Optikam Tech Inc v. American Bright Signs Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Optikam Tech Inc. (Canada)
  • Defendant: American Bright Signs, Inc. (dba ACEP USA) (Florida); ACEP Group (France); ACEP France (France)
  • Plaintiff’s Counsel: Greenberg Traurig, P.A.
• Case Identification: 1:23-cv-23597, S.D. Fla., 09/19/2023
• Venue Allegations: Venue is alleged to be proper based on Defendants’ regular and established place of business in the Southern District of Florida and the commission of infringing acts, including offers for sale and sales of the accused product, within the district.
• Core Dispute: Plaintiff alleges that Defendants’ "Smart Mirror 4 Pro" system infringes a patent related to using time-of-flight scanners to obtain contactless measurements for fitting and fabricating custom eyeglasses.
• Technical Context: The technology at issue pertains to the field of opticianry, specifically the use of 3D scanning systems like Lidar to automate and improve the accuracy of capturing anatomical and frame-fit data required for manufacturing prescription lenses.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendants with actual notice of the asserted patent and the alleged infringement via a letter dated April 14, 2023, approximately five months prior to filing the suit. This event is cited as a basis for the willfulness allegation.

Case Timeline

Date	Event
2017-12-22	’472 Patent Priority Date
2023-02-14	’472 Patent Issue Date
2023-04-14	Plaintiff sends notice letter to Defendant
2023-09-19	Complaint Filing Date

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

U.S. Patent No. 11,579,472 - System and Method of Obtaining Fit and Fabrication Measurements For Eyeglasses Using Depth Map Scanning

• Patent Identification: U.S. Patent No. 11,579,472, issued February 14, 2023.

The Invention Explained

• Problem Addressed: The patent describes challenges in obtaining accurate measurements for fitting eyeglasses, noting that prior digital methods could suffer from scaling inaccuracies or require impractical user actions, such as holding a physical reference scale near the face during an imaging session (’472 Patent, col. 2:5-10, 2:31-40). The patent also notes that key fitting parameters depend on the individual's anatomy and natural posture, which are difficult to measure consistently (’472 Patent, col. 2:18-30).
• The Patented Solution: The invention proposes a system and method that uses a time-of-flight (ToF) scanner, such as Lidar, to create one or more depth maps of a person wearing eyeglass frames (’472 Patent, Abstract). Because ToF scanners directly measure distance, the system can determine the position of measurement points in a "real measurement scale" without a separate physical reference object, thereby calculating accurate three-dimensional coordinates and fabrication measurements from that data (’472 Patent, col. 3:1-15).
• Technical Importance: This approach enables contactless and passive measurement capture, which can be integrated into handheld devices and may improve the convenience and accuracy of the eyeglass fitting process compared to manual or earlier digital techniques (’472 Patent, col. 2:49-56).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims, with a specific focus on independent method claim 17 (Compl. ¶37, ¶45).
• Claim 17 recites a method with the following essential elements:
  • Providing eyeglass frames.
  • Providing an electronic device with a camera, a time-of-flight scanner, and a processor running application software that uses the scanner to measure distances.
  • Scanning the eyeglass frames while worn to produce at least one depth map, with scan distances in a "first measurement scale."
  • Utilizing the application software to identify "common measurement points" within the depth map(s).
  • Generating three-dimensional coordinates for the measurement points in the "first measurement scale."
  • Utilizing the application software to calculate fabrication measurements between the three-dimensional coordinates.
• The complaint reserves the right to assert other claims of the ’472 Patent (Compl. ¶39).

III. The Accused Instrumentality

Product Identification

• The "Smart Mirror 4 Pro" (the "Accused Product") (Compl. ¶3).

Functionality and Market Context

• The complaint alleges the Smart Mirror 4 Pro is a system for obtaining "fast, convenient, precise, accurate, and safe measurements" for eyewear "without physical contact" (Compl. ¶40). A marketing image from a course sponsored by Defendant shows a practitioner using a handheld device to scan a customer wearing frames, illustrating the contactless nature of the system (Compl. ¶40).
• The Accused Product is alleged to use a "LIDAR scanner" to capture digital measurements, including "pupillary distances, pupillary heights and vertex distance," and to retain the measurements needed for lens manufacturing (Compl. ¶41).
• Plaintiff alleges that it sells a directly competing product, the "OptikamPad," which practices the invention, and that it has been damaged by lost sales to Defendants' Accused Product (Compl. ¶38).

IV. Analysis of Infringement Allegations

Claim Chart Summary

• The complaint alleges that use of the Smart Mirror 4 Pro by Defendants and their customers performs the steps of claim 17 (Compl. ¶45). A user interface screenshot from the Accused Product shows various calculated measurements, such as "PD," "Fitting Height," "Panto Tilt," and "Wrap," which correspond to the types of "fabrication measurements" described in the patent (Compl. ¶41; Ex. D).

U.S. Patent No. 11,579,472 Infringement Allegations

Claim Element (from Independent Claim 17)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
providing an electronic device having a camera, a time-of-flight scanner, and a processor, wherein said processor runs application software...	The Smart Mirror 4 Pro system is alleged to be an electronic device that uses a "LIDAR scanner" (a type of time-of-flight scanner) and software to take measurements.	¶41, ¶45	col. 4:1-14
scanning said eyeglass frames while being worn, therein producing at least one depth map, wherein said scan distances are in a first measurement scale	The system allegedly scans a user wearing frames to take digital measurements, which the complaint implies creates a depth map based on real-scale distances from the Lidar scanner.	¶41, ¶45	col. 4:37-41
identifying said common measurement points within said at least one depth maps utilizing said application software	The complaint alleges that the Accused Product's application software is used to identify common measurement points in the depth map(s).	¶45	col. 5:45-49
identifying said common measurement points... and said scan distances to generate three-dimensional coordinates for said measurement points in said first measurement scale	The complaint alleges the Accused Product uses the identified points and scan distances to generate three-dimensional coordinates.	¶45	col. 8:5-14
calculating fabrication measurements between said three dimensional coordinates in said first measurement scale utilizing said application software	The Accused Product allegedly calculates and retains "all the measurements needed to manufacture lenses," such as pupillary distance and pantoscopic tilt.	¶41, ¶45	col. 8:15-23

Identified Points of Contention

• Scope Questions: The infringement analysis may focus on the scope of the term "common measurement points." It raises the question of whether this term requires specific anatomical landmarks and frame reference points as detailed in the patent’s embodiments, or if it can be interpreted more broadly to cover any set of data points used by the software to derive measurements.
• Technical Questions: A key factual question may be how the Accused Product "identif[ies]" the measurement points. Does the "application software" perform this step automatically, or does it require significant manual input from an operator to select points on the screen? The evidence provided does not detail this part of the process, which could be a point of dispute regarding whether the accused method meets this claim limitation.

V. Key Claim Terms for Construction

The Term: "common measurement points"

• Context and Importance: This term is recited in two separate method steps: the "identifying" of the points and the subsequent "generating" of 3D coordinates. The definition of this term is critical because it dictates what the accused software must be capable of locating and processing to infringe. Practitioners may focus on this term because its construction will define the specific software functionality required to perform the claimed method.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification refers to a variety of measurements (e.g., lens length, pupil height, pantoscopic tilt) that are derived from "measurement points," suggesting the term is a general descriptor for the various endpoints needed for these calculations (’472 Patent, Table 1, col. 5:26-58).
  • Evidence for a Narrower Interpretation: The specification's figures and detailed description illustrate specific examples, such as "measurement points 26A, 26B" on the eyeglass frame and "the centers of the eyes" on the person (’472 Patent, col. 5:49-54; Fig. 5). A party could argue that "common measurement points" requires a specific combination of points on both the frame and the person's face, as shown in the preferred embodiments.

The Term: "first measurement scale"

• Context and Importance: The claim requires that the scan distances, and the 3D coordinates generated from them, exist in a "first measurement scale." This term appears central to the patent’s solution for overcoming the scaling problems of prior art. The infringement analysis will depend on whether the Accused Product’s method for determining real-world dimensions meets this definition.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that time-of-flight data "very accurately represents how far the time-of-flight system is from the various features on the person's face in real scale" (’472 Patent, col. 4:55-60). This language may support an interpretation that "first measurement scale" simply means the inherent, true-to-life scale (e.g., millimeters) derived directly from the physics of the ToF sensor.
  • Evidence for a Narrower Interpretation: The patent’s background distinguishes the invention from prior art that required imaging a physical scale or counting pixels to establish scale (’472 Patent, col. 2:31-48). A party could argue that the term is defined in contrast to these methods and that any system using secondary calibration or post-processing to establish its scale does not operate in the claimed "first measurement scale."

VI. Other Allegations

Indirect Infringement

• The complaint alleges both induced and contributory infringement.
  • Inducement: The inducement claim is based on allegations that Defendants provide instructions and training (including sponsored courses) that "direct the end-users as to how to use the Accused Product" to perform the infringing method, with knowledge of the ’472 patent (Compl. ¶40, ¶46, ¶64).
  • Contributory Infringement: The contributory infringement claim is based on the allegation that the Accused Product contains "special features that are specifically designed to be used in an infringing way" and is not a "staple article of commerce suitable for substantial non-infringing use" (Compl. ¶65).

Willful Infringement

• The complaint alleges willful infringement based on two grounds: (1) that Defendants knew or should have known of the ’472 Patent since its issuance date of February 14, 2023, and (2) that Defendants received actual notice via a letter dated April 14, 2023, and continued their allegedly infringing activities unabated (Compl. ¶51-57).

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

• A core issue will be one of definitional scope: can the term "common measurement points," which is not explicitly defined, be construed broadly to cover any data points used by the accused software, or will it be limited to the specific types of frame and anatomical landmarks illustrated in the patent’s exemplary embodiments?
• A key evidentiary question will be one of automated functionality: does the accused "application software" itself perform the claimed step of "identifying" the measurement points, as required by claim 17, or does this step rely on manual user input in a way that might place the activity outside the claim's scope?
• Given that end-users perform the asserted method claim, the case may turn on proof of intent for indirect infringement: can the plaintiff demonstrate that the defendant, through its marketing, user manuals, and training courses, possessed the specific intent to encourage its customers to use the "Smart Mirror 4 Pro" in a manner that practices every limitation of the patented method?