DCT
2:12-cv-10204
Metric Products Inc v. Mogo Products LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Metric Products, Inc. (California)
- Defendant: MOGO Products, LLC (New York)
- Plaintiff’s Counsel: Blakely, Sokoloff, Taylor & Zafman LLP
- Case Identification: 2:12-cv-10204, C.D. Cal., 11/29/2012
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant conducts business in the district, has committed the alleged acts of infringement in the district, and the resulting injury was incurred there.
- Core Dispute: Plaintiff alleges that Defendant’s eye shades infringe a design patent and a utility patent related to contoured eye shades designed to avoid contact with the user's eyes.
- Technical Context: The technology concerns personal comfort articles, specifically eye shades or sleep masks, that incorporate molded, three-dimensional eye cavities to enhance user comfort.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or other procedural events relevant to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2001-10-31 | Priority Date (U.S. D478,342 & U.S. 6,745,397) |
| 2003-08-12 | Issue Date (U.S. Patent No. D478,342) |
| 2004-06-08 | Issue Date (U.S. Patent No. 6,745,397) |
| 2012-11-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D478,342 - "Eye Shade" (issued Aug. 12, 2003)
The Invention Explained
- The Patented Solution: This design patent protects the specific ornamental, non-functional appearance of an eye shade (D'342 Patent, Claim). The protected design is defined by the visual characteristics shown in the patent's drawings, including the overall shape, the surface contours of the two molded eye cups, and the configuration of the bridge piece connecting them (D'342 Patent, Figs. 1-6).
- Technical Importance: The patent sought to protect a unique and identifiable visual appearance for a contoured eye shade in the marketplace.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for an 'eye shade', as shown and described" (D'342 Patent, Claim). The scope of this claim is defined by the visual depictions in Figures 1 through 6.
U.S. Patent No. 6,745,397 - "Eye Shade" (issued Jun. 8, 2004)
The Invention Explained
- Problem Addressed: The patent's background describes limitations of existing eye shades, noting they often make contact with a user's eyes or eyelashes, which can cause discomfort, interfere with blinking, and smudge eye makeup (’397 Patent, col. 1:15-28).
- The Patented Solution: The invention is a multi-layered eye shade constructed with pre-formed, outwardly-extending "convex" eye portions that create recessed "concave" inner cavities over the user's eyes (’397 Patent, col. 2:32-43). This structure is intended to prevent any part of the shade from touching the eyes or eyelashes, thereby increasing comfort and preserving eye makeup, even if the user opens their eyes while wearing the shade (’397 Patent, col. 1:19-22). The specification also discloses that the shade can be molded from a composite material that has "memory" to retain its three-dimensional shape (’397 Patent, col. 3:1-5).
- Technical Importance: This approach aimed to improve the functionality and comfort of eye masks compared to traditional flat designs, catering to users who desired more space around the eyes.
Key Claims at a Glance
- The complaint does not specify which claims of the ’397 Patent it asserts. The first independent claim is Claim 1, which includes the following essential elements:
- a first side coupled to an intermediate layer;
- a second side coupled to the intermediate layer;
- a first outer eye portion and a second outer eye portion formed from the three layers, which extend outward and are convex shaped;
- a first inner eye portion and a second inner eye portion that do not contact a user's surrounding eye area;
- a nose portion;
- wherein the first and second sides are made from the same type of material and light cannot pass through the shade.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as "eye shades" that Defendant MOGO Products, LLC is "selling and offering to sell" (Compl. ¶¶9, 17).
Functionality and Market Context
- The complaint does not provide any specific details, model numbers, images, or technical descriptions of the accused eye shades. It alleges in general terms that Defendant sells eye shades that infringe the patents-in-suit (Compl. ¶¶9, 17). The complaint does not provide sufficient detail for analysis of the accused product's specific functionality or market position.
IV. Analysis of Infringement Allegations
For the D’342 design patent, the complaint alleges infringement without providing a visual comparison between the patented design and the accused product (Compl. ¶9). The central test for design patent infringement is the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design.
For the ’397 utility patent, the complaint alleges infringement without mapping any specific features of the accused products to the elements of any asserted claim (Compl. ¶17). No probative visual evidence provided in complaint.
’397 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first side coupled to an intermediate layer; | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:42-43 |
| a second side coupled to the intermediate layer; | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:44-45 |
| a first outer eye portion and a second outer eye portion formed from the first side, the intermediate layer and the second side...extend outward | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:46-51 |
| wherein the first outer eye portion and the second outer eye portion are convex shaped | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:58-60 |
| a first inner eye portion and a second inner eye portion...do not come in contact to a user's surrounding eye area to avoid compromising eye makeup | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:52-56 |
| said first side and said second side are each made from the same type of material, and light cannot pass through said eye shade. | The complaint does not allege specific facts regarding the structure of the accused products, beyond a general allegation of infringement. | ¶17 | col. 5:60-62 |
- Identified Points of Contention:
- Factual Questions: A primary issue will be establishing the actual construction of the accused eye shades. The infringement analysis will depend entirely on whether discovery reveals that the accused products have the specific multi-layer structure and "convex shaped" outer portions required by the claims of the ’397 patent.
- Scope Questions (Design Patent): For the D’342 patent, the dispute will center on the visual similarity between the accused products and the patented design. The key question is whether the overall visual impression of the accused eye shades is "substantially the same" as the claimed design in the eyes of an ordinary observer.
V. Key Claim Terms for Construction
The Term: "intermediate layer"
Context and Importance: This term is foundational to the claimed three-part structure of the eye shade in the ’397 patent. The definition of what constitutes a distinct "layer" will be critical. Practitioners may focus on this term because Defendant could argue its product is of a unitary or two-layer construction, not the three-part structure claimed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims require only that a first side is "coupled to" an intermediate layer, which could potentially be read to include methods of formation other than laminating separate sheets of material (’397 Patent, col. 5:42-43).
- Evidence for a Narrower Interpretation: The specification describes an embodiment where the front and rear portions are "comprised of suitable man-made material" formed over an inner portion "comprised of suitable compressible material, such as a foam rubber type material," suggesting the layers are physically distinct and made of different materials (’397 Patent, col. 2:60-65).
The Term: "convex shaped"
Context and Importance: This term defines the outward curvature of the eye portions, which is the feature that creates the non-contact space for the user's eyes. The degree and nature of the required curvature will be a key point of the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the term generally to mean extending "away from front portion 140," which could support a broad reading covering any outward curve (’397 Patent, col. 2:37-39).
- Evidence for a Narrower Interpretation: The figures, such as the side view in Fig. 1B, depict a pronounced, semi-rigid, dome-like curvature. The specification also links the shape to a functional requirement: providing a specific depth (e.g., 3/4 to 3 1/2 inches) sufficient to "accommodate various length eye lashes" (’397 Patent, col. 2:50-57). This may support a narrower construction requiring a specific degree of curvature sufficient to achieve this function.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement has been "committed willfully and with full knowledge of the Subject Patents" (Compl. ¶¶12, 20). The complaint does not plead any specific facts to support this allegation of pre-suit knowledge, such as prior correspondence or evidence of copying.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: given the lack of specific factual allegations in the complaint, can the Plaintiff produce evidence to demonstrate that the accused eye shades possess the specific, multi-element structure recited in the claims of the ’397 patent, particularly the three-layer construction?
- The design patent case will turn on a question of visual identity: does the overall ornamental design of the accused MOGO eye shade appear "substantially the same" as the design in the D’342 patent to an ordinary observer, or are there sufficient visual differences to avoid infringement?
- A dispositive legal question may be one of claim construction: how will the court define the term "intermediate layer" from the ’397 patent? Whether this term is construed to require a physically distinct material component, or if it can be read more broadly to include a region within a single molded piece, could determine the outcome of the utility patent infringement claim.