DCT
8:18-cv-00454
Oakley Inc v. 20 20 Merchandise Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: 20/20 Merchandise, Inc. d/b/a Twenty Twenty Enterprises (California)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
- Case Identification: 8:18-cv-00454, C.D. Cal., 03/21/2018
- Venue Allegations: Venue is alleged to be proper as Defendant is a resident of the judicial district, has committed acts of infringement there, and maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s sunglasses infringe three design patents covering the ornamental appearance of an eyeglass and an eyeglass component.
- Technical Context: The lawsuit concerns the aesthetic design of consumer eyewear, a market where unique and recognizable ornamental designs can be a significant source of commercial value.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2009-08-10 | U.S. Patent No. D620,970 Priority Date |
| 2010-08-03 | U.S. Patent No. D620,970 Issued |
| 2011-05-06 | U.S. Patent No. D649,579 Application Filed |
| 2011-08-31 | U.S. Patent No. D659,179 Application Filed |
| 2011-11-29 | U.S. Patent No. D649,579 Issued |
| 2012-05-08 | U.S. Patent No. D659,179 Issued |
| 2018-03-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D649,579 - “EYEGLASS”
- Patent Identification: U.S. Design Patent No. D649,579, titled “EYEGLASS,” issued November 29, 2011.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The implicit goal is to create a new, original, and non-obvious aesthetic design for an article of manufacture, thereby distinguishing it from prior designs (D’579 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of an eyeglass, characterized by a wrap-around style, a sculpted frame with particular contours along the browline and temples, and distinctly shaped lens openings (D’579 Patent, Figs. 1-6). The overall impression is defined by the combination of these specific shapes and contours as depicted in the patent's drawings (D’579 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges that Plaintiff's designs are "iconic" and "well-known throughout the eyewear industry," suggesting the patented aesthetic contributes to brand recognition and market success (Compl. ¶16).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for an eyeglass, as shown and described."
- The claim covers the entire visual appearance of the eyeglass depicted in Figures 1-6.
U.S. Design Patent No. D659,179 - “EYEGLASS”
- Patent Identification: U.S. Design Patent No. D659,179, titled “EYEGLASS,” issued May 8, 2012.
The Invention Explained
- Problem Addressed: As with the ’579 Patent, the objective is the creation of a novel ornamental design for an eyeglass (D’179 Patent, Claim).
- The Patented Solution: This patent protects the ornamental design for a different eyeglass model. The claimed design features a high-wrap frame with a continuous, shield-like appearance, a distinct nose bridge geometry, and specific ornamental features on the temple pieces (D’179 Patent, Figs. 1-6). The patent's description states that "broken line portions of the drawings are for illustrative purposes only and form no part of the claimed design," although no broken lines are visible in the provided patent figures (D’179 Patent, DESCRIPTION).
- Technical Importance: This design represents another of what the Plaintiff characterizes as its "iconic designs" intended to be distinctive in the consumer eyewear market (Compl. ¶18).
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for an eyeglass, as shown and described."
- The claim covers the visual appearance of the eyeglass depicted in Figures 1-6.
U.S. Design Patent No. D620,970 - “EYEGLASS COMPONENT”
- Patent Identification: U.S. Design Patent No. D620,970, titled “EYEGLASS COMPONENT,” issued August 3, 2010.
- Technology Synopsis: This patent protects the ornamental design for only a component of an eyeglass, not the entire article. The drawings use broken lines to show the lenses, indicating that the lenses are unclaimed environment and only the frame and temples, shown in solid lines, constitute the protected design (’970 Patent, Fig. 1; DESCRIPTION).
- Asserted Claims: The patent asserts a single claim for "The ornamental design for an eyeglass component, as shown and described."
- Accused Features: The overall design of Defendant’s MP16201RV model sunglasses is alleged to be substantially similar to the claimed eyeglass component design (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
Defendant’s PO760SFSD and MP16201RV model sunglasses (Compl. ¶¶15, 17, 19).
Functionality and Market Context
The complaint identifies the accused instrumentalities as "eyewear" and "sunglasses" sold by the Defendant (Compl. ¶¶10, 15). The infringement allegations are based entirely on the ornamental appearance of the products. The complaint alleges that the accused products are "an identical copy" of Oakley's patented designs, which are described as "iconic" and "well-known" (Compl. ¶¶16, 18, 20). A photograph of the accused PO760SFSD sunglasses shows a pair of wrap-around style sunglasses with dark lenses and a black frame (Compl. p. 4). A photograph of the accused MP16201RV sunglasses shows a similar wrap-around style with what appear to be mirrored lenses (Compl. p. 5).
IV. Analysis of Infringement Allegations
D649,579 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an eyeglass, as shown and described. | The complaint alleges that the overall ornamental design of Defendant's PO760SFSD model sunglasses is "substantially similar" to the design claimed in the '579 Patent. A side-by-side visual comparison is provided to support this allegation. | ¶15; p. 4 | Claim; Figs. 1-6 |
D659,179 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an eyeglass, as shown and described. | The complaint alleges that the overall ornamental design of Defendant's MP16201RV model sunglasses is "substantially similar" to the design claimed in the '179 Patent. A side-by-side visual comparison is provided to support this allegation. | ¶17; p. 5 | Claim; Figs. 1-6 |
- Identified Points of Contention:
- Factual Question: The central question for all asserted patents is factual: would an ordinary observer, familiar with the prior art designs, be deceived into purchasing the Defendant’s sunglasses believing them to be the Plaintiff’s patented designs? The complaint's assertion that the accused models are an "identical copy" frames this as a direct comparison of visual features (Compl. ¶16). The side-by-side comparison of the accused MP16201RV sunglasses and the drawing from the D970 patent illustrates the plaintiff's infringement theory (Compl. p. 6).
- Scope Question ('970 Patent): For the ’970 Patent, the infringement analysis raises the question of how an ordinary observer test applies to a design for an "eyeglass component." The analysis must focus on the claimed frame and temples, while treating the unclaimed lenses as mere context.
V. Key Claim Terms for Construction
- The Term: "Eyeglass Component" (’970 Patent)
- Context and Importance: The construction of this term is critical because it defines the scope of the protected design. The infringement test must be applied to the "component" (the frame and temples), not the eyeglass as a whole. Practitioners may focus on this term because it requires the fact-finder to properly filter out the unclaimed portions (the lenses) when performing the ordinary observer comparison.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that because the component is sold and viewed as part of a complete eyeglass, its visual effect cannot be divorced from the overall appearance of the article.
- Evidence for a Narrower Interpretation: The patent’s title ("EYEGLASS COMPONENT"), the claim language, and the use of broken lines for the lenses in the patent drawings provide strong evidence that the claim is limited to the ornamental design of the frame and temples only (’970 Patent, Title; Claim; Fig. 1). This interpretation aligns with established design patent law.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support a claim for indirect infringement (e.g., inducement or contributory infringement), although the prayer for relief seeks to enjoin such activity (Compl. p. 8, ¶C).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents (Compl. ¶¶15, 17, 19). The asserted basis is that Defendant had "actual knowledge" of Oakley's rights because Oakley's designs are "iconic" and "well-known," and that Defendant's infringement was obvious because its sunglasses are allegedly an "identical copy" of the patented designs (Compl. ¶¶16, 18, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: will an ordinary observer, viewing the respective designs in the context of the prior art, find the accused PO760SFSD and MP16201RV sunglasses to be substantially the same as the designs claimed in the ’579, ’179, and ’970 patents?
- A key legal question for the ’970 patent will be the proper application of claim scope: can the Plaintiff demonstrate to a jury that the ordinary observer test is met when the comparison is properly limited to the claimed "eyeglass component" (the frame) and not the overall appearance of the sunglasses including the unclaimed lenses?
- A central evidentiary question will be one of scienter: can the Plaintiff produce evidence sufficient to show that the Defendant acted with the requisite knowledge and intent to support a finding of willful infringement, beyond the allegation that Plaintiff's designs are "well-known"?