Federal Circuit Finds DJ Jurisdiction Even After Time-Limited Covenant Not To Sue

Revolution Eyewear v. Aspex Eyewear (Fed. Cir. 2009)pic-8.jpg

After several years of litigation, the patentee-plaintiff Revolution delivered a covenant not to sue to Aspex. The covenant was limited to the asserted patent and to activities prior to dismissal of the action. The district court dismissed the case, but Aspex did not let go. The accused infringer wanted assurances that it could continue selling the accused version of its eyeglass design without worrying about future charges of infringement.

In the appeal, Judge Newman agreed that a case or controversy continues to exist and that under MedImmune, the district court still retains jurisdiction. In the backdrop, the Newman was careful to differentiate this case from those where an accused defendant may be hoping to seek a speculative judicial opinion on future product lines:

This case is of larger substance than merely a would-be competitor seeking to test the waters by way of an advisory judicial opinion on an adverse patent….These parties are already in infringement litigation initiated by the patentee, the case has been pending since 2003, and already has produced a summary judgment of invalidity (which was later vacated by this court, 175 Fed. Appx. 350); the patentee filed its covenant in 2007, after four years of litigation, on the eve of trial of the question of enforceability. Throughout this period the accused eyewear were removed from the market by Aspex, and would not be shielded by the covenant should it be returned to the market, as Aspex states is its intention. Aspex states, and Revolution agreed at the argument of this appeal, that it is reasonable to believe that Revolution will again file suit should Aspex return to this market with the same product as it previously sold. By now barring the counterclaims that have been pending since 2003, Aspex states that this court would enable the “scare-the-customer-and-run” tactics that were deplored in Arrowhead.

Dismissal Reversed. On remand, the lower court retains subject matter jurisdiction over the declaratory judgment counterclaims.

18 thoughts on “Federal Circuit Finds DJ Jurisdiction Even After Time-Limited Covenant Not To Sue

  1. 18

    Just sayin’

    Using your rule, the federal circuit opinion in Bilski should not be available until the application becomes published? If indeed it ever issues???

    That sure doesn’t seem to be the right answer. I think if you are going to appeal to the Fed. Cir or the district court, some of your secrets are just going to get out.

  2. 16

    Just askin,

    You have asserted that the fed. cir should not provide either the claims or the application number for unpublished applications. As soon as you point out the authority for that assertion, then I’ll agree that I owe you an explanation for my position.

    Consider that the Fed. Cir and the CCPA published the claims of applications even when there all applications where unpublished. Also consdier that it is impossible to write an opinion on validity that makes the slightest bit of sense without publishing the claims.

  3. 15

    “I believe that’s simply an erroneous assumption on your part.”

    Well JV you haven’t supported your assertion with anything including your own personal conjecture about why its OK, therefore I am free to believe that you have made an erroneous assumption that my assumption is erroneous.

    “Further, you don’t have any right to an explanation of why you cannot find the application given the serial number.”

    Oh I disagree JV, if a piece of information is referenced in a CAFC opinion, then I believe I have a right to an explanation of why that information is not available. Otherwise, the information should not have been made available in the first place (which, if the application is unpublished, is what I believe the case is).

    I think something got screwed up here.

  4. 14

    “then I still maintain that the CAFC should probably not have referenced the serial number and revealed the contents of the claim in an opinion that was accessible to the public.”

    I believe that’s simply an erroneous assumption on your part. Further, you don’t have any right to an explanation of why you cannot find the application given the serial number.

    In any event, six provided a little more detail than you suggest, and IMO 6 went a bit too far.

  5. 13

    To: (I doubt) Einstein (would be caught dead) drinking with 6

    As much as I appreciate the effort, 6 gave several conflicting answers. If the application is indeed unpublished, then I still maintain that the CAFC should probably not have referenced the serial number and revealed the contents of the claim in an opinion that was accessible to the public.

    It would just be nice to know what the real story is.

    And I don’t think 6 has crossed any lines. I found the serial number myself from a publicly available document, but its as if the application does not exist. If I have legitimately gained access to the serial number, I should be able to gain legitimate access to at least the fact that the application is indeed unpublished.

    For practitioners who want to study the case, it would make sense for someone at the PTO or the CAFC to clarify the status of the application.

  6. 12

    Six cannot say anthing about the application that you cannot find yourself. Telling you about a search for a non-publication request arguably crosses the line, and telling you about the possible examination schedule IMO goes way across the line of what’s legal.

  7. 11

    Just askin’

    Leave my buddy 6 alone.

    The Wheeler application was never available on PAIR. Nothing has been taken back from the public.

    6 tried to tell you that the application was not published and therefore not generally available. You are incorrect as the CAFC CAN list the application number for an unpublished application – how else is the application going to be referred to in the court proceedings?

  8. 10

    RE: Wheeler, IMHO if the application was unpublished, I doubt the CAFC would be able to list the application serial number on the opinion.

    Thanks for the efforts 6, but unfortunately I don’t think you’ve really advanced the ball. Can anyone give a real answer?

    Also, if a previously published application becomes abandoned, what happens to the information on public PAIR or on the search page. Are all traces of the application removed?

  9. 9

    Yes it was apparently not published, my bad. Only the claims in the decision are now published. I don’t see the “request for nonpublication” anywhere though. Maybe it is in the Oath or something, I’m not familiar with those procedures all my apps are either published or they specifically file a paper requesting it not be published.

  10. 8

    It always pays for the alleged infringer to counter-claim for non-infringement, invalidity, and unenforceability. That’s what kept Aspex’s case or controversy alive for future products.

    Good for Aspex for “not letting go.” Apparently, Revolution has been ready to tee up a brand new action, but Aspex’s counter-claims prevents Revolution from doing so and prevents the parties from having to start all over again.

  11. 7

    Re: the decision in Revolution Eyewear v. AspexEyewear “Federal Circuit Finds DJ Jurisdiction Even After Time-Limited Covenant Not To Sue”, there is an article reagrding the Super Sack holding in the John Marshall Law School Review of Intelelctual Property Law found at link to jmripl.com
    The SUper Sack holding should be reconsidered by the CAFC if it applied without considering the totality of the facts.

  12. 6

    If this was a case filed by an individual inventor (likely based on the subject matter)and no foreign filings were made, doesn’t the inventor have the right not to publish?

    If the application is not published I’m guessing it would not be available in public PAIR.

  13. 5


    Funny story about that application. After I googled a 102b the application ceased to exist and all records of it ever having existed were extinguished in time and space.

    It’s sad, but that’s what happens 🙁

    Seriously though, that is the application number for Wheeler’s case. I don’t have to look it up to tell you what happened to it. It was remanded to the examiner, idk why it isn’t in pair etc, seems like I looked it up there myself just the other day and it was up. It’ll be a little while yet before it is acted on it looks like. After looking it appears that the reason that it doesn’t show in public pair must be the “assigned to an application that is not yet available for public inspection”. Though obviously it was published and has claim one published in the decision.

  14. 3

    Dennis, it looks like you are starting to get spammed with offers for pearl jewelry, wholesale jewelry and the like. Look at the posts previous to this one on the “Recent Posts” roster.

    [DDC: Thanks ASE]

  15. 2

    Hey 6, I’m trying to find out what happened to the application that is shown on the front of the CAFC case In re Gary Edward Wheeler (2008-1215). The application number is 10/899,352.

    A search of public PAIR or even the published application search page fails to reveal any such application.

    Can you use your powers for good instead of evil and tell me what happened to this application?

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