Magnetic Appeal: Collateral Estoppel Bars Aspex Claim
If you watched "A Different World," the 80s/90s "Cosby Show" spinoff that followed Denise Huxtable to Hillman College, you'll remember Dwayne Wayne's flip-up sunglass/eyeglass combo. (You may also remember future "My Cousin Vinny" star and Oscar-winner Marisa Tomei's season on the show. Or maybe not.)
But -- until they make an ironic comeback -- flip-up sunglasses are relics of the past. These days, multitasking glasses use magnets, a patent-protected technological advancement. Which brings us to a Federal Circuit collateral estoppel dispute between Aspex Eyewear and Zenni Optical over magnetic clip-on eyewear.
Aspex Eyewear, Inc. sued Zenni Optical, LLC for infringement of several U.S. patents for magnetic clip-on eyewear, such as sunglasses. The district court held that Aspex was collaterally estopped from pursuing the suit, based on earlier litigation between Aspex and Altair Eyewear, Inc. for infringement of the same patents.
Aspex argued that collateral estoppel does not apply because certain aspects of the patent claims against Zenni Optical were not included in the Altair litigation, and that several terms now at issue had not previously been construed or were incorrectly construed.
The differing terms basically came down to the difference between rimmed and rimless glasses. Applying the Altair rulings to the Zenni issues, the district court observed that Zenni's accused rimless magnetic clip-on sunglasses were materially indistinguishable from Altair's rimless magnetic clip-on sunglasses.
Collateral estoppel precludes a plaintiff from relitigating identical issues by merely switching adversaries and precludes a plaintiff from asserting a claim that the plaintiff had previously litigated and lost against another defendant. Here, the record shows that Aspex fully litigated the meaning of the term "retaining mechanism" in the Altair suit, and that it was finally adjudicated that "retaining mechanism" as used in these patents requires a rim around the lens, which resulted in a finding of non-infringement.
Although Aspex argued that the terms "primary frame," "auxiliary frame," "first frame," and "second frame" were not at issue and therefore were not construed in the Altair litigation, the appellate court found that the issues of infringement are not distinguished. Since Aspex had a full and fair opportunity to litigate this issue, the Federal Circuit agreed that it was collaterally estopped from relitigating the claims against Zenni.
- Aspex Eyewear v. Zenni Optical (Federal Circuit Court of Appeals)
- Equitable Estoppel: Don't Just Sit on a Patent Infringement Claim (FindLaw's Federal Circuit Blog)
- Broken-Line Boundaries: No Patent Protection for Crest Bottle (FindLaw's Federal Circuit Blog)
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