DCT

2:09-cv-00624

Oakley Inc v. Digitalrise LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [Oakley, Inc.](https://ai-lab.exparte.com/party/oakley-inc) v. [Digitalrise, LLC](https://ai-lab.exparte.com/party/digitalrise-llc), 2:09-cv-00624, C.D. Cal., 01/27/2009
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the judicial district, including marketing, offering for sale, and selling the accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s sunglasses, which are alleged to be copies of Plaintiff's "Thump," "Thump 2," and "Razrwire" product lines, infringe thirteen of Plaintiff's utility and design patents related to eyewear integrating MP3 players and Bluetooth technology.
  • Technical Context: The technology at issue involves wearable electronics, specifically the integration of audio playback and wireless communication functionalities directly into the frame of sunglasses, a key early market for consumer-grade smart eyewear.
  • Key Procedural History: The complaint alleges that Defendant had both constructive and actual pre-suit notice of the patents-in-suit. Constructive notice is alleged based on patent markings on the packaging of Plaintiff's commercial products. Actual notice is alleged based on Defendant's purported copying of these same patent notices onto the packaging of its own accused products, an allegation which, if proven, may support the claim for willful infringement.

Case Timeline

Date Event
2000-06-02 Priority Date for U.S. Patent Nos. 6,966,647 and 7,219,994
2002-07-26 Priority Date for U.S. Patent Nos. 7,004,582; 7,213,917; 7,150,526; 7,216,973; 7,264,350; and 7,278,734
2005-11-22 U.S. Patent No. 6,966,647 Issued
2006-02-07 U.S. Patent No. D514,613 Issued
2006-02-28 U.S. Patent No. 7,004,582 Issued
2006-06-20 U.S. Patent No. D523,461 Issued
2006-12-19 U.S. Patent No. 7,150,526 Issued
2007-02-12 U.S. Patent No. D561,816 Issued
2007-03-20 U.S. Patent No. D538,836 Issued
2007-05-08 U.S. Patent No. 7,213,917 Issued
2007-05-15 U.S. Patent No. 7,216,973 Issued
2007-05-22 U.S. Patent No. 7,219,994 Issued
2007-08-14 U.S. Patent No. D548,767 Issued
2007-09-04 U.S. Patent No. 7,264,350 Issued
2007-10-09 U.S. Patent No. 7,278,734 Issued
2009-01-27 Complaint Filing Date

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

U.S. Patent No. 6,966,647 - “TELECOMMUNICATIONS ENABLED EYEGLASS”

  • Issued: November 22, 2005

The Invention Explained

  • Problem Addressed: The patent’s background section describes a need for eyewear retention systems that move beyond traditional dual earstem designs, which rely on lateral pressure against the temples. Such new systems would need to comfortably support and distribute the weight of additional electronic components like telecommunications systems and heads-up displays. (’647 Patent, col. 1:56-65).
  • The Patented Solution: The invention is an "over the head" eyewear frame that extends across the top of the wearer's head to the occipital region, which is intended to provide stability without pressing on the temples. (’647 Patent, col. 2:3-12). This structure serves as a platform for integrated electronics, such as an MP3 player with memory, retrieval circuitry, a power supply, and earphones, as illustrated in the schematic of Figure 5. (’647 Patent, FIG. 5).
  • Technical Importance: This approach represented an effort to create a stable and comfortable platform for integrating complex consumer electronics directly into eyewear. (Compl. ¶5).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted, alleging infringement of the patent generally. (Compl. ¶40). Independent claim 1 is representative of the core invention.
  • Essential elements of Independent Claim 1:
    • An eyeglass frame adapted to be carried by the head of a wearer.
    • First and second lens orbitals carried by the frame for positioning lenses.
    • An MP3 format memory device carried inside of the eyeglass frame.
    • A power supply carried by the eyeglass frame.
    • At least a first earphone support extending from the frame, carrying an earphone configured to direct toward a wearer's ear.
    • Retrieval circuitry configured to retrieve music from the MP3 format memory.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,219,994 - “EYEGLASS WITH MP3 PLAYER”

  • Issued: May 22, 2007

The Invention Explained

  • Problem Addressed: The '994 Patent, a continuation of the application leading to the ’647 Patent, addresses the same technical problem: the need for a comfortable and stable eyewear system capable of supporting and distributing the weight of integrated electronics. (’994 Patent, col. 1:56-65).
  • The Patented Solution: The patent describes the same "over the head" retention system as the ’647 Patent, providing a platform for an integrated MP3 player. (’994 Patent, col. 2:3-12). The specification and figures are substantially identical to those of the ’647 Patent.
  • Technical Importance: As with the ’647 Patent, this invention contributed to the development of integrated wearable electronic devices. (Compl. ¶5).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. (Compl. ¶48). Independent claim 12, a means-plus-function claim, is representative.
  • Essential elements of Independent Claim 12:
    • An eyeglass frame.
    • At least a first lens and a support portion for positioning the lens.
    • Means for storing music in an MP3 format supported by the eyeglass frame.
    • A power supply supported by the eyeglass frame.
    • At least a first earphone connected to the frame.
    • Means for retrieving music from the storing means and for playing the music through the earphone.
  • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsules

  • U.S. Patent No. 7,216,973: “EYEGLASS WITH MP3 PLAYER,” Issued May 15, 2007.

    • Technology Synopsis: This patent relates to technology for integrating MP3 players into sunglasses. (Compl. ¶8).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶56).
    • Accused Features: The complaint alleges that Defendant’s sunglasses embody the claimed technology. (Compl. ¶56).

  • U.S. Patent No. D548,767: “EYEGLASS AND EYEGLASS COMPONENTS,” Issued August 14, 2007.

    • Technology Synopsis: This is a design patent protecting the ornamental design of an eyeglass embodied in Plaintiff's "Thump 2" line of sunglasses. (Compl. ¶9).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶64).
    • Accused Features: The complaint alleges Defendant's sunglasses copy the claimed ornamental design. (Compl. ¶64).

  • U.S. Patent No. D561,816: “EYEGLASS COMPONENT,” Issued February 12, 2007.

    • Technology Synopsis: This design patent protects the ornamental design of an eyeglass component embodied in Plaintiff's "Thump 2" line of sunglasses. (Compl. ¶10).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶72).
    • Accused Features: The complaint alleges Defendant's sunglasses copy the claimed ornamental design. (Compl. ¶72).

  • U.S. Patent No. D538,836: “EYEWEAR MODULE,” Issued March 20, 2007.

    • Technology Synopsis: This design patent protects the ornamental design of an earpiece for eyeglasses, embodied in Plaintiff's "Razrwire" line of sunglasses. (Compl. ¶12).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶80).
    • Accused Features: The complaint alleges Defendant’s "Oakley Razrwire" model copies the claimed design. (Compl. ¶16, ¶80).

  • U.S. Patent No. 7,004,582: “ELECTRONICALLY ENABLED EYEWEAR,” Issued February 28, 2006.

    • Technology Synopsis: This patent relates to technology for Bluetooth-enabled sunglasses. (Compl. ¶13).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶88).
    • Accused Features: The complaint alleges Defendant’s "Oakley Razrwire" model embodies the claimed technology. (Compl. ¶16, ¶88).

  • U.S. Patent No. 7,213,917: “ELECTRONICALLY ENABLED EYEWEAR,” Issued May 8, 2007.

    • Technology Synopsis: This patent relates to technology for Bluetooth-enabled sunglasses. (Compl. ¶14).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶96).
    • Accused Features: The complaint alleges Defendant’s "Oakley Razrwire" model embodies the claimed technology. (Compl. ¶16, ¶96).

  • U.S. Patent No. 7,150,526: “WIRELESS INTERACTIVE HEADSET,” Issued December 19, 2006.

    • Technology Synopsis: This patent relates to technology for Bluetooth-enabled sunglasses. (Compl. ¶15).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶104).
    • Accused Features: The complaint alleges Defendant’s "Oakley Razrwire" model embodies the claimed technology. (Compl. ¶16, ¶104).

  • U.S. Patent No. 7,278,734: “WIRELESS INTERACTIVE HEADSET,” Issued October 9, 2007.

    • Technology Synopsis: This patent relates to technology for adjustable earpieces for eyewear, embodied in the "Thump 2" and "Razrwire" lines. (Compl. ¶17).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶112).
    • Accused Features: The complaint alleges Defendant’s "Thump 2" and "Oakley Razrwire" models embody the claimed technology. (Compl. ¶18, ¶112).

  • U.S. Patent No. D514,613: “EYEGLASS AND EYEGLASS COMPONENTS,” Issued February 7, 2006.

    • Technology Synopsis: This design patent protects an eyeglass design embodied in Plaintiff's "Thump" line of glasses. (Compl. ¶19).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶20).
    • Accused Features: The complaint alleges Defendant’s Bluetooth/MP3 sunglass models copy the protected design. (Compl. ¶20).

  • U.S. Patent No. D523,461: “EYEGLASS COMPONENT,” Issued June 20, 2006.

    • Technology Synopsis: This design patent protects an eyeglass design embodied in Plaintiff's "Thump" line of glasses. (Compl. ¶21).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶22).
    • Accused Features: The complaint alleges Defendant’s Bluetooth/MP3 sunglass models copy the protected design. (Compl. ¶22).

  • U.S. Patent No. 7,264,350: “MULTI-DIRECTIONAL ADJUSTMENT DEVICES FOR SPEAKER MOUNTS FOR EYEGLASS WITH MP3 PLAYER,” Issued September 4, 2007.

    • Technology Synopsis: This patent protects technology for adjustable speakers embodied in Plaintiff's "Thump" line of glasses. (Compl. ¶23).
    • Asserted Claims: The complaint asserts the patent generally. (Compl. ¶24).
    • Accused Features: The complaint alleges Defendant’s Bluetooth/MP3 sunglass models infringe one or more claims of the patent. (Compl. ¶24).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are sunglasses sold by Defendant Digitalrise, including models identified as copies of Plaintiff's "Thump 2" and "Oakley Razrwire" lines, as well as other "Bluetooth/MP3 sunglass models." (Compl. ¶11, ¶16, ¶20).
  • Functionality and Market Context:
    • The complaint alleges that the accused products are sunglasses that "copy" and "embody the subject matter claimed in" Oakley's patents. (Compl. ¶11, ¶16). Based on these allegations, the accused products incorporate functionalities such as MP3 audio playback and Bluetooth wireless communication directly into the eyewear frame. (Compl. ¶6, ¶13).
    • The complaint does not provide specific, independent technical descriptions of the accused products' operation. Instead, it alleges that Defendant sold the infringing sunglasses through its websites, including chinagrabber.com and gadgetgreats.com. (Compl. ¶3, ¶8).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

6,966,647 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an eyeglass frame, adapted to be carried by the head of a wearer The accused sunglasses possess an eyeglass frame. ¶40 col. 2:5-7
a first lens orbital...for positioning a first lens...; a second lens orbital...for positioning a second lens The accused sunglasses include two lens orbitals holding lenses. ¶40 col. 8:7-12
an MP3 format memory device carried inside of the eyeglass frame The accused sunglasses allegedly contain an internal memory device for storing MP3 files. ¶40 col. 8:12-14
a power supply, carried by the eyeglass frame The accused sunglasses allegedly contain an internal power supply. ¶40 col. 4:5-8
at least a first earphone support extending from the eyeglass frame The accused sunglasses allegedly have an earphone support extending from the frame. ¶40 col. 8:15-16
at least a first earphone...configured to direct the first earphone towards a first ear of the wearer The earphone on the accused sunglasses is allegedly directed toward the user's ear. ¶40 col. 8:17-20
retrieval circuitry configured to retrieve music from the MP3 format memory The accused sunglasses allegedly have circuitry to access and play music from the internal memory. ¶40 col. 8:21-23

7,219,994 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
an eyeglass frame; at least a first lens; at least a first lens support portion... The accused sunglasses possess an eyeglass frame with at least one lens. ¶48 col. 9:8-13
means for storing music in an MP3 format supported by the eyeglass frame The accused sunglasses allegedly contain a component for storing MP3 music files. ¶48 col. 8:12-14
a power supply, supported by the eyeglass frame The accused sunglasses allegedly contain an internal power supply. ¶48 col. 4:5-8
at least a first earphone connected to the eyeglass frame The accused sunglasses allegedly have an attached earphone. ¶48 col. 8:17-20
means for retrieving music from the means for storing and for playing the music through the first earphone The accused sunglasses allegedly contain a component to access and play music from its storage. ¶48 col. 8:21-23
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint broadly alleges that Defendant’s products "copy" or "embody" the claimed subject matter without providing specific technical details, schematics, or source code analysis of the accused products. A primary point of contention will be whether Plaintiff can produce evidence demonstrating that the accused sunglasses actually contain each claimed element, particularly the internal "MP3 format memory device" and "retrieval circuitry."
    • Scope Questions (’994 Patent): Claim 12 of the ’994 Patent uses means-plus-function language (e.g., "means for storing music"). The scope of these terms is limited to the specific structures disclosed in the patent's specification that perform the claimed function (e.g., the "MP3 format memory" and "retrieval circuitry" shown in FIG. 5) and their structural equivalents. A central question for the court will be to identify these corresponding structures and then determine whether the accused products utilize the same or equivalent structures.

V. Key Claim Terms for Construction

  • The Term: "means for storing music in an MP3 format" (from ’994 Patent, Claim 12)

  • Context and Importance: This term's construction is critical because, as a means-plus-function limitation under 35 U.S.C. § 112(f), its scope is not limitless but is tied to the patent's disclosure. The infringement analysis for this element will depend entirely on what structure within the patent is identified as performing the "storing" function and whether the accused product has an equivalent structure.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The parties may dispute what constitutes the full "means." A broader view could argue the "means" includes not just the physical memory but also associated firmware or software required to manage the MP3 format, potentially expanding the scope of equivalents. The specification mentions "digital or other storage devices and retrieval circuitry." (’994 Patent, col. 4:61-63).
    • Evidence for a Narrower Interpretation: The corresponding structure is explicitly identified in the specification as an "MP3 format memory device" and is illustrated as "MP3 FORMAT MEMORY" in the block diagram of Figure 5. (’994 Patent, col. 8:12-14; FIG. 5). A defendant would likely argue that the scope is limited to this specific disclosed hardware and its direct structural equivalents, and does not extend to functionally similar but structurally different storage solutions.

  • The Term: "carried inside of the eyeglass frame" (from ’647 Patent, Claim 1)

  • Context and Importance: The location of the "MP3 format memory device" is a specific limitation of the claim. Practitioners may focus on this term because the definition of "inside" will determine whether the claim reads on devices where electronic components are externally mounted or partially enclosed, versus being fully contained within the material of the frame itself.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the potential for housing electronics within the frame, which allows for "positioning of relatively bulky or heavy electronics along the length of (e.g., inside) the support system." (’647 Patent, col. 4:52-54). This language could be argued to support a meaning that includes components attached along the inner surface of the frame, not necessarily fully encapsulated by it.
    • Evidence for a Narrower Interpretation: The term "inside" in its ordinary sense suggests being fully enclosed. Embodiments are described where the frame itself acts as a housing for electronic components, which supports a narrower interpretation requiring the memory device to be contained within the physical boundary of the frame material. (’647 Patent, col. 2:40-44).

VI. Other Allegations

  • Willful Infringement: Willfulness is alleged for all thirteen patent infringement counts. (Compl. ¶41, ¶49, etc.). The complaint alleges a basis for both pre-suit and post-suit knowledge. Post-suit knowledge is based on the filing of the lawsuit itself. (Compl. ¶33). Pre-suit knowledge is alleged based on constructive notice from Plaintiff's patent markings on its product packaging and, more significantly, on alleged actual notice demonstrated by Defendant's "use of Oakley's trademarks... and/or on packaging," where Defendant allegedly "copied these same notices on its packaging, evidencing its awareness of Oakley's patent...rights." (Compl. ¶33).

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

  • A central evidentiary question will be one of technical proof: Can Plaintiff produce discovery showing that the accused sunglasses, alleged only to be "copies," contain the specific internal hardware required by the asserted claims, such as the "MP3 format memory device" and "retrieval circuitry," or will there be a fundamental mismatch in technical operation or implementation?
  • A key legal question will be one of claim scope under § 112(f): For means-plus-function claims such as those in the ’994 patent, what specific structures does the specification disclose for performing the claimed functions of "storing" and "retrieving" music, and do the accused products employ those structures or their legal equivalents?
  • For the multiple design patents asserted, a core issue will be one of ornamental identity: From the perspective of an ordinary observer, are the overall ornamental designs of the accused sunglasses substantially the same as the designs claimed in the D'613, D'461, D'767, D'816, and D'836 patents, or are there sufficient differences to avoid infringement?