DCT
1:19-cv-00276
Oakley Inc v. Third Coast Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: Third Coast Products, LLC d/b/a iLumen8 (Colorado)
- Plaintiff’s Counsel: Schiff Hardin LLP; Knobbe, Martens, Olson & Bear LLP
- Case Identification: 1:19-cv-00276, N.D. Ill., 01/14/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant's regular and established place of business within the district, as well as the offering for sale and sale of accused products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s iLumen8 UV Safety Glasses infringe a design patent covering the ornamental appearance of an eyeglass.
- Technical Context: The dispute is in the field of performance and lifestyle eyewear, a market where unique and recognizable ornamental designs can be a significant commercial driver.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-05 | '180 Patent Priority Date |
| 2012-05-08 | '180 Patent Issue Date |
| 2019-01-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D659,180 - "Eyeglass"
- Patent Identification: U.S. Design Patent No. D659,180, titled "Eyeglass," issued May 8, 2012.
The Invention Explained
- Problem Addressed: The patent does not explicitly state a problem, which is typical for a design patent. The implicit goal is the creation of a new, original, and ornamental design for eyewear that is aesthetically distinct from prior designs.
- The Patented Solution: The patent protects the specific visual appearance of an eyeglass, not its functional or utilitarian features. The protected design is defined by the solid lines in the patent's drawings, which depict a wraparound, single-lens shield style with specific contours along the brow line and temple arms (D'180 Patent, Figs. 1-6). The patent explicitly notes that features shown in broken lines are for illustrative purposes only and do not form part of the claimed design (D'180 Patent, col. 1:47-49).
- Technical Importance: The complaint alleges that Oakley's designs are "instantly and universally recognized for their innovative technology and distinctive style," suggesting that unique aesthetics are a core component of the brand's market position (Compl. ¶6).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for an eyeglass, as shown and described" (D'180 Patent, col. 1:42-43).
- The essential features of the claimed design, as depicted in the solid-line drawings, include:
- A continuous, single-piece lens with a distinct curvature.
- A frame structure that integrates with the top edge of the lens.
- Temple arms with a specific angular and sculptural shape.
- A defined nose piece assembly.
III. The Accused Instrumentality
Product Identification
- The accused product is the "iLumen8 UV Safety Glasses" (Compl. ¶9).
Functionality and Market Context
- The complaint identifies the accused product as eyewear sold through various online retailers, including amazon.com (Compl. ¶10). The primary allegation is that the ornamental design of the accused product is a "nearly identical copy of Oakley's patented design" (Compl. ¶16). The complaint provides a side-by-side visual comparison showing a photograph of the accused iLumen8 UV Safety Glasses next to a drawing from the '180 Patent to support this allegation (Compl. p. 4).
IV. Analysis of Infringement Allegations
Design patent infringement analysis is based on the "ordinary observer" test, which assesses whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint's allegations are presented visually rather than in a traditional textual claim chart.
'180 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an eyeglass, as shown and described. | The overall visual appearance of the iLumen8 UV Safety Glasses is alleged to be "substantially similar" to the design claimed in the '180 Patent. The complaint supports this by presenting a side-by-side comparison juxtaposing a photo of the accused product with a drawing from the patent. | ¶14; p. 4 | col. 1:42-43 |
- Identified Points of Contention:
- Scope Questions: The test for design patent infringement requires the ordinary observer to view the patented design in the context of the prior art. A potential point of contention will be the scope of the '180 Patent's design in light of pre-existing eyewear designs. The degree of similarity required for infringement may be influenced by how crowded the design field was at the time of invention.
- Technical Questions: A central question is whether the visual differences between the accused product and the patented design are significant enough to be noticed by an ordinary observer. The analysis will depend on a detailed comparison of the products, focusing only on the features shown in solid lines in the patent drawings, as the patent explicitly disclaims the portions shown in broken lines (D'180 Patent, col. 1:47-49).
V. Key Claim Terms for Construction
In a design patent case, claim construction does not focus on textual terms but on the scope of the claimed design as a whole, as depicted in the drawings.
- The Term: "The ornamental design for an eyeglass"
- Context and Importance: The entire infringement analysis hinges on the visual scope of this "term." The core dispute will be whether the accused product's design is substantially the same as the claimed design. Practitioners may focus on the patent's disclaimer regarding broken lines, as this directly limits the scope of what is protected.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the "ordinary observer" test focuses on the overall visual impression of the design, and that minor differences in individual elements should not defeat a finding of infringement if the designs are the same in overall appearance. The claim itself is for the "design for an eyeglass," suggesting a holistic comparison (D'180 Patent, col. 1:42-43).
- Evidence for a Narrower Interpretation: A party may argue that the disclaimer—"The broken line portions of the drawings are for illustrative purposes only and form no part of the claimed design"—strictly limits the protected design to only the features depicted in solid lines (D'180 Patent, col. 1:47-49). Any visual similarity attributable to the unclaimed (broken-line) portions is legally irrelevant to the infringement analysis.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement, stating that Defendant's acts were "knowing[], intentionally, and willfully" undertaken (Compl. ¶14). The factual basis for this allegation includes the assertion that Defendant had "actual knowledge of Oakley's rights" and that the accused product is a "nearly identical copy," which suggests "reckless disregard" for Oakley's patent rights (Compl. ¶¶15, 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused iLumen8 glasses substantially the same as the claimed design in the '180 Patent, when viewed in the context of the relevant prior art in the field of eyewear?
- A key legal question will be the impact of the patent's disclaimer: How does the explicit exclusion of the broken-line portions from the claimed design affect the infringement analysis? The case may turn on whether the accused product is substantially similar to the solid-line features of the patented design, considered in isolation from the disclaimed environmental structure.
- A central evidentiary question will be the basis for willfulness: What specific evidence can Plaintiff provide to establish that Defendant had pre-suit knowledge of the '180 Patent itself, as opposed to general familiarity with the Oakley brand, to meet the standard for willful infringement?