DCT

8:18-cv-00432

Oakley Inc v. Asia Pacific Trading Co Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: Asia Pacific Trading Co., Inc. (California)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
Case Identification: 8:18-cv-00432, C.D. Cal., 03/19/2018
Venue Allegations: Venue is alleged to be proper as Defendant is a California corporation with its principal place of business within the district, and has allegedly committed acts of infringement by selling and offering to sell infringing products within the district.
Core Dispute: Plaintiff alleges that multiple sunglass models manufactured and sold by Defendant infringe ten of Plaintiff's U.S. design patents covering ornamental designs for eyewear and eyewear components.
Technical Context: The case centers on the ornamental design of performance and lifestyle sunglasses, a market where distinctive aesthetic appearance is a primary driver of commercial value and brand identity.
Key Procedural History: The complaint does not reference any prior litigation between the parties, Inter Partes Review (IPR) proceedings, or specific licensing history relevant to the asserted patents.

Case Timeline

Date	Event
2005-04-13	Priority Date for D'794, D'818, D'689 Patents
2006-09-27	Priority Date for D'572 Patent
2006-10-20	Priority Date for D'089 Patent
2007-07-31	U.S. Patent No. D547,794 Issued
2007-11-06	U.S. Patent No. D554,689 Issued
2007-12-04	U.S. Patent No. D556,818 Issued
2008-03-18	U.S. Patent No. D564,572 Issued
2008-03-25	U.S. Patent No. D565,089 Issued
2008-04-04	Priority Date for D'446 Patent
2008-11-25	U.S. Patent No. D581,446 Issued
2009-11-25	Priority Date for D'920, D'919 Patents
2010-06-01	U.S. Patent No. D616,919 Issued
2010-06-01	U.S. Patent No. D616,920 Issued
2011-10-05	Priority Date for D'180 Patent
2012-05-08	U.S. Patent No. D659,180 Issued
2012-07-16	Priority Date for D'479 Patent
2013-02-19	U.S. Patent No. D676,479 Issued
2018-03-19	Complaint Filed

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

U.S. Design Patent No. D547,794 - "Eyeglasses," issued July 31, 2007

The Invention Explained

Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a technical problem. The objective is to create a new, original, and ornamental design that is aesthetically distinct from prior art designs (D'794 Patent, Title, Claim).
The Patented Solution: The D'794 Patent claims the specific ornamental design for a complete pair of eyeglasses. The design, depicted in the patent's figures, features a continuous, relatively thick frame structure, generally rectangular lenses, and wide temple arms that integrate smoothly into the frame front (D'794 Patent, FIG. 1, 3).
Technical Importance: The design represents a specific aesthetic in the competitive eyewear market, seeking to establish a unique and recognizable visual identity for the product (Compl. ¶6).

Key Claims at a Glance

The patent asserts a single claim for "The ornamental design for an eyeglasses, as shown and described." (D'794 Patent, Claim).
The scope of this claim is defined by the visual appearance of the eyeglasses as depicted in solid lines in Figures 1-6. Key ornamental features include:
- The overall shape and curvature of the frame front.
- The contour of the two lens orbitals.
- The shape and profile of the temple arms.
- The relationship and transitions between these elements.
The complaint asserts infringement of the D'794 Patent (Compl. ¶27).

U.S. Design Patent No. D556,818 - "Eyeglass Components," issued December 4, 2007

The Invention Explained

Problem Addressed: Similar to the ’794 Patent, the ’818 Patent addresses the creation of a new, original, and ornamental design, but for specific parts of an eyeglass rather than the entire article (D'818 Patent, Title, Claim).
The Patented Solution: The D'818 Patent claims the ornamental design for "eyeglass components," specifically the temple arms (earpieces) and their associated hinge area. A critical aspect of the patent's scope is its use of broken lines (phantom lines) to illustrate the front frame of the eyeglasses; this disclaims the frame front from the protected design (D'818 Patent, Description, FIG. 1). The claimed design is therefore limited to the shape, contour, and surface ornamentation of the temple arms themselves (D'818 Patent, FIG. 2, 4, 5).
Technical Importance: This patenting strategy allows the owner to protect a distinctive component design that may be used across multiple different frame front styles (Compl. ¶9).

Key Claims at a Glance

The patent asserts a single claim for "The ornamental design for an eyeglass components, as shown and described." (D'818 Patent, Claim).
The scope is defined by the appearance of the components shown in solid lines in Figures 1-8. Key ornamental features include:
- The specific shape and curvature of the temple arms.
- The design of the hinge mechanism and its integration with the temple arm.
The complaint asserts infringement of the D'818 Patent (Compl. ¶29).

Multi-Patent Capsule: U.S. Design Patent No. D554,689

Patent Identification: D554,689, "Eyeglass Frame," issued November 6, 2007 (Compl. ¶10).
Technology Synopsis: The ’689 Patent claims the ornamental design for an eyeglass frame, with the lenses shown in broken lines, indicating they are not part of the claimed design. The claimed design features a specific frame contour and bridge shape (D'689 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass frame, as shown and described (D'689 Patent, Claim).
Accused Features: The Defendant's PC7045 sunglass model is accused of infringing this patent (Compl. ¶31).

Multi-Patent Capsule: U.S. Design Patent No. D616,920

Patent Identification: D616,920, "Eyeglass Component," issued June 1, 2010 (Compl. ¶11).
Technology Synopsis: This patent claims the ornamental design for an eyeglass component, specifically the temple arm and hinge area. The frame front and lens are disclaimed via broken lines, focusing the claim on the aesthetic of the temple piece (D'920 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass component, as shown (D'920 Patent, Claim).
Accused Features: The Defendant's KP17790 sunglass model is accused of infringing this patent (Compl. ¶33).

Multi-Patent Capsule: U.S. Design Patent No. D581,446

Patent Identification: D581,446, "Eyeglass," issued November 25, 2008 (Compl. ¶12).
Technology Synopsis: The ’446 Patent claims the ornamental design for what appears to be a semi-rimless eyeglass, where the lenses are depicted in broken lines. The claimed design is for the frame/brow bar and attached temple arms (D'446 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass, as shown and described (D'446 Patent, Claim).
Accused Features: The Defendant's PC52132 sunglass model is accused of infringing this patent (Compl. ¶35).

Multi-Patent Capsule: U.S. Design Patent No. D616,919

Patent Identification: D616,919, "Eyeglass Front," issued June 1, 2010 (Compl. ¶13).
Technology Synopsis: This patent claims the ornamental design for only the front portion of an eyeglass frame. The temple arms are disclaimed via broken lines, focusing the claim on the specific shape and contour of the frame front and bridge (D'919 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass front, as shown and described (D'919 Patent, Claim).
Accused Features: The Defendant's P43663 and PC0643 sunglass models are accused of infringing this patent (Compl. ¶37).

Multi-Patent Capsule: U.S. Design Patent No. D659,180

Patent Identification: D659,180, "Eyeglass," issued May 8, 2012 (Compl. ¶14).
Technology Synopsis: The ’180 Patent claims the ornamental design for a semi-rimless style of eyeglass. The design is characterized by a distinct brow bar and temple arm configuration, with the lower portion of the lenses being frameless (D'180 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass, as shown and described (D'180 Patent, Claim).
Accused Features: The Defendant's KP510 sunglass model is accused of infringing this patent (Compl. ¶39).

Multi-Patent Capsule: U.S. Design Patent No. D676,479

Patent Identification: D676,479, "Eyeglass," issued February 19, 2013 (Compl. ¶15).
Technology Synopsis: This patent claims the ornamental design for a full-frame eyeglass. The design features defined textural elements on the temple arms near the hinge and a distinct bridge shape (D'479 Patent, FIG. 1, 4).
Asserted Claims: The ornamental design for an eyeglass, as shown and described (D'479 Patent, Claim).
Accused Features: The Defendant's PC0220 sunglass model is accused of infringing this patent (Compl. ¶41).

Multi-Patent Capsule: U.S. Design Patent No. D565,089

Patent Identification: D565,089, "Eyeglass and Eyeglass Components," issued March 25, 2008 (Compl. ¶16).
Technology Synopsis: The ’089 Patent claims the ornamental design for an eyeglass and its components, showing a full-frame design. The design is characterized by sculpted, fluid lines on the temple arms and at the junction with the frame front (D'089 Patent, FIG. 1).
Asserted Claims: The ornamental design for an eyeglass and eyeglass components, as shown and described (D'089 Patent, Claim).
Accused Features: The Defendant's KP1402 sunglass model is accused of infringing this patent (Compl. ¶43).

Multi-Patent Capsule: U.S. Design Patent No. D564,572

Patent Identification: D564,572, "Eyeglass and Eyeglass Components," issued March 18, 2008 (Compl. ¶17).
Technology Synopsis: This patent claims the ornamental design for a full-frame eyeglass. The design features a smooth, continuous browline and uniquely shaped openings on the temple arms near the hinge point (D'572 Patent, FIG. 1, 4).
Asserted Claims: The ornamental design for an eyeglass and eyeglass components, as shown and described (D'572 Patent, Claim).
Accused Features: The Defendant's KP6336 sunglass model is accused of infringing this patent (Compl. ¶45).

III. The Accused Instrumentality

Product Identification

The complaint identifies numerous sunglass models sold by the Defendant, including models PC7045, KP17790, PC52132, P43663, PC0643, KP510, PC0220, KP1402, and KP6336 (Compl. ¶¶27, 33, 35, 37, 39, 41, 43, 45).

Functionality and Market Context

The accused instrumentalities are sunglasses intended for sale to consumers (Compl. ¶¶2-3). The complaint alleges that Oakley's patented designs are "iconic" and "well-known throughout the eyewear industry," and frames the Defendant's products as "identical cop[ies]" of these designs (Compl. ¶¶28, 30, 32). The complaint provides visual evidence for this allegation, such as a side-by-side comparison of Defendant's KP17790 sunglass model and the design claimed in the ’920 Patent (Compl. p. 10).

IV. Analysis of Infringement Allegations

D'794 Patent Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for an eyeglasses, as shown and described.	The overall ornamental appearance of Defendant's PC7045 sunglass model is alleged to be substantially similar to the claimed design. The complaint presents a side-by-side visual comparison to support this allegation. This image shows Defendant's PC7045 Sunglass Model next to a drawing from the D'794 Patent (Compl. p. 7).	¶27	Claim; FIG. 1-6

D'818 Patent Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for an eyeglass components, as shown and described.	The design of the temple arms and hinge areas of Defendant's PC7045 sunglass model is alleged to be substantially similar to the claimed design. The complaint provides an image of the full PC7045 model next to a drawing of the claimed components from the D'818 Patent (Compl. p. 8).	¶29	Claim; FIG. 1-8

Identified Points of Contention

Visual Similarity: For all asserted patents, the central question will be a factual one: would an ordinary observer, familiar with the prior art, be deceived into believing the accused design is the same as the patented design? The side-by-side visual comparisons in the complaint are Plaintiff's primary evidence to suggest this similarity (Compl. pp. 7-16).
Scope Questions: A significant legal and factual question may arise concerning the patents that claim only "components" (e.g., '818 Patent) or a "front" (e.g., ’919 Patent). The infringement analysis for these patents must be limited to the elements shown in solid lines. The complaint's comparison of the entire accused sunglass to a patent claiming only "components" (Compl. p. 8) raises the question of whether the analysis will properly disregard the disclaimed portions (the frame front) in making the comparison, as required by law.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is understood to be the design itself as shown in the drawings. The primary issue is not the construction of text, but the interpretation of the visual scope of the design.

The Term: "Eyeglass Components" (as used in the '818 Patent)
Context and Importance: The scope of this term is defined entirely by what is shown in solid versus broken lines in the patent's figures. Its interpretation is critical because the '818 Patent does not claim a full eyeglass design. Practitioners may focus on this distinction because an infringement finding must be based on similarity to the claimed temple arms alone, not on any similarity of the unclaimed front frame.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that the components must be viewed in the context of their intended use on an eyeglass, and that the overall impression they create on the product is what matters.
- Evidence for a Narrower Interpretation: The patent specification explicitly states: "Phantom lining, where utilized, is for illustrative purposes only and is not intended to limit the claimed design to the features shown in phantom." (D'818 Patent, Description). This provides strong intrinsic evidence that the scope of the claim is narrowly limited to the temple arms and hinge areas depicted in solid lines, and any visual similarity in the disclaimed frame front is legally irrelevant to the infringement analysis for this patent.

VI. Other Allegations

Indirect Infringement: The complaint does not contain specific allegations of induced or contributory infringement. The focus is on direct infringement by making, using, selling, and importing (Compl. ¶27).
Willful Infringement: The complaint alleges willful infringement for each asserted patent. The basis for this allegation is the assertion that Oakley's designs are "iconic" and "well-known," that Defendant had "actual knowledge" of Oakley's patent rights, and that the infringement was committed with "reckless disregard" of those rights (Compl. ¶¶28, 30, 32, 34, 36, 38, 40, 42, 44, 46).

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

A core issue will be one of visual comparison: For each of the ten asserted design patents, will an ordinary observer, giving such attention as a purchaser usually gives, find the accused product's design to be substantially the same as the claimed ornamental design when the two are properly compared?
A key legal question will be one of claim scope: For patents claiming only "components" or a "front," can Plaintiff demonstrate that the similarity between the accused products and the patented designs rests in the claimed elements (shown in solid lines) rather than the disclaimed elements (shown in broken lines)?
A determinative question for damages will be willfulness and profits: If infringement is found, the court will need to determine whether Defendant's actions were willful, which could lead to enhanced damages. Furthermore, the availability of infringer's profits as a remedy under 35 U.S.C. § 289 for design patent infringement will likely make the calculation of Defendant's profits a central issue in the damages phase.