DCT
1:21-cv-01174
Digital Landscape Inc v. Maui Jim Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Digital Landscape Inc. (California)
- Defendant: Maui Jim USA, Inc. and Maui Jim, Inc. (Illinois)
- Plaintiff’s Counsel: Zhen Law Firm
- Case Identification: 1:21-cv-01174, C.D. Ill., 08/08/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of Illinois because a substantial part of the alleged infringing acts occurred there and Defendants maintain an established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s process for manufacturing its bifocal reader sunglasses infringes a patent related to a method for making thin, multifocal polarized sunglasses.
- Technical Context: The technology concerns manufacturing processes for sunglass lenses that integrate both polarization and a multifocal segment into a thin lens blank, aiming to reduce production costs associated with traditional lens grinding.
- Key Procedural History: The current filing is a Second Amended Complaint. Plaintiff alleges it provided Defendants with formal notice of the patent-in-suit on or around September 15, 2017, a fact that may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-09-01 | ’935 Patent Priority Date |
| 2006-08-22 | ’935 Patent Issue Date |
| 2017-09-15 | Plaintiff's Notice Letter to Defendant |
| 2022-08-08 | Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,093,935 - “Multifocal polarized sunglasses and lenses”
The Invention Explained
- Problem Addressed: The patent’s background section describes that making multifocal and polarized prescription sunglasses traditionally involves grinding relatively thick and costly lens blanks down to a suitable thickness for wear ('935 Patent, col. 1:15-26). It further notes that while thinner, less expensive "plano" lenses exist, these have not previously been made with both a multifocal segment and polarization ('935 Patent, col. 1:31-40).
- The Patented Solution: The invention claims to solve this problem by providing methods for producing thin, multifocal, polarized sunglasses without the need for grinding the lens layers ('935 Patent, Abstract; col. 2:9-17). The process involves starting with a thin polarized lens blank that already includes a multifocal segment and then simply edging it to fit a frame, thereby eliminating the costly and time-consuming grinding step ('935 Patent, col. 4:61-68).
- Technical Importance: The described process aims to significantly reduce the material costs and manufacturing effort required to produce multifocal polarized sunglasses, thereby making the technology more accessible ('935 Patent, col. 4:59-68).
Key Claims at a Glance
- The complaint asserts independent claim 11 ('935 Patent, Compl. ¶10).
- The essential elements of Claim 11 are:
- A process for making sunglasses, comprising:
- providing a pair of polarized lens blanks, wherein each of the polarized lens blanks includes a bifocal segment, and wherein each of the polarized lens blanks has a thickness of less than 5 millimeters without grinding;
- providing a sunglasses frame;
- edging the polarized lens blanks to fit within the sunglasses frame; and
- setting the edged polarized lens blanks in the sunglasses frame.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants' "bifocal sunglasses," specifically identified as the "Reader (or Reading) line of sunglasses," with a list of over twenty specific models provided (Compl. ¶8, Exhibits B-V).
Functionality and Market Context
The accused products are sunglasses that feature a bifocal segment for near-vision tasks like reading (Compl. ¶8). The complaint alleges that these products utilize "PolarizedPlus2®" technology, which provides a polarizing layer (Compl. ¶12). It further alleges, on information and belief, that the products are made from polycarbonate, a material that allows for thinner lenses compared to traditional glass or plastic (Compl. ¶12). A product image from an online retailer shows the 'Maui Jim Stingray 103 Bifocal Reading Sunglasses,' which feature lenses with a visible bifocal segment set within a sunglass frame (Compl. ¶12, Exhibit B).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products are made using the patented process, thus infringing under 35 U.S.C. § 271(g) (Compl. ¶10).
’935 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A process for making sunglasses, comprising: providing a pair of polarized lens blanks, wherein each of the polarized lens blanks includes a bifocal segment... | The complaint alleges Defendants' accused products provide a polarizing layer ("PolarizedPlus2®") and a bifocal segment. The complaint states it can be "reasonably inferred" that the accused sunglasses are made using a process for making sunglasses. | ¶12 | col. 5:9-13 |
| ... and wherein each of the polarized lens blanks has a thickness of less than 5 millimeters without grinding; | On "information and belief," the complaint alleges the accused products are made from polycarbonate, which allows for lenses thinner than 5 millimeters, and that this accommodates for the production of a final sunglass blank without grinding any of the layers. | ¶12 | col. 5:13-16 |
| providing a sunglasses frame; | The complaint alleges that webpages for the accused products (Exhibits "B"-"V") show that they are provided with sunglass frames. | ¶13 | col. 5:17 |
| edging the polarized lens blanks to fit within the sunglasses frame; and setting the edged polarized lens blanks in the sunglasses frame. | The complaint alleges that the accused products are "sized and shaped for the sunglasses frame," which it contends reads on the elements of edging the blanks to fit and setting them in the frame. The existence of the final, assembled sunglasses is used as evidence of these steps. | ¶13 | col. 5:18-21 |
Identified Points of Contention
- Process vs. Product Evidence: The complaint asserts a process claim but bases its allegations primarily on an analysis of the final product. The central allegation—that the process begins with lens blanks that are less than 5mm thick and are not ground—is made "on information and belief" and inferred from the use of polycarbonate material (Compl. ¶12). A key question for the court will be whether Plaintiff can produce direct evidence of Defendants' manufacturing process to substantiate these inferences.
- Technical Questions: What evidence supports the allegation that no "grinding" occurs in Defendants' process? The complaint does not provide specific factual support for this negative limitation beyond inference. The distinction between "edging" the lens to fit a frame (a claimed step) and "grinding" the lens surfaces (an excluded step) may become a central technical dispute.
V. Key Claim Terms for Construction
- The Term: "without grinding"
- Context and Importance: This term is a negative limitation and is core to the patent's purported novelty. The infringement analysis hinges on whether Defendants' manufacturing process for the accused sunglasses avoids "grinding." Practitioners may focus on this term because if Defendants' process includes any step that falls within the definition of "grinding," the infringement claim would fail.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., prohibiting only major shaping): The patent contrasts its invention with the prior art practice of "grinding relatively thick lens blanks down to the shape needed for the prescriptions" ('935 Patent, col. 1:15-18). This context may support an interpretation that "grinding" refers to the substantial removal of material to create an optical correction, potentially excluding minor surface finishing or polishing steps.
- Evidence for a Narrower Interpretation (i.e., prohibiting any abrasive shaping): The patent repeatedly emphasizes the elimination of grinding as a key advantage, stating "the time and effort expended in grinding thick lenses down to wearable thicknesses is eliminated with the present invention" ('935 Patent, col. 4:63-65). An embodiment described in the summary of the invention refers to a thickness of less than 5 millimeters "without grinding of any of the layers," which could support a very strict interpretation that prohibits any grinding on any layer of the lens blank prior to edging ('935 Patent, col. 2:13-14).
VI. Other Allegations
- Indirect Infringement: The primary theory of infringement is under 35 U.S.C. § 271(g), which holds liable those who import, offer to sell, sell, or use within the U.S. a product which is made by a process patented in the U.S. (Compl. ¶10). The complaint also makes a conclusory allegation of inducing infringement by customers who "use the Accused Products" (Compl. ¶10), though the core of the case appears to rest on the § 271(g) claim related to manufacturing.
- Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶18). This allegation is based on the assertion that Defendants have had knowledge of the ’935 Patent since "at least about or around September 15th, 2017," when Plaintiff allegedly provided formal notice via a letter (Compl. ¶16). Continued sales after this alleged notice date form the basis of the willfulness claim (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be an evidentiary one: can Plaintiff, through discovery, uncover direct evidence that Defendants' manufacturing process aligns with the specific steps of Claim 11? The case will depend on moving beyond the inferences made in the complaint to factual proof of how the accused sunglasses are actually made, particularly regarding the initial thickness of the lens blanks and the absence of a "grinding" step.
- The case will likely turn on a question of claim construction: what is the precise scope of the negative limitation "without grinding"? Whether this term is construed to prohibit only the substantial grinding of thick blanks, or if it bars any abrasive surface treatment of the lens layers prior to edging, will be critical in determining infringement.
- A third key question is one of process versus product: the litigation will focus not on the features of the final sunglasses themselves, but on whether they are the direct result of the specific, multi-step manufacturing process recited in Claim 11. Plaintiff bears the burden of proving this connection under 35 U.S.C. § 271(g).