Pathway Innovations Tech Inc v. Learning Glass Solutions Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Pathway Innovations and Technologies Inc. (California)
  • Defendant: Learning Glass Solutions, Inc. (California)
  • Plaintiff’s Counsel: Insigne PC
• Case Identification: 3:21-cv-01648, S.D. Cal., 01/27/2023
• Venue Allegations: Venue is alleged to be proper because Defendant resides in the Southern District of California, and a substantial part of the events giving rise to the claims occurred in the district.
• Core Dispute: Plaintiff, a former licensee, seeks a declaratory judgment that Defendant's patents related to transparent presentation whiteboards are invalid, unenforceable, and not infringed by Plaintiff's products.
• Technical Context: The technology involves transparent, edge-lit glass boards that allow an instructor to write on the board while facing a camera and audience, with the resulting image being digitally flipped for legibility.
• Key Procedural History: The complaint alleges that the parties entered into a "Joint Development and Marketing Agreement" under which Plaintiff licensed the patents-in-suit. Plaintiff states it later terminated the agreement after concluding the patents were invalid and unenforceable, prompting this declaratory judgment action. The complaint makes extensive allegations of invalidity based on public uses, offers for sale, and publications that pre-date the patents' critical dates, and further alleges that Defendant intentionally withheld this known prior art from the U.S. Patent and Trademark Office during prosecution, constituting inequitable conduct.

Case Timeline

Date	Event
2013-03-04	Alleged Prior Art: "Dragster Force Diagram" video published
2013-04-02	Alleged Prior Art: Anderson/Hatay provisional patent application filed
2013-11-27	Alleged Prior Art: Michael Peshkin's "LightBoard" video published
2013-12-23	Alleged Prior Art: "Through the Looking Glass" video published
2014-07-07	Alleged Prior Art: "Learning Glass - Information, Specifications, and Assembly Manual" published
2015-03-26	Alleged Prior Art: "Introduction to the Learning Glass" video published
2016-12-30	'D600 Patent Priority Date (Filing Date)
2018-02-06	'D600 Patent Issue Date
2018-05-18	'893 Patent Priority Date (Filing Date)
2019-12-31	'893 Patent Issue Date
2020-11-09	Parties' Joint Development and Marketing Agreement effective date
2023-01-27	Complaint Filing Date (First Amended)

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 and presentations where a lecturer must turn their back to the audience to write on a blackboard or whiteboard, limiting engagement ('893 Patent, col. 2:46-54).
• The Patented Solution: The invention proposes a system where the lecturer faces the audience through a transparent display screen. A light source injects light, preferably blue, into an edge of the screen to illuminate writing from fluorescent markers. A camera records the lecturer and the writing through the screen. A key component is a filter placed between the screen and the camera, which blocks the blue light from the light source, thereby reducing blue color saturation and making the fluorescent writing appear more vivid. The system also reverses the recorded image left-to-right, so the writing appears correctly to the viewing audience ('893 Patent, Abstract; col. 2:1-29). Figure 1 illustrates the general arrangement of the lecturer (13), screen (10), camera (18), and filter (28).
• Technical Importance: This approach allows for a more natural, face-forward presentation style, akin to a news broadcast, intended to improve audience connection and information delivery compared to traditional methods ('893 Patent, col. 3:59-67).

Key Claims at a Glance

• The complaint challenges all claims of the '893 patent (Compl. ¶52). The independent claims are 1, 8, and 13.
• Independent Claim 1 (System Claim):
  • 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.
• Independent Claim 8 (Method Claim):
  • providing a display screen, a light source injecting predominantly blue light, and a video camera;
  • filtering predominantly blue light from the imaging of the screen;
  • recording the lecturer making a presentation; and
  • reversing a left-right-orientation of the screen and the lecturer imaging.
• Independent Claim 13 (Method Claim):
  • Providing a generally transparent screen;
  • Injecting light into an edge of the screen at predominately around 405 nanometer wavelengths;
  • Providing a camera to image the lecturer and writing (with a fluorescent marker) through the screen;
  • Filtering at least about 85% of light in the 410-460 nanometer range; and
  • Reversing the left-right orientation of the image.

U.S. Design Patent No. D809,600 - "Learning Glass" (Issued Feb. 6, 2018)

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture.
• The Patented Solution: The patent claims the specific ornamental design for a "learning glass." The design consists of a large, rectangular transparent panel supported by two cylindrical feet located inward from the edges along the bottom of the panel ('D600 Patent, FIG. 1). The design is for the visual appearance of the object itself, not its function.

Key Claims at a Glance

• Design patents have a single claim.
• Claim 1: "The ornamental design for a learning glass, as shown and described."

III. The Accused Instrumentality

Product Identification

• Plaintiff's "eGlass" product (Compl. ¶68).

Functionality and Market Context

• The complaint describes eGlass as a transparent writing board for teachers and presenters. An included image shows it features adjustable in-glass lighting, a fold-out 4K camera on an arm extending from the base, a control panel with a microphone, and two support legs positioned at the far ends of the base (Compl. ¶68, p. 17). It connects via USB to a computer and is marketed for its ability to create an engaging presentation by allowing the teacher to face students while writing (Compl. ¶68, p. 17).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, the analysis focuses on the Plaintiff's allegations of how its product avoids the patent claims.

'D893 Patent Infringement Allegations

The complaint’s non-infringement argument is not presented in a claim chart format. The core of the allegation is that the eGlass product is missing a key claimed element. Specifically, Pathway asserts that its eGlass product "does not include, among other things, 'a light filter disposed between the screen and the video camera filtering predominately blue light from the light source'" or implement the step of filtering light as required by all claims (Compl. ¶69).

• Identified Points of Contention:
  • Technical Question: What specific hardware or software is used in the Pathway eGlass to manage image color and saturation? The complaint does not detail the internal workings of the eGlass, only that it lacks the specific "filter" element. The case may require discovery into whether any software-based color correction or other component in the eGlass's imaging pipeline performs the function of "filtering predominantly blue light."
  • Scope Question: Does the term "light filter" require a discrete, physical optical element, or could it be construed more broadly to cover software algorithms that achieve the same technical result of reducing blue light saturation in the final image?

'D600 Patent Infringement Allegations

The complaint alleges that the design of the eGlass product is not the same as the patented design (Compl. ¶68). The complaint provides a side-by-side comparison image to support this contention (Compl. p. 17). This image shows the 'D600 design with its two supports positioned centrally on the bottom edge. In contrast, the image of the eGlass shows its two support legs at the far ends of the bottom edge and also includes additional features like a camera on an extended arm and a control panel, which are absent from the 'D600 patent's claimed design (Compl. ¶68).

• Identified Points of Contention:
  • Legal Question (Ordinary Observer Test): Would an ordinary observer, giving such attention as a purchaser usually gives, be deceived into purchasing the eGlass product believing it to be the product embodying the 'D600 design? The infringement analysis will turn on whether the noted differences in leg placement and the presence of the camera arm and control panel are substantial enough to create a different overall visual impression.

V. Key Claim Terms for Construction

'893 Patent: "a light filter... filtering predominantly blue light"

• Context and Importance: This term appears in independent claim 1 and its functional equivalent is in method claims 8 and 13. Its construction is dispositive for Pathway's non-infringement argument, which rests on the assertion that its eGlass product lacks this element entirely (Compl. ¶69).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the function of the filter is to "minimize or eliminate this saturation of blue colors in the output imaging" ('893 Patent, col. 3:1-4). LGS may argue that any component, whether hardware or software, that performs this function meets the limitation.
  • Evidence for a Narrower Interpretation: Claim 1 explicitly requires "a light filter disposed between the screen and the video camera." This positional language may support an interpretation requiring a distinct physical component in the light path. The patent consistently refers to the filter as a discrete element (28) in Figure 1 and describes it as blocking light in specific wavelength ranges, language often associated with physical optical filters ('893 Patent, col. 2:7-12).

VI. Other Allegations

Inequitable Conduct

• The complaint contains extensive allegations of inequitable conduct. Pathway alleges that LGS and its counsel knew of highly material prior art but intentionally withheld it from the PTO with an intent to deceive (Compl. ¶¶ 56-66). The alleged withheld art includes:
  • LGS Prior Art: The inventor's own public videos, presentations, and assembly manuals dating back to 2013, allegedly disclosing the claimed invention (Compl. ¶¶ 11-13). The complaint includes a screenshot from a 2013 video message acknowledging the inventor was "going 'public'" and attempting to limit dissemination to protect future patent rights (Compl. ¶12, p. 5).
  • Lightboard Prior Art: The work of Dr. Michael Peshkin, which LGS allegedly knew of and acknowledged as similar technology (Compl. ¶¶ 14-20).
  • SDSU Prior Art: A 2013 provisional application by the inventor and a colleague, and prior art searches provided to the inventor by San Diego State University, which were allegedly not disclosed to the PTO (Compl. ¶¶ 21-22, 25).
• The complaint further alleges that LGS and its counsel misrepresented inventorship by omitting a co-inventor and misrepresented ownership by failing to designate SDSU as an owner (Compl. ¶¶ 62-63).

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

1. A central issue will be the strength of the prior art defense: Will the numerous public demonstrations, publications, and sales—many involving the named inventor well before the patents' critical dates—be proven and found to invalidate the asserted claims under 35 U.S.C. §§ 102 or 103? The complaint presents a substantial volume of such alleged art.

2. A second critical issue is unenforceability due to inequitable conduct: Can Pathway meet the high burden of proving by clear and convincing evidence that LGS and its counsel knew the withheld prior art was material and made a deliberate decision to conceal it from the PTO with a specific intent to deceive? The detailed allegations regarding LGS's awareness will make this a focal point of discovery and argument.

3. The non-infringement case for the '893 patent will likely turn on a question of claim scope: How will the court construe the term "light filter"? A narrow construction requiring a discrete physical component could support a finding of non-infringement, while a broader, more functional construction covering software-based image processing could favor the patentee.