claim at issue, claim 22, recites:
22. An eyeglass device comprising:
a primary spectacle frame for supporting primary lenses therein and
having two side portion extensions extending rearwardly therefrom and
having a front side, a rear side, a top side, and a rear end, each of said
rear ends pivotally coupling a leg configured to conform to a user at a
distal end thereof, each of said extensions of said primary spectacle frame
further having a projection attached to each of said rear sides, and a pair
of first magnetic members respectively secured in said projections, said
first magnetic members capable of engaging second magnetic members
of an auxiliary spectacle frame so that lenses of an auxiliary spectacle
frame are located in front of said primary lenses.
’545 patent col.6 ll.46–59.
The alleged infringer, Revolution, makes and sells IMF and IMF/T magnetic clip-
2008-1267, -1376 3
on eyewear. These products include a primary frame and an auxiliary frame, with the
auxiliary frame magnetically mounted at the bottom of the primary frame. Both the
primary frame and the auxiliary frame include a pair of projections secured to the
rear/sides of the frame. Each projection supports a magnetic member. None of the
magnetic members is embedded in the frames.
II. PROCEDURAL HISTORY
In 1999, Aspex sued Revolution for infringement of the ’207 patent. Aspex
Eyewear, Inc. v. Revolution Eyewear, Inc., No. 99-CV-1623, 2001 U.S. Dist. LEXIS
25831, at *1-2 (C.D. Cal. June 4, 2001). The district court found that claim 1 of the ’207
patent was directed to the “top-mounted” primary and auxiliary frame combination and
that Revolution’s products were in a “bottom-mounted” configuration. Id. at *5, 10.
Thus, the court granted Revolution’s motion for summary judgment of non-infringement.
Id. at *27. This court summarily affirmed. Aspex Eyewear, Inc. v. Revolution Eyewear,
Inc., 42 F. App’x 436 (Fed. Cir. 2002).
In 2002, Revolution sued Aspex for infringement of U.S. Patent No. 6,343,858
(“’858 patent”). Contour counterclaimed that Revolution infringed claims 6, 22, and 34
of the ’545 patent. Later, the district court dismissed Revolution’s ’858 patent
infringement action for lack of standing. Revolution Eyewear, Inc. v. Aspex Eyewear,
Inc., No. 02-CV-01087 (C.D. Cal. Apr. 13, 2005). Thus, the only matter left in this
lawsuit is Contour’s ’545 patent infringement action.
A. Summary judgment of infringement of claim 22
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Because Contour offered no opposition, the district court granted Revolution’s
motion for summary judgment of non-infringement as to claims 6 and 34. 1 Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087, slip op. at 6 (C.D. Cal. Aug. 7,
2003) (“SJ Order of Non-infringement of Claims 6 and 34”). The court, however, denied
the motion for summary judgment of non-infringement of claim 22. Id. at 11-19.
Later, Contour filed a motion for summary judgment of infringement of claim 22.
Revolution conceded in its initial brief that its primary frames included all of the
elements of claim 22 except that a top-mounted auxiliary frame would not be “stably
supported.” However, in its supplemental brief, Revolution abandoned the argument
that claim 22 included a “stable support” limitation. Therefore, the court found that
Revolution’s primary frames literally infringed claim 22 and granted Contour’s motion.
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No. 02-CV-01087 (C.D. Cal. Apr. 30,
2007) (“SJ Order of Infringement of Claim 22”).
B. Summary judgment of validity of claim 22
In a separate order issued on the same day, the court denied Revolution’s
motion for summary judgment of invalidity of claim 22. Revolution Eyewear, Inc. v.
Aspex Eyewear, Inc., No. 02-CV-01087 (C.D. Cal. Apr. 30, 2007) (“SJ Order of
Validity”). It concluded that even though the specification of the ’545 patent addressed
two deficiencies in the prior art, claim 22 need not include a “stable support” limitation
because the claim was directed solely to the “decreased strength” problem. Id. at 22-
23. The court observed that the drawings of the ’545 patent “appear[ed] to convey to a
person of ordinary skill in the art the fact that the substance of claim 22 was in the
1
Both claims 6 and 34 are directed to the primary and auxiliary frame
combinations.
2008-1267, -1376 5
possession of the inventor at the time he applied for the patent.” Id. at 17. Similarly, it
found that “a person skilled in the art would have identified the subject matter of claim
22 as having been disclosed in the ’207 patent.” Id. at 25-26.
The district court further entertained Revolution’s argument under the recapture
rule even though no claim amendments or arguments were made during the
prosecution of the ’207 patent. Id. at 29. The court held that Revolution failed to
establish that Contour surrendered claims without a “stable support” limitation because
such a limitation was directed to the auxiliary frame while claim 22 was directed to the
primary frame only. Id. at 35-37.
C. Damages and post-trial proceedings
As Revolution’s infringement liability was established by the summary judgment
rulings, the case proceeded to trial on the damages issue only. After a four-day trial,
the jury returned a verdict, finding a royalty rate of 5% and awarding damages of
$4,319,530 to Contour. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No.
02-CV-01087, slip op. at 2 (C.D. Cal. Sept. 21, 2007) (“Special Verdict”). Afterwards,
the district court concluded that Revolution was entitled to absolute intervening rights
and reduced the damages award by $125,964. Revolution Eyewear, Inc. v. Aspex
Eyewear, Inc., No. 02-CV-01087, slip op. at 28 (C.D. Cal. Jan. 3, 2008) (“Order on
Intervening Rights”). However, the court rejected Revolution’s equitable intervening
rights defense. Id. at 32. Specifically, the court found that “Revolution acted with
‘unclean hands’ after it learned of the Court’s April 30, 2007, Order Granting Summary
Judgment in favor of Contour and finding that Revolution’s products infringed Claim 22
of the ’545 patent.” Id. at 29.
2008-1267, -1376 6
On February 25, 2008, the district court issued an order granting in part
Contour’s motion for attorney fees. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
No. 02-CV-01087, slip op. at 13 (C.D. Cal. Feb. 25, 2008) (“Fees Order”). It awarded
fees based on Revolution’s litigation misconduct, id. at 6-13, but denied fees based on
Revolution’s alleged willful infringement of the ’545 patent, id. at 3-6. On the same day,
the court entered a final judgment, awarding Contour $4,193,567 in damages plus
various interests and fees. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., No.
02-CV-01087, slip op. at 6 (C.D. Cal. Feb. 25, 2008). The district court later denied
Revolution’s motion for JMOL, for a new trial, or for remittitur. Revolution Eyewear, Inc.
v. Aspex Eyewear, Inc., No. 02-CV-01087 (C.D. Cal. Apr. 24, 2008).
Revolution appeals the issues of validity, infringement, and the denial of its post-
trial motions. Contour cross-appeals the denial of attorney fees based on its argument
of willful infringement. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
III. DISCUSSION
A. Standard of review
We review a district court’s grant of summary judgment de novo. Ethicon Endo-
Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). By contrast,
we give considerable deference to the trial court, and “will not disturb a trial court’s
denial of summary judgment unless we find that the court has indeed abused its
discretion.” Little Six, Inc. v. United States, 280 F.3d 1371, 1373 (Fed. Cir. 2002).
Summary judgment is appropriate when there is no genuine issue of material fact and
the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). Thus,
2008-1267, -1376 7
summary judgment may be granted when no “reasonable jury could return a verdict for
the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
B. Analysis
As an initial matter, we observe that the preamble of claim 22 recites “an
eyeglass device” and the ’545 patent describes an eyeglass device to “include[] a
primary and an auxiliary spectacle frames for supporting lenses.” ’545 patent, Abstract
(emphasis added). At the same time, the district court repeatedly stated that claim 22
was directed only to the primary frame, not the primary/auxiliary frame combination.
See, e.g., SJ Order of Non-infringement of Claims 6 and 34, slip op. at 14; SJ Order of
Infringement of Claim 22, slip op. at 5; SJ Order of Validity, slip op. at 25. On appeal,
Revolution does not challenge this statement. In fact, Revolution concedes in its brief
that “new claim 22 [is] directed to a primary frame alone instead of the combination.”
Therefore, we decide the case on the premise that claim 22 is directed only to the
primary frame.
1. Validity of claim 22 2
2
At the court’s invitation, the parties presented their positions during oral
argument regarding whether Revolution properly preserved the issue of validity for
appeal. The district court merely denied Revolution’s motion for summary judgment of
invalidity of claim 22. In general, an order denying a motion for summary judgment is
non-final and non-appealable. Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1573
(Fed. Cir. 1986). Of course, there is the exception that “[a] denial of a motion for
summary judgment may be appealed, even after a final judgment at trial, if the motion
involved a purely legal question and the factual disputes resolved at trial do not affect
the resolution of that legal question.” United Techs. Corp. v. Chromalloy Gas Turbine
Corp., 189 F.3d 1338, 1344 (Fed. Cir. 1999). The parties disagree on whether there is
any factual issue to be tried regarding the validity of claim 22. We do not need to
resolve this dispute as Contour does not raise this issue in its brief and therefore has
waived this argument.
2008-1267, -1376 8
Revolution argues that claim 22 is invalid for violating: (1) the written description
requirement under 35 U.S.C. § 112, ¶ 1; (2) 35 U.S.C. § 251 because it does not claim
the same invention as was disclosed in the original ’207 patent; and (3) the recapture
rule. Under 35 U.S.C. § 282, an issued patent is presumed valid. Thus, Revolution
bears the burden to prove invalidity by clear and convincing evidence. See, e.g., Univ.
of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004).
a. Written description requirement
Revolution argues that the specification of the ’545 patent teaches a top-mounted
combination eyewear while claim 22 broadly claims “the universe of magnetic primary
frames.” As such, Revolution asserts that claim 22 violates the written description
requirement under § 112, ¶ 1.
When a patentee seeks reissuance of his patent, he cannot introduce any new
matter into the reissue application. 35 U.S.C. § 251. Therefore, the new claims or other
added material must find support in the original specification. In other words, the
original specification must satisfy the written description requirement. “The purpose of
the written description requirement is to prevent an applicant from later asserting that he
invented that which he did not . . . .” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1330 (Fed. Cir. 2003). To satisfy the written description requirement, the
disclosure of the specification must “convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, [the inventor] was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
“[U]nder proper circumstances, drawings alone may provide a ‘written description’ of an
invention as required by § 112.” Id. at 1565; see also Cooper Cameron Corp. v.
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Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002) (“Drawings
constitute an adequate description if they describe what is claimed and convey to those
of skill in the art that the patentee actually invented what is claimed.”).
As explained earlier, claim 22 is directed solely to a primary frame. The district
court found that figure 3 of the ’545 patent, the same as figure 3 of the original ’207
patent, depicted each element claimed in claim 22. Revolution does not dispute this
finding. However, it argues that claim 22 does not satisfy the written description
requirement because the claim does not address both of the two prior art deficiencies
identified in the ’207 patent. This argument is without merit.
First, we have held that when the specification sets out two different problems
present in the prior art, it is unnecessary for each and every claim in the patent to
address both problems. See Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360,
1367 (Fed. Cir. 2003); Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317, 1326
(Fed. Cir. 2002). Revolution insists that Honeywell and Resonate are distinguishable
because they are “claim construction cases” while the present case is a “written
description case.” We discern no meaningful distinction. Certainly, a claim construction
and a written description analysis are two separate processes. However, they serve
related functions in determining whether a claim is commensurate with the scope of the
specification—a court looks to the specification for guidance to ascertain the scope of
the claim in claim construction; it also looks to the specification to decide whether the
disclosure provides adequate support for the claims in written description analysis.
Therefore, contrary to Revolution’s contention, the principle articulated in Honeywell and
Resonate applies not only in claim construction, but also in written description analysis.
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In fact, as noted by the district court, we have previously applied Honeywell and
Resonate in the written description context. See Cordis Corp. v. Boston Scientific
Corp., 188 F. App’x 984, 990 (Fed. Cir. 2006) (“[W]hen a patent includes two inventive
components, particular claims may be directed to one of those inventive components
and not to the other.”).
Revolution next argues that Cordis is factually distinguishable in that the benefits
of the two inventive components in the Cordis patent are not tied to each other, while
the solutions to the “stable support” and “decreased strength” problems in the present
case are directly related. This alleged distinction is based on the false premise that if
the problems addressed by the invention are related, then a claim addressing only one
of the problems is invalid for lack of sufficient written description. Inventors can frame
their claims to address one problem or several, and the written description requirement
will be satisfied as to each claim as long as the description conveys that the inventor
was in possession of the invention recited in that claim.
In sum, as claim 22 is directed solely to a primary frame and it addresses the
prior art “decreased strength” issue, we conclude that the written description
requirement is satisfied.
b. Claiming the same invention
Revolution also argues that claim 22 is invalid for violating 35 U.S.C. § 251
because it does not claim the same invention as disclosed in the original ’207 patent.
According to § 251, a reissue patent shall be reissued “for the invention disclosed in the
original patent.” The essential inquiry for the “original patent” requirement is “whether
one skilled in the art, reading the specification, would identify the subject matter of the
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new claims as invented and disclosed by the patentees.” In re Amos, 953 F.2d 613,
618 (Fed. Cir. 1991). This inquiry is analogous to the written description requirement
under § 112, ¶ 1. Id. at 617. Because we have held that the written description
requirement is satisfied, we similarly hold that claim 22 complies with § 251.
c. Recapture rule
The recapture rule is a restriction on the ability of patentees to broaden the scope
of their claims through reissue patents. MBO Labs., Inc. v. Becton, Dickinson & Co.,
474 F.3d 1323, 1331 (Fed. Cir. 2007). Under this rule, “‘claims that are broader than
the original patent claims in a manner directly pertinent to the subject matter
surrendered during prosecution are impermissible.’” Id. at 1332 (quoting Hester Indus.,
Inc. v. Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998)). To determine whether an
applicant surrendered particular subject matter, we look to the prosecution history for
arguments and changes to the claims made in an effort to overcome a prior art
rejection. In re Clement, 131 F.3d 1464, 1469 (Fed. Cir. 1997).
In this case, the parties do not dispute that claim 22 of the reissue ’545 patent
(directed to the primary frame only) is broader than the claims of the original ’207 patent
(directed to the primary frame and auxiliary frame combination). However, as
Revolution acknowledges, no amendments or arguments were made during prosecution
of the original ’207 patent. In fact, the claims were allowed in the first Office Action.
Therefore, the recapture rule does not apply.
Even if we considered Revolution’s argument to be that Chao disclaimed certain
claim scope in the specification, we would reject it. Our cases recognize that “the
specification may reveal an intentional disclaimer, or disavowal, of claim scope by the
2008-1267, -1376 12
inventor. In that instance . . . the inventor has dictated the correct claim scope, and the
inventor’s intention, as expressed in the specification, is regarded as dispositive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc); see also
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001) (“Where the specification makes clear that the invention does not
include a particular feature, that feature is deemed to be outside the reach of the claims
of the patent, even though the language of the claims, read without reference to the
specification, might be considered broad enough to encompass the feature in
question.”). Importantly, any limitation based on such disclaimer must be shown with
reasonable clarity and deliberateness. Id.
The specifications of both the original ’207 patent and the reissue ’545 patent
show two independent aspects of Chao’s invention: (1) an auxiliary frame that can be
top-mounted onto the primary frame to address the “stable support” issue; and (2) a
primary frame with the magnetic members supported by projections attached to the
rear/sides of the frame to solve the “decreased strength” problem. We agree with the
district court that, in pointing out the two deficiencies in the prior art, Chao disclaimed an
auxiliary frame that is not stably supported in top-mounting configuration and a primary
frame that has embedded magnetic members. Claim 22 is not directed to either.
Instead, claim 22 is directed to the second aspect of Chao’s invention. Nowhere in the
specification did Chao explicitly disclaim or clearly disavow this subject matter.
Therefore, we hold that Chao did not, through statements made in the specification,
disclaim the subject matter of claim 22.
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Claim 22 satisfies both the written description requirement under § 112, ¶ 1 and
the mandate of claiming the same invention under § 251. In addition, the inventor did
not disclaim the subject matter of the claim in the specification. Because the district
court did not abuse its discretion, we affirm the denial of summary judgment of invalidity
of claim 22.
2. Infringement of claim 22
The district court found that Revolution’s primary frames literally infringe claim
22. SJ Order of Infringement of Claim 22. Literal infringement requires that the
accused device literally embodies every limitation of the claim. Kraft Foods, Inc. v. Int’l
Trading Co., 203 F.3d 1362, 1370 (Fed. Cir. 2000). Revolution appears to concede that
its product included all of the limitations of claim 22. However, it contends that there is
no infringement because Revolution’s primary frame is not capable of being top-
mounted with its counterpart auxiliary frame or any commercially sold auxiliary frame.
Revolution’s argument misses the point. Claim 22 recites “said first magnetic
members capable of engaging second magnetic members of an auxiliary spectacle
frame.” The district court construed this phrase to mean that “the first magnetic
members have the ability to magnetically attract the corresponding second magnetic
members of an auxiliary spectacle frame when placed above the first magnetic member,
with or without actual contact.” SJ Order of Non-infringement of Claims 6 and 34, slip
op. at 15. The court emphasized that “the magnetic members of the primary frame
need only be capable of, or ‘have the ability to,’ magnetically attract magnetic members
on an auxiliary spectacle frame placed above the first magnetic members.” Id.
2008-1267, -1376 14
Contour submitted three specially made auxiliary frames that can be top-
mounted onto Revolution’s primary frames. Revolution argues that the district court
erred in granting summary judgment of infringement of claim 22 based on this evidence.
Quoting High Tech Medical Instrumentation, Inc. v. New Image Industries, Inc., 49 F.3d
1551 (Fed. Cir. 1995), Revolution points out that “a device does not infringe simply
because it is possible to alter it in a way that would satisfy all the limitations of a patent
claim.” Id. at 1555. This statement is certainly correct. However, the facts in High Tech
are different from the ones in this case.
In High Tech, the claim at issue was directed to a hand-held endoscope for
dental work, comprising a body member and a camera disposed in the body member,
with the camera “being rotatably coupled to said body member.” Id. at 1552. The
district court found infringement because in the accused product, “the camera [was]
‘rotatably coupled to the body member’ when the set screws [were] loosened or
removed.” Id. at 1555. We reversed based on the reasoning that the accused camera
“was not rotatable within its housing unless [it was] altered, at least to the extent of
removing or loosening the set screws that secure the camera to the housing.” Id. at
1556.
The first factual distinction between High Tech and this case is clear from the
claim language. The claim in High Tech requires a structure: a camera “rotatably
coupled” to a body member. In contrast, claim 22 here only requires a capacity to
perform a function: “capable of engaging” magnetic members from the top. As such, we
find this case similar to Intel Corp. v. United States International Trade Commission,
946 F.2d 821 (Fed. Cir. 1991).
2008-1267, -1376 15
The claim at issue in Intel is related to a memory chip. 946 F.2d at 831. It
recites, inter alia, (1) “programmable selection means for selecting said alternate
addressing mode,” and (2) “whereby when said alternate addressing mode is selected,”
some signal will be processed. Id. The accused infringer conceded that its product was
capable of operating in the page mode. Id. at 832. Nevertheless, it argued that the
accused product did not infringe because it was “never sold to operate in page mode,”
and “[n]o customer was ever told how to convert the chip to page mode operation—or
even that such conversion was possible.” Id. The court disagreed and stated that “the
accused device, to be infringing, need only be capable of operating in the page mode”
and that “actual page mode operation in the accused device is not required.” Id.
Just like the accused product in Intel, Revolution’s primary frames, although not
specifically designed or sold to be used with top-mounting auxiliary frames, are
nevertheless capable of being used in that way—the three specially made auxiliary
frames proved so. It is irrelevant that Revolution’s auxiliary frames, or any other
commercially available auxiliary frames, are not actually used in a top-mounting
configuration or cannot be so used.
The second factual distinction between High Tech and this case is even more
obvious: the camera in High Tech has to be altered for it to be “rotatably coupled” to a
body member, while Revolution’s primary frame does not need to be altered in any way
for it to be “capable of engaging” magnetic members from the top. Revolution appears
to understand this difference but nevertheless insists that Revolution’s primary frame
does not infringe because even though the “primary frame itself is not modified, the way
it is used is certainly modified.” In so arguing, Revolution ignores the fact that claim 22
2008-1267, -1376 16
is directed to the primary frame, an apparatus, not a method of using the frame.
Therefore, whether the usage of the primary frame is modified is irrelevant.
Revolution goes on to argue that its primary frame does not infringe because it is
not capable of stably supporting an auxiliary frame. However, Revolution has conceded
that, according to the district court’s claim construction, “stable support” is not a
limitation of claim 22. On appeal, Revolution does not challenge any claim construction
but denies that it has abandoned the “stable support” argument. We find this argument
meritless. In any event, Revolution has waived the “stable support” argument.
There is no factual dispute that Revolution’s primary frames, as made and sold,
satisfy all the elements of claim 22. Therefore, we affirm the district court’s grant of
summary judgment of infringement.
3. JMOL, new trial, or remittitur
Revolution contends that the district court erred in denying the post-trial motions
for, in the alternative, JMOL, a new trial, or remittitur. We review the denial of these
post-trial motions by applying the law of the regional circuit—in this case, the Ninth
Circuit. See Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1148 (Fed. Cir.
2004).
a. JMOL
In the Ninth Circuit, the court of appeals reviews a district court’s denial of a
motion for JMOL de novo. Theme Promotions, Inc. v. News Am. Mktg. FSI, 546 F.3d
991, 999 (9th Cir. 2008). The test is whether the evidence, construed in the light most
favorable to the nonmoving party, permits only one reasonable conclusion, and that
conclusion is contrary to that of the jury. Id. A jury’s verdict must be upheld if supported
2008-1267, -1376 17
by substantial evidence. Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002).
Substantial evidence is relevant evidence reasonable minds might accept as adequate
to support the jury’s conclusion, even if it is also possible to draw a contrary conclusion.
Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir. 2000). A court will not
weigh the evidence or assess the credibility of witnesses in determining whether
substantial evidence exists. Landes Constr. Co. v. Royal Bank of Can., 833 F.2d 1365,
1371 (9th Cir. 1987).
At trial, Contour proposed $11 million in damages and Revolution advocated for
$312,000. The jury returned a verdict awarding damages of $4.3 million to Contour.
Revolution argues that JMOL is required because the jury verdict is mathematically
impossible. According to Revolution, the damages would have been at most around
$2.8 million, computed by multiplying the total revenue of $55 million as calculated by
Contour’s counsel, to the reasonable royalty rate of 5% as the jury found.
The total revenue of $55 million was calculated based on (1) the average sales
prices advocated by Revolution, and (2) 70% of the total sales price of the combination
eyewear as the price for the infringing primary frames. As the district court pointed out,
the jury did not have to use either number in calculating the damages. Indeed,
Revolution’s CEO testified about two different prices for the infringing products: the list
price and the much discounted average price. He also testified that the business model
of Revolution “was built on selling a primary frame with an auxiliary clip-on sun lens,”
and not just primary frames or auxiliary frames by themselves. Construing such
testimony in the light most favorable to Contour, the jury could have used the higher list
2008-1267, -1376 18
price and/or the entire price for the combination eyewear in computing the damages.
The damages thus calculated would have been even more than $4.3 million.
Revolution argues that there is no substantial evidence to support even the $55
million total revenue as advocated by Contour. It attacks the testimony of Contour’s
witness regarding the 70% / 30% breakdown of the price for the primary frame/auxiliary
frame. Revolution forgets that, at the JMOL stage, the court does not weigh evidence,
and all inferences must be drawn in favor of Contour. Revolution also contends that
there is no substantial evidence to support the jury’s finding of the 5% royalty rate.
Regarding this issue, the district court went through a detailed analysis of relevant
factors under Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116,
1120 (S.D.N.Y. 1970). We agree with the district court that the evidence is sufficient to
support the 5% royalty rate. In sum, the district court did not err in denying Revolution’s
motion for JMOL.
b. New trial
In the alternative, Revolution contends that the “fatal inconsistency” in the
interrogatories of the Special Verdict necessitates a new trial. In the Ninth Circuit, the
denial of a motion for a new trial is reviewed for an abuse of discretion. Incalza v. Fendi
N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007). In deciding a motion for a new trial,
the judge can weigh the evidence and assess the credibility of witnesses, and need not
view the evidence from the perspective most favorable to the prevailing party. Landes
Constr., 833 F.2d at 1371. In addition, the existence of substantial evidence does not
prevent a court from granting a motion for a new trial if the verdict is against the clear
weight of the evidence. Id. However, a district court may not grant or deny a new trial
2008-1267, -1376 19
merely because it would have arrived at a different verdict. Wilhelm v. Associated
Container Transp. (Austl.) Ltd., 648 F.2d 1197, 1198 (9th Cir. 1981).
Revolution argues that the $4.3 million damages award exceeds the royalty for
both the infringing primary frame and the non-infringing auxiliary frame. We have
already explained that the jury verdict of $4.3 million is within reason because the jury
did not have to base its damages computation on the average price. More importantly,
as the district court stated, the damages award based on a reasonable royalty rate is
only the floor, not the exact amount. This rationale is well supported by the statutory
language, see 35 U.S.C. § 284 (requiring that the court “award the claimant damages
adequate to compensate for the infringement, but in no event less than a reasonable
royalty”), and our case law, see, e.g., Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1544
(Fed. Cir. 1995); Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320, 1326
(Fed. Cir. 1987) (stating that the purpose of § 284 “is not to provide a simple accounting
method, but to set a floor below which the courts are not authorized to go”). Therefore,
the district court did not abuse its discretion in denying a new trial.
c. Remittitur
Revolution further asserts that the district court should have reduced the jury
verdict. A jury’s supportable finding of the amount of damages must be upheld unless
the amount is grossly excessive or monstrous. See Lambert v. Ackerley, 180 F.3d 997,
1011 (9th Cir. 1999) (en banc). A trial court’s decision against remittitur is reversed only
on a showing of clear abuse of discretion. See L.A. Police Protective League v. Gates,
995 F.2d 1469, 1477 (9th Cir. 1993).
2008-1267, -1376 20
Revolution repeats the same arguments here as those for JMOL and a new trial.
As discussed earlier, the verdict is supported by substantial evidence. The district court
found the jury verdict of $4.3 million “well within the range of damages advocated by the
parties at trial,” i.e., between $312,000 as proposed by Revolution, and $11 million as
proposed by Contour. Therefore, we agree with the district court that the jury verdict is
not grossly excessive. Certainly, no abuse of discretion has been shown.
Accordingly, we affirm the denial of Revolution’s post-trial motions for JMOL, for
a new trial, or for remittitur.
4. Attorney fees
Contour cross-appeals the district court’s denial of its motion for attorney fees
based on Revolution’s alleged willful infringement. Section 285 authorizes the court in
exceptional cases to award reasonable attorney fees to the prevailing party. 35 U.S.C.
§ 285. Exceptional cases usually feature some material, inappropriate conduct related
to the matter in litigation, such as willful infringement. Serio-US Indus., Inc. v. Plastic
Recovery Techs. Corp., 459 F.3d 1311, 1321-22 (Fed. Cir. 2006). The determination of
whether a case is exceptional and, thus, eligible for and warranting an award of attorney
fees under § 285 is a two-step process: (1) the district court must determine whether
there is clear and convincing evidence that a case is exceptional, a factual
determination reviewed for clear error, and (2) if so, the district court must then
determine in its discretion whether an award of attorney fees is justified, a determination
that we review for an abuse of discretion. Digeo, Inc. v. Audible, Inc., 505 F.3d 1362,
1366-67 (Fed. Cir. 2007).
2008-1267, -1376 21
In this case, the district court stopped its inquiry after the first step—it did not find
the case exceptional because there was no sufficient evidence to support a finding of
willfulness. 3 Therefore, we only need to analyze whether that fact finding was clearly
erroneous. The most important fact here is that Contour failed to plead a claim for
willful infringement. As a result, it was barred from seeking enhanced damages based
on willful infringement, and no fact finder ever addressed the question of willfulness.
Contour bases its cross-appeal argument on a statement by the district court in
the Order on Intervening Rights. In denying Revolution’s defense of equitable
intervening rights, the court articulated that Contour had shown that “Revolution ha[d]
unclean hands. Revolution willfully infringed Contour’s patent when it continued to sell
the infringing frames after the Court granted Contour’s motion for summary judgment on
the issue of infringement on April 30, 2007.” Contour argues that there is no distinction
between “intervening rights” willfulness and “exceptional case” willfulness and therefore,
the district court committed reversible error in denying the attorney fees based on willful
infringement. After reviewing the record, we disagree.
First of all, as the district court correctly recognized, a limited finding of willfulness
on Revolution’s sales of infringing frames after the April 30, 2007 was “an insufficient
basis on which to declare the entire five-year case as exceptional.” More importantly,
the issue of equitable intervening right is governed by 35 U.S.C. § 252, under which a
court may protect investments made before reissue “to the extent and under such terms
as the court deems equitable.” While provided by a statutory provision, this prong of the
3
The district court awarded Contour attorney fees based on Revolution’s
litigation misconduct. Revolution does not appeal that issue here.
2008-1267, -1376 22
intervening rights is entirely equitable in nature. As such, issues of fact underlying the
equitable intervening rights are matters for court, not jury disposition. In contrast,
[l]iability for willfulness of infringement turns on considerations of
intent, state of mind, and culpability. . . .
. . . Although fairness as between patentee and infringer is a
consideration in the determination of whether illegal behavior warrants an
enhanced penalty, the question does not thereby become “equitable.”
The issue of willful infringement remains with the trier of fact.
Nat’l Presto Indus., Inc. v. W. Bend Co., 76 F.3d 1185, 1192-93 (Fed. Cir. 1996).
In this case, Contour failed to plead willful infringement, and the fact finder did
not examine the issue. This does not prohibit the court from taking into account, as
dictated by the equities, facts that would normally be considered under willful
infringement analysis. Indeed, the district court did so, and rightfully concluded that
Revolution’s conduct amounted to “unclean hands.” However, as explained by the
district court, such a “limited finding [of willfulness] on an equitable issue [was] not a
sufficient ‘clear and convincing’ finding of willfulness to support finding this case
‘exceptional.’” Fees Order, slip op. at 14.
There is no clear error in the court’s factual failure to find willful infringement and
the resulting conclusion that this is not an exceptional case. Thus, we affirm the court’s
denial of attorney fees based on willful infringement.
IV. CONCLUSION
For these reasons, the judgment of the district court is affirmed in all aspects.
AFFIRMED
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