MD Optical Franchise LLC v. 2020 Vision Center LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: M&D Optical Franchise, LLC (Florida)
  • Defendant: 20/20 Vision Center, LLC (Delaware)
  • Plaintiff’s Counsel: Grimes LLC
• Case Identification: 9:18-cv-80023, S.D. Fla., 02/08/2018
• Venue Allegations: Venue is alleged to be proper as Defendant is subject to personal jurisdiction in the district, making it a resident for venue purposes, and because a substantial part of the events giving rise to the lawsuit occurred in the district.
• Core Dispute: Plaintiff alleges that Defendant committed tortious interference with Plaintiff's business relationships by sending letters to its franchisees that contained allegedly baseless accusations of patent infringement against a third-party service provider.
• Technical Context: The dispute centers on technology for telehealth-based eye examinations, a field that aims to increase access to optometry services by allowing technicians and equipment at one location to be remotely operated or supervised by a licensed practitioner at another.
• Key Procedural History: The complaint states that Defendant filed a separate lawsuit in New York against Vision Precision Holdings, LLC (VPH), a non-party that provides services to Plaintiff's franchisees. Plaintiff alleges that Defendant sent letters regarding this New York lawsuit and its associated patent claims to Plaintiff's franchisees before the New York lawsuit was formally served, allegedly as an intimidation tactic.

Case Timeline

Date	Event
1997-08-29	U.S. Patent No. 5,914,772 Priority Date
1999-06-22	U.S. Patent No. 5,914,772 Issued
2012-11-06	U.S. Patent No. 9,230,062 Priority Date
c. 2015	VPH and 20/20 enter into a series of agreements
2016-01-05	U.S. Patent No. 9,230,062 Issued
c. May 2016	20/20 alleges VPH is in default of obligations
2017-11-06	20/20 files New York Lawsuit against VPH
January 2018	An M&D Optical franchisee fails to timely execute a planned agreement
c. 2018-02-02	20/20 effectuates service of process in New York Lawsuit
2018-02-08	First Amended Complaint filed in this action

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

U.S. Patent No. 9,230,062 - *"Systems and Methods for Enabling Customers to Obtain Vision and Eye Health Examinations,"* Issued January 5, 2016

The Invention Explained

• Problem Addressed: The patent describes the difficulty, inconvenience, and cost for individuals to obtain regular and comprehensive eye examinations, which often leads to sporadic care and missed opportunities for early detection of diseases (ʼ062 Patent, col. 2:4-16; col. 3:1-14). Existing automated systems are described as lacking, often providing only minimal screenings without the involvement of a remote practitioner (ʼ062 Patent, col. 4:30-45).
• The Patented Solution: The invention is a networked telehealth system comprising a "customer diagnostic center" with ophthalmic equipment, a server, and a remote "practitioner device" (ʼ062 Patent, Abstract). This architecture allows a remote eye-care practitioner to access examination data, review it, and provide an evaluation or prescription back to the customer, potentially in real-time (ʼ062 Patent, Fig. 1; col. 12:41-54). The system is designed to manage and facilitate connections between a plurality of diagnostic centers and a plurality of remote practitioners (ʼ062 Patent, col. 47:16-24).
• Technical Importance: This technology facilitates a "hub-and-spoke" model for eye care, potentially expanding the reach of licensed optometrists and making comprehensive eye exams more accessible in retail or remote locations.

Key Claims at a Glance

• The complaint does not specify which claims were asserted in the alleged threat letters. Independent claim 1 is representative of the system's architecture.
• Key elements of Independent Claim 1 include:
  • A system with a plurality of diagnostic centers and a plurality of practitioner devices.
  • The diagnostic centers are configured to transmit requests over a network to select eye-care practitioners to administer exams in real-time.
  • At least one server configured to permit practitioners to log into a web-based platform.
  • The server is configured to track "availability data" for the practitioners.
  • The server selects a practitioner to administer an exam based at least in part on analyzing the availability data.
• The complaint does not reserve the right to assert any specific claims.

U.S. Patent No. 5,914,772 - *"Method and Device for Testing Eyes,"* Issued June 22, 1999

The Invention Explained

• Problem Addressed: The patent identifies conventional eye testing procedures as being highly subjective, time-consuming, and reliant on a highly trained specialist to operate the equipment and interpret results, which can introduce errors (ʼ772 Patent, col. 1:8-23).
• The Patented Solution: The invention proposes a more objective and automated method. It uses a computer to interface with and control an autorefractor, an autolensometer, and an autophoropter (ʼ772 Patent, Fig. 1). The system employs novel testing protocols and calculation steps that "do not rely upon subjective interpretation of responses made by the subject" to determine sphere, cylinder, and axis (ʼ772 Patent, col. 2:15-22). The goal is to allow a technician to perform the test, with the resulting data being interpreted later by a refractionist, potentially at a remote location (ʼ772 Patent, col. 2:32-38).
• Technical Importance: This patent represents an early approach to automating the eye refraction process to reduce reliance on on-site specialists and minimize subjective operator error.

Key Claims at a Glance

• The complaint does not specify which claims were asserted in the alleged threat letters. Independent claim 1 is representative of the method.
• Key elements of Independent Claim 1 include:
  • A method for testing an eye comprising obtaining results from an autorefractor, corrected autorefractor, and autolensometer.
  • The method includes steps of calculating sphere, performing a Red-Green test, and calculating cylinder and axis.
  • A key limitation is that the steps of calculating sphere and calculating cylinder and axis "do not rely upon subjective interpretation of responses made by the subject in order to complete the method."
• The complaint does not reserve the right to assert any specific claims.

III. The Accused Instrumentality

Product Identification

• The complaint alleges the infringement accusations were directed at the "telehealth systems and services" provided by a non-party, Vision Precision Holdings, LLC ("VPH"), for Plaintiff's "My Eyelab" franchises (Compl. ¶11, ¶20).

Functionality and Market Context

• The complaint describes the services provided by VPH as part of a "telemedicine system" used by Plaintiff's franchisees (Compl. ¶32). The business model involves Plaintiff selling franchises for "My Eyelab" eye care and glasses retail stores (Compl. ¶9). The functionality of the VPH system is not detailed, but it is implied to be a form of remote eye examination service that franchisees could use as an alternative to employing an in-house optometrist (Compl. ¶32).

IV. Analysis of Infringement Allegations

The complaint does not assert a cause of action for patent infringement. Instead, it alleges that Defendant engaged in tortious interference by sending letters to Plaintiff’s franchisees that accused VPH of “violating 20/20’s patents and other intellectual property rights” (Compl. ¶18). The complaint characterizes these infringement claims as "baseless" and made in "bad faith" (Compl. ¶24). The complaint does not provide a copy of the letter (Exhibit A) or a detailed, claim-by-claim analysis of the alleged infringement accusations made within it.

• Identified Points of Contention:
  To evaluate the allegation that Defendant's infringement assertions were "baseless," a court would likely need to consider the underlying patent issues.
  • Scope Questions (’062 Patent): A central question may be whether the VPH/My Eyelab system constitutes a "system" as claimed, particularly with respect to the server-side functionality. Does the VPH system include a server that actively tracks practitioner "availability data" and uses that data to "select a subset of eye-care practitioners" to handle an exam request, as required by claim 1 of the ’062 Patent?
  • Technical Questions (’772 Patent): A key question may be whether the VPH/My Eyelab telehealth system performs a method where the calculation of sphere, cylinder, and axis "do not rely upon subjective interpretation of responses made by the subject," as required by claim 1 of the ’772 Patent. The answer depends on the specific software protocols and level of patient/practitioner interaction in the VPH system.
  • Evidentiary Questions: What evidence exists to demonstrate how the VPH/My Eyelab system actually operates? The complaint itself does not provide technical details, which would be central to determining whether an infringement accusation was objectively baseless.

V. Key Claim Terms for Construction

While no infringement is directly alleged in this case, the "baselessness" of the accusations referenced in the complaint may turn on the construction of key claim terms.

• Term from the ’062 Patent: "availability data" (claim 1)

  • Context and Importance: The server's use of "availability data" to select a practitioner is a core element of claim 1. The definition of this term is critical to determining whether a system that, for example, simply presents a list of all online practitioners for a user to choose from would infringe. Practitioners may focus on this term because it appears to require a specific, managed matchmaking function by the server.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not appear to provide an explicit definition, which could support an argument for giving the term its plain and ordinary meaning, potentially covering any data indicating if a practitioner is available.
    • Evidence for a Narrower Interpretation: The claim context requires the server to "track" this data and "select a subset" of practitioners based on "analyzing" it (col. 48:50-61). This language may support a narrower construction requiring more than a simple online/offline status indicator, possibly including data like workload, schedule, or other metrics used in an automated selection process (col. 17:4-10).

• Term from the ’772 Patent: "do not rely upon subjective interpretation of responses made by the subject" (claim 1)

  • Context and Importance: This negative limitation is the central feature of the claimed method, distinguishing it from prior art subjective tests. Whether an infringement accusation is baseless could depend entirely on whether the accused method involves any subjective interpretation by the patient.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (i.e., making the claim scope narrower and easier to avoid): The specification repeatedly contrasts its "objective" and "automated" process with traditional "subjective" tests (col. 1:8-19, col. 2:1-5). This could support a very strict interpretation where any reliance on a patient's subjective feedback (e.g., "which is clearer, 1 or 2?") for calculating the final prescription would place a method outside the claim scope.
    • Evidence for a Narrower Interpretation (i.e., making the claim scope broader): The patent distinguishes between subjective analysis used "to complete the method" for calculating sphere/cylinder/axis, and other subjective inputs. The method still requires querying the subject during the Red-Green test and for final lens preference (col. 4:46-52, col. 4:21-23). An argument could be made that only subjective interpretation by the operator is excluded, or that subjective patient feedback is permissible as long as it doesn't directly enter the core calculation formulas for sphere and axis.

VI. Summary of Tortious Interference Allegations

The complaint does not allege indirect or willful patent infringement. Instead, it asserts two counts of "Tortious Interference with an Advantageous Business Relationship," one for legal relief and one for injunctive relief (Compl. p. 6, 7). The core allegations are:

• Existence of a Business Relationship: Plaintiff alleges it has advantageous business relationships with its "My Eyelab" franchisees and the optometrists who work at franchisee locations (Compl. ¶10, ¶35).
• Defendant's Knowledge: Plaintiff alleges Defendant knew of these relationships, having learned about Plaintiff's franchise business through its prior dealings with VPH (Compl. ¶14, ¶36).
• Intentional and Unjustified Interference: The complaint alleges Defendant "intentionally and surreptitiously" sent letters to the franchisees accusing VPH of patent infringement (Compl. ¶18). This act is characterized as an "unjustified" and "malicious attempt to force M&D OPTICAL to the 'negotiating table'" and was allegedly done in "bad faith" because Defendant knew or should have known the infringement claims were "baseless" (Compl. ¶24, ¶26, ¶41).
• Damage: The interference allegedly caused damage, including forcing Plaintiff to expend resources to address franchisee concerns and causing at least one franchisee to fail to timely execute a new franchise agreement (Compl. ¶30, ¶31).

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

This case is not a direct patent infringement suit but rather a business tort case where patent law is a central component. The key questions for the court will likely be:

1. A central issue will be one of motive and baselessness: Did Defendant’s patent infringement assertions, which form the basis of the alleged tortious interference, constitute an improper interference? This inquiry will likely require a predicate analysis of whether those patent assertions were objectively baseless by examining the scope of the ʼ062 and ʼ772 patents relative to the actual technology used in the "My Eyelab" telehealth system.

2. A key evidentiary question will be one of causation and damages: Assuming the interference was improper, what evidence demonstrates that Defendant's letters—rather than other business factors or the existence of the New York lawsuit itself—were the direct and proximate cause of the specific economic harm Plaintiff claims, such as the failure of a franchisee to execute a new agreement?

No probative visual evidence provided in complaint.