Revolution Eyewear v. Aspex Eyewear and Thiery Ifergan and Manhattan Design Studio, Contour Optik, and Asahi Optical (CAFC 2008-1267, -1376) precedential

 RE37,545 is a reissue of 5,568,207; inventor Richard Chao.

Chao solved two problems: one involving stable support for magnetically attaching two frames (such as sunglasses on regular eyeglasses), the other decreased strength in frames, where in the prior art the frame was drilled to implant magnetic pieces.

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 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.

Claim 22 of '545 was disputed.

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.

Revolution had a two-pronged attack.

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.

Written Description

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. 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.").

Revolution facilely argued that a patent claim had to encompass both problems approached in the specification.

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.

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.").

Recapture

The other argument by Revolution was that the reissue had to claim 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 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.

This led the court to the recapture rule, prohibiting broadening claim scope through reissue of material surrendered.

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).

An exception to the recapture rule: if nothing was surrendered, the broadening proscription is moot.

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.

Specification disclaimer may limit scope, but only if it is clearly and deliberately made.

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 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.

Specific to Chao's two inventions -

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.

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.

Revolution also had a non-infringement argument that was awry.

In argument over JMOL, Judge Michel cited case law that a jury's verdict is overturned only if in error, a maxim as often observed in the breach by the CAFC.

A jury's verdict must be upheld if supported 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).

Affirmed.