             NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not
             citable as precedent. It is a public record.

     United States Court of Appeals for the Federal Circuit
                                        04-1138

           ASPEX EYEWEAR, INC., MANHATTAN DESIGN STUDIO, INC.,
             CONTOUR OPTIK, INC., and ASAHI OPTICAL CO., LTD.,

                                                      Plaintiffs- Appellants,

                                           v.

                  MIRACLE OPTICS, INC. and VIVA OPTIQUE, INC.,

                                                        Defendants-Appellees.

                           _______________________

                             DECIDED: March 2, 2006
                           _______________________


Before LOURIE, Circuit Judge, ARCHER, Senior Circuit Judge, and GAJARSA, Circuit
Judge.

ARCHER, Senior Circuit Judge.

      Aspex Eyewear, Inc., Manhattan Design Studio, Inc., Contour Optik, Inc., and

Asahi Optical Co., Ltd. (collectively “Aspex”) appeal the judgment of the United States

District Court for the Central District of California holding that Miracle Optics, Inc.’s

(“Miracle”) Magic Clip products do not infringe U.S. Patent RE37,545 (“the ‘545 patent”).

Aspex Eyewear, Inc. v. Miracle Optics, Inc., No. CV 01-10396 (C.D. Cal. Aug. 8, 2003)

(“Summary Judgment Order”). Because the district court erred in its claim construction,

we vacate and remand.
                                              I

       The ‘545 patent is drawn to eyeglasses that have a primary spectacle frame and

an auxiliary spectacle frame attached thereto by magnetic members.           The primary

spectacle frame typically includes prescription lenses while the auxiliary frame typically

includes sunglass lenses. Claims 12, 16, and 24 are at issue in this case and recite as

follows:

       12. An eyeglass device comprising:
       a primary spectacle frame having two side portion extensions, each of
       said extensions having a front side, a rear side and a first magnetic
       member secured to said rear side, an auxiliary spectacle frame including
       two side portions each having an arm extended therefrom for extending
       toward and beyond said rear side, each of said arms containing a second
       magnetic member, and
       said arms and said first and second magnetic members cooperating to
       stably support said auxiliary spectacle frame on said primary spectacle
       frame.

       16. An eyeglass device comprising:
       a primary spectacle frame having two side portion extensions, each of
       said extensions having a front side and a rear side with a first magnetic
       member secured to said rear side, and
       an auxiliary spectacle frame including two side portions, each of said side
       portions having an arm extended therefrom for extending beyond said rear
       side, said arms containing corresponding second magnetic members, said
       arms and said first and second magnetic members supporting said
       auxiliary spectacle frame on said primary spectacle frame.

       24. An eyeglass device comprising:
       an auxiliary spectacle frame for supporting auxiliary lenses therein, said
       frame including a front side, a rear side, and oppositely positioned side
       portions, each of said side portions having an arm extended therefrom,
       each of said arms having a rearwardly directed end for securing a
       magnetic member, a pair of magnetic members respectively located at
       said ends of said arms, each of said ends further including a downwardly
       extended end portion for hooking onto a primary spectacle, said arms and
       said pair of magnetic members adapted to extend across respective side
       portions of a primary spectacle frame so that said pair of magnetic
       members can engage corresponding magnetic members on a primary
       spectacle frame.




04-1138                                   2
‘545 pat, col. 4, l. 63 – col. 7, l. 20 (emphases added). The claim limitations relevant to

this appeal are drawn to arms extending from the auxiliary frame: “an arm extended

therefrom for extending toward and beyond said rear side” (claim 12); “an arm extended

therefrom for extending beyond said rear side” (claim 16); and “arms having a

rearwardly directed end for securing a magnetic member” (claim 24). The district court

construed these limitations to “require that the arms of the auxiliary frames do not

extend past the rear edge of the projection of the primary frame containing or securing

the magnetic member.” Summary Judgment Order, slip op. at 30. Because Miracle’s

Magic Clip products have an auxiliary frame with arms that extend beyond the

projection containing the magnetic member, the court ruled that the “accused product

does not read on the claimed invention,” id. at 34, and therefore did not literally infringe

the ‘545 patent, id. at 36. The court also determined that prosecution history estoppel

barred the applicability of the doctrine of equivalents. Id. at 38. Accordingly, the district

court granted Miracle’s motions for partial summary judgment of no literal infringement

and of no infringement under the doctrine of equivalents.

       Aspex appeals, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                                II

       Claim construction is a question of law which we review de novo. Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In determining the

meaning of disputed claim terms, a court must look primarily to the intrinsic evidence of

record, examining the claim language itself, the specification, and the prosecution

history, if in evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir.

2005) (en banc).




04-1138                                     3
       It is undisputed that claims 12, 16, and 24 do not expressly contain a limitation

that the auxiliary frame arms cannot extend past the rear edge of the projection of the

primary frame containing or securing the magnetic member. The written description,

too, is silent as to such a limitation. Thus, at issue here is whether the prosecution

history mandates that the claim language be construed to require that the arms

extending from the auxiliary frame cannot extend beyond the rear edge of the projection

of the primary frame, as the district court held.

       During reissue proceedings, additions to the specification were proposed,

including an additional drawing, Figure 8, and new claims were proposed.              The

examiner disapproved the proposed drawing because it introduced new matter into the

drawings. Specifically, the examiner stated “[t]he original disclosure does not support

the showing of the end portion, but not the magnetic member 22, of the arm extends

[sic] downward toward the projection for hook [sic] on the primary spectacle frame as

shown in the newly added Fig. 8.” The examiner also rejected the proposed new claims

that were directed to the subject matter of Figure 8, because, inter alia, “[t]he original

specification fails to disclose the subject matter of the end portion of the arm of the

auxiliary spectacle frame extended downward toward the projection for hooking on the

primary spectacle frame as claimed in claims 25-33 . . . .” The applicant responded to

these rejections by pointing to the following excerpt from the original specification,

arguing this excerpt provided the support for the new claims and drawings:

       Applicant respectfully disagrees. Lines 4-7, column 3 of the original
       specification states: “[t]he end portions of the arms 21 . . . are slightly
       extended downward toward the projections 13 such that the arms 21 . . .
       may hook on the primary spectacle frame 10.” Thus, the original
       specification provides support for the subject matter of the end portion of




04-1138                                     4
       the arm of the auxiliary frame extended downward toward the projection
       for hooking on the primary spectacle frame.

Following an interview with the applicant, the examiner indicated that the new matter

rejection with respect to the claims was overcome. With respect to proposed Figure 8,

the examiner “clarified his objection by stating that he was not objecting to a

downwardly extending end portion per se, but to the fact that the end portion extends

laterally past the rear edge of the projection.” The applicant, however, continued to

maintain that Figure 8 did not represent new matter and expressed this position in his

next filing:

       Applicant is of the opinion that the original specification supports new
       Figure 8 for at least the following reason. The disclosure at column 3
       expressly states that the end portion of the arm extends downward
       towards the projection. In addition, the original specification expressly
       discloses that the end portion may hook onto the spectacle frame. The
       original Chao ‘207 patent [the ‘545 patent prior to reissue] also expressly
       discloses that the projection is part of the spectacle frame, to wit, “the
       primary spectacle frame including two rear and side portions each having
       a projection secured thereto.” Since the original patent expressly states
       that the end portion of the arm can hook to the frame, this disclosure
       conveys to the skilled practitioner that the end portion can hook onto the
       frame, e.g., via the “extension 11” which is part of the frame, or to “the end
       of the projection” which is also part of the frame, to help retain the auxiliary
       frame on the primary frame.”

Additionally, the applicant noted that in view of the examiner’s statements during the

interview Figure 8 was no longer necessary:

       In any event, during the interview, the Examiner indicated that claims
       directed to the feature, “the end portion of the arm of the auxiliary
       spectacle frame extended downward towards the projection for hooking on
       the primary spectacle frame” are supported by the original disclosure, and
       would not require a separate drawing figure to show this feature. Thus the
       Examiner expressly waived the requirements of 37 C.F.R. § 1.83[1] with



1
 37 C.F.R. § 1.83(a) states “The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.” 37 C.F.R. § 1.83(a) (1996).


04-1138                                     5
       respect to this feature. Accordingly, Figure 8 and its corresponding
       description in the specification have been deleted.

Id. The application was subsequently issued with no further mention of Figure 8, other

than the examiner’s statement “[t]he cancellation of the newly added Fig. 8 is

acknowledged.” Koo Decl., Ex. E 0531.

       The district court concluded that this prosecution history imposed the limitation

on the claimed invention that the auxiliary frame arms could not extend past the rear

edge of the primary frame projections. Specifically, the court stated

       Based on the [prosecution history regarding Figure 8], it is clear that the
       applicant, in canceling Figure 8, never overcame the Examiner’s objection
       with regard to the end portion extending beyond the rear edge of the
       projection of the primary frame. Instead, the applicant accepted that
       limitation with the understanding that the arm could extend downward –
       but still not past the rear edge of the projection of the primary spectacle
       frame.

Aspex Eyewear, Inc. v. Miracle Optics, CV 01-10396, slip op. at 29 (C.D. Cal. Feb. 18,

2003) (“Claim Construction Order”).       Thus, the district court’s claim construction

required the arms extending back from the auxiliary spectacle frame not extend past the

rear edge of the projections containing the magnetic members of the primary frame.

       We disagree with the district court’s reading of the prosecution history. There is

no suggestion that the applicant simply “accepted” the examiner’s position that the arms

from the auxiliary frame could not extend past the rear edge of the projection of the

primary spectacle frame. In fact, following an interview with the examiner the applicant

specifically stated that he was “of the opinion that the original specification supports new

Figure 8.” As the prosecution history cited above reflects, the applicant’s reason for

ultimately canceling Figure 8 was because the examiner indicated during the interview

that he would waive the requirements of 37 C.F.R. § 1.83 with respect to the feature



04-1138                                    6
“the end portion of the arm of the auxiliary frame extended downward towards the

projection for hooking on the primary spectacle frame.” In other words, the applicant

took the position that Figure 8 was no longer necessary; he did not, contrary to the

district court’s conclusion, concede that the subject matter of Figure 8 was

unpatentable.

      In view of the applicant’s statements, we cannot say that the canceling of

Figure 8 was a clear and deliberate disclaimer of the claim coverage suggested by

Figure 8. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.

Cir. 2004) (“To be given effect, such a [prosecution history] disclaimer must be made

with ‘reasonable clarity and deliberateness.’”) (quoting N. Telecom Ltd. v. Samsung

Elecs. Co., 215 F.3d 1281, 1294 (Fed. Cir. 2000)). Further evidence that the subject

matter of Figure 8 was not disclaimed by the applicant is seen by his continued

prosecution of claims directed to the depicted embodiment.        In fact, the examiner

allowed claims that are broad enough to encompass the canceled Figure 8; namely,

claims 12, 16, and 24.

      Additionally, the district court read the prosecution history as suggesting that the

subject matter represented in Figure 8 was new matter and therefore not eligible for

claim coverage. This interpretation is belied by the prosecution history of claims drawn

to such subject matter. As noted above, during the prosecution of the ‘545 patent,

claims were added which described the structure depicted in Figure 8. The examiner

initially rejected these claims as introducing new matter.       However, later in the

prosecution history, the examiner withdrew the new matter rejection, and at least one

claim drawn to the embodiment of Figure 8 issued in the ‘545 patent.




04-1138                                   7
         Specifically, new claim 28 recited

         An eyeglass device as recited in Claim 12 wherein at least the end portion
         of one auxiliary side portion extends downward toward one of the side
         portions of the primary spectacle frame for hooking on the primary
         spectacle frame such that the auxiliary spectacle frame is further stably
         supported and secured to the primary spectacle frame.

Koo Decl., Ex. E 0126.          This claim was rejected under 35 U.S.C. § 112, ¶1 as

containing new matter. The examiner stated that “[t]he original specification fails to

disclose the subject matter of the end portion of the arm of the auxiliary spectacle frame

extended downward toward the projection for hooking on the primary spectacle frame

as claimed in claims 25-33. . . ,” almost his verbatim objection to Figure 8, supra at 4.

However, this rejection was subsequently withdrawn.             See Examiner’s Interview

Summary (“[T]he new matter as discussed in the office action [including that referring to

claim 28] will be withdrawn.”)        This indicates the examiner concluded that claim

language directed to the embodiment of Figure 8 was not, in fact, new matter. Indeed,

as noted above, at least one claim covering such an embodiment subsequently issued. 2

This contradicts the district court’s determination that “the applicant, in canceling Figure

8, never overcame the Examiner’s objection with regard to the end portion extending

beyond the rear edge of the projection of the primary frame.” Claim Construction Order,

slip op. at 26.

         Summarizing, because 1) the applicant’s position that the original specification

supported Figure 8; 2) the examiner’s only objection to Figure 8 was that it was based

on new matter; 3) the examiner subsequently viewed the subject matter of Figure 8 to

be not “new”; and 4) the examiner allowed claims that are broad enough to encompass



2
    Claim 28 ultimately issued as claim 5 in the ‘545 patent.


04-1138                                       8
Figure 8, we cannot conclude that the applicant disclaimed the subject matter of Figure

8. Accordingly, the district court erred in its construction of claims 12, 16, and 24 by

imposing a limitation on the claims that the arms extending back from the auxiliary

spectacle frame cannot extend past the rear edge of the projection containing the

magnetic members of the primary frame.

      The district court’s literal infringement determination was that “[the d]efendant’s

accused product does not read on the claimed invention because the arm of the

auxiliary frame extends beyond the projection containing the magnetic member.”

Summary Judgment Order, slip op. at 34. The district court also found infringement

under the doctrine of equivalents unavailable to Aspex, because of “the applicant’s

deletion of Figure 8 from the ‘545 patent to obtain allowance on the claims. . . .“ Id. at

38. These determinations are erroneous, and, therefore, we vacate the district court’s

grant of partial summary judgment of no literal infringement of the ‘545 patent and its

grant of partial summary judgment of no infringement under the doctrine of equivalents.

The case is remanded for further proceedings consistent with this opinion.




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