DCT

2:17-cv-04163

Water Industries Inc v. Great Neck Saw Manufacturers Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-04163, E.D.N.Y., 07/13/2017
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because the Defendant is incorporated in New York and resides and has a principal place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s "Black & Green LED Safety Glasses" infringe four patents related to the construction and design of lighted eyeglasses.
  • Technical Context: The technology concerns hands-free lighting integrated into eyewear, a product category aimed at consumers and professionals for tasks like reading or working in low-light conditions.
  • Key Procedural History: The complaint does not provide sufficient detail for analysis of key procedural history.

Case Timeline

Date Event
2001-11-07 ’664 Patent Priority Date
2008-05-27 U.S. Patent No. 7,377,664 Issues
2009-09-30 ’524, ’266, and ’744 Patents Priority Date
2012-08-07 U.S. Patent No. 8,235,524 Issues
2013-05-21 U.S. Patent No. 8,444,266 Issues
2014-12-02 U.S. Patent No. 8,899,744 Issues
2017-07-13 Complaint Filing Date

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

U.S. Patent No. 7,377,664 - LIGHTING DEVICE

The Invention Explained

  • Problem Addressed: The patent describes issues with prior lighted glasses, including inefficient illumination of reading areas and glare caused by stray light from the mounted source reflecting or refracting off the eyeglass lens into the wearer's eye (’664 Patent, col. 2:12-28).
  • The Patented Solution: The invention proposes a lighting module for eyewear that incorporates a "blinder device" positioned between the light source (e.g., an LED) and the lens (’664 Patent, Abstract). This physical barrier is designed to block stray light paths toward the wearer's eye, thereby reducing glare without obstructing the primary forward-projecting light beam (’664 Patent, col. 11:19-27; Fig. 16).
  • Technical Importance: This approach aimed to improve the usability of lighted eyewear by directly addressing the user-experience problem of reflected glare, which could cause discomfort and eye-strain (’664 Patent, col. 2:12-28).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶14).
  • Essential elements of claim 11 include:
    • at least one lens;
    • a pair of light sources on either side of the lens for projecting light forwardly; and
    • a corresponding pair of blinder devices, with each blinder device extending between the lens and a respective light source to minimize glare from stray light reflected or refracted by the lens into a wearer's eye.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,235,524 - ILLUMINATED EYEWEAR

The Invention Explained

  • Problem Addressed: The patent identifies aesthetic and functional drawbacks in prior lighted glasses, such as bulky external modules, unsightly appearance, and reliability issues with electrical wires running across the hinge mechanism between the temple arms and the front frame (’524 Patent, col. 1:47-2:60).
  • The Patented Solution: The invention discloses an eyewear design where all electronic components—the light source, power source (batteries), and switch—are integrated entirely within the temple arms (’524 Patent, col. 3:4-34). It specifically describes a "narrow width battery compartment" that accommodates thin, disc-shaped batteries in a "non-overlapping, side-by-side arrangement," allowing the temple arms to maintain a slim profile similar to conventional eyeglasses (’524 Patent, col. 3:15-34).
  • Technical Importance: This integrated design sought to make lighted eyewear more aesthetically acceptable and robust by concealing the electronics and eliminating the need for fragile wires to cross the frame's pivot points (’524 Patent, col. 3:35-44).

Key Claims at a Glance

  • The complaint asserts independent claim 68 and dependent claims 69-72 (Compl. ¶19).
  • Essential elements of independent claim 68 include:
    • a pair of elongate temple arm members;
    • a cross-frame member extending between the forward ends of the temple arms;
    • a forwardly facing opening at the forward end of each temple arm;
    • an LED in each opening for projecting light forwardly;
    • a battery compartment in each temple arm;
    • a plurality of disc-shaped batteries received in each battery compartment; and
    • an enlarged portion of each temple arm where the battery compartment is formed, with the compartment being slightly larger than the diameter of the batteries.
  • The complaint explicitly asserts dependent claims 69-72.

U.S. Patent No. 8,444,266 - ILLUMINATED EYEWEAR

  • Technology Synopsis: This patent focuses on minimizing glare in lighted eyewear by integrating "inclined blinder surfaces" directly into the front frame portion of the glasses (Compl. ¶9). These surfaces are canted at an oblique angle relative to the frame's lateral axis to block stray light from the LEDs without interfering with the main cone of light directed forward (Compl. ¶24).
  • Asserted Claims: At least claims 6, 7, and 10 are asserted (Compl. ¶24).
  • Accused Features: The accused product is alleged to have a front support with a front frame portion adjacent to the pivot connections and an "inclined blinder surface" that is canted laterally inward to minimize stray light (Compl. ¶24).

U.S. Patent No. 8,899,744 - LIGHTED READING GLASSES

  • Technology Synopsis: This patent relates to the aesthetic integration of electronic components in lighted eyeglasses. It describes mounting electronic assemblies (LED, switch, power source) inside the temple arms and using covers and fasteners that are "substantially concealed from view" when the glasses are worn (Compl. ¶10, ¶29).
  • Asserted Claims: Claim 1 is asserted (Compl. ¶29).
  • Accused Features: The accused glasses are alleged to have electronic compartments in the temple arms with lateral openings, along with covers and fasteners that are concealed when the glasses are in a use position (Compl. ¶29).

III. The Accused Instrumentality

  • Product Identification: The "Black & Green LED Safety Glasses," marketed under the "OEM TOOLS" brand name (Compl. ¶11).
  • Functionality and Market Context: The accused product is described as lighted safety glasses designed to be worn on a user's head to project light forward from LEDs when activated (Compl. ¶12). The complaint states that each temple arm contains an LED, a battery compartment holding multiple disc-shaped batteries, and a switch. It further alleges the glasses have a "blinder device adjacent each LED for minimizing glare" (Compl. ¶12). The complaint includes appended exhibits with images of the accused product (Compl. ¶11, Exs. E-I). Defendant is alleged to make, use, sell, and import the product, distributing it through third-party retailers and websites (Compl. ¶11).

IV. Analysis of Infringement Allegations

  • '664 Patent Infringement Allegations
Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
...at least one lens... The accused product includes a pair of lenses. ¶12, ¶14 col. 5:36-39
...a light source mounted adjacent to the lens for projecting light forwardly therefrom... The accused product has a light source (LED) mounted on the temple arm adjacent to the lens for projecting light forward. ¶12, ¶14 col. 5:46-6:5
...wherein the light source comprises a pair of light sources on either side of the lens... The accused product has an LED mounted on each of its two temple arms, placing the light sources on either side of the lenses. ¶12 col. 5:46-6:5
...a blinder device extending between the lens and the light source to minimize glare from stray light from the light source reflected or refracted by the lens into a wearer's eye... The accused product has a "blinder device adjacent each LED for minimizing glare from the LED." ¶12, ¶14 col. 11:19-27
...and the blinder device comprises a corresponding pair of blinder devices... The accused product has a blinder device adjacent to each of the two LEDs. ¶12, ¶14 col. 12:46-51
  • '524 Patent Infringement Allegations
Claim Element (from Independent Claim 68) Alleged Infringing Functionality Complaint Citation Patent Citation
a pair of elongate temple arm members each having forward and rearward ends; The accused product has a pair of temple arms. ¶12, ¶19 col. 9:11-13
a cross-frame member extending laterally between the forward ends of the temple arm members; The accused product contains a cross frame member extending between the forward ends of the temple arms. ¶12, ¶19 col. 8:1-3
a forwardly facing opening in each of the temple arm members at the forward ends thereof; Each temple arm of the accused product allegedly has a forward facing opening mounting an LED. ¶12, ¶19 col. 29:19-23
an LED received in each of the forwardly facing openings for projecting light forwardly from the cross-frame member; An LED is allegedly mounted in the forward facing opening of each temple arm to project light forwardly. ¶12, ¶19 col. 10:40-44
a battery compartment in each of the temple arm members; Each temple arm of the accused product allegedly contains a battery compartment. ¶12, ¶19 col. 14:29-32
a plurality of disc-shaped batteries received in each of the battery compartments... A plurality of disc-shaped batteries are allegedly contained in the battery compartment of the accused product. ¶12, ¶19 col. 15:10-15
an enlarged portion of each of the temple arm members in which the battery compartments are formed... Each temple arm of the accused product has an enlarged portion that contains the battery compartment. ¶12, ¶19 col. 9:43-54
  • Identified Points of Contention:
    • Scope Questions: The infringement analysis for the ’664 and ’266 Patents may raise the question of whether the accused product's alleged "blinder device" or "inclined blinder surface" meets the functional limitations of the claims. Specifically, the court may need to determine if the accused structure is positioned and configured to "minimize glare from stray light from the light source reflected or refracted by the lens," as required by claim 11 of the '664 Patent.
    • Technical Questions: For the ’524 Patent, the complaint alleges the presence of a battery compartment with disc-shaped batteries but does not specify their arrangement (Compl. ¶12). A key technical question may be whether the batteries in the accused product are arranged in the "non-overlapping" configuration taught by the patent, which is central to achieving the claimed thin, aesthetically-pleasing temple arm design (’524 Patent, col. 3:15-34).

V. Key Claim Terms for Construction

  • The Term: "blinder device" (’664 Patent, Claim 11)

  • Context and Importance: This term is the central feature of the asserted claim of the '664 Patent. The infringement dispute will likely depend on whether the structure identified on the accused product falls within the scope of this term, which is defined functionally in the claim.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim itself provides a functional definition: a device that "extend[s] between the lens and the light source to minimize glare from stray light" (’664 Patent, col. 12:48-51). This language could support construing the term to cover any structure that performs this function in this location.
    • Evidence for a Narrower Interpretation: The specification's embodiments depict a specific "integrally formed blinder extension" (e.g., element 154 in Fig. 16) as part of the light module housing (’664 Patent, col. 11:13-15). A defendant may argue that the term should be limited to such an integral plastic projection, rather than any structure that happens to be adjacent to the LED.

  • The Term: "non-overlapping arrangement" (’524 Patent, Claim 1)

  • Context and Importance: This term is critical to the ’524 Patent’s claimed advance over prior art, as it enables a "narrow battery compartment" for a slim temple arm profile. Practitioners may focus on this term because infringement will depend on the physical layout of the batteries inside the accused product.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language requires that a "pair of the disc batteries are received in a non-overlapping arrangement" where their "main surfaces" face the inner and outer walls of the temple arm (’524 Patent, col. 30:27-33). This could be argued to broadly cover any configuration other than stacking the batteries directly on top of one another.
    • Evidence for a Narrower Interpretation: The specification repeatedly describes the invention as using a "non-overlapping, side-by-side arrangement" to achieve its aesthetic goals (’524 Patent, col. 3:23-26). This consistent description of a "side-by-side" configuration could be used to argue for a narrower construction that excludes other potential non-stacked arrangements, such as an end-to-end configuration.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead separate counts for indirect infringement. The allegations focus on direct infringement under 35 U.S.C. § 271(a) through acts of making, using, selling, offering for sale, and importing the accused product (Compl. ¶¶14, 19, 24, 29).
  • Willful Infringement: The complaint alleges willful infringement for all four patents-in-suit. The basis for willfulness is alleged to be post-suit knowledge, stating that Defendant received "actual notice of the... patent and of the infringement alleged herein at least as of the date it was served with this Complaint" (Compl. ¶¶16, 21, 26, 31). The complaint also notes that the extent of any pre-suit knowledge "will be confirmed during discovery" (Compl. ¶16).

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

  • A central issue will be one of functional scope: for the '664 and '266 patents, does the accused product's alleged anti-glare feature perform the specific function required by the claims—that is, minimizing glare specifically from light that has been "reflected or refracted by the lens"—or does it merely block direct line-of-sight glare in a way that falls outside the claim's scope?
  • A key factual question will concern internal construction: for the '524 and '744 patents, what is the actual physical arrangement of the batteries and electronic components within the temple arms of the accused product? The case may turn on whether this internal design meets the "non-overlapping" battery arrangement and "substantially concealed" component limitations that are central to the patents' claims of improved aesthetics and a slim profile.