Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., No. 2011–1147 (Fed. Cir. Mar. 14, 2012) (Chief Judge Rader, and Circuit Judges Bryson and Reyna)
There’s a common stereotype that someone with glasses is less inclined to fight. You wouldn’t know it from this case. These eyewear companies have been going at it for over a decade!
Aspex has a patent for magnetic clip-on eyewear. Aspex first sued Revolution Eyewear for patent infringement in 1999. Revolution won that round with a verdict of non-infringement. Revolution then sued Aspex for patent infringement in 2002 and Aspex counterclaimed with a reissue of the first patent. Revolution lost its infringement claim and Aspex won a judgment of more than $4 million, which was affirmed in 2009.
In 2006, Aspex sued Marchon Eyewear for patent infringement, claiming that it was using the same clip-on design as Revolution. Revolution redesigned its glasses in 2007 and created a new clip-on design. The next year, Aspex and Marchon settled.
While all that was going on, Aspex’s reissued patent was reexamined, and it had to amend some of the claims.
Even after winning against Revolution and settling with Marchon, Aspex wasn’t done. In 2009, it sued Revolution and Marchon again on the same patent, which was now out of reexam. Revolution and Marchon moved to dismiss the case, arguing that they’d already been through this, and Aspex’s causes of action were resolved. The district court agreed, and dismissed the case.
The Federal Circuit didn’t care much for Aspex’s attempt to sue again on the same patent. Aspex tried to argue that it was basically a new patent after the reexam, but the court didn’t buy that.
Aspex didn’t walk away empty-handed, though. The court agreed with Aspex that it could sue Revolution and Marchon for infringement by the new clip-on design. And so the litigation goes back to the district court, with some additional guidance from the Federal Circuit on claim construction.
These companies don’t show any signs of resolving their differences any time soon, and with all the back-and-forth, they’ve definitely made spectacles of themselves. (Ouch!)
Photo credit: pj_vanf