DCT
8:18-cv-00402
Oakley Inc v. US Hultan Group
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: The US Hultan Group d/b/a Sharp Factor, d/b/a Apollo Enterprice Eyewear, a/f/k/a Apollo Enterprise International, Inc. (California)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
- Case Identification: 8:18-cv-00402, C.D. Cal., 03/13/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a resident of the judicial 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 multiple models of Defendant’s sunglasses infringe eight of its U.S. design patents, which cover the ornamental appearance of various eyeglasses and eyeglass components.
- Technical Context: The lawsuit concerns the consumer eyewear industry, a market where the distinctive ornamental design of a product is a primary driver of brand identity and commercial value.
- Key Procedural History: The complaint does not allege any prior litigation between the parties, Inter Partes Review (IPR) proceedings, or specific licensing communications related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-14 | U.S. Design Patent No. D557,326 Priority Date |
| 2007-12-11 | U.S. Design Patent No. D557,326 Issued |
| 2008-01-22 | U.S. Design Patent No. D572,745 Priority Date |
| 2008-07-08 | U.S. Design Patent No. D572,745 Issued |
| 2011-01-18 | U.S. Design Patent No. D653,699 Priority Date |
| 2011-05-06 | U.S. Design Patent No. D649,579 Priority Date |
| 2011-10-05 | U.S. Design Patent No. D659,180 Priority Date |
| 2011-11-29 | U.S. Design Patent No. D649,579 Issued |
| 2011-12-05 | U.S. Design Patent No. D661,339 Priority Date |
| 2012-02-07 | U.S. Design Patent No. D653,699 Issued |
| 2012-05-08 | U.S. Design Patent No. D659,180 Issued |
| 2012-06-05 | U.S. Design Patent No. D661,339 Issued |
| 2014-10-24 | U.S. Design Patent No. D763,947 Priority Date |
| 2014-10-24 | U.S. Design Patent No. D749,670 Priority Date |
| 2016-02-16 | U.S. Design Patent No. D749,670 Issued |
| 2016-08-16 | U.S. Design Patent No. D763,947 Issued |
| 2018-03-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D763,947 - EYEGLASSES
Issued August 16, 2016
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems; they protect novel, non-obvious, and ornamental designs for an article of manufacture (Compl. ¶7). The patent seeks to protect the unique aesthetic appearance of a specific eyeglass design.
- The Patented Solution: The patent claims the specific ornamental design for eyeglasses as depicted in its figures (D763,947 Patent, Figs. 1-6). The claim covers the overall visual impression created by the combination of features shown in solid lines, including the shape of the frame front, the contour of the lens orbitals, and the design of the temple arms (D763,947 Patent, Claim; Description, col. 2:54-66).
- Technical Importance: In a competitive market like high-quality eyewear, a distinctive ornamental design can function as a source identifier and a key point of product differentiation (Compl. ¶6).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for eyeglasses, as shown and described" (D763,947 Patent, Claim, col. 2:50-52).
- The essential visual features of the claimed design include:
- A generally rectangular frame front with a slight curvature.
- Subtly contoured lens orbitals.
- Relatively straight and unadorned temple arms that connect to the frame front.
U.S. Design Patent No. D749,670 - SET OF EYEGLASS COMPONENTS
Issued February 16, 2016
The Invention Explained
- Problem Addressed: The patent protects the ornamental design for a set of eyeglass components, securing rights in the aesthetic appearance of the parts individually and as a set (Compl. ¶8).
- The Patented Solution: The patent claims the ornamental design for a set of eyeglass components as illustrated in the drawings (D749,670 Patent, Figs. 1-6). The use of broken lines indicates that the lenses and certain unshaded portions of the frame are not part of the claimed design, focusing protection on the frame front and temple arms themselves (D749,670 Patent, Description, col. 2:53-56).
- Technical Importance: Protecting a "set of components" may allow for enforcement against products that incorporate the protected design features, even if other aspects of the final product differ (Compl. ¶8).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a set of eyeglass components, as shown and described" (D749,670 Patent, Claim, col. 2:50-52).
- The essential visual features of the claimed design include:
- A frame front with a distinct, angular upper brow line and squared-off lens orbitals.
- Thick, tapering temple arms.
- The specific overall aesthetic created by the combination of these components.
U.S. Design Patent No. D661,339 - EYEGLASS
Issued June 5, 2012
- Patent Identification: U.S. Design Patent No. D661,339, EYEGLASS, issued June 5, 2012 (Compl. ¶9).
- Technology Synopsis: The patent protects the ornamental design for an eyeglass characterized by a continuous, curved upper brow line, relatively large rectangular lens orbitals, and thick, straight temple arms (D661,339 Patent, Figs. 1-6).
- Asserted Claims: A single claim for the ornamental design as shown (D661,339 Patent, Claim).
- Accused Features: The overall design of Defendant’s "9911 model sunglasses" is alleged to be substantially similar to the patented design (Compl. ¶29).
U.S. Design Patent No. D659,180 - EYEGLASS
Issued May 8, 2012
- Patent Identification: U.S. Design Patent No. D659,180, EYEGLASS, issued May 8, 2012 (Compl. ¶10).
- Technology Synopsis: The patent protects a sporty, shield-style eyeglass design with a single-piece lens appearance, a prominent nose bridge, and detachable, straight temple arms. Broken lines disclaim the specific lens shape (D659,180 Patent, Figs. 1-6; Description, col. 2:57-59).
- Asserted Claims: A single claim for the ornamental design as shown (D659,180 Patent, Claim).
- Accused Features: The overall design of Defendant’s "PL7006 model sunglasses" is alleged to be substantially similar to the patented design (Compl. ¶31).
U.S. Design Patent No. D653,699 - EYEGLASS
Issued February 7, 2012
- Patent Identification: U.S. Design Patent No. D653,699, EYEGLASS, issued February 7, 2012 (Compl. ¶11).
- Technology Synopsis: The patent protects an eyeglass design with a distinct double-bridge or "aviator" style, rectangular lens shape, and defined hinge connection to the temple arms (D653,699 Patent, Figs. 1-6).
- Asserted Claims: A single claim for the ornamental design as shown (D653,699 Patent, Claim).
- Accused Features: The overall design of Defendant’s "917RV model sunglasses" is alleged to be substantially similar to the patented design (Compl. ¶33).
U.S. Design Patent No. D649,579 - EYEGLASS
Issued November 29, 2011
- Patent Identification: U.S. Design Patent No. D649,579, EYEGLASS, issued November 29, 2011 (Compl. ¶12).
- Technology Synopsis: The patent protects an eyeglass design featuring a heavily sculpted, angular frame and thick, wide temple arms with an inset design element (D649,579 Patent, Figs. 1-6).
- Asserted Claims: A single claim for the ornamental design as shown (D649,579 Patent, Claim).
- Accused Features: The overall design of "Defendant’s sunglasses" is alleged to be substantially similar to the patented design (Compl. ¶35).
U.S. Design Patent No. D572,745 - EYEGLASS FRAME
Issued July 8, 2008
- Patent Identification: U.S. Design Patent No. D572,745, EYEGLASS FRAME, issued July 8, 2008 (Compl. ¶13).
- Technology Synopsis: The patent protects a wraparound, shield-style eyeglass frame with a continuous upper portion and integrated, sculpted temple arms. Phantom lining indicates the lenses are for illustrative purposes only (D572,745 Patent, Figs. 1-6; Description, col. 2:63-66).
- Asserted Claims: A single claim for the ornamental design as shown (D572,745 Patent, Claim).
- Accused Features: The overall design of Defendant’s "PL911A model sunglasses" is alleged to be substantially similar to the patented design (Compl. ¶37).
U.S. Design Patent No. D557,326 - EYEGLASS COMPONENTS
Issued December 11, 2007
- Patent Identification: U.S. Design Patent No. D557,326, EYEGLASS COMPONENTS, issued December 11, 2007 (Compl. ¶14).
- Technology Synopsis: The patent protects the ornamental design of separate eyeglass temple arm components, featuring a distinctive curved and sculpted shape with a specific hinge-area configuration (D557,326 Patent, Figs. 1-6).
- Asserted Claims: A single claim for the ornamental design as shown (D557,326 Patent, Claim).
- Accused Features: The temple arms of Defendant’s "PL911A model sunglasses" are alleged to be substantially similar to the patented design (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
The complaint identifies several specific models of sunglasses sold by Defendant, including the "915RV," "9911," "PL7006," "917RV," and "PL911A" models (Compl. ¶¶ 25, 29, 31, 33, 37, 39).
Functionality and Market Context
The accused instrumentalities are sunglasses that Plaintiff alleges Defendant manufactures, uses, sells, offers for sale, and/or imports into the United States (Compl. ¶15). The complaint alleges that these products are "identical cop[ies]" of Oakley's patented designs, suggesting they are positioned to compete directly with Oakley's products based on their aesthetic appearance (Compl. ¶26, ¶28). The complaint provides a side-by-side visual comparison of Defendant's 915RV model sunglasses and the design claimed in the D947 patent (Compl. ¶25, p. 6). Another visual shows Defendant's 9911 model sunglasses next to the design from the D339 patent (Compl. ¶29, p. 8). A third visual compares Defendant's PL7006 model sunglasses to the design in the D180 patent (Compl. ¶31, p. 9).
IV. Analysis of Infringement Allegations
D763,947 Infringement Allegations
| Ornamental Feature (from Figures) | Alleged Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for eyeglasses as shown and described. | The complaint alleges that Defendant's 915RV model sunglasses have a design that would appear to an ordinary observer to be "substantially similar" to the claimed design, presenting a visual comparison as evidence. | ¶25 | Claim, col. 2:50-52; Figs. 1-6 |
| The specific shape and contour of the frame front and temple arms. | The visual comparison provided in the complaint juxtaposes the accused 915RV sunglasses with a drawing from the patent to illustrate the alleged similarity in overall shape, proportions, and appearance. | ¶25 | Figs. 1, 4 |
D749,670 Infringement Allegations
| Ornamental Feature (from Figures) | Alleged Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a set of eyeglass components as shown. | The complaint alleges that Defendant's 915RV model sunglasses incorporate components with a design that is "substantially similar" to the claimed design, supported by a side-by-side visual comparison. | ¶27 | Claim, col. 2:50-52; Figs. 1-6 |
| The angular brow line and squared lens orbitals of the frame front component. | The visual evidence in the complaint shows Defendant's 915RV sunglasses, which are alleged to embody the same distinctive angular and squared features as the components claimed in the patent. | ¶27 | Figs. 1, 2 |
Identified Points of Contention
- Visual Similarity: The central question for each asserted patent is factual: would an ordinary observer, giving the attention a typical purchaser gives, be deceived into thinking the accused sunglasses are the same as the patented design? The analysis will involve a side-by-side comparison of the designs as a whole.
- Role of Prior Art: A key legal and factual issue will be the scope of the prior art. The "ordinary observer" test is performed in light of prior art designs. The patentability of the designs and the scope of their protection will depend on how different they are from what came before. The degree of similarity required for infringement may be higher if the designs are in a crowded field with only minor differences from prior art.
- Component vs. Assembled Product: For patents claiming "eyeglass components," such as the ’670 and ’326 Patents, a question may arise as to whether the infringement analysis should focus strictly on the accused components in isolation or on the appearance of those components as part of the fully assembled accused sunglasses.
V. Key Claim Terms for Construction
The Term
"the ornamental design for [eyeglasses / eyeglass components] as shown and described"
Context and Importance
In a design patent, this phrase constitutes the entirety of the claim. Its "construction" does not involve defining words but rather articulating the overall visual impression and specific ornamental features protected by the solid lines in the patent's figures, while excluding any functional aspects or elements disclaimed via broken lines. The outcome of the infringement analysis—the "ordinary observer" test—is entirely dependent on the visual scope of this "claim."
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party may argue that the claim covers the overall visual impression and general configuration of the design, not just a checklist of minute details. The solid lines in the drawings, viewed together, create a holistic aesthetic that constitutes the claimed design (e.g., D763,947 Patent, Figs. 1-6).
- Evidence for a Narrower Interpretation: A party may argue the claim is limited to the precise features and proportions depicted in the drawings. The use of broken lines to disclaim certain elements (e.g., the lenses in the ’670 Patent and phantom lines in the ’745 Patent) explicitly narrows the scope of the claimed design to only the specific elements shown in solid lines, distinguishing them from the unclaimed environment (D749,670 Patent, Description; D572,745 Patent, Description).
VI. Other Allegations
Indirect Infringement
The complaint does not plead separate counts for indirect infringement. While the prayer for relief seeks to enjoin "indirectly infringing" activities, the factual allegations focus on direct infringement through Defendant's own acts of making, using, and selling the accused products (Compl. ¶15, ¶25).
Willful Infringement
The complaint repeatedly alleges that Defendant's infringement was willful. The allegations are based on the asserted notoriety of Oakley’s "iconic designs," Defendant’s alleged "actual knowledge" of Oakley’s patent rights, and the characterization of Defendant’s products as "an identical copy" of the patented designs, allegedly made with "reckless disregard" (e.g., Compl. ¶26, ¶28, ¶30, ¶32, ¶34, ¶36, ¶38, ¶40).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: For each of the eight distinct designs, would an ordinary observer, familiar with the prior art, be led to believe that the accused sunglasses are the same as the patented design, or are the differences sufficient to avoid infringement?
- A key evidentiary question will be the impact of prior art: How broad is the relevant prior art for eyeglass designs? The court's determination of what constitutes a novel and non-obvious design feature versus a common or functional element in the field will be critical to defining the scope of protection for each patent.
- A central question regarding damages will be culpability: Does the evidence support the allegation that the Defendant had pre-suit knowledge of the eight specific patents-in-suit and, as the complaint alleges, created "identical cop[ies]," which could substantiate the claim for willful infringement and justify an award of enhanced damages?