PROSECUTION HISTORY OVERTURNS COURT'S CLAIM CONSTRUCTION:

Aspex Eyewear v. Miracle Optics, Inc. (Fed. Cir. March 2, 2006 - 04-1138)

In a non-precedential opinion, the Federal Circuit overturned the Central District of Claifornia's claim construction of reissue patent RE37,545. The issue is the case was whether the claimed eyeglass arms extending from an auxiliary frame extended past a rear edge of a primary frame. Defendant Miracle Optics argued that such an extension was disclaimed by Aspex during prosecution, thus negating any infringment.

The claims did not have a limitation stating that the auxiliary frame arms could not extend past a rear edge of the primary frame and the specification was silent as well. Turning to the prosecution history, the lower court decided that the withdrawal of an added figure (Figure 8)during the reissue proceedings was tantamount to "accepting" that the limitation was not present.

The Federal Circuit disagreed:

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 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.

Vacated and remanded.