DCT
8:18-cv-00394
Oakley Inc v. Ssameco Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: SSAMECO, INC. d/b/a SINGSONG AMECO (California)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
- Case Identification: 8:18-cv-00394, C.D. Cal., 03/12/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant is a resident of the district, has committed acts of infringement in the district, and has a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s sunglasses infringe three design patents covering the ornamental appearance of complete eyeglasses, eyeglass frames, and eyeglass components, and further alleges related trade dress infringement.
- Technical Context: The dispute is in the consumer eyewear market, where the ornamental and aesthetic design of sunglasses is a significant driver of commercial value and brand identity.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-13 | Earliest Priority Date for U.S. Patents D547,794; D554,689; D556,818 |
| 2007-07-31 | Issue Date for U.S. Patent D547794 |
| 2007-11-06 | Issue Date for U.S. Patent D554689 |
| 2007-12-04 | Issue Date for U.S. Patent D556818 |
| 2018-03-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D556,818 - "Eyeglass Components"
- Patent Identification: U.S. Patent No. D556,818, "Eyeglass Components", issued December 4, 2007.
- The Invention Explained:
- Problem Addressed: As is typical for design patents, the specification does not articulate a specific technical problem. The patent seeks to protect a new, original, and ornamental design for a product, thereby preventing visual imitation by competitors (Compl. ¶7).
- The Patented Solution: The patent claims the specific ornamental design for eyeglass components, namely the temple arms (earpieces), as depicted in the patent's figures. The design is characterized by its particular curvature and surface contours, with the lens and frame front being disclaimed via phantom lines to indicate they do not form part of the claimed design (’818 Patent, FIG. 1, Description).
- Technical Importance: In the competitive eyewear market, the unique aesthetic of individual components, such as temple arms, can serve as a key visual differentiator and a source of brand identity (Compl. ¶¶6, 11).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for an eyeglass components, as shown and described" (’818 Patent, Claim).
- The scope of the claim is defined by the visual representations in Figures 1-8, limited to the features shown in solid lines.
U.S. Design Patent No. D547,794 - "Eyeglasses"
- Patent Identification: U.S. Patent No. D547,794, "Eyeglasses", issued July 31, 2007.
- The Invention Explained:
- Problem Addressed: The patent aims to protect the novel overall aesthetic appearance of a complete pair of sunglasses (Compl. ¶8).
- The Patented Solution: The patent claims the ornamental design for a complete pair of eyeglasses, encompassing the combination of the frame front, lenses, and temple arms as a holistic visual presentation. The design's overall impression is illustrated from multiple perspectives in the patent's figures (’794 Patent, FIG. 1-6).
- Technical Importance: A distinctive and holistic eyewear design can define a signature product line, contributing to brand recognition and commercial success in the fashion and performance eyewear industries (Compl. ¶¶6, 11).
- Key Claims at a Glance:
- The patent contains a single claim for "The ornamental design for an eyeglasses, as shown and described" (’794 Patent, Claim).
- The claim's scope is defined by the overall visual appearance of the eyeglasses as depicted in solid lines in Figures 1-6.
Multi-Patent Capsule: U.S. Design Patent No. D554,689 - "Eyeglass Frame"
- Patent Identification: U.S. Design Patent No. D554,689, "Eyeglass Frame", issued November 6, 2007 (’689 Patent).
- Technology Synopsis: This patent protects the ornamental design for the front portion of an eyeglass frame. The temple arms are shown in broken (phantom) lines, indicating they are not part of the claimed design, which is a common strategy to secure focused protection on a specific component's appearance (’689 Patent, FIG. 1, Description).
- Asserted Claims: The patent asserts a single claim for "The ornamental design for an eyeglass frame, as shown and described" (’689 Patent, Claim).
- Accused Features: The complaint alleges that the front frame of the Defendant's 7306ME sunglass model embodies a design that is substantially similar to the one claimed in the ’689 Patent (Compl. ¶24).
III. The Accused Instrumentality
- Product Identification: The accused product is Defendant's "7306ME sunglass model" (Compl. ¶20).
- Functionality and Market Context: The complaint identifies the accused product as eyewear sold and imported by the Defendant (Compl. ¶¶10, 20). The core of the allegations centers on the product's ornamental appearance. The complaint provides a photograph of the accused sunglasses, showing a wrap-around style with a solid black frame (Compl. p. 5). Plaintiff alleges that the design of the 7306ME model is an "identical copy" of Oakley's patented designs (Compl. ¶¶21, 23, 28).
IV. Analysis of Infringement Allegations
For design patents, infringement is assessed from the perspective of an "ordinary observer." The analysis hinges on a visual comparison between the patented design and the accused product. The complaint presents this comparison visually. This table summarizes the core allegations for each patent.
D556,818 Infringement Allegations
| Claim Element (from the Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for the eyeglass temple arms, characterized by their overall shape, surface contours, and configuration relative to the disclaimed frame. | The design of the temple arms on Defendant's 7306ME sunglass model is alleged to be substantially similar to the patented design. The complaint provides a side-by-side visual comparison to support this allegation. | ¶20 | col. 1:61-69 |
D547,794 Infringement Allegations
| Claim Element (from the Patented Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a complete pair of eyeglasses, including the combination of the frame front, lens shape, and temple arms. | The overall design of Defendant's 7306ME sunglass model is alleged to be substantially similar to the patented design. A visual comparison of the accused product and a patent figure is provided. | ¶22 | col. 1:62-68 |
Identified Points of Contention:
- Visual Similarity: The central issue will be a factual determination of whether an ordinary observer, giving the attention a purchaser usually gives and being familiar with the prior art, would find the accused 7306ME model to be substantially the same as the designs claimed in the asserted patents. The complaint's allegation that the accused product is an "identical copy" suggests Plaintiff's view that the similarity is direct and substantial (Compl. ¶21).
- Scope Questions: The case involves three related but distinct design patents. A question for the court may be whether the accused product infringes the specific scope of each patent individually. For example, the infringement analysis for the ’818 Patent must focus only on the temple arms, while the analysis for the ’689 Patent must focus only on the front frame. The complaint provides a single visual of the accused product for comparison against all three patents (Compl. pp. 5-7).
- Functionality: A potential defense in design patent cases is that similarities are dictated by function rather than ornamental choice. The complaint addresses this in the context of its related trade dress claim, asserting the design features are not functional (Compl. ¶13). The question may arise whether any aspect of the accused design's similarity to the patented design is attributable to functional constraints.
V. Key Claim Terms for Construction
In design patent litigation, formal construction of textual claim terms is rare, as the claim is defined by the drawings. The analysis focuses on the overall visual appearance of the design "as shown and described."
- The Term: "ornamental design... as shown and described"
- Context and Importance: This phrase defines the scope of the intellectual property right. The entire infringement analysis depends on the interpretation of the visual scope depicted in the patent figures. Practitioners may focus on this "term" to argue for a broader or narrower interpretation of the protected design in light of the prior art and the specific features shown.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim covers the "overall visual impression" of the design, and that minor differences between the patent figures and the accused product should be disregarded if they do not change the general appearance that deceives an ordinary observer.
- Evidence for a Narrower Interpretation: A party may argue that the scope is strictly limited to the precise shapes and contours shown in the patent's solid lines. The use of broken or "phantom" lines in the ’818 and ’689 patents to disclaim the frame front and temple arms, respectively, is explicit intrinsic evidence that narrows the scope of those specific patents to only the claimed components (’818 Patent, Description; ’689 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement). The claims are for direct infringement under 35 U.S.C. § 271 for "making, using, selling, offering for sale, and/or importing" the accused eyewear (Compl. ¶¶20, 22, 24).
- Willful Infringement: Willfulness is alleged for all three asserted patents. The complaint alleges that Defendant had "actual knowledge" of Oakley's patent rights and that its infringement was intentional and in reckless disregard of those rights (Compl. ¶¶21, 23, 25). The factual basis for this allegation appears to be the assertion that Oakley's designs are "well-known throughout the eyewear industry" and that the accused product is an "identical copy" of the patented designs (Compl. ¶¶21, 23, 28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be a factual determination of visual similarity: Applying the "ordinary observer" test, is the overall ornamental design of the Defendant's 7306ME sunglass model substantially the same as the designs claimed in the '794 patent (for the whole product), the '818 patent (for the temple arms), and the '689 patent (for the frame front), when viewed from the perspective of an observer familiar with the prior art?
- A key evidentiary question will be the basis for willfulness: Beyond alleging that its designs are "well-known" and the accused product is an "identical copy," what specific evidence can Plaintiff introduce to demonstrate that Defendant had pre-suit knowledge of the asserted patents and engaged in conduct that was objectively or subjectively reckless, as required to support a claim for enhanced damages?
- A central legal and factual question will be the piecemeal versus holistic analysis: How will the trier of fact separately analyze infringement of the component-specific patents (the '818 and '689 patents) in comparison to the patent on the complete eyeglasses (the '794 patent), and can the accused product infringe some but not all of the asserted designs?