Walman Optical Co The v. Quest Optical Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Walman Optical Company (Minnesota)
  • Defendant: Quest Optical Inc. (Florida); Joaquin Edward de Rojas (individual); Sirius Technologies, LLC (Florida)
  • Plaintiff’s Counsel: Fredrikson & Byron, P.A.
• Case Identification: 0:11-cv-02688, D. Minn., 05/15/2012
• Venue Allegations: Venue is alleged to be proper based on Defendants being subject to personal jurisdiction, having committed acts of infringement in the district, and a prior contract between the parties that provides for exclusive jurisdiction in the district.
• Core Dispute: Plaintiff alleges that Defendants are infringing a patent related to abrasion-resistant coating compositions for eyeglass lenses, in direct violation of a prior settlement agreement and permanent injunction resulting from a previous lawsuit over the same patent and products.
• Technical Context: The technology concerns chemical compositions for UV-curable coatings applied to plastic substrates, such as polycarbonate eyeglass lenses, to improve abrasion resistance while maintaining the ability to be tinted with dye.
• Key Procedural History: The complaint alleges that a prior lawsuit between Walman and Quest (11-CV-96) was resolved via a Settlement Agreement. In connection with that settlement, Quest allegedly stipulated that its "UVMP" and "UVRT" products infringed claims of the patent-in-suit and that the patent is valid and enforceable. The current action alleges breach of that settlement and continued infringement by Quest and its alleged alter egos, raising issues of successor liability and contempt of the court’s prior permanent injunction.

Case Timeline

Date	Event
1997-03-07	'313 Patent Priority Date
2000-08-08	'313 Patent Issue Date
2011-01-13	"First Lawsuit" for infringement filed by Walman against Quest
2011-07-22	Sirius Technologies LLC formed
2011-08-26	Walman and Quest enter into Settlement Agreement
2011-08-29	Quest stipulates that its products infringe the '313 patent
2011-08-30	Court dismisses Quest's counterclaims with prejudice
2011-08-31	Court enters Final Judgment and Permanent Injunction
2011-09-20	Sirius Technologies LLC amends name and business address
2012-05-15	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,100,313 - "UV-Curable Abrasion-Resistant Coating Composition," Issued August 8, 2000

The Invention Explained

• Problem Addressed: The patent describes a challenge in the field of transparent plastics, such as those used for eyeglass lenses. These materials are often soft and easily scratched. While protective coatings can increase hardness, they often reduce the material's ability to be tinted with dyes, a desirable feature for ophthalmic lenses. Furthermore, many existing coating systems relied on volatile organic solvents as a vehicle, which presented handling and disposal issues (’313 Patent, col. 1:11-21, 1:36-49).
• The Patented Solution: The invention is a liquid coating composition that is substantially free of volatile solvents and silica. It is a "hybrid" system that includes an epoxy-functional silane, a polymerizable ether, and an acrylic monomer. This mixture is cured using ultraviolet (UV) light with two types of initiators: a cationic photoinitiator for the epoxy and ether components, and a free-radical photoinitiator for the acrylic component. This dual-cure approach is designed to produce a coating that adheres well to polycarbonate, is highly abrasion-resistant, and remains receptive to dyes (’313 Patent, Abstract; col. 2:1-12).
• Technical Importance: This approach provided a method for producing durable, tintable lens coatings without the environmental and safety drawbacks associated with the volatile solvents common in prior art systems (’313 Patent, col. 1:59-62).

Key Claims at a Glance

• The complaint asserts infringement of unspecified "claims of the '313 patent" (Compl. ¶16). Independent claim 1 is representative.
• Independent Claim 1:
  • A substantially solvent-free coating composition for forming a transparent, abrasion-resistant, dye-accepting coating upon a substrate,
  • the composition comprising a binder component and a curing agent component,
  • the binder component comprising at least 10% by weight, solids basis, of the hydrolysis product of an epoxy-functional alkoxy silane,
  • a polymerizable ether selected from the group consisting of glycidyl ethers, allyl ethers and vinyl ethers,
  • and an ethylenically unsaturated monomer other than said polymerizable ether,
  • the curing agent component comprising a cationic initiator and a free radical initiator,
  • and the composition being substantially free of silica.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies "UVMP" and "UVRT" as the "Infringing Products" (Compl. ¶16). It also mentions a "UVMax" product, which Quest allegedly offered to customers as a replacement for the infringing UVMP product (Compl. ¶34-35).

Functionality and Market Context

The accused products are chemical compositions sold for the purpose of coating plastic eyeglass lenses (Compl. ¶9; ’313 Patent, col. 1:5-10). The complaint does not provide technical details on the composition of these products. Instead, its infringement theory relies on a stipulation from a prior lawsuit where Defendant Quest allegedly "admitted that its UVMP and UVRT products infringe claims of the '313 patent and that the '313 Patent is valid and enforceable" (Compl. ¶16). The current suit alleges that Defendants have continued to sell these same products after a permanent injunction was entered (Compl. ¶17, 21). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a technical claim chart or element-by-element infringement analysis. The central allegation is that infringement has already been established and admitted in a prior legal proceeding (Compl. ¶16, 24). The following chart summarizes this theory of infringement with respect to the representative independent claim.

’313 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A substantially solvent-free coating composition...	The accused UVMP and UVRT products are alleged to be infringing coating compositions, based on a prior admission of infringement by Defendant Quest.	¶16, 24, 45	col. 8:5-9
the binder component comprising at least 10% by weight, solids basis, of the hydrolysis product of an epoxy-functional alkoxy silane,	The complaint alleges that the accused products meet the claim limitations based on Defendant Quest's prior stipulation that the products infringe claims of the patent.	¶16, 24, 45	col. 8:10-13
a polymerizable ether selected from the group consisting of glycidyl ethers, allyl ethers and vinyl ethers,	The complaint alleges that the accused products meet the claim limitations based on Defendant Quest's prior stipulation that the products infringe claims of the patent.	¶16, 24, 45	col. 8:13-15
and an ethylenically unsaturated monomer other than said polymerizable ether,	The complaint alleges that the accused products meet the claim limitations based on Defendant Quest's prior stipulation that the products infringe claims of the patent.	¶16, 24, 45	col. 8:15-16
the curing agent component comprising a cationic initiator and a free radical initiator,	The complaint alleges that the accused products meet the claim limitations based on Defendant Quest's prior stipulation that the products infringe claims of the patent.	¶16, 24, 45	col. 8:16-18
and the composition being substantially free of silica.	The complaint alleges that the accused products meet the claim limitations based on Defendant Quest's prior stipulation that the products infringe claims of the patent.	¶16, 24, 45	col. 8:18-19

Identified Points of Contention

• Successor Liability Question: The primary factual and legal dispute appears to be whether Defendant Sirius Technologies, LLC is a "mere continuation" of Defendant Quest Optical, and therefore liable for Quest's infringement and bound by the prior settlement and injunction (Compl. ¶50-51). The complaint alleges facts such as a shared business address and an advertisement describing Sirius as "Quest Optical Now Sirius Technologies" to support this theory (Compl. ¶31, 32).
• Personal Liability Question: A second major question is whether the "corporate veil" of Quest can be pierced to hold its president, Joaquin Edward de Rojas, personally liable as an "alter ego." The complaint alleges failure to observe corporate formalities as a basis for this claim (Compl. ¶10, 12, 45).
• Scope Question: While the complaint alleges a prior admission of infringement, it does not specify which claims of the ’313 patent were covered by that admission (Compl. ¶16). This raises the question of whether the prior stipulation is coextensive with the scope of infringement alleged in the current action.

V. Key Claim Terms for Construction

Because the complaint's theory rests on a prior admission of infringement rather than a new technical dispute, claim construction may not be a central issue for the specific products previously at issue. However, should new products become involved or the scope of the prior admission be challenged, the following terms from claim 1 could become critical.

• "substantially solvent-free"

  • Context and Importance: This term defines a primary feature of the invention, distinguishing it from prior art that used solvents as a vehicle. Practitioners may focus on this term because a defendant could argue its product contains a certain percentage of solvent and thus falls outside the claim scope. The definition of "substantially" is a frequent subject of claim construction disputes.
  • Intrinsic Evidence for a Broader Interpretation: The patent does not provide a specific numerical limit for what constitutes "substantially free," which may support an interpretation that allows for trace or incidental amounts of solvent not used as a primary vehicle (’313 Patent, col. 8:5).
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the goal of avoiding the "volatile solvent" used in prior art systems, and the summary of the invention describes the composition as "substantially free of volatiles" (’313 Patent, col. 1:45-49, 1:61-62). This could support a narrow construction that permits only de minimis amounts of such substances.

• "hydrolysis product"

  • Context and Importance: This term defines the chemical state of the key silane component. The extent of the hydrolysis reaction (i.e., how many alkoxy groups have reacted with water) is a specific technical detail that could be a point of dispute.
  • Intrinsic Evidence for a Broader Interpretation: The plain language of the claim does not specify a required degree of hydrolysis, which could support a construction covering any product where at least some hydrolysis has occurred.
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description provides specific, preferred embodiments, stating that water is added to hydrolyze "at least 50% of the alkoxy groups and most preferably from about 60% to about 70%" (’313 Patent, col. 2:16-19). Example 1 further specifies a reaction designed to "theoretically hydrolyze 2 of the 3 alkoxy groups" (’313 Patent, col. 6:2-4). A defendant could argue these passages limit the claim to a specific range of hydrolysis.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that "Quest and Mr. de Rojas have induced others to engage in acts that infringe the '313 patent" (Compl. ¶25, 46). The specific factual basis for inducement, such as instructions or advertisements encouraging infringing use, is not detailed beyond the general allegation of selling the infringing products.
• Willful Infringement: The complaint alleges that the infringement "has been willful, deliberate, and intentional" (Compl. ¶49). The basis for this allegation is exceptionally strong, as it is predicated on Defendants' alleged continuation of infringing conduct after settling a prior lawsuit, stipulating to infringement, and being placed under a permanent injunction by the court (Compl. ¶13-17). This provides a clear basis for alleging post-filing, and even post-judgment, knowledge of infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears to be less a technical patent dispute and more a case about the enforcement of a prior settlement and injunction. The central questions for the court are likely to be legal and equitable rather than technical.

• A core issue will be one of successor liability: Does the evidence support the claim that Sirius Technologies is a "mere continuation" of Quest Optical, making it subject to the permanent injunction and liable for Quest's admitted patent infringement and breach of contract?
• A second key question will concern personal liability: Has the plaintiff alleged sufficient facts to pierce the corporate veil and hold Joaquin Edward de Rojas personally liable as an "alter ego" of the corporate defendants for their alleged conduct?
• Finally, an evidentiary question will be one of continued conduct: What is the evidence that Defendants continued to manufacture, use, or sell the previously-adjudicated "Infringing Products" (UVMP and UVRT) after the permanent injunction was entered?