S.D.N.Y.: Patentee Estopped From Asserting Patent After 4+ Year Delay

Aspex Eyewear, Inc. et al v. Clariti Eyewear, Inc. (1-07-cv-02373) SDNY, November 26, 2008

After Clariti initiated a product release, they received a letter from Aspex on March 2003, identifying 4 patents, along with a demand, stating that the matter was "very urgent and serious." After further exchanges, Clariti responded some 3 months later denying infringement.

Aspex and Clariti had no further communications until August 2006, when Aspex again accused Clariti of infringing one of the four previously-identified patents. In March 2007, Aspex filed a complaint against Clariti for allegedly infringing the patent.

Clariti filed a summary judgment motion claiming, among other things, that Aspex should be equitably estopped by the doctrine of laches because their delay in bringing suit was misleading and inequitable.

Under equitable estoppel, a defendant must show (1) the patentee, through misleading conduct, led the defendant to reasonably infer that the patentee did not intend to enforce its patent gainst the defendant, (2) the defendant actually relied on the patentee's misleading conduct, and (3) due to the reliance, the defendant will be materially prejudiced if the patentee is allowed to
proceed with its claim. Additionally, because the defense is an equitable one, a court must "take into consideration any other evidence and facts respecting the equities of the parties in exercising its discretion and deciding whether to allow the defense of equitable estoppel to bar the suit."

After reviewing the factors, the district court ruled that Aspex was equitably estopped from enforcing its patent:

No triable fact issue exists as to the misleading nature of plaintiffs' conduct. Aspex, through its counsel, placed Clariti "on notice" about several of its patents in its March 2003 letters, and declared its policy and intention to "fully and vigorously enforce our rights." When Clariti sought additional information about which claims might be involved, however, Aspex failed to assert any claims of the '747 Patent in its May 12, 2003 response. Yet Aspex's counsel explicitly noted that it was responding to Clariti's query and included information about claims of the [other] Patents. Aspex did not mention any of the patents again until 2006. In this context, its silence and inaction were misleading as a matter of law.

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Aspex's March 2003 letters were not mere invitations for a "prompt and reasonable resolution" with Clariti. Rather, Aspex characterized the matter as "very urgent and serious" in its letters, discussed litigation, and noted that courts could award attorneys' fees and treble damages for infringement. Aspex was not proposing a licensing or other arrangement in its communications; rather, it was threatening litigation. Following Clariti's June 26, 2003 response denying infringement of the [other] Patents, however, Aspex failed to follow up about any of its patents for more than three years. The only reasonable inference to be drawn from Aspex's conduct was that it had threatened litigation but no longer intended to pursue any claims against Clariti under the '747 Patent or any other patent.

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For the foregoing reasons, Clariti's motion for summary judgment is granted and the complaint dismissed in its entirety under the doctrine of equitable estoppel.

Read/download the opinion here.