On April 19, 2013, the U.S. Court of Appeals for the Federal Circuit decided Aspex Eyewear & Contour Optik Inc. v. Zenni Optical LLC. (Fed. Cir. 2013). Aspex Eyewear, the plaintiff-appellent, appealed a decision of the U.S. District Court for the Southern District of Florida that collateral estoppel precluded its patent infringement lawsuit against Zenni Optical. In its opinion, the Federal Circuit affirmed the ruling of the district court.
Previously, Aspex Eyewear sued Zenni Optical for infringement of its U.S. Patents related to magnetic clip-on eyewear. Aspex had litigated the same patents in a prior lawsuit against Altair Eyewear. The district court held that collateral estoppel precluded Aspex from asserting its patent infringement claims because it had a full and fair opportunity to litigate the issue in the previous litigation with Altair.
On appeal, the Federal Circuit explained that collateral estoppel applies when (1) the issue at stake is identical to the issue involved in the prior proceeding; (2) the issue was actually litigated in the prior proceeding; (3) the determination of the issue must have been a critical and necessary part of the prior judgment and (4) the party against whom it is asserted must have had a full and fair opportunity to litigate the issue in the prior proceeding.
Aspex argued that collateral estoppel was not applicable in this case because the asserted claims contained certain limitations that had not been construed in the lawsuit against Zenni Optical. Particularly, the company alleged that these issues of claim construction were not actually litigated and that they were not a critical and necessary part of the prior judgment.
Looking at the record, however, the Federal Circuit held that Aspex was precluded from relitigating the infringement of its patents against Zenni Optical. Pursuant to Bourns Inc. v. United States, 537 F.2d 486 (Ct. Cl. 1976), the question of collateral estoppel depends on the determinative issues litigated and decided rather than individual claims. The district court defined the issue here as infringement by rimless clip-on eyewear based on the construction of the “retaining mechanisms” term as requiring rims.
In all, the court found that Aspex had a full and fair opportunity to litigate the issue of patent infringement as to the same accused device. All of the claims asserted by Aspex contained the same “retaining” mechanism limitation that was determinative of non-infringement in Altair. Altair’s magnetic clip-on eyewear, moreover, was materially identical to Zenni Optical’s magnetic clip-on eyewear. In these circumstances, additional terms that were not previously construed are irrelevant.