Revolution Eyewear, Inc., et. al. v. Aspex Eyewear, et. al.,
Fed. Cir. 2009.

By: Karin C. Khan

In an infringement suit relating to U.S. Patent No. 6,550,913 (“the ‘913 patent”) for a magnetically-attached auxiliary eyeglasses owned by Revolution Eyewear, Inc. (“Revolution”), Defendants Aspex Eyewear, Inc. and Nonu Ifergan (“Aspex”) stopped selling the alleged infringing eyewear and counterclaimed against Revolution for non-infringement, invalidity and unenforceability of the ‘913 patent.

Later, through a summary judgment motion brought by Aspex, the district court found the ‘913 patent invalid and dismissed Aspex’s claims for non-infringement and unenforceability as moot. Revolution appealed the district court’s decision, which was subsequently reversed. The court thereafter set a trial date for the issues of unenforceability and invalidity. Just a few weeks before trial, Revolution gave a covenant not to sue to Aspect for “. . . any activities and/or products made, used, or sold on or before the dismissal of th[e] action.” The district court dismissed Aspex’s counterclaims as a result of Revolution’s covenant and its corresponding motion to dismiss the lawsuit, although Aspex had argued that it planned to reintroduce the same products into the market that it had previously stopped selling when Revolution had first filed suit.

Aspex appealed the district court’s dismissal of its counterclaims based on the fact that Revolution’s covenant not to sue did not cover future acts of infringement. While this fact was undisputed among the parties and court, Aspex’s situation was likened to those found in the Super Sack and Amana Refrigeration cases, in which future acts of infringement were held to be too speculative to warrant the existence of an actual case or controversy, and thus, any grounds for declaratory judgment claims. However, in these cases, the alleged infringers had contemplated introducing modified products into the market while Aspex planned to reintroduce the same products on which Revolution had originally sued Aspex.

In accordance with the MedImmune decision, the Court of Appeals looked at the totality of the circumstances to determine whether there was a substantial controversy between the parties of “sufficient immediacy and reality.” In particular, the Court took into account that Aspex not only intended to begin selling the same eyewear, but it already had the eyewear product in storage and ready to sell. Furthermore, Revolution had even stated during oral argument that it would return to court if Aspex were to reenter the market and that it had no obligation to covenant not to sue for future infringing products. Accordingly, the Court reversed the district court’s dismissal of Aspex’s counterclaims and remanded for the case for further consideration.