Aspex Eyewear, Inc. v. Zenni Optical LLC
Addressing the issue of whether collateral estoppel applies when claim construction issues overlap, the U. S. Court of Appeals for the Federal Circuit affirmed the finding of a lower court that collateral estoppel applied when a plaintiff sought to litigate patents against products that were indistinguishable from those that previously had been found not to infringe. Aspex Eyewear, Inc. v. Zenni Optical LLC, Case No. 12-1318 (Fed. Cir., Apr. 19, 2013) (Newman, J.).
Plaintiff Aspex Eyewear sued Zenni Optical for infringement of multiple U.S. patents for magnetic clip-on eyewear such as sunglasses. Specifically, the patents are directed to magnets that secure the bridge portions of the eyewear. The district court found that Aspex was collaterally estopped from pursuing infringement because it had earlier brought suit on the same patents against another company, Altair Eyewear. The case against Altair involved the same three patents in the current suit against Zenni. In the Altair case, the district court had granted summary judgment of non-infringement on all three patents after claim construction of certain terms. Although not all the asserted claims were the same, many overlapped, and all the claims asserted in this case contained the same "retaining mechanism" limitation that was dispositive of non-infringement in the Altair case. The district court in this case held that the Altair rulings collaterally estopped Aspex from proceeding because the accused Zenni sunglasses were indistinguishable from the Altair sunglasses. Aspex appealed.
Aspex argued that collateral estoppel does not apply because several claim terms at issue in the current litigation were not at issue in the Altair case. The Federal Circuit, applying the law of the U.S. Court of Appeals for the Eleventh Circuit because collateral estoppel is not unique to patent law, found that collateral estoppel precludes a plaintiff from relitigating identical issues by merely switching adversaries. Aspex claimed that Zenni's alleged infringement hinged on the meaning of certain claim terms that had not been construed in the Altair case. Zenni responded that the issue was not whether certain claim terms had been previously construed, but whether Aspex has already litigated the "issue" of infringement based on products that are indistinguishable from those at issue here.
The Federal Circuit explained that the assertion of different claims or claim terms in a subsequent suit does not create a new issue to defeat preclusion. Collateral estoppel applies if the issue, such as infringement, was already litigated and decided. The Court further found that there were no changed circumstances or new evidence, and thus Aspex had a full and fair opportunity to previously litigate the issue of infringement. Relitigating infringement would be repeating "essentially the same dispute." The Federal Circuit found that Aspex had already fully litigated the meaning of the term "retaining mechanism" in the first suit and that the result was dispositive of the present infringement claims. Thus, collateral estoppel applied, and the Federal Circuit affirmed the district court's finding that collateral estoppel applied based on the Altair case.
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