DCT
2:15-cv-01774
Racing Optics Inc v. Aevoe Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Racing Optics, Inc. (Nevada)
- Defendant: Aevoe Corp. d/b/a MOSHI (California)
- Plaintiff’s Counsel: Snell & Wilmer L.L.P.; Kilpatrick Townsend & Stockton LLP; Higgins Benjamin, PLLC
- Case Identification: 2:15-cv-01774, D. Nev., 09/15/2015
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has previously filed at least seven related patent lawsuits in the District of Nevada, conducts business in the state, and places the accused products into the stream of commerce with the expectation they will be sold and used there.
- Core Dispute: Plaintiff alleges that Defendant’s Moshi iVisor line of "bubble-free" screen protectors infringes three patents related to screen shield technology that utilizes a peripheral adhesive to create a functional air gap over the device's display.
- Technical Context: The technology addresses the common problem of air bubbles forming under traditional, full-adhesive screen protectors by creating a shield that adheres only at the edges, leaving the central viewing area suspended over the screen.
- Key Procedural History: The complaint alleges a contentious history between the parties. Plaintiff asserts it filed its parent patent application in May 2010. It alleges that Defendant's President contacted Plaintiff in mid-2012 regarding this application, years before the patents-in-suit issued. The complaint contrasts Plaintiff's earlier filing date with Defendant's own patent portfolio and litigation campaign related to similar technology, which allegedly relies on a later priority date.
Case Timeline
| Date | Event |
|---|---|
| 2010-05-14 | Priority Date for ’545, ’256, and ’620 Patents (filing of '443 application) |
| 2011-01-18 | Aevoe files provisional application for its own '942 patent |
| 2011-11-01 | Plaintiff's '443 application is published |
| 2012-07-01 | Aevoe allegedly contacts Racing Optics about the '443 application (approx. date) |
| 2013-08-15 | Publication of '311 application (related to '620 patent) |
| 2015-03-10 | U.S. Patent No. 8,974,620 issues |
| 2015-05-14 | Publication of '176 application (related to '256 patent) |
| 2015-08-11 | U.S. Patent No. 9,104,256 issues |
| 2015-09-08 | U.S. Patent No. 9,128,545 issues |
| 2015-09-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,128,545 - "Touch Screen Shield"
Issued September 8, 2015
The Invention Explained
- Problem Addressed: The patent describes the difficulty of applying conventional, full-adhesive protective films to touch screens without trapping "unsightly air bubbles" and notes that such films offer minimal impact protection ('545 Patent, col. 1:35-43).
- The Patented Solution: The invention is a protective shield that attaches to an electronic device's screen only at its outer peripheral portion. This structure creates a planned "planar air bearing," or air gap, between the central part of the shield and the active area of the screen, which eliminates bubble formation during installation and provides a cushioning effect ('545 Patent, Abstract; col. 2:48-54). The specification describes achieving this air gap by, for example, creating tension in the shield by removing only a peripheral portion of a backing liner, which forms a "step" that lifts the shield away from the screen when attached ('545 Patent, col. 2:58-64; Fig. 3).
- Technical Importance: This design offered a solution to a persistent consumer frustration, enabling easy, bubble-free installation of screen protectors while potentially improving impact resistance ('545 Patent, col. 1:44-47).
Key Claims at a Glance
- The complaint asserts independent claim 12 and dependent claims 14-16 and 18-20 (Compl. ¶30).
- Essential elements of independent claim 12 include:
- A combination of an electronic device and a protective shield mounted via an adhesive layer.
- The adhesive layer is disposed about an outer peripheral portion of the shield, surrounding a central portion.
- The central portion of the shield "covers and is lifted off" the device's visual display.
- Air is "trapped between the shield, the touch sensitive electronic visual display, and the adhesive layer."
- The display "maintains touch sensitivity through the shield."
- The complaint reserves the right to assert additional claims (Compl. ¶30).
U.S. Patent No. 9,104,256 - "Touch Screen Shield"
Issued August 11, 2015
The Invention Explained
- Problem Addressed: Similar to its relatives, this patent addresses the problem of air bubbles and optical artifacts (e.g., Newton rings) that result from traditional screen protectors that adhere across the entire screen surface ('256 Patent, col. 4:6-10).
- The Patented Solution: The patent claims both a device and methods for protecting a screen. The core concept is a shield with an adhesive layer applied "only to the inactive area" of the touch screen, ensuring no adhesive covers the active display ('256 Patent, col. 10:60-64). When mounted, the shield's central portion is "lifted off" the screen, creating a continuous air gap that maintains touch sensitivity without optical interference ('256 Patent, col. 10:4-17).
- Technical Importance: This patent further refines the bubble-free concept by explicitly tying the adhesive placement to the "inactive area" of the screen, a design choice intended to preserve the optical clarity of the active display ('256 Patent, col. 4:56-65).
Key Claims at a Glance
- The complaint asserts independent claims 1, 2, 6, and 12, as well as numerous dependent claims (Compl. ¶42).
- Essential elements of independent claim 6 (a combination device claim) include:
- A touch sensitive screen with an "active area and an inactive area."
- A shield with an adhesive layer "applied only to the inactive area so that no part of the shield contacts the active area."
- The shield is mounted so its central portion is "lifted off the touch sensitive screen" and "air is trapped" between them.
- The device "maintains touch sensitivity through the mounted shield."
- The complaint reserves the right to assert additional claims (Compl. ¶42).
U.S. Patent No. 8,974,620 - "Touch Screen Shield"
Issued March 10, 2015
- Technology Synopsis: The ’620 patent claims methods for protecting a touch screen on a handheld electronic device. The methods involve providing a protector with a "spacer" and "exposed adhesive" on its periphery and attaching it to the device's front face to form a space between the protector's transparent window and the screen, thereby preventing bubble formation while allowing for touch operation ('620 Patent, col. 9:1-34).
- Asserted Claims: The complaint asserts claims 1-11, 13, and 14, which include independent method claims 1, 10, 12, 13, and 14 (Compl. ¶53).
- Accused Features: The complaint alleges that the accused iVisor products, and the instructions for their installation, infringe by teaching and performing the claimed methods of applying a peripherally-adhered shield to create an air gap (Compl. ¶¶53, 55, 58).
III. The Accused Instrumentality
Product Identification
- Defendant Aevoe's "Moshi iVisor" product line, including the iVisor AG, iVisor XT, and iVisor Glass variants (Compl. ¶30).
Functionality and Market Context
- The accused products are screen protectors for consumer electronic devices such as the Apple iPhone (Compl. ¶¶30, 36). The complaint alleges their functionality involves an installation method where a user exposes an adhesive positioned only on the "outer periphery" of the protector, aligns it with the device's screen, and presses it into place (Compl. ¶¶36, 47). This process is alleged to result in a protector that is "spaced slightly apart from the screen," creating an air gap while maintaining the screen's touch sensitivity (Compl. ¶35).
- The complaint alleges that Aevoe "dominates the U.S. bubble-free protector market" with this product line, and that it is a "significant component of its $146 million in annual worldwide production of touchscreen protectors" (Compl. ¶13).
IV. Analysis of Infringement Allegations
The complaint alleges that user installation instructions for the accused products, attached as Exhibit E, encourage users to perform infringing steps, such as aligning the product and applying pressure to the outer periphery to secure it in place (Compl. ¶¶34, 36).
’545 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a protective shield mounted to the touch sensitive screen of the electronic device via an adhesive layer | The accused iVisor products are protective shields installed on electronic devices using an adhesive. | ¶30, ¶36 | col. 2:48-51 |
| the adhesive layer disposed about an outer peripheral portion of the shield | The adhesive on the iVisor products is allegedly positioned on the "outer periphery of the protective film." | ¶36 | col. 4:63-65 |
| wherein the central portion of the shield covers and is lifted off the touch sensitive electronic visual display | The installation of the iVisor allegedly results in the shield being "spaced slightly apart from the screen of the electronic device." | ¶35 | col. 2:7-9 |
| wherein air is trapped between the shield, the touch sensitive electronic visual display, and the adhesive layer | The peripheral adhesive allegedly creates an "enclosed 'air bearing'" or trapped air gap. | ¶5, ¶35 | col. 5:39-44 |
| and wherein the touch sensitive electronic visual display maintains touch sensitivity through the shield | The accused product allegedly maintains "the touch sensitivity of the screen through the shield." | ¶35 | col. 2:16-18 |
’256 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a touch sensitive screen for an electronic device, the touch sensitive screen comprising an active area and an inactive area | The accused products are designed for devices like iPhones, which have screens with both active and inactive areas. | ¶36, ¶47 | col. 4:59-60 |
| a shield having an adhesive layer...applied only to the inactive area so that no part of the shield contacts the active area | The complaint alleges the iVisor's adhesive is on the "outer periphery," which it implies corresponds to the inactive area. | ¶47 | col. 10:61-64 |
| wherein the shield is mounted...so that the central portion of the shield is lifted off the touch sensitive screen | The installation of the iVisor allegedly positions the film "spaced slightly apart from the touch screen." | ¶44, ¶47 | col. 4:1-10 |
| and so that air is trapped between the shield, the touch sensitive screen, and the adhesive layer | The installation method allegedly traps air to create a device that infringes the patent. | ¶44, ¶47 | col. 4:5-8 |
Identified Points of Contention
- Scope Questions: A primary question for the ’256 Patent will be whether the accused products' adhesive is applied only to the "inactive area" of the screen as strictly required by Claim 6. Evidence of any adhesive overlapping with the "active area" could be a basis for a non-infringement argument.
- Technical Questions: The patents describe multiple ways to achieve the "lifted off" state, including creating tension via a stepped liner or using a thick peripheral adhesive ('545 Patent, col. 2:5-10, 58-64). A factual question will be which mechanism, if any, the accused products use, and whether the claim language is broad enough to cover it.
V. Key Claim Terms for Construction
The Term: "lifted off" (e.g., ’545 Patent, Claim 12)
- Context and Importance: This term is fundamental to the non-adhesive, air-gap concept. Its construction will determine whether infringement requires a specific mechanism for creating the separation or if any resulting separation suffices. Practitioners may focus on this term because the patents disclose multiple ways to achieve this state, creating ambiguity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract states the shield "preferably does not touch the active area," suggesting a result-oriented definition ('545 Patent, Abstract). The specification also explicitly contemplates forming the air gap simply by using an adhesive that is "sufficiently thick so that the base transparent layer is lifted off of the touch sensitive screen" ('545 Patent, col. 2:5-9). This may support a construction covering any physical separation.
- Evidence for a Narrower Interpretation: The detailed description of a primary embodiment emphasizes that tension created by a "step" in the protective liner "lifts the shield...off of active area 18 to form a planar air bearing" ('545 Patent, col. 5:41-47). A defendant may argue that the term should be limited to this disclosed tensioning mechanism.
The Term: "applied only to the inactive area" (’256 Patent, Claim 6)
- Context and Importance: This limitation is highly specific and potentially dispositive for claims of the ’256 Patent. Infringement hinges on the precise placement of the accused product's adhesive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue "only" should be interpreted as "substantially only," but the plain language makes this challenging.
- Evidence for a Narrower Interpretation: The term "only" is an absolute limiter. The specification distinctly illustrates and describes the "active area 18" and the "inactive area 42" ('256 Patent, Fig. 3; col. 4:59-60), supporting a strict interpretation that the adhesive cannot encroach on the active area whatsoever.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, asserting that Aevoe's product instructions and website documentation actively encourage end-users to install the iVisor products in a manner that directly infringes the patents (Compl. ¶¶33-34, 45). It also pleads contributory infringement, alleging the products are especially made for an infringing use and have no substantial non-infringing uses (Compl. ¶¶37, 48).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint alleges that Aevoe's President contacted Racing Optics in "mid-2012" about the parent application ('443 application) to all three patents-in-suit, thereby establishing knowledge of the core technology years before the patents issued (Compl. ¶¶15, 31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central factual question will be one of precision placement: does the adhesive on Aevoe's iVisor products lie only on the inactive area of an electronic device's screen, as strictly required by claims of the ’256 patent, or does evidence show it encroaching upon the active area?
- A key legal issue will be one of definitional scope: will the term "lifted off," which is central to the claimed invention, be construed broadly to encompass any physical separation between the shield and screen, or will it be narrowed to the specific tension-based mechanism described in the patents' preferred embodiments?
- A significant issue for potential damages will concern the effect of pre-issuance knowledge: how will the court treat the allegation that Aevoe was aware of the parent patent application in 2012, three years before the asserted patents began to issue, in determining whether any infringement was willful?