Invalidity dossier
US 5737054
Auxiliary lenses for eyeglasses
Current assignee: Aspex Eyewear, Inc., Contour Optik, Inc.
Added 9/17/2026, 6:49:10 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative records on this patent number, including any CAFC 2026 docket activity.
Let me do a targeted check for any 2026 CAFC docket activity tied to this patent number.
US Patent 5,737,054 — Analyst Summary
Search scope note: I searched for the literal identifier 5737054 and the patent's subject matter (Google Patents/PatentsView-style records, EPO family records, Unified Patents litigation data, and Federal Circuit materials). I found no evidence of any 2026 CAFC docket in which US 5,737,054 is at issue. The patent is expired and its last recorded appellate activity is from 2012. I have flagged this explicitly below rather than inferring a pending appeal.
1. Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 5,737,054 (US5737054A) |
| Title | Auxiliary lenses for eyeglasses |
| Application no. | 08/766,327 |
| Filing date | December 13, 1996 |
| Issue/publication date | April 7, 1998 |
| Inventor | Richard Chao (Shui San Hsiang, Chia Yi Hsien, Taiwan) |
| Original assignee | Individual (Richard Chao) |
| Current assignee | Contour Optik, Inc. — assignment recorded July 9, 1999, effective July 2, 1999 (Reel 010070/0938) |
| Examiner | Hung Xuan Dang |
| Attorney/agent | Greenberg Traurig (NY) |
| Classifications | G02C 9/00 (attaching auxiliary optical parts); G02C 2200/02 (magnetic means) |
| Prior art cited by examiner | US 5,416,537 (Sadler) |
| Legal status | Expired – Lifetime; anticipated expiration December 13, 2016 |
Family / continuity relationships (from the authoritative Google Patents record):
- Continuation-in-part parent: Ser. No. 08/847,711 → US 6,109,747 (Eyeglass frames with magnets in flanges)
- Continuation-in-part child: Ser. No. 08/963,299 → US 6,012,811 (Eyeglass frames with magnets at bridges for attachment)
- Later family members claiming the Dec. 13, 1996 priority date include US 6,092,896 and US 6,367,926 (both Eye-wear with magnets), plus foreign counterparts (EP 0848276 B1, EP 1251387 A1, JP 3355120 B2, CN 1093271 C, CA 2223295, etc.).
Important disambiguation: US RE37,545 E (reissue, 2002) is a reissue of Chao's earlier US 5,568,207, not of US 5,737,054. Several litigation opinions discuss RE37,545 and US 5,737,054 in the same breath; they are different patents in the same Chao/Contour portfolio.
Post-grant proceedings: A third-party request for ex parte reexamination was filed (recorded Oct. 13, 2009; effective July 17, 2009). A reexamination certificate issued March 29, 2011, stating: "THE PATENTABILITY OF CLAIMS 1-4 IS CONFIRMED." No claims were cancelled or amended.
Minor record discrepancies (noted, not auto-corrected):
- Google Patents lists the priority/filing date as 1996-12-13 and issue date 1998-04-07; Unified Patents lists priority 1996-12-12, grant 1998-04-06, expiration 2016-12-12. I have used the Google Patents values because the full patent text you supplied is keyed to them.
- Some third-party databases render the number as "5,737,054" with an extra digit pattern in citation lists; the literal identifier here is 5,737,054.
2. Abstract (as issued)
"An eyeglass device includes a primary and an auxiliary spectacle frames for supporting lenses. The primary spectacle frame includes a magnetic connector member secured in the middle bridge portion. The auxiliary spectacle frame includes a middle bridge portion having a projection for engaging over the middle bridge portion of the primary spectacle frame and having a magnetic connector member for engaging with the connector member of the primary spectacle frame such that the spectacle frames can be easily secured together with only one hand."
3. Plain-language overview of the independent claims
The patent has four claims. Claims 1 and 2 are independent; claims 3 and 4 depend from claim 2. Figures 1–4 show the two frames separate, assembled, in front elevation, and in cross-section through the bridges.
Claim 1 — "magnetic member" version (the narrower, magnet-reciting independent claim)
An eyeglass device comprising:
- A primary spectacle frame (the everyday pair) with a middle bridge portion;
- A first magnetic member secured in that middle bridge portion;
- An auxiliary spectacle frame (clip-on/sunglass front) whose middle bridge portion has a projection that extends over and engages the primary frame's bridge portion; and
- A second magnetic member secured to that projection, positioned to engage the first magnetic member.
The final element is functional: the engagement must permit the auxiliary frame to be attached to the primary frame "with only one hand by a user."
In short: Put the magnet(s) at the center bridge, not at the two temples, and give the auxiliary frame a rearward hook-like projection that both seats over the primary bridge (resisting downward/sideways displacement during motion) and carries the mating magnet. This is the patent's stated advance over Chao's own US 5,568,207, which required two pairs of magnets at the upper side portions — the specification criticizes that design for higher manufacturing cost and for forcing the user to align two pairs of magnets.
Claim 2 — "connector member" + "magnetic means" version (the broader independent claim)
Structurally the same arrangement as claim 1, but drafted more generically:
- The bridge-mounted elements are recited as a "first connector member" and a "second connector member" (not necessarily magnets), and
- The magnetic character is captured in a separate element: "magnetic means operatively associated with the first and second connector members whereby they are connectable to each other magnetically," again with the "only one hand" attachment result.
In short: The same central-bridge, projection-over-bridge architecture, but claimed in means-plus-function/functional language so that the connection need only be magnetically operable — e.g., one part a magnet and the other merely a magnetically attractive material (the specification expressly says the non-magnet part "could be composed typically of magnetic iron," and that the bridge may simply be made of "magnetically attractive material").
Claim 3 (depends on claim 2)
The first connector member is a magnet; the second connector member is a magnetizable substance.
Claim 4 (depends on claim 2)
The inverse arrangement: the second connector member (on the auxiliary frame's projection) is a magnet; the first connector member is a magnetizable substance.
Together, claims 2–4 cover both polarity/material configurations of the two-element magnetic connection, and the specification confirms the intent: "only one of the pair of magnetic members is required to be a magnet."
Embodiment detail supporting the claims
The specification adds (FIG. 4) that the auxiliary frame's connector member "is slightly extended downward toward" the primary frame's connector member, so the auxiliary frame is "further stably supported and secured" — a hooking geometry aimed at keeping the clip-on in place "when its user conducts jogging or jumping exercises."
4. Litigation posture (and the 2026 question)
Records tied to this patent and its family show a long-running magnetic-eyewear enforcement campaign by Contour Optik / Aspex Eyewear in the late 1990s–2010s:
- District courts (per Google Patents/Unified Patents litigation data): S.D. Florida (0:09-cv-61467, 0:09-cv-61468, 0:09-cv-60488, 0:00-cv-07070, 1:02-cv-20609), C.D. California (2:01-cv-00080, 8:00-cv-01087), S.D. New York (7:02-cv-06195), D. Nevada (2:00-cv-01116), D. Massachusetts (1:10-cv-12202).
- Federal Circuit appeals in the family: Nos. 04-1292, 07-1380, 07-1407, 12-1102, 12-1137, 12-1318.
- A Federal Circuit appendix decision indexed at
static.case.law/f-appx/288construes the '054 patent claim 1 language ("a primary spectacle frame for supporting primary lenses therein… middle bridge portion") in an appeal arguing rims-vs-pins equivalents for the '054, '811, and '896 patents (collectively, the Aspex/Contour side). I am confident of the substance of that discussion; I have not independently verified the exact case caption from the source, so I do not assert it here. - The Google Patents litigation panel also lists a U.S. Supreme Court entry (case 12-1120, Term 2012) within this family. I have not verified what that case was or whether US 5,737,054 itself was at issue, so I treat that entry as unconfirmed.
CAFC 2026 docket: no hits. My searches for a 2026 Federal Circuit docket involving 5,737,054 returned nothing. This is consistent with the record: the patent expired December 13, 2016 (all maintenance fees paid, with a late-payment surcharge at the year-11 fee), the reexamination certificate issued in 2011 with all four claims confirmed, and the last family appellate activity is dated 2012. A 2026 appeal on this patent would be extraordinary absent a very unusual collateral posture, and I found no such docket. If a 2026 matter exists, it did not surface in the sources available to me.
5. Confidence and caveats
- High confidence: patent number, title, application number, inventor, filing date, issue date (1998-04-07), claim text and structure, claim 1/2 independence, reexamination outcome, expiration. These come from the authoritative full patent text you supplied plus corroborating sources.
- High confidence: the underlying technical content of claims 1–4 and their relationship to Chao's earlier US 5,568,207.
- Moderate confidence: the precise litigation caption(s) in which the '054 patent was asserted and the mapping of individual appeal numbers to specific cases. The litigation links are aggregator records; I did not open each docket.
- Low confidence / explicitly uncertain: the Supreme Court entry (12-1120) in the family litigation panel, and any suggestion of 2026 appellate activity — I found no supporting record for either and do not assert them as fact.
- Not auto-corrected: I treated "5737054" and "US 5,737,054" as the literal identifiers throughout and did not fold in results for neighboring numbers such as RE37,545, US 5,568,207, US 6,012,811, or CN/KR publication numbers that the "5737054" string superficially resembles in search indexes.
Generated 9/18/2026, 12:47:03 AM
Cases on file (8)
Group view →Specific litigation cases in our database that name US patent 5737054. The free-form analysis below may also discuss cases beyond this list.
- Aspex Eyewear, Inc. et al. v. Great Eyeglasses, LLCfiled Sep 17, 20090:09-cv-61467U.S. District Court for the Southern District of Floridaunknown
Defendants: Great Eyeglasses, LLC
- Aspex Eyewear, Inc. et al. v. Levente Tibor Laczayfiled Apr 2, 20090:09-cv-60488U.S. District Court for the Southern District of Floridaterminated Sep 4, 2009dismissed
Defendants: Levente Tibor Laczay
- CV-S-00-1116-PMP; 2:00-cv-01116U.S. District Court for the District of Nevadajudgment affirmed
Defendants: E'Lite Optik, Inc.
Other patents asserted: 6012811
- 7:02-cv-06195; 1:10-cv-12202U.S. District Court for the Southern District of New York; transferred to the U.S. District Court for the District of Massachusettsconcluded
Defendants: Altair Eyewear, Inc.
- 0:09-cv-61467; 0:09-cv-61468U.S. District Court for the Southern District of Floridajudgment affirmed
Defendants: Zenni Optical, LLC
- Markman opinion dated 2006-12-22
Defendants: Designers Eyewear Studio, Inc.
- 1:02-cv-20609U.S. District Court for the Southern District of Floridaunknown
- 07-1407U.S. Court of Appeals for the Federal Circuit (from S.D.N.Y.)unknown
Defendants: Aspex Eyewear, Inc., Contour Optik, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US 5,737,054. Let me start with the litigation data already surfaced in the patent record and then verify/expand with targeted searches.
I have the litigation links from the patent record. Let me verify the specific cases.
Excellent — the record is coming together. Let me verify the remaining case numbers and parties.
Litigation Involving U.S. Patent No. 5,737,054
Prepared: April 26, 2026 · Patent: U.S. 5,737,054 ("Auxiliary Lenses for Eyeglasses"), Richard Chao, filed Dec. 13, 1996, issued Apr. 7, 1998; assignee Contour Optik, Inc.; expired (anticipated expiration Dec. 13, 2016) — source: https://patents.google.com/patent/US5737054/en
Methodology / caveats. I pulled the litigation record attached to the patent and verified individual cases against Federal Circuit opinions, district court filings, dockets, and secondary sources. Where I could not independently confirm a party or disposition, I say so explicitly rather than inferring. Case numbers are reproduced exactly as recorded (e.g., "0:09-cv-61467"); I have not normalized or "corrected" them. Note that '054 litigation is heavily intertwined with three sibling patents — U.S. 6,012,811 (the '811 patent, a CIP of '054), U.S. 6,092,896 (the '896 patent), and RE37,545 (the '545 reissue of Chao's earlier U.S. 5,568,207) — and several cases asserted all of them together.
I. Summary table — U.S. litigation on the record for the '054 patent
| # | Plaintiffs | Defendant(s) | Jurisdiction | Case No. (as recorded) | Filed | Outcome / Status |
|---|---|---|---|---|---|---|
| 1 | Aspex Eyewear, Inc.; Contour Optik, Inc. | E'Lite Optik, Inc. | D. Nev. | 2:00-cv-01116 (a/k/a CV-S-00-1116-PMP) | Sept. 2000 | SJ for defendant (Aspex lacked standing), Aug. 6, 2003; affirmed, Aspex Eyewear, Inc. v. E'Lite Optik, Inc., 127 F. App'x 493 (Fed. Cir. Mar. 24, 2005) |
| 2 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Altair Eyewear, Inc. (subsid. of VSP) | S.D.N.Y. | 7:02-cv-06195 ("02 Civ. 6195") | Aug. 2002 | Markman 9/9/2005; SJ of non-infringement 2007; aff'd in part/rev'd in part/remanded, 288 F. App'x 697 (Fed. Cir. 2008); on remand '054 claim 1 held invalid for obviousness, aff'd 484 F. App'x 565 (Fed. Cir. 2012) |
| 3 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Altair Eyewear, Inc. | D. Mass. | 1:10-cv-12202 (‑WGY) | 2010 | Final judgment of literal infringement of '054 claim 1, Oct. 13, 2011; Altair cross-appeal noticed Dec. 12, 2011 (appeal outcome not confirmed — see §III.C) |
| 4 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Zenni Optical, LLC | S.D. Fla. | 0:09-cv-61468 (ZLOCH/ROSENBAUM) | 2009 | Collateral estoppel / SJ of non-infringement, Mar. 2012; affirmed, 713 F.3d 1377 (Fed. Cir. 2013) |
| 5 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Great Eyeglasses, LLC | S.D. Fla. | 0:09-cv-61467 | Sept. 17, 2009 | Patent infringement action; disposition not confirmed |
| 6 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Levente Tibor Laczay | S.D. Fla. | 0:09-cv-60488 | Apr. 2, 2009 | Final Order of Dismissal without prejudice, Sept. 4, 2009 |
| 7 | Aspex Eyewear, Inc.; Contour Optik, Inc. | not confirmed | S.D. Fla. | 1:02-cv-20609 | 2002 | Listed in the patent's litigation record; parties/outcome not confirmed |
| 8 | Aspex Eyewear, Inc.; Contour Optik, Inc. | not confirmed | C.D. Cal. | 2:01-cv-00080 | 2001 | Listed in the patent's litigation record; parties/outcome not confirmed |
| 9 | not confirmed | not confirmed | C.D. Cal. | 8:00-cv-01087 | 2000 | Listed in the patent's litigation record; parties/outcome not confirmed (related C.D. Cal. actions on the family are Aspex v. Revolution Eyewear, CV 02-1087, and Aspex v. Miracle Optics, CV 01-10396) |
| 10 | Aspex Eyewear, Inc.; Contour Optik, Inc. | E'Lite Optik, Inc. | Fed. Cir. (appeal from D. Nev.) | 04-1292 | 2004 | Affirmed SJ of no standing, decided Mar. 24, 2005 (127 F. App'x 493) |
| 11 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Altair Eyewear, Inc. | Fed. Cir. (appeal from S.D.N.Y.) | 07-1380 | 2007 | Affirmed-in-part / reversed-in-part, 288 F. App'x 697 (Aug. 6, 2008); amici: Designer's Eyewear Studio, Inc. and Fortunato Farache |
| 12 | Altair Eyewear, Inc. (cross-appeal) | Aspex/Contour | Fed. Cir. (from S.D.N.Y.) | 07-1407 | 2007 | Listed in the patent record; companion/consolidated with No. 07-1380 — not independently confirmed |
| 13 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Altair Eyewear, Inc. | Fed. Cir. (from D. Mass.) | 12-1102 | 2011/12 | Listed; outcome not confirmed |
| 14 | Altair Eyewear, Inc. (cross-appeal) | Aspex/Contour | Fed. Cir. (from D. Mass.) | 12-1137 | 2011/12 | Listed; outcome not confirmed |
| 15 | Aspex Eyewear, Inc.; Contour Optik, Inc. | Zenni Optical | Fed. Cir. (from S.D. Fla.) | 12-1318 | 2012 | Affirmed collateral estoppel, 2013 (713 F.3d 1377) |
| 16 | not confirmed | not confirmed | U.S. Supreme Court | 12-1120 | 2012 | Listed in the patent record (petition); parties and disposition not confirmed |
Also listed in the patent's litigation metadata: a Darts‑IP "first worldwide family litigation" entry (family ID 25076117) — a family-level aggregator, not a separate suit.
II. Detail on the well-documented cases
A. Aspex Eyewear, Inc. & Contour Optik, Inc. v. E'Lite Optik, Inc. — D. Nev. 2:00-cv-01116 → Fed. Cir. 04-1292
- Filed September 2000; asserted the '054 and '811 patents. Chic Optic was not joined.
- Outcome: The district court granted summary judgment for E'Lite, holding Aspex was not an exclusive licensee under the March 1998 Chic–Aspex agreement (which predated Chic's acquisition of rights to the asserted patents) and that Thierry Ifergan's Rule 30(b)(6) testimony was inadmissible for lack of personal knowledge. Contour's claims were not dismissed (only Aspex's).
- Appeal: Affirmed. The Federal Circuit held the Chic–Aspex agreement "relates only to patents then-owned by Chic, not future-acquired ones," and added that Aspex could not be an exclusive licensee of '811 in any event because co-owner David Chao was not a party to the July 1998 Chao–Chic license. Aspex Eyewear, Inc. v. E'Lite Optik, Inc., 127 F. App'x 493 (Fed. Cir. 2005). Sources: https://www.courtlistener.com/opinion/[211988](/patent/211988)/aspex-eyewear-inc-v-elite-optik-inc/ ; https://storage.courtlistener.com/harvard_pdf/211988.pdf
B. Aspex Eyewear, Inc. & Contour Optik, Inc. v. Altair Eyewear, Inc. — S.D.N.Y. 7:02-cv-06195 (the "Altair" litigation)
- Filed August 2002; asserted '054, '811 and '896. Altair is a subsidiary of Vision Service Plan.
- Standing: Altair's partial SJ motion (Aspex lacks standing) denied; the court found a genuine dispute as to an oral/implied exclusive license, and declined to join VSP. 361 F. Supp. 2d 210 (S.D.N.Y. 2005).
- Markman: Sept. 9, 2005 — "frame" in '054 means an eyeglass device including at least a bridge and rims; "retaining mechanisms" is means-plus-function limited to rims; "projection" not limited to a single-component structure. 386 F. Supp. 2d 526 (S.D.N.Y. 2005); https://www.ipmall.info/sites/default/files/hosted_resources/Markman/pdfFiles/2005.09.09_ASPEX_EYEWEAR_INC_v._ALTAIR_EYEWEAR.pdf
- SJ (2007): Non-infringement of all three patents (Altair's products rimless). 485 F. Supp. 2d 310.
- Fed. Cir. 2008 (Nos. 07‑1380/07‑1407): Affirmed non-infringement of '811 and '896 (rims or equivalents required); reversed as to '054 because "frame" is not limited to one with rims; remanded. 288 F. App'x 697.
- On remand: '054 claim 1 held invalid for obviousness (Miki Japanese Utility Model No. 3031881 and related art); affirmed, 484 F. App'x 565 (Fed. Cir. 2012). This invalidity holding is what later defeated Aspex against Zenni.
C. Aspex Eyewear, Inc. & Contour Optik, Inc. v. Altair Eyewear, Inc. — D. Mass. 1:10-cv-12202-WGY
- A second Altair action, filed 2010, on '054 claim 1.
- Final Judgment of literal infringement entered Oct. 13, 2011; the court construed "secured to" as "embedded within and attached to" and rejected anticipation under §102.
- Altair filed a Notice of Cross-Appeal to the Federal Circuit on Dec. 12, 2011. Source: https://insight.rpxcorp.com/litigation_documents/[9324415](/patent/9324415)
- Not confirmed: which docket number(s) (12‑1102 / 12‑1137) correspond to which party, and the appellate disposition. Given the parallel 2012 affirmance of '054 claim 1's invalidity in the S.D.N.Y. case, this judgment was vulnerable, but I cannot state the result without fabricating it.
D. Aspex Eyewear, Inc. & Contour Optik, Inc. v. Zenni Optical, LLC — S.D. Fla. 0:09-cv-61468 → Fed. Cir. 12-1318
- Filed 2009; asserted '054, '811 and '896 against Zenni's rimless magnetic clip-on sunglasses (First Amended Complaint: https://insight.rpxcorp.com/litigation_documents/[2376367](/patent/2376367)).
- Outcome: Summary judgment that Aspex was collaterally estopped by the Altair judgments — the Zenni and Altair products were materially indistinguishable and every asserted claim contained the same "retaining mechanism" limitation construed to require rims. Affirmed, 713 F.3d 1377 (Fed. Cir. 2013); https://www.courtlistener.com/opinion/[858519](/patent/858519)/aspex-eyewear-inc-v-zenni-optical-inc/
E. Other 2009 S.D. Fla. campaign cases
- Great Eyeglasses, LLC, 0:09-cv-61467, filed Sept. 17, 2009 (Judges Ungaro/Simonton); https://dockets.justia.com/docket/florida/flsdce/0:2009cv61467/[343212](/patent/343212)
- Levente Tibor Laczay, 0:09-cv-60488, filed Apr. 2, 2009 (Judges Zloch/Rosenbaum) — Final Order of Dismissal without prejudice, Sept. 4, 2009; https://dockets.justia.com/docket/florida/flsdce/0:2009cv60488/[333599](/patent/333599)
III. Non-litigation proceeding worth flagging (same patent)
- Reexamination: a request for reexamination was filed (effective July 17, 2009; recorded Oct. 13, 2009) and the first reexamination certificate issued Mar. 29, 2011, confirming the patentability of claims 1–4 ("THE PATENTABILITY OF CLAIMS 1-4 IS CONFIRMED"). This is a USPTO proceeding, not litigation, but it is central to the '054 story — and it is the context for the "reexamined claims" arguments raised in the 2009–2010 S.D. Fla. campaign (see the Revolution Eyewear opposition brief at https://g.casetext.com/brief/... referencing Hoffman v. Wisner and no-broader-claims reasoning).
IV. Related foreign family litigation (NOT suits on U.S. 5,737,054)
These involve Canadian/other national counterparts of the same family; I list them only to avoid confusion:
- Contour Optik Inc. v. Hakim Optical Laboratory Ltd., Fed. Ct. of Canada, Docket T-1880-00 (action filed Oct. 12, 2000) — Canadian Patent No. 2,223,295 (the Canadian counterpart of '054); security-for-costs ruling, Dec. 13, 2000.
- Contour Optik Inc. & Chic Optic Inc. v. Viva Canada Inc. & Viva Optique, Inc., Fed. Ct. of Canada, Docket T-1927-02 — Canadian Reissued Patent No. 2,180,714; discovery/preclusion rulings, 2005 FC 1687.
- Contour Optik Inc. and Others v. Pearl's Optical Co Pte Ltd and Another (Singapore High Court, 2002) — Singapore Patent No. 60169 and a Malaysian '47151 patent, not the U.S. '054.
V. Bottom line
- Yes — substantial U.S. litigation exists on U.S. 5,737,054: at least 16 court-level entries (8 district court actions, 6 Federal Circuit appeals, 1 Supreme Court entry) plus a family-level Darts-IP entry, per the patent's own litigation record.
- The two decisive merits outcomes on '054 itself were: (i) Aspex lacked standing as a licensee — E'Lite, 127 F. App'x 493 (Fed. Cir. 2005); and (ii) '054 claim 1 invalid for obviousness after the Federal Circuit reversed the "rims" construction — Altair, 288 F. App'x 697 (Fed. Cir. 2008), leading to 484 F. App'x 565 (Fed. Cir. 2012), which then estopped the Zenni suit, 713 F.3d 1377 (Fed. Cir. 2013). Aspex/Contour prevailed on standing against Altair (S.D.N.Y. 2005; S.D. Fla. 2010) and won a literal-infringement judgment in D. Mass. in 2011, but that win was overtaken by the invalidity and estoppel rulings.
- Not confirmed (I will not guess): the parties/outcomes for S.D. Fla. 1:02-cv-20609, C.D. Cal. 2:01-cv-00080 and 8:00-cv-01087; whether Fed. Cir. 07-1407 is Altair's cross-appeal to 07-1380; the appellant/outcome mapping for Fed. Cir. 12-1102 and 12-1137; and the parties/disposition of Supreme Court No. 12-1120. If you want, I can run targeted PACER/CAFC queries on those five identifiers.
- Current status of the patent itself: expired — anticipated expiration Dec. 13, 2016; all known district court cases are closed, so there is no pending litigation on the '054 patent today.
Generated 9/18/2026, 12:47:31 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Aspex Eyewear, Inc., Contour Optik, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
1999-07-02 · recorded 1999-07-09 · reel 010070/0938 · Assignment
CHAO, RICHARDCONTOUR OPTIK, INC.
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll reconstruct the assignment record from the authoritative sources. Let me run targeted searches on the assignment data and the parties involved.
Let me search the USPTO Assignment Center records and the correspondent/attorney details.
Assignment & Ownership Reconstruction — US 5,737,054
Search scope / sourcing note: The full patent text supplied is the authoritative base. Assignment facts below come from the patent's USPTO legal-events record (as reproduced in that text) and are corroborated against Federal Circuit opinions and district-court complaints that describe the same instruments. I was unable to retrieve the USPTO Assignment Center page for reel 010070/0938 directly (the assignment search interface did not return the reel/frame detail through the sources available to me), so the correspondent of record is not verifiable here and I say so rather than guess. Cross-references to litigation and licensing are drawn from Aspex Eyewear v. E'Lite Optik (Fed. Cir. 04-1292, 2005), Aspex Eyewear v. Altair Eyewear (S.D.N.Y. 2005), and Aspex Eyewear v. Zenni Optical (713 F.3d 1377, Fed. Cir. 2013).
Inventors
| Inventor | Employer at filing | Notes |
|---|---|---|
| Richard Chao (sole inventor) | Individual — filing made by "Individual" as applicant. Chao's residence of record is Shui San Hsiang / Chia Yi Hsien (Chiayi), Taiwan, the same locality as Contour Optik, Inc.'s registered address (Chiayi 621, Taiwan). He was effectively the principal of the company that later took title. | Sole named inventor of the '054. He is not a "departing employee" — he is the founder-side owner. |
Disambiguation (do not conflate): David Yinkai Chao (Towson, MD) is not an inventor on the '054. He is a co-inventor only on the continuation-in-part US 6,012,811 and on US 6,092,896. The Federal Circuit's E'Lite opinion loosely states that "Richard Chao and his brother David Chao together assigned the asserted patents to their company, Contour Optik, Inc.," but the recorded assignment for the '054 lists CHAO, RICHARD as the sole assignor (see below) — consistent with Richard being the sole inventive entity on this patent.
Unusual-pattern check: No "all inventors depart within 12 months of filing" pattern. The only inventor is also the original owner; there was no employer-assignee at filing from which anyone could depart. The eventual transfer ran inventor → his own family-controlled operating company, not to a third party.
Original assignee
None on the face of the issued patent. The '054 issued to an individual (Richard Chao); Google Patents lists the original assignee as "Individual." Title did not pass to a company until the 1999 assignment below. The 1998 copyright-style licenses (Chic Optik) were license grants, not assignments, and do not appear in the recorded assignment chain.
Subsequent owner — Contour Optik, Inc.:
- Business: Taiwanese eyewear manufacturer/distributor, address 6 Industrial Fifth Road, Tou Chiau Industrial Park, Chiayi 621, Taiwan. Owned by the Chao family. It practiced the invention — magnetic clip‑on/auxiliary eyewear (primary frames plus magnetically attached auxiliary fronts) — i.e., the claims read on a real commercial product line, not a paper portfolio.
- US distribution/exclusive license: Aspex Eyewear, Inc. (Delaware; principal place of business Pembroke Park / Miramar, Florida) is the exclusive US licensee and the active enforcement vehicle. Aspex and Chic Optik (Montreal) are both controlled by the Ifergan family (Nonu Ifergan, President; Thierry Ifergan, EVP).
- Current status: Contour Optik remains the record owner of the '054 through expiry (per the Zenni complaint: "Contour is the record owner of the '054 Patent. Aspex is the exclusive licensee"). I found no evidence of bankruptcy, dissolution, or a sale of this patent to a third-party aggregator. Contour/Aspex continued as operating eyewear companies through the enforcement campaign.
Assignment timeline
Only one post-issuance assignment is recorded in the patent's legal events.
- 1999-07-02 (executed) / recorded 1999-07-09 — Reel 010070/0938
- Conveyance: Assignment (ASSIGNMENT OF ASSIGNORS INTEREST)
- Assignor: CHAO, RICHARD
- Assignee: CONTOUR OPTIK, INC. (Taiwan)
- Correspondent: Not verifiable from the sources retrieved. The legal-events record exposes the reel/frame, parties, and effective date but not the recording correspondent; I could not pull the Assignment Center detail page for 010070/0938. Flag (weak/indirect): the recurring firm across this patent family is Greenberg Traurig LLP (New York, NY) — attorney of record on sibling patents US 6,109,747 and US 7,198,364, and Michael A. Nicodema (Greenberg Traurig, Florham Park, NJ) argued the family appeal at the Federal Circuit in Aspex v. Zenni (No. 2012-1318). I flag this as a recorrence-of-firm observation only; I have not confirmed Greenberg Traurig as the named correspondent on reel 010070/0938, and Greenberg Traurig does substantial operating-company prosecution work, so this is not by itself an NPE finding.
- Context: Transfer to the founder's own operating company (inventor → family-owned eyewear maker), i.e., an internal/ownership consolidation, not a sale to a third party or aggregator. Timing (~14 months before the first infringement suit filed Sept. 2000, D. Nev. 2:00‑cv‑01116) is consistent with arranging clean title ahead of an enforcement campaign, but it is outside the 6‑month "pre‑litigation transfer" window.
Not recorded as assignments (but they matter to the ownership picture):
- 1998-03-26 — Chic–Aspex Agreement: Chic Optik exclusively licenses Aspex (held to cover only then-owned patents, so it did not reach the '054 at execution — E'Lite).
- 1998-07-31 — Chao–Chic Agreement: Richard Chao grants Chic Optik an exclusive license (Canada + US) to applications 08/766,327 (this patent) and 08/963,299; Aspex operates as exclusive sublicensee, a status that generated years of standing litigation.
- 2009-07-17 (eff.) / 2009-10-13 (rec.) — third-party ex parte reexamination requested (not an assignment).
- 2011-03-29 — Reexamination certificate: "THE PATENTABILITY OF CLAIMS 1-4 IS CONFIRMED" (not an assignment).
- 2016-12-13 — anticipated expiration; patent lapsed. No assignment, security interest, merger, change of name, or release is recorded after 1999.
Bottom line: For this patent the Assignment Center contains one link — inventor to operating company — after which the chain is static for 17 years.
Timeline diagram
timeline
title Ownership of US 5737054
1996 : Filed by Richard Chao
1998 : Patent issued April 7
: Chao licenses Chic Optik
1999 : Assigned to Contour Optik Inc
2000 : First infringement suit filed
2009 : Ex parte reexamination requested
2011 : Claims 1 to 4 confirmed
2016 : Patent expires
NPE / troll-pattern signals
Shell-entity transfer — NOT PRESENT. The only assignee is Contour Optik, Inc. (reel 010070/0938), a Taiwanese operating eyewear company with a physical industrial-park address in Chiayi and a product line practicing the claims. No "IP/Holdings/Ventures" LLC, no registered-agent-service address, no Delaware/Texas single-member shell.
Known asserter in the chain — NOT PRESENT (with a caveat). Neither Richard Chao nor Contour Optik matches the enumerated NPE directories (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Erich Spangenberg entities). Caveat: Contour/Aspex were nonetheless high-frequency patent plaintiffs in the 2000s (D. Nev., C.D. Cal., S.D.N.Y., S.D. Fla., D. Mass.; Fed. Cir. Nos. 04‑1292, 07‑1380, 07‑1407, 12‑1102, 12‑1137, 12‑1318), and appear in RPX/Unified litigation data as such. High volume alone is an enforcement-intensity observation, not an NPE-list match.
Repeat correspondent across the chain — UNCLEAR / UNVERIFIED. Only one assignment exists, and I could not retrieve its correspondent of record. The recurring firm outside the assignment record is Greenberg Traurig LLP (prosecution of record on family patents US 6,109,747 and US 7,198,364; Michael A. Nicodema, Greenberg Traurig, argued Aspex v. Zenni, Fed. Cir. 2012-1318). This is a family-wide firm recurrence noted for completeness, not a confirmed assignment-correspondent recurrence, and Greenberg Traurig handles both NPE and operating-company work.
Cascading transfers — NOT PRESENT. A single recorded assignment, executed 1999‑07‑02 and recorded 1999‑07‑09 (reel 010070/0938). No chained LLCs, no <24-month sequence.
Pre-litigation transfer — NOT PRESENT. Assignment (July 1999) predates the first infringement suit (Sept. 2000, Aspex/Contour v. E'Lite, D. Nev.) by roughly 14 months, outside the 6-month window. (The earlier Chao–Chic license, July 31, 1998, also predates suit by ~2 years.)
Bankruptcy fire-sale — NOT PRESENT. No bankruptcy of Chao, Contour Optik, or Aspex appears in the record or in the litigation history. The patent simply expired 2016‑12‑13.
Privateering — NOT PRESENT. This is the inverse posture: the operating manufacturer (Contour Optik) holds title and sues through its own exclusive licensee (Aspex, its US distribution arm via Chic Optik), against actual competitors (E'Lite, Altair/VSP, Zenni, Concepts, Miracle, Designer's Eyewear). No operating company handed the patent to a third-party attacker.
Defensive aggregator — NOT PRESENT. The chain terminates at Contour Optik, an operating company; the patent was never neutralized via RPX, AST, LOT, Unified, or OIN. If anything, the patent was itself neutralized by adjudication — collateral estoppel after the Altair line (Fed. Cir. 2013, 713 F.3d 1377) blocked further assertion against rimless product.
Verdict
Operating-company assertion.
The record shows exactly one assignment — inventor Richard Chao to his family's operating business Contour Optik, Inc. (executed 1999‑07‑02, recorded 1999‑07‑09, reel 010070/0938), which shipped magnetic clip‑on eyewear and enforced the '054 through its exclusive US licensee Aspex Eyewear against real competitors in the 2000s (E'Lite, Altair, Zenni, etc.). None of the shell-entity, aggregator, or bankruptcy markers appear, and the chain terminates at an operating manufacturer rather than an NPE or a defensive aggregator. The caveat is that enforcement intensity was high and the licensing/title structure (Chic → Aspex, with Chao's July 1998 exclusive license) was deliberately arranged ahead of litigation — an aggressive operating-company campaign, but still an operating-company assertion rather than a classic troll chain.
Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent number 5737054); underlying public search mirror at https://assignment.uspto.gov/patent/index.html.
Confidence & caveats
- High confidence: sole inventor, the existence and terms of the single assignment (reel 010070/0938, effective 1999‑07‑02 / recorded 1999‑07‑09, assignor CHAO, RICHARD → CONTOUR OPTIK, INC.), absence of any further recorded assignments, the 2009–2011 reexamination and its "claims 1-4 confirmed" outcome, expiry 2016‑12‑13.
- Not verified (stated as such): the correspondent of record on reel 010070/0938 — I could not retrieve it and have not substituted an assumption. The Greenberg Traurig / Nicodema references are family-wide prosecution/litigation observations, not a confirmed assignment correspondent.
- Not auto-corrected: I treated 5737054 / US 5,737,054 literally throughout and did not fold in neighboring numbers (RE37,545, US 5,568,207, US 6,012,811) or the "6,737,054" typo that appears once in the Clariti correspondence quoted in Fed. Cir. 09‑1147.
- Date caveat carried forward: Google Patents dates (filing/priority 1996‑12‑13; issue 1998‑04‑07) are used as authoritative per the supplied patent text; Unified Patents' 1996‑12‑12 / 1998‑04‑06 are the known minor discrepancy.
Generated 9/18/2026, 12:47:42 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art citations for US 5,737,054. Let me start with targeted searches.
Good — I've confirmed the examiner citation. Now let me verify the family-cited references and the key prior art details.
US 5,737,054 — Prior-Art Analysis (§ 102 Anticipation)
Scope note: I searched the USPTO/Google Patents record for the literal number 5737054 and traced its own citation lists. The '054 patent's own front page carries exactly one examiner citation, plus a "Family Cites Families" list of six references that were cited during prosecution of the European counterpart (EP 0 848 276). I cover both categories below and map each to the claims of the '054 patent. Where a reference's full disclosure was not fully legible to me (e.g., the German utility models), I say so rather than infer.
Critical date for § 102(b): The '054 application was filed Dec 13, 1996, so the one-year bar date is Dec 13, 1995. References published on or before that date are § 102(b) art.
Part A — Reference cited by the examiner on the face of US 5,737,054
A1. US 5,416,537 A — Sadler, Frank — "Magnetic means for securing auxiliary lenses to eyeglasses"
| Full citation | US 5,416,537 A; Frank Sadler; Appl. No. 08/215,615 |
| Filing / issue dates | Filed March 22, 1994; issued May 16, 1995 |
| § 102 category | § 102(b) (issued >1 yr before the '054 filing) |
| Record status | The only reference listed under "Patent Citations" on the '054 front page (Primary Examiner Hung Xuan Dang). Source: https://patents.google.com/patent/[US5416537A](/patent/US5416537A)/en |
Disclosure. A primary frame holds primary lenses; auxiliary lenses have an external shape corresponding to the primary lenses. First magnetic members are attached to the temporal portions of the frames and second magnetic members to the temporal portions of the auxiliary lenses (col. 2, claim 1). At least one member must be a permanent magnet; preferably both. The members may be embedded in the frame or covered by frame material.
Which claim(s) it potentially anticipates: none, on this record.
Both independent claims of the '054 patent require (i) the first magnetic/connector member to be "secured in said middle bridge portion" of the primary frame, and (ii) the auxiliary frame to have "a middle bridge portion having a projection extended therefrom for extending over and for engaging with said middle bridge portion." Sadler places its magnets at the two temporal (side) portions and its auxiliary element is a lens pair, not a bridge-and-projection frame. Sadler therefore misses at least two limitations of claim 1 and the identically located limitations of claim 2, and cannot anticipate under § 102. It is nonetheless the closest cited art and the natural § 103 springboard.
Corroboration that it is not anticipatory: the 2011 ex parte reexamination certificate confirmed claims 1–4 without amendment, consistent with the examiner's own reliance on Sadler as background rather than as an anticipating reference.
Part B — References cited in the family (European counterpart EP 0 848 276 / national equivalents)
These six appear in the '054 record's "Family Cites Families" list and correspond to the six-document search report on EP 0 848 276 A1 (https://patents.google.com/patent/EP0848276A1/en). They are not on the US front page, so the USPTO examiner did not rely on them against the '054 claims, but they are the remaining citations in the '054 dossier and are the honest answer to "each patent citation for 5737054."
B1. US 5,568,207 A — Chao, Richard — "Auxiliary lenses for eyeglasses"
| Full citation | US 5,568,207 A; Richard Chao; Appl. No. 08/554,854 |
| Filing / issue dates | Filed Nov 7, 1995; issued Oct 22, 1996 |
| § 102 category | § 102(a) (issued <1 yr before the '054 filing, so not § 102(b)); same-inventor patent |
Disclosure and relevance. This is the applicant's own earlier patent and is expressly named in the '054 specification as "the closest prior art of which applicant is aware." It discloses a primary frame with two projections on the rear and side portions carrying magnets, and an auxiliary frame with two arms that hook over the primary frame's upper side portion, each arm carrying a magnet. See https://www.sumobrain.com/patents/us/Auxiliary-lenses-eyeglasses/[5568207](/patent/5568207).html
Which claim(s) it potentially anticipates: none. The '054 specification itself frames the invention against '207: '207 requires two pairs of magnets located on the side/rear projections, whereas the '054 claims require a single member in the middle bridge portion plus a rearward projection on the auxiliary bridge. The '054 claims were allowed over this reference. Under § 102, '207 does not disclose the bridge-located magnet + bridge-projection hook; it is a § 103 reference of the first order but not an anticipatory one.
B2. DE 8806898 U1 — Zen, Edmund H.C. — "Magnetic frame and magnetic lens attachment" (Magnetisches Brillengestell und magnetisches Vorsatz-Brillenteil)
| Full citation | DE 8806898 U1 (German utility model / Gebrauchsmuster); Zen, Edmund H.C., Chungho, Taipei |
| Filing / publication dates | Filed Apr 4, 1988; published Sept 15, 1988 |
| § 102 category | § 102(b) |
Disclosure. A primary spectacle frame plus an auxiliary/add-on spectacle part that is held magnetically — the stated purpose being to avoid clips, hinges, or other protruding fasteners; the magnets are embedded/hidden. See https://patents.google.com/patent/DE8806898U1/en
Which claim(s) it potentially anticipates: unlikely to anticipate claims 1–4 as written, on the disclosure I could read. Zen is a strong, early teaching of generic magnetic attachment of an auxiliary eyewear part (it has been used as an "X" reference against later, unrelated eyewear claims — e.g., EP 3 293 567 cited DE 88 06 898 U1 as particularly relevant taken alone). However, the passages I retrieved do not show a magnet in the middle bridge portion of the primary frame, nor an auxiliary bridge projection extending over and engaging that bridge. Those are the two limitations that distinguish the '054 claims. I therefore do not assert § 102 anticipation; treat it as § 103/general-background art.
B3. DE 4316698 A1 — Karp, Leila — "Magnetic fastening of supplementary parts on spectacle frames"
| Full citation | DE 4316698 A1 (German published application); Leila Karp |
| Filing / publication dates | Filed May 13, 1993; published Nov 17, 1994 |
| § 102 category | § 102(b) |
| Status | Application withdrawn (DE record: "Withdrawn") |
Disclosure. Magnetic fastening of supplementary parts (e.g., auxiliary/sun lenses or visors) to spectacle frames. See https://patents.google.com/patent/DE4316698A1/en
Which claim(s) it potentially anticipates: none demonstrated. It is a general teaching of magnetic add-on attachment; the record before me does not show the bridge-located magnet or the overhanging bridge projection of '054 claims 1–2. Relevant under § 103 only.
B4. WO 97/16761 A1 — Sunreeve Co., Ltd. (Nishioka, Takahiro) — "Magnetic eyewear system"
| Full citation | WO 97/16761 A1; Sunreeve Co., Ltd.; PCT/IB96/01273 |
| Filing / publication dates | Priority/International filing Nov 1, 1995; published May 9, 1997 |
| US family member | US 5,642,177 A (Nishioka), filed Dec 9, 1994, issued June 24, 1997 |
| § 102 category | The WO published after the '054 filing (May 9, 1997 > Dec 13, 1996) → not § 102(a)/(b) art. Its US sibling US 5,642,177 was filed Dec 9, 1994 and could be invoked only under § 102(e) |
Disclosure. A primary eyeglass frame with a pair of magnets at each end (temporal regions) and an auxiliary templeless frame with a bridge hinge and a matched pair of magnets; the two frames are held together by magnet attraction, with a deliberate gap between them. See https://patents.google.com/patent/WO1997016761A1/en
Which claim(s) it potentially anticipates: none. The magnets are at the frame ends/near the temples, not in the middle bridge portion, and the disclosure is directed to a hinged templeless auxiliary frame rather than a bridge projection that extends over and engages the primary bridge. No anticipation; § 102(e)/§ 103 relevance only.
B5. JP H04-504177 A — Stemme, Otto — "Fastener" (JP national phase of WO 90/09611)
| Full citation | JP H04-504177 A; Stemme, Otto (ステメ,オットー); Japanese publication of PCT application |
| Priority / publication dates | Priority Feb 18, 1989; Japanese publication July 23, 1992 |
| Corresponding document | WO 90/09611 A1 ("Fastening arrangement") |
| § 102 category | § 102(b) |
Disclosure. A fastening arrangement for eyewear; the same WO 90/09611 was cited as an "X" reference (relevant taken alone) against the claims of EP 0 743 545 ("Detachable sunglasses with magnets"), i.e., it is regarded as a basic magnetic-fastening disclosure in this field. See the EP 0 743 545 search report at http://data.epo.org/gpi/EP0743545A1
Which claim(s) it potentially anticipates: none demonstrated. I could not retrieve text showing a magnet secured in the middle bridge portion combined with an auxiliary bridge projection extending over that bridge. Treat as background/§ 103 art; I explicitly flag my disclosure-level uncertainty here.
B6. DE 8507761 U1 — Sportive Design u. Vertrieb — "Glasses with interchangeable lenses" (Brille mit auswechselbaren Gläsern)
| Full citation | DE 8507761 U1 (German utility model); Sportive Design u. Vertrieb, 8033 Martinsried |
| Filing / publication dates | Filed Mar 15, 1985; published May 2, 1985 |
| § 102 category | § 102(b) |
Disclosure. Glasses with interchangeable lenses (also cited as a foreign reference in the family, e.g., US 5,877,838). The retrieved record does not give me a clear magnetic-attachment or bridge-projection disclosure. See https://patents.google.com/patent/DE8507761U1/en
Which claim(s) it potentially anticipates: none demonstrated. I could not verify that it discloses magnetic or bridge-mounted retention as claimed; on the record available to me it is general background only. Flagged as lower-confidence because I did not read the full German text.
Synthesis
The single most relevant prior art on the '054 record is US 5,416,537 (Sadler) — it is the only reference the examiner cited, and it is the closest art on magnetic auxiliary-lens attachment. But it locates its magnets at the temporal portions and its auxiliary element is a lens pair, so it does not anticipate claims 1–4 under § 102.
The applicant's own US 5,568,207 (Chao) is the reference the '054 specification itself calls "the closest prior art of which applicant is aware." It too places magnets on side/rear projections (two pairs) — not in the middle bridge — and its auxiliary hook structure is on arms, not a bridge projection. It does not anticipate, but it is the definitive § 103 reference.
No reference on the '054 record discloses the two limitations that carry the claims: (a) the magnetic/connector member secured in the primary frame's middle bridge portion, and (b) the auxiliary frame's middle bridge portion having a projection that extends over and engages that bridge. Those limitations are what distinguish '054 over Sadler, Chao '207, Sunreeve/Nishioka, and the German/Japanese family references, so I find no § 102 anticipation of claims 1–4 by any cited reference. Each of the six family-cited references is more properly characterized as § 103 (obviousness) background — several of them (Sadler, Zen, Karp, Stemme, Sunreeve) establish that magnetic attachment of auxiliary eyewear was broadly known, while leaving the bridge-mounted, overhanging-projection architecture untaught.
Corroboration: the 2011 ex parte reexamination certificate confirmed claims 1–4 without cancellation or amendment, consistent with the cited art being non-anticipatory.
Confidence
- High: Sadler's content, dates, and status as the sole examiner citation; the identity of the six family-cited references and their dates; that the bridge-magnet + bridge-projection limitations are absent from Sadler and Chao '207.
- Moderate: the full technical disclosures of DE 8806898 U1, DE 4316698 A1, JP H04-504177 A, and DE 8507761 U1 — I read summaries and search-report characterizations, not every sentence of the originals.
- Explicitly uncertain: whether any of the German/Japanese references contains an unretrieved passage describing a bridge-located magnet or a bridge overhang; if it does, the § 102 conclusion for that reference alone could change. I did not find such a passage.
Record discrepancy carried forward from the prior section: some aggregators list the '054 priority as 1996-12-12 (Unified Patents) versus 1996-12-13 (Google Patents/patent text). I used 1996-12-13 throughout, per the authoritative text supplied.
Generated 9/18/2026, 12:48:09 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the specific prior-art references listed on the patent page before building the § 103 analysis.
Good — I have the key references. Let me pin down a few remaining ones.
Obviousness Analysis — US 5,737,054 under 35 U.S.C. § 103
Scope note. This builds on the bibliographic, claim-construction, and litigation sections already generated. It does not repeat them. One correction to flag: the prior-generated section labeled Ser. No. 08/847,711 as the '054's "Continuation-in-part parent." The authoritative record on the page shows 08/847,711 (filed 1997‑04‑28) and 08/963,299 (filed 1997‑11‑03) both post-date the '054's 1996‑12‑13 filing and are listed as related/child CIPs. Neither is prior art to the '054. I use the page's dates throughout.
1. Legal framework and the governing dates
Statute. Filed 1996‑12‑13, so pre‑AIA § 103(a) applies, with pre‑AIA §§ 102/103(c). No AIA "reasonable additional elements" analysis.
Critical dates. Filing = 1996‑12‑13. § 102(b) one-year bar date = 1995‑12‑13. Any printed publication or patent issued before 1995‑12‑13 is a statutory bar and is per se available for § 103.
Burden. The '054's claims were confirmed in ex parte reexamination (certificate 2011‑03‑29: "THE PATENTABILITY OF CLAIMS 1‑4 IS CONFIRMED"). Confirmed claims retain the § 282 presumption of validity, so an accused infringer must prove obviousness by clear and convincing evidence.
Level of ordinary skill. A POSITA here is a person with a mechanical/optical-design background (roughly a bachelor's degree or comparable trade experience) plus 2–4 years designing spectacle frames. Critically, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), instructs that in a predictable mechanical arts field such as magnetic clip-on eyewear — where the references address the identical problem and the components (frames, bridges, magnets, hooks) are well-known — design incentives and known techniques will often render a variation obvious.
Claim-construction preliminaries that matter to validity:
- "secured in said middle bridge portion." The specification expressly contemplates that the bridge itself may be the magnetically attractive element: the connector member "is not required to be a magnet, but could be composed typically of magnetic iron. It is only required to have the middle bridge member 13 made by magnetically attractive material." Under the broadest reasonable construction, a bridge made of magnetically attractive material, or a magnet mounted on/in the bridge, both satisfy this element. That materially narrows the gap to the prior art.
- "with only one hand by a user." This is a statement of intended result/use, not a structural limitation. Under In re Schreiber and the Packard line, a recited result that is the inherent consequence of the claimed structure does not confer patentability. One coupling point is inherently easier to align one-handed than two.
- Claim 2 is a means-plus-function claim (§ 112 ¶ 6): "magnetic means operatively associated with the first and second connector members whereby they are connectable to each other magnetically." Its corresponding structure is simply a magnet plus a magnet or magnetizable element — the broadest possible characterization of a magnetic connection.
2. Prior-art inventory and § 102 status
| Ref. | Date | § 102 status vs. '054 | Relevance |
|---|---|---|---|
US 5,416,537 (Sadler) — Magnetic means for securing auxiliary lenses to eyeglasses (patents.google.com/patent/US5416537A/en) |
Issued 1995‑05‑16 | § 102(b) bar (>1 yr before filing) | Frames with a "bridge 9… toward the middle of the front portion"; first magnetic members on the frame, second on the auxiliary lenses at corresponding positions; explicit teaching that magnets may be permanent or ferromagnetic, and that at least one must be a permanent magnet |
US 5,568,207 (Chao) — Auxiliary lenses for eyeglasses (sumobrain.com/patents/us/Auxiliary-lenses-eyeglasses/5568207.html) |
Issued 1996‑10‑22 | Admitted prior art (specification: "The closest prior art of which applicant is aware is his prior U.S. Pat. No. 5,568,207 to Chao") | Two pairs of magnets on rear/side projections; auxiliary arms extending over the primary upper side portion; magnets "extended downward… for hooking on said primary spectacle frame" |
DE 4316698 A1 (Karp) — Magnetic fastening of supplementary parts on spectacle frames (patents.google.com/patent/DE4316698A1/en) |
Published 1994‑11‑17 | § 102(b) bar | Magnet (1b) on the supplementary part + magnet (1a) on the spectacle frame; rapid, wear‑free interchange; location-agnostic |
DE 8806898 U1 (Zen) — Magnetic frame and magnetic lens attachment (patents.google.com/patent/DE8806898U1/en) |
Published 1988‑09‑15 | § 102(b) bar | Cited in EP 0848276's search report |
| DE 8507761 U1 (Sportive Design) — Glasses with interchangeable lenses | Published 1985‑05‑02 | § 102(b) bar | Early interchangeable-lens frame |
| WO 90/09611 A1 (Stemme) — Fastening arrangement (JP 04504177 A) | Published 1990‑08‑23 | § 102(b) bar | Cited in EP 0848276's search report |
| US 4,070,103 (Meeker) — Spectacle frame with attachable one-piece slide-on rim | Issued 1978‑01‑24 | § 102(b) bar | Magnetic material on the spectacle frame + magnetic strip on the auxiliary rim cover |
| WO 97/16761 A1 (Sunreeve) — Magnetic eyewear system (US counterpart US 5,642,177) | Published 1997‑05‑09; priority 1995‑11‑01 | Post‑dates the filing date → NOT § 102(a)/(b). Potentially § 102(e) if the PCT designated the US and was published in English (international filing date 1995‑11‑01 precedes the '054 date). Availability not verified. | Magnets at "either end" of the frames; alternative embodiment where one frame is merely "attracted by magnetic force"; hinge at the bridge |
Honesty flag on the record. The Google Patents entry lists only one reference as cited during the '054's own prosecution: US 5,416,537. The other six references appear in the "Family Cites Families" list, i.e., they were cited in the prosecution of family members (the EP 0848276 search report lists DE 8507761, DE 8806898, WO 90/09611, DE 4316698, US 5,416,537, US 5,568,207). I could not verify the inner disclosures of DE 8806898 (Zen), WO 90/09611 (Stemme), DE 8507761, or JP 04504177 A from the retrieved text — for those I have title-level information only and say so rather than assume. My analysis therefore rests primarily on Sadler '537, Chao '207, Karp '698, and Meeker '103, all of which I could read.
3. Element-by-element mapping
Claim 1
| Limitation | Primary disclosure | Gap-filler / motivation |
|---|---|---|
| Primary spectacle frame for primary lenses | Sadler '537 (frames 1, primary lenses 11); Chao '207; Sunreeve | — |
| "middle bridge portion" | Sadler '537 expressly: "a bridge 9 is located toward the middle of the front portion 5" | — |
| "first magnetic member secured in said middle bridge portion" | Sadler '537: "First magnetic members are attached to the frames" (location permissive — it specifies positions such as the temporal region), US5416537A/en; Karp '698: magnet 1a "an der Brillenfassung (3)" (on the frame) |
Design choice + Karp/Sadler teaching. Relocating a frame-mounted magnet to the bridge is a purely positional change to a known element. Spec even permits the bridge itself to be the magnetically attractive material |
| Auxiliary spectacle frame for auxiliary lenses | Sadler '537 (lenses 15); Chao '207; Sunreeve | — |
| Bridge "projection… extending over and for engaging with said middle bridge portion" | Chao '207 (admitted art): auxiliary frame "including two side portions each having an arm extended rearward for extending over and for engaging with said upper side portion"; claim 2: magnets "extended downward toward said projections for hooking on said primary spectacle frame" | Simple substitution / relocation. The overhanging-hook structure is disclosed; the change is moving it from the side portions to the bridge and scaling it down — same function (resist downward displacement), same way, predictable result |
| "second magnetic member secured to said projection" | Chao '207: "magnetic members 22 secured to the arms 21"; Sadler '537: second magnetic members 17 on the auxiliary lenses | — |
| "only one hand" result | Inherent consequence of a single central coupling point (Chao '207 requires aligning two pairs) | Intended-use language; no patentable weight |
Claim 2
Structurally identical to claim 1, but with (i) neutral "connector members" replacing "magnetic members," and (ii) "magnetic means operatively associated with the first and second connector members." This is broader than claim 1 and therefore easier to invalidate: Sadler '537 + Karp '698 + Chao '207 supply "connector member" (any structural connector) plus "magnetic means." Claim 2 is the most vulnerable claim in the patent.
Claims 3 and 4
| Claim | Limitation | Direct disclosure |
|---|---|---|
| 3 | First connector = magnet; second = magnetizable substance | Sadler '537: "The first magnetic members are made of a magnetic material or a ferromagnetic material"; "at least one of the first and second magnetic members must be made of a permanent magnetic material" |
| 4 | Second connector = magnet; first = magnetizable substance | Same Sadler teaching (order-agnostic); Sunreeve alternative embodiment (one frame "has a property attracted by magnetic force"); Karp '698 (magnet/magnet pair) |
Claims 3 and 4 are essentially express recitations of alternatives the prior art already taught, and the '054's own specification concedes the point ("only one of the pair of magnetic members is required to be a magnet").
4. The obviousness combinations
Ground A (strongest): Chao '207 in view of Sadler '537, further in view of Karp '698
What is missing from Chao '207 alone: only the location (bridge rather than rear/side projections) and the complementary shape (a bridge projection rather than side arms).
Motivation to combine / to modify — and this is the decisive point: the '054's own Background supplies the motivation as a matter of record. It states that '207 requires "two pairs of magnet members… such that the manufacturing cost is increased" and that "the user have to align two pairs of magnet members." That is an articulated, pre-existing, in-field recognition of the problem the '054 purports to solve. Under KSR, this is a textbook "design incentive" / "market force" rationale: reduce part count and cost, and simplify alignment.
Additional KSR rationales:
- (A) Known elements combined by known methods, predictable result: frame-mounted magnet + auxiliary-mounted magnet (Sadler '537, Karp '698) + overhanging hook (Chao '207) → a magnetic clip-on with a single central coupling. All elements known; the result (attachment, resistance to downward motion) is predictable.
- (B) Simple substitution: the bridge projection is substituted for Chao '207's side arms; same function, same way.
- (C) Known technique improving a similar device in the same way: centralizing an attachment point in a symmetric structure is a routine mechanical expedient.
- (D) "Obvious to try" / finite predictable options: a frame front presents essentially two attachment zones (temple ends or bridge). The prior art already discloses temple-end coupling (Sadler '537, Sunreeve). Trying the remaining, obvious option — the bridge, the strongest and most central structural element — is not inventive.
- (E) The bridge is the natural location: Sadler '537 itself identifies the bridge as "toward the middle of the front portion," and a single central magnet self-centers the auxiliary frame, eliminating the very alignment problem the Background laments.
Ground B (alternative): Sadler '537 in view of Chao '207 (order reversed)
Sadler '537 supplies the magnetic-attachment architecture and the magnet/ferromagnetic alternative (claims 3, 4). Chao '207 supplies the mechanical interlock (an arm/projection overhanging the primary frame with a downward-extending magnet for hooking). A POSITA combining them to improve Sadler's purely magnetic, slip-prone coupling (Sadler's own background criticizes clips and gaps) arrives at a bridge-mounted magnet pair with an overhanging projection.
Ground C (broader attack on claim 2): Karp '698 in view of Chao '207 and Sadler '537
Karp '698 teaches the generic concept — magnet on the supplementary part, magnet on the spectacle frame, quick and "practically wear-free" interchange, any location. Combine with Chao '207's overhanging hook and Sadler's "at least one permanent magnet" teaching and every element of claim 2 (including the means-plus-function "magnetic means") is met.
Ground D: Meeker '103 + Sadler '537 + Chao '207
Meeker discloses a magnetic material on the spectacle frame and a magnetic strip on an auxiliary rim cover — additional reinforcement that magnetic material on the primary frame is old.
5. Secondary considerations and counterarguments (why this is a genuine, contestable case)
Points favoring the patentee:
- No anticipatory reference. No single reference of record discloses a magnet at the middle bridge cooperating with a bridge projection on the auxiliary frame. This is a § 103 case, not § 102, and the burden is clear and convincing evidence.
- The EPO granted the counterpart (EP 0848276 B1) over a search report that included Karp '698, Zen '898, Stemme '90/09611, Sadler '537, and Chao '207. While EPO problem-and-solution analysis and claim scope differ (and the "Ceased" status of divisional EP 1251387 A1 weakens the rhetorical force), the grant is some evidence that a skilled examiner did not find the combination obvious.
- The examiner cited only Sadler '537, and the ex parte reexamination confirmed claims 1‑4. Confirmation is not a validity adjudication and reexams are limited to patents/printed publications and the requester's SNQ — but confirmed claims carry the § 282 presumption.
- Arguable teaching away / stability concern. The field's convention was two-point magnetic attachment (Sadler '537; Chao '207; Sunreeve), and a POSITA might reasonably expect that a single coupling point would reduce stability — the very failure mode Sadler '537 and Chao '207 worried about ("slippage," "easily disengaged… when the users conduct jogging or jumping exercises"). The patentee can argue that recognizing that a mechanical interlock (the over-bridge projection) could substitute for the eliminated second magnet pair was the non-obvious insight. This is the strongest available non-obviousness argument, and it targets the combination rather than the individual references. Its weakness is that Chao '207's claim 2 already discloses the "hooking" function of the downward-extending magnet — so the compensating mechanism was also known.
- Family/continuity as a double-edged point. The later CIP US 6,012,811, Eyeglass frames with magnets at bridges for attachment (Ser. No. 08/963,299, filed 1997‑11‑03), shows the Chao/Contour team filing a separate application on bridge-mounted magnets. A patentee may argue this shows the bridge concept was not routine; a challenger may argue it shows the bridge location was the obvious next step in an ongoing development program (and thus a weak long-felt-need narrative). Note that 6,012,811 is not prior art to the '054.
Points favoring the challenger:
- The '054's Background is an admission of the problem and of the motivation — the single most useful piece of § 103 evidence here.
- The asserted advance is a relocation of a known element (the magnet) plus a relocation of a known structure (the overhanging arm/hook) into a well-known region (the bridge). KSR and the Japikse/In re Harza line treat pure changes in position/"analogous" relocation as obvious where the function is unchanged.
- Claim 2's breadth (means-plus-function + "connector members") makes the broadest claim almost certainly obvious over Karp '698 + Chao '207 + Sadler '537.
- Claims 3 and 4 are conceded alternatives, expressly taught by Sadler '537.
- The functional "only one hand" element adds no structural weight.
6. Bottom line
| Claim | Obviousness assessment | Confidence |
|---|---|---|
| 1 | Likely obvious over Chao '207 + Sadler '537 + Karp '698 (with the '054's own Background supplying the motivation to consolidate two magnet pairs into one at the bridge). Not a clean case: the bridge-projection geometry lacks a square single-reference hit, so the rejection depends on motivation-to-relocate, and the clear-and-convincing burden plus the EP grant argue the other way. | Moderate |
| 2 | Strongly likely obvious. Broader means-plus-function "connector members" + "magnetic means"; Karp '698 + Chao '207 + Sadler '537 cover every element. | Moderately high |
| 3, 4 | Very likely obvious. Sadler '537 expressly discloses magnet-or-ferromagnetic alternatives and requires at least one permanent magnet; the '054's spec concedes "only one of the pair of magnetic members is required to be a magnet." | High |
Best single combination to plead: US 5,568,207 (Chao) + US 5,416,537 (Sadler) + DE 4316698 A1 (Karp), using the '054's Background section as the explicit motivation to reduce from two magnet pairs to one and to simplify alignment — i.e., the KSR "design incentive" and "known technique" rationales applied to a predictable mechanical art.
What would change this conclusion: (i) evidence of an express teaching away from single-point/bridge coupling (none found in the references I could read); (ii) unexpected results or a long-felt, unmet need with proven nexus; or (iii) a construction of "secured in said middle bridge portion" that excludes mere surface mounting — though the specification's own statement that the bridge may simply be "made by magnetically attractive material" cuts against such a narrowing.
Confidence and limits. High confidence in: the prior-art dates and § 102 status in the table; the disclosure contents of Sadler '537, Chao '207, Karp '698, Meeker '103; and the claim-element mappings built from the authoritative patent text you supplied. Moderate confidence in: the completeness of the "Family Cites Families" record as prosecution art (the page shows only Sadler '537 as cited in the '054's own prosecution). Low confidence, explicitly flagged: the inner disclosures of DE 8806898 (Zen), WO 90/09611 (Stemme), DE 8507761, JP 04504177 A, and the § 102(e) availability of WO 97/16761 / US 5,642,177 — I retrieved titles, dates, and citation relationships for these but not their substance, and I have not asserted their content.
Generated 9/18/2026, 12:48:59 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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