DCT
3:21-cv-01648
Pathway Innovations Tech Inc v. Learning Glass Solutions Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pathway Innovations and Technologies Inc. (California) and Pathway Innovations Inc. (Nevada)
- Defendant: Learning Glass Solutions, Inc. (California)
- Plaintiff’s Counsel: Insigne PC
- Case Identification: 3:21-cv-01648, S.D. Cal., 04/06/2023
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, maintains a regular and established place of business there, and a substantial part of the events giving rise to the claims occurred within the district.
- Core Dispute: Plaintiff, a product manufacturer, seeks a declaratory judgment that Defendant's patents related to "lightboard" presentation systems are invalid, unenforceable, and not infringed by Plaintiff's products.
- Technical Context: The technology involves "learning glass" or "lightboard" systems that allow an instructor to write on a transparent screen while facing a camera, with the image processed so the writing appears correctly oriented to the viewer, primarily for educational and distance learning applications.
- Key Procedural History: The complaint alleges the parties had a prior business relationship governed by a Joint Development and Marketing Agreement. Plaintiff's claims for invalidity and unenforceability are based on allegations that Defendant failed to disclose extensive prior art to the U.S. Patent and Trademark Office during prosecution, including Defendant's own alleged "open source" publications, and misrepresented inventorship and ownership. The complaint also details the prosecution of one of the patents-in-suit, noting amendments made to overcome rejections based on prior art.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-04 | LGS Prior Art: "Dragster Force Diagram" video published |
| 2013-04-02 | SDSU Prior Art: Anderson/Hatay provisional patent application filed |
| 2013-11-27 | Lightboard Prior Art: Dr. Peshkin's Lightboard video published |
| 2014-01-21 | Dr. Anderson allegedly discloses prior art to SDSU, ceases patent pursuit |
| 2016-12-30 | U.S. Patent D809,600 application filed |
| 2018-02-06 | U.S. Patent D809,600 issued |
| 2018-05-18 | U.S. Patent 10,523,893 application filed |
| 2019-02-21 | PTO issues Office Action rejecting claims of '893 patent application |
| 2019-12-31 | U.S. Patent 10,523,893 issued |
| 2020-11-09 | Parties' Joint Development and Marketing Agreement effective date |
| 2023-04-06 | Consolidated Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,523,893 - Method and Apparatus for Presenting Audio and Visual Information (Issued Dec. 31, 2019)
The Invention Explained
- Problem Addressed: The patent's background describes the long-standing problem in education where a lecturer must turn their back to the audience to write on a blackboard or whiteboard, limiting engagement. (’893 Patent, col. 2:47-54).
- The Patented Solution: The invention is a system comprising a transparent screen on which a lecturer can write while facing a camera. A light source, which is preferably blue, injects light into the edge of the screen to illuminate fluorescent marker ink. A filter is placed between the screen and the camera to reduce blue light saturation, and the captured image is reversed so that the writing is legible to the viewing audience. (’893 Patent, Abstract; col. 2:62-col. 3:8). This configuration allows the lecturer to continuously face the camera, and by extension the audience. (’893 Patent, col. 2:55-61).
- Technical Importance: The system aims to create more dynamic and engaging recorded or live-streamed presentations by allowing the presenter to maintain a direct-to-camera posture. (’893 Patent, col. 2:55-61).
Key Claims at a Glance
- The complaint challenges all claims of the patent. (Compl. ¶93). The patent's independent claims are 1, 8, and 13.
- Independent Claim 1 recites a system comprising:
- a generally planar and generally transparent screen;
- a light source injecting predominantly blue light into an edge of the screen;
- a visible wavelength video camera oriented to image the screen and a lecturer through the screen, where the lecturer appears to be facing the camera; and
- a light filter disposed between the screen and the video camera filtering predominantly blue light from the light source.
U.S. Design Patent No. D809,600 - Learning Glass (Issued Feb. 6, 2018)
The Invention Explained
- Problem Addressed: Design patents protect ornamental, non-functional aspects of an article. The objective is to create a new and non-obvious aesthetic appearance for a transparent presentation board.
- The Patented Solution: The patent claims the ornamental design for a "learning glass." The claimed design consists of a transparent rectangular panel supported by two cylindrical, post-like feet positioned near the center of the panel's bottom edge, each on a small rectangular base. (’D600 Patent, Figs. 1-5). The complaint includes a reproduction of Figure 1 from the patent. (Compl. p. 13).
- Technical Importance: Not applicable to a design patent's ornamental claim.
Key Claims at a Glance
- Design patents have a single claim for the ornamental design as shown and described in the patent's figures. (’D600 Patent, Claim).
III. The Accused Instrumentality
Product Identification
- Plaintiff's "eGlass" lightboards. (Compl. ¶109).
Functionality and Market Context
- The complaint describes the eGlass product as an "Electronic transparent writing glass device with an integrated camera for writing or drawing on the glass while looking through the glass to a viewer." (Compl. ¶16, ¶63).
- The product integrates features including a fold-out 4K camera, adjustable in-glass and instructor lighting, a one-touch control panel, and USB connectivity. (Compl. p. 26). A diagram in the complaint details these specific features of the eGlass product. (Compl. p. 26).
- Plaintiff alleges it is a "leading provider of educational tools" and that Defendant's actions have caused market confusion. (Compl. ¶18, ¶17).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, the analysis focuses on the plaintiff's allegations of non-infringement.
’D600 Patent Non-Infringement Allegations
The complaint alleges non-infringement of the design patent based on visual differences between the Plaintiff's eGlass product and the claimed design, arguing that an ordinary observer would not be deceived into purchasing one thinking it was the other. (Compl. ¶109). The complaint provides a side-by-side visual comparison to support this allegation, showing the eGlass product next to a figure from the ’D600 Patent. (Compl. p. 25-26). The key alleged differences are:
- Support Legs: The eGlass product uses two support legs at the far ends of the bottom edge, whereas the claimed design shows two legs located in the middle. (Compl. ¶109).
- Additional Features: The eGlass product includes a prominent camera on an arm extending from the base and a control panel, both of which are absent from the minimalist claimed design. (Compl. ¶109).
’893 Patent Non-Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a generally planar and generally transparent screen; | The complaint does not dispute this element. | col. 5:31 | |
| a light source injecting predominantly blue light into an edge of the screen, | The complaint does not dispute this element. | col. 5:32-33 | |
| a visible wavelength video camera oriented to image the screen and image the lecturer and visual indicia or writing made by the lecturer on the screen through the screen... | The complaint does not dispute this element. | col. 5:34-39 | |
| a light filter disposed between the screen and the video camera filtering predominantly blue light from the light source. | Plaintiff alleges its eGlass product does not include this element, stating it lacks a light filter that performs this function. | ¶110 | col. 5:40-42 |
- Identified Points of Contention:
- ’D600 Patent (Design): The dispute will center on the ordinary observer test. The key question is whether the visual differences alleged by the Plaintiff—specifically the placement of the support legs and the addition of the camera arm and control panel—are substantial enough to distinguish the overall ornamental appearance of the eGlass from the claimed design in the eyes of an ordinary observer.
- ’893 Patent (Utility): The primary technical dispute is factual: does the eGlass product contain a "light filter" as claimed? The complaint asserts it does not. (Compl. ¶110). The case may turn on whether other components of the eGlass system, such as its "ChromaClear™ technology" which is described as "a combination of illumination, digital imaging and optics" (Compl. p. 26), could be found to meet this limitation, either literally or under the doctrine of equivalents. A screenshot in the complaint shows Dr. Anderson using a "Learning Glass" with blue-hued illuminated writing, which Pathway alleges contains all the elements claimed in the patent and constitutes invalidating prior art. (Compl. p. 23).
V. Key Claim Terms for Construction
Term from the ’893 Patent: "a light filter"
- The Term: "a light filter disposed between the screen and the video camera filtering predominantly blue light from the light source"
- Context and Importance: This limitation is the explicit basis for Pathway's non-infringement allegation for the ’893 patent. (Compl. ¶110). Its construction will likely be dispositive. Practitioners may focus on this term because Pathway's entire non-infringement theory for this patent rests on the absence of this specific component.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee (LGS) could argue that "filter" should not be limited to a single, physical piece of glass or plastic. The specification’s focus is on the functional result of filtering blue light to avoid a "saturation of blue colors in the output imaging." (’893 Patent, col. 3:62-64). This functional language may support an argument that any combination of hardware or software that achieves this result constitutes a "filter."
- Evidence for a Narrower Interpretation: The plain language of the claim recites "a light filter disposed between the screen and the video camera," suggesting a distinct physical object in a specific location. (’893 Patent, col. 5:40-41). The patent's Figure 1 depicts the filter (28) as a discrete element separate from the camera (18). (’893 Patent, Fig. 1; Compl. p. 14). This may support an interpretation that the claim requires a separate, physical component and is not met by integrated optics or software processing within the camera or another device.
VI. Other Allegations
- Inequitable Conduct: The complaint's Second Claim for Relief alleges that the 'D600 and '893 patents are unenforceable due to inequitable conduct. (Compl. ¶¶97-107). The specific allegations are that Defendant LGS and its counsel knew of material prior art—including the "LGS Prior Art," "Lightboard Prior Art," and "SDSU Prior Art"—and intentionally withheld it from the PTO with deceptive intent. (Compl. ¶101-102). The complaint further alleges that LGS knowingly misrepresented inventorship by failing to include an alleged co-inventor and misrepresented ownership by failing to designate San Diego State University as an owner. (Compl. ¶103-104).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of enforceability and validity: will the extensive prior art and "open source" declarations alleged in the complaint, which were purportedly known to the patentee but not disclosed to the PTO, be sufficient to prove inequitable conduct or render the patent claims invalid as anticipated or obvious?
- A key technical question for the '893 patent will be one of claim scope: does the claim term "a light filter" require a discrete physical component, as Plaintiff's non-infringement theory suggests, or can it be construed more broadly to cover integrated optical systems or software-based image processing that performs a similar function, potentially bringing Plaintiff's "ChromaClear™ technology" within the claim's scope?
- For the 'D600 design patent, a primary question will be the application of the ordinary observer test: are the visual differences between the accused eGlass product (e.g., leg placement, addition of a camera arm) and the patented design so significant that they create a different overall visual impression, thereby avoiding infringement?