DCT
8:23-cv-01858
E Vision LLC v. Seiko Epson Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: E-VISION, LLC (Florida)
- Defendant: Seiko Epson Corporation (Japan) and Epson America, Inc. (California)
- Plaintiff’s Counsel: King & Spalding LLP
- Case Identification: 8:23-cv-01858, C.D. Cal., 10/03/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant Epson America, Inc. maintains its headquarters and a regular place of business in the district, and committed the alleged acts of infringement, including offering the accused products for sale via websites accessible in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Moverio line of augmented reality smart glasses infringes three patents related to the integration of electronic modules, power sources, and external device connectivity in eyewear.
- Technical Context: The technology concerns methods for incorporating electronics into spectacle frames, a foundational area for the consumer and enterprise augmented reality (AR) and smart glasses markets.
- Key Procedural History: The complaint alleges that Defendant was notified of the patents-in-suit and their alleged infringement via a letter dated September 29, 2023, four days prior to the filing of the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-02 | Earliest Priority Date for ’896 and ’411 Patents |
| 2010-07-02 | Earliest Priority Date for ’541 Patent |
| 2014-12-09 | U.S. Patent No. 8,905,541 Issues |
| 2015-01-13 | U.S. Patent No. 8,931,896 Issues |
| 2020-10-06 | U.S. Patent No. 10,795,411 Issues |
| 2023-09-29 | Plaintiff allegedly notifies Defendant of infringement |
| 2023-10-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,905,541 - “Electronic spectacle frames” (Issued Dec. 9, 2014)
The Invention Explained
- Problem Addressed: The patent’s background describes the challenge of integrating electronic components into spectacle frames without compromising the fashion, aesthetics, and functionality of the eyewear (U.S. Patent No. 8,905,541, col. 1:29-44).
- The Patented Solution: The invention proposes a modular design for electronic spectacles. It features a "housing module" coupled to a structural part of the frame, such as a temple, which contains an "electronics module" (e.g., power source, controller, sensors). The solution also specifies an insulating layer to electrically separate the electronic components from the conductive parts of the frame, facilitating the integration of electronics into metal frames. ('541 Patent, Abstract; col. 2:4-21).
- Technical Importance: This approach allows for the separation of the electronic systems from the spectacle frame design, potentially simplifying manufacturing, enabling user upgrades or repairs, and allowing for greater variety in frame styles. ('541 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶23).
- Essential elements of Claim 1 include:
- A device with a frame comprising first and second temples, and a housing module coupled to a structural member.
- First and second lenses coupled to the frame.
- An electronics module located within the housing module.
- The electronics module comprises at least two of: a power source, a controller, and a sensing mechanism.
- An insulating layer is disposed between one or more electronic components in the electronics module and the frame.
U.S. Patent No. 8,931,896 - “Eyewear including a docking station” (Issued Jan. 13, 2015)
The Invention Explained
- Problem Addressed: The shared specification with the related '411 patent describes the need for a convenient and ergonomic way to power electronic eyeglass accessories without adding excessive weight and bulk to the frame itself, which can cause discomfort and poor fit (U.S. Patent No. 10,795,411, col. 3:35-56).
- The Patented Solution: The invention is an eyewear system featuring a "docking station" that is supported by the eyewear frame. This docking station acts as an interface, containing audio, video, and power ports to receive signals from a separate electronic device. These signals and power are then conveyed to speakers and electronic displays that are also supported by the eyewear frame, allowing the user to experience content from the docked device. ('896 Patent, Abstract; col. 4:9-12).
- Technical Importance: This architecture offloads complex processing, data storage, and power supply to an external unit, enabling the eyewear to function as a lightweight, wearable display and audio interface rather than a self-contained computer. ('896 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts at least independent Claim 22 (Compl. ¶45).
- Essential elements of Claim 22 include:
- An eyewear frame with a frame stem and at least one temple.
- A docking station, supported by the eyewear frame, comprising an audio port, a video port, and power terminal contacts to connect with an electronic device.
- At least one speaker supported by the frame and electrically connected to the docking station.
- At least one electronic display supported by the frame and electrically connected to the docking station.
U.S. Patent No. 10,795,411 - “Eyewear including a remote control camera and a docking station” (Issued Oct. 6, 2020)
- Technology Synopsis: The patent describes an eyewear assembly designed to present a virtual image to the wearer. The system comprises a frame, an electronic lens, a controller to adjust the lens's optical characteristics, and a tether that connects the frame to a separate enclosure containing a power source for the controller. ('411 Patent, Abstract).
- Asserted Claims: The complaint asserts at least independent Claim 1 (Compl. ¶71).
- Accused Features: The complaint alleges that the Accused Products, which use a USB-C cable as a tether to connect to an external smartphone or "Intelligent Controller," infringe this patent. The tether provides power from the external device, and the external device acts as the controller to adjust optical properties such as screen brightness. (Compl. ¶¶75-79).
III. The Accused Instrumentality
Product Identification
- The accused products are the Epson Moverio line of AR smart glasses, including the Moverio BT-40, BT-35E, BT-35ES, BT-45C, and BT-45CS models (Compl. ¶20).
Functionality and Market Context
- The Accused Products are marketed as "plug-and-play, second-screen, augmented reality smart glasses" (Compl. ¶24). Functionally, they consist of a headset with temples, lenses, and integrated sensors (e.g., motion, ambient light) (Compl. ¶25). The headset connects via a USB-C port and cable to an external device, such as a smartphone or a dedicated "Intelligent Controller" (Compl. ¶¶48, 77-78). This external device provides power and runs software applications (e.g., "MOVERIO Link") that control the headset's functions, such as adjusting the brightness of the virtual display projected by the lenses (Compl. ¶¶49, 76).
IV. Analysis of Infringement Allegations
'541 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame comprising a first temple and a second temple, wherein the frame comprises a housing module coupled to a structural member | The Accused Products have a frame with temples that house electronic components, such as a "9 Axis Motion Sensor." The temple itself is alleged to be the structural member and housing module. | ¶25 | col. 2:4-8 |
| a first lens and a second lens coupled to the frame | The Accused Products include two lenses attached to the frame. A diagram from product documentation shows the lenses as part of the headset. | ¶26 | col. 2:9-10 |
| an electronics module, wherein the electronics module is located within the housing module | The Accused Products include sensors (compass, gyroscope, accelerometer) and processors housed within the temples, which are alleged to be the housing module. | ¶27 | col. 2:11-12 |
| wherein the electronics module comprises at least any two of: a power source; a controller; and a sensing mechanism | The Accused Products include multiple sensors ("sensing mechanism") and a processor running firmware ("controller"). | ¶27 | col. 2:13-15 |
| wherein an insulating layer is disposed between one or more electronic components located within the electronics module and the frame | The complaint alleges that the "Optical Engine Module" used to build the Accused Products includes insulating layers between its electronic components. | ¶28 | col. 2:16-19 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the temple of the eyewear frame can be considered both the "structural member" and the "housing module" as claimed, or if the claim requires a distinct module coupled to the temple. The complaint uses a product diagram showing sensors located in the temple to support this reading (Compl. p. 6).
- Technical Questions: The complaint alleges the "insulating layer" requirement is met by layers within the "Optical Engine Module" (Compl. ¶28). A point of contention may arise over whether this module is part of the "electronics module" located in the temple, and whether its internal insulation is "disposed between" the electronic components and the frame itself, as required by the claim.
'896 Patent Infringement Allegations
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an eyewear frame comprising a frame stem and at least one temple | The Accused Products include a frame with two lenses, a bridge, and temples extending from the sides. | ¶47 | col. 21:5-6 |
| a docking station, supported by the eyewear frame, comprising an audio port to receive an audio signal..., a video port to receive a video signal..., and at least one pair of power terminal contacts... | The complaint alleges the combination of the headset's USB-C port and the connected external Intelligent Controller constitutes the "docking station." The Controller has an earphone jack (audio port) and a USB-C port for video and power. | ¶48 | col. 21:7-14 |
| at least one speaker, supported by the eyewear frame and in electrical communication with the docking station... | The Intelligent Controller, alleged to be part of the docking station, includes a speaker for outputting audio. | ¶52 | col. 21:15-18 |
| at least one electronic display, supported by the eyewear frame and in electrical communication with the docking station... | The Accused Products' headset contains electronic displays in its lenses to show video signals received from the docked electronic device. The Intelligent Controller also has its own display. | ¶53 | col. 21:19-22 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will likely center on the term "docking station, supported by the eyewear frame." The complaint's theory reads on a system where an external, handheld controller is connected by a cable. A key question for the court will be whether this arrangement meets the claim limitation, or if "supported by the eyewear frame" requires a physical, integrated structure on the eyewear itself. The complaint offers a diagram from a user manual showing the ports on the external controller to support its theory (Compl. p. 14).
- Technical Questions: An additional question may be whether the single USB-C port on the headset and controller fulfills the requirement for a distinct "audio port," "video port," and "power terminal contacts," or if the claim requires separate physical ports for each function.
V. Key Claim Terms for Construction
From the ’541 Patent:
- The Term: "housing module"
- Context and Importance: The infringement allegation for the '541 patent hinges on interpreting the temples of the Accused Products as the claimed "housing module." The definition of this term is critical because if it is construed to require a component that is separate and distinct from the temple itself, the infringement theory may be challenged.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires only that the housing module be "coupled to a structural member," which could allow for the temple to serve as both. The patent states that the housing module "may be coupled (e.g. attached) to a structural component of the electronic frames" ('541 Patent, col. 3:51-54).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the housing module as a potentially separate and removable component, stating it is "removably coupled to the first temple" and may be "selectively placed within the cavity" of the temple, suggesting it is a distinct part from the temple structure itself ('541 Patent, col. 2:25-42).
From the ’896 Patent:
- The Term: "docking station, supported by the eyewear frame"
- Context and Importance: This term is central to the infringement allegation for the '896 patent. The complaint alleges that an external controller connected by a cable is the "docking station." The viability of this claim depends on whether a device that is not physically attached to or held up by the eyewear frame can be considered "supported by" it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not explicitly define "supported by," which could leave room for an interpretation based on functional or electrical support via a tether. The abstract states "eyewear is provided including a frame and an electronic docking station," without specifying its physical location ('896 Patent, Abstract).
- Evidence for a Narrower Interpretation: The ordinary meaning of "supported by" implies physical support. A related patent in the same family depicts an embodiment where the "electronic docking station" (3710) is a physical component located on the back of the tether, which is part of the overall eyewear assembly, suggesting a more integrated structure than a separate handheld device (U.S. Patent No. 10,795,411, Fig. 37A).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. Inducement is alleged based on Defendant’s marketing materials, user manuals, and technical support, which allegedly instruct and encourage customers to connect and use the Accused Products with external controllers in an infringing manner (Compl. ¶¶33-36, 59-62, 84-87).
- Willful Infringement: Willfulness is alleged for all patents based on Defendant’s purported knowledge. The complaint asserts this knowledge stems from a letter sent on September 29, 2023, and, at a minimum, from the service of the complaint itself (Compl. ¶¶41, 67, 92).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "docking station, supported by the eyewear frame," which implies a degree of physical integration, be construed to cover an external, handheld controller that is connected to the eyewear only by a flexible power and data cable? The resolution of this claim construction issue may be dispositive for the '896 patent.
- A key evidentiary question will be one of structural identity: does the temple of the accused smart glasses function as the claimed "housing module" of the '541 patent, or does the patent require a separate, distinct component coupled to the temple? This will involve a detailed comparison of the accused product's architecture against the patent's specification and claims.
- A third central question will be one of system boundaries: can claim limitations directed to a singular "eyewear" or "device" be met by combining the functionalities of two separate products—the accused glasses and a general-purpose external device like a smartphone or controller—that are sold and operated as a system?