Federal Circuit Reinterprets Claims Based on Intrinsic Evidence
Disagreeing with a district court’s interpretation that a “frame” in sunglasses included rims, the U.S. Court of Appeals for the Federal Circuit, in a non-precedential decision, reversed a district court’s summary judgment of non-infringement as to one patent, but affirmed the grant of summary judgment of non-infringement as to two other patents. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., Case Nos. 07-1380, -1407 (Fed. Cir., Aug. 1, 2008) (Michel, C.J.).
The patents-in-suit claim eyeglasses with auxiliary sunglasses that attach to the eyeglasses with magnets. Aspex Eyewear, Inc. (Aspex) and Contour Optik, Inc. (Contour), the assignee of the three patents-in-suit, sued Altair Eyewear, Inc. (Altair), alleging that Altair infringed. All of Altair’s sunglasses that attach to the primary eyeglasses are rimless, with the bridge and earpieces attached to the lenses by pins.
Relying solely on the intrinsic evidence, the district court ruled that the term “frame” in the claims of one of three patents-in-suit included rims and granted summary judgment of non-infringement because it found the pins in the accused rimless glasses supported the lenses in a different way than rims, which encircled the lenses. The district court also determined that the claim term “retaining mechanism” limitation in the two other patents-in-suit was a means-plus-function limited to rims, the only structure disclosed in the specification, and granted summary judgment of non-infringement.
The district court also denied Altair’s motion for partial summary judgment alleging that Aspex was a “bare” licensee and lacked standing to sue. Aspex argued that it had standing pursuant to a written agreement between Aspex and Chic Optic, Inc. (Chic), which received an exclusive license before the assignment of the patents-in-suit to Contour and oral and/or implied agreements between Contour, Chic and Aspex under which Aspex received an exclusive license from Chic. The district court denied Altair’s motion after finding enough evidence to believe there was an oral and/or implied exclusive license between Chic and Aspex, even though the Chic-Aspex written agreement referring to patents in existence was insufficient to confer standing since it was executed before the patents-in-suit issued. Aspex and Contour appealed from the district court’s summary judgment of non-infringement and Altair cross-appealed on the issue of standing.
The Federal Circuit reviewed the grant of summary judgment and claim construction de novo and disagreed with the district court’s construction of the claim terms “therein” and “frame.” The Court held that the dictionary definition of the term therein did not limit the frame to one with rims, but that the term therein simply meant to hold lenses “in that place” and that the specification did not support the narrow interpretation requiring a frame to have rims. The Court reversed the district court’s summary judgment of non-infringement as to the corresponding patent and remanded for further proceedings consistent with the revised claim construction.
However, the Court affirmed the district court’s holding that a “retaining mechanism” as recited in the two other patents-in-suit was a means-plus-function limitation because the only structure disclosed in the specification for performing the claimed lens-retaining functions were rims. The Court agreed with the district court that pins in the accused sunglasses retained the lenses “in a substantially different way” than rims and affirmed the district court’s summary judgment of non-infringement because pins were not equivalent to rims.
The Court also reviewed the denial of summary judgment as to standing for abuse of discretion and affirmed because the evidence was sufficient to establish a genuine issue of material fact as to whether Aspex had an oral or implied exclusive license, Chic and Aspex were both owned by members of the same family in a close business relationship, Aspex operated as an exclusive licensee and there was testimony that Aspex was an exclusive licensee. The Court rejected Altair’s arguments and held that an exclusive license does not have to be in writing for the licensee to have standing if the patentee or assignee is also joined, as Contour was in this case.