Hilsinger Co v. Eyeego LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Hilsinger Company (Delaware / Massachusetts)
  • Defendant: Eyeego, LLC (Washington)
  • Plaintiff’s Counsel: Scott & Bush Ltd
• Case Identification: 1:13-cv-10594, D. Mass., 03/13/2013
• Venue Allegations: Venue is based on Defendant Eyeego’s product sales to retailers in Massachusetts, direct-to-consumer sales in the district via an interactive website, and alleged harm caused to Plaintiff in the state.
• Core Dispute: Plaintiff Hilsinger seeks a declaratory judgment that its eyeglass screw products do not infringe Defendant Eyeego's patent, and that the patent-in-suit is invalid.
• Technical Context: The technology concerns small screws, such as those used in eyeglass hinges, which incorporate a breakaway handle to facilitate easier manipulation and installation.
• Key Procedural History: The complaint alleges that Eyeego first accused Hilsinger of infringement on December 27, 2011. Following over a year of unsuccessful dispute resolution, Eyeego allegedly repeated the infringement accusation to one of Hilsinger's customers. Hilsinger’s invalidity claim is predicated on alleged prior art screws publicly sold since 1999. Notably, the patent-in-suit survived an ex parte reexamination proceeding where the patentability of all 62 original claims was confirmed prior to the filing of this complaint.

Case Timeline

Date	Event
2007-08-06	'403 Patent Priority Date
2008-08-06	'403 Patent Application Filing Date
2011-12-06	'403 Patent Issue Date
2011-12-27	Eyeego accuses Hilsinger of infringement
2012-09-11	'403 Patent Reexamination Certificate Issued (all claims confirmed)
2013-03-08	Eyeego allegedly informs Hilsinger customer of infringement
2013-03-13	Complaint Filing Date

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

U.S. Patent No. 8,070,403 - "Screw with breakaway and methods of using the same"

The Invention Explained

• Problem Addressed: The patent addresses the difficulty of handling and manipulating very small fastening devices, particularly in mechanical and construction industries (e.g., eyeglass repair) ('403 Patent, col. 1:19-22).
• The Patented Solution: The invention is a screw with an elongated stem composed of two parts: a threaded portion that engages with the target hole and a non-threaded portion that serves as a handle. The two portions are connected by a "breakaway"—a structurally weak point. A user can grip the non-threaded handle to guide the screw into a hole, and once the threads are engaged, the handle can be easily snapped off by hand at the breakaway point and discarded ('403 Patent, Abstract; col. 3:5-13).
• Technical Importance: This design simplifies the process of starting small screws in tight spaces by providing a larger, more easily manipulated handle, potentially obviating the need for specialized tools like tweezers or magnetic screwdrivers during initial placement ('403 Patent, col. 3:8-13).

Key Claims at a Glance

• The complaint seeks a declaratory judgment of non-infringement of any valid claim of the ’403 Patent (Compl. ¶27). Independent Claim 1 is representative of the core invention.
• Independent Claim 1 of the ’403 Patent recites:
  • A screw with a screw head.
  • An elongated stem comprising a threaded first portion and a non-threaded second portion extending from the distal end of the threaded portion, with a breakaway in between.
  • The proximal end of the threaded portion is mechanically and physically coupled to the screw head.
  • Crucially, the coupling between the screw head and the threaded portion is not a breakaway.
  • The breakaway releasably couples the non-threaded portion to the threaded portion.
  • The diameter of the non-threaded portion is smaller than the diameter of the threaded portion.
  • The breakaway has a diameter sized so the non-threaded portion can be decoupled from the threaded portion "by hand, without the use of a tool."
• The complaint does not specify other claims but reserves the right to challenge all of them.

III. The Accused Instrumentality

Product Identification

• The complaint identifies Hilsinger’s "Thread-Seeker XLT" screw and an unspecified "new Hilsinger product" as the instrumentalities for which it seeks a declaration of non-infringement (Compl. ¶¶ 19, 23).

Functionality and Market Context

• The complaint describes Hilsinger's product line as "breakaway screw product line[s]" (Relief Requested ¶A). It provides minimal technical detail about the products' operation, other than alleging that the "Thread-Seeker XLT" screw "practices the prior art" that has been available since 1999 (Compl. ¶20).
• Hilsinger is positioned as a "leading provider of protective eyewear, eyewear and eye care accessories" (Compl. ¶1).

IV. Analysis of Infringement Allegations

As this is a complaint for a declaratory judgment of non-infringement, it does not contain affirmative infringement allegations or a claim chart. The complaint states that Eyeego has accused Hilsinger's products of infringement but does not detail Eyeego's specific theory (Compl. ¶19). Hilsinger makes a general denial that its products "do not infringe any valid claim of the ’403 Patent" (Compl. ¶27).

No probative visual evidence provided in complaint.

Identified Points of Contention

The dispute, as framed by the complaint, suggests several key points of contention will arise if Eyeego asserts its patent.

• Scope Questions: The complaint alleges that the '403 Patent claims were "narrowed... numerous times" during prosecution (Compl. ¶13). A central question will be whether the specific limitations added during prosecution are sufficient to distinguish the claims from the "prior art screws" that Hilsinger alleges were sold since 1999 (Compl. ¶10). The interpretation of these narrowing limitations will be critical.
• Technical Questions: A primary technical question will be whether Hilsinger's products, which allegedly embody prior art (Compl. ¶20), possess the specific combination of features required by the claims. This includes not only the presence of a "breakaway" but also the negative limitation that the coupling between the screw head and the threaded stem is not a breakaway, a feature potentially added to overcome prior art ('403 Patent, col. 8:6-9).

V. Key Claim Terms for Construction

The Term: "breakaway"

• Context and Importance: This term is the central feature of the invention. Hilsinger alleges that "prior art screws" also contained a "breakaway, non-threaded portion" (Compl. ¶10). The patentability of the invention and the infringement analysis will therefore depend heavily on how this term is construed and whether its specific definition in the patent distinguishes it from the prior art.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification defines a "breakaway" broadly as "a releasable coupling between a removable piece... and the distal end C of the threaded first portion 20" ('403 Patent, col. 3:45-49). This general definition could potentially encompass a variety of weakened connection points.
  • Evidence for a Narrower Interpretation: Claim 1 adds significant functional language, requiring the breakaway to have a diameter "sized so that the non-threaded second portion is directly decoupled from the threaded first portion ... by hand, without the use of a tool" ('403 Patent, col. 8:17-21). This functional requirement for a clean, tool-less break by hand may support a narrower construction than any simple scored line on a piece of metal.

The Term: "wherein the physical coupling between the second surface of the screw head and the proximal end of the threaded first portion is not a breakaway"

• Context and Importance: Practitioners may focus on this negative limitation because it explicitly distinguishes the permanent head-to-stem connection from the temporary stem-to-handle connection. This limitation was likely added during prosecution to overcome prior art. The infringement and validity analyses will hinge on whether the alleged prior art and Hilsinger's products share this specific structural characteristic.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language suggests any connection that is not "releasably coupled" in the manner of the primary "breakaway" would meet the limitation.
  • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes this distinction, stating "A proximal end A of the threaded first portion 20 is mechanically and physically coupled to the second surface 18... The mechanical and physical coupling... is not a breakaway" ('403 Patent, col. 3:37-43). The consistency of this language across embodiments reinforces its importance as a fundamental, non-negotiable feature of the claimed invention.

VI. Other Allegations

Indirect Infringement

• The complaint seeks a declaration of non-infringement for direct, induced, and contributory infringement (Relief Requested ¶A). However, the complaint provides no specific factual allegations regarding how users might be induced or how its products might contribute to infringement, other than the general sale of the screws.

Willful Infringement

• As a declaratory judgment action brought by the accused infringer, the complaint does not contain an allegation of willfulness against Hilsinger. However, it establishes a timeline for potential willfulness in any countersuit by Eyeego, noting that Hilsinger received notice of the '403 Patent on December 27, 2011 (Compl. ¶19). Hilsinger also makes allegations that could support a future claim for an exceptional case, asserting that the inventor knew of but did not disclose material prior art to the PTO (Compl. ¶18).

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

• A central conflict will be one of validity in view of prosecution history: Can Hilsinger prove by clear and convincing evidence that the '403 patent's claims are invalid based on the alleged 1999 prior art, especially given that the patent's claims were reviewed and confirmed during an ex parte reexamination?
• A key infringement question will be one of limitation and distinction: Assuming the patent is valid, does Hilsinger's "Thread-Seeker XLT" product fall outside the claims by embodying only prior art features, or does it incorporate the specific, potentially distinguishing combination of a permanent head-to-stem coupling and a hand-operable, tool-less "breakaway" as recited in the patent?
• A third potential issue is one of inequitable conduct: Does Hilsinger's allegation that the inventor intentionally withheld known, material prior art from the PTO have sufficient evidentiary support to render the patent unenforceable, a high bar for any challenger to meet?