DCT
2:18-cv-02118
20 20 Vision Center LLC v. DigitalOptometrics LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 20/20 Vision Center, LLC (Delaware)
- Defendant: DigitalOptometrics LLC (Delaware)
- Plaintiff’s Counsel: Bryan Cave Leighton Paisner LLP
- Case Identification: 2:18-cv-02118, E.D.N.Y., 10/15/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a principal place of business within the district, has systematic and ongoing contacts, and has transacted business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s telehealth eye examination system infringes patents related to systems and methods for conducting remote ophthalmic testing and managing the associated data workflow.
- Technical Context: The technology at issue is in the field of teleophthalmology, which enables eye care professionals to conduct comprehensive vision and eye health examinations for patients who are at a different physical location equipped with diagnostic instruments.
- Key Procedural History: This filing is a Second Amended Complaint. The complaint notes that the asserted patents were examined by the U.S. Patent and Trademark Office and found to be novel and non-obvious over prior art.
Case Timeline
| Date | Event |
|---|---|
| 2012-11-06 | Earliest Priority Date for ’062 and ’279 Patents |
| 2016-01-05 | U.S. Patent No. 9,230,062 Issues |
| c. 2016 | Defendant Company Formed / Accused Products Introduced |
| 2018-09-25 | U.S. Patent No. 10,083,279 Issues |
| 2018-10-15 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,230,062 - *"Systems and Methods for Enabling Customers to Obtain Vision and Eye Health Examinations"*
The Invention Explained
- Problem Addressed: The patent’s background describes traditional eye examinations as inconvenient, costly, and time-consuming, which discourages individuals from seeking regular care. It further notes that prior attempts at automated systems were often limited to simple vision screenings and lacked the comprehensive nature of a full examination or the input of a remote practitioner (ʼ062 Patent, col. 3:1-54).
- The Patented Solution: The invention provides a system architecture comprising a physical "customer diagnostic center" with ophthalmic equipment, a central server, and a remote "practitioner device" connected over a network (’062 Patent, Fig. 1). This system allows a patient at the diagnostic center to undergo a comprehensive eye exam, with the resulting data transmitted to a remote eye-care practitioner for review, evaluation, and the generation of an eye health report or prescription, which is then provided to the customer (’062 Patent, Abstract).
- Technical Importance: The technology aims to improve the accessibility and efficiency of comprehensive eye care by centralizing the expertise of licensed practitioners, allowing them to serve patients across multiple distributed diagnostic locations (’062 Patent, col. 4:1-4).
Key Claims at a Glance
- The complaint asserts independent claim 13 and dependent claims 14, 15, and 17 (Compl. ¶50).
- Independent Claim 13 is a system claim directed to at least one server configured to perform several functions, including:
- Permitting eye-care practitioners to log in to a web-based platform.
- Tracking availability data for the practitioners.
- Receiving a request for an eye examination from a diagnostic center.
- Selecting a practitioner to administer the exam based at least in part on the availability data.
- Administering a test with both an "objective portion" and a "subjective portion," where the subjective portion uses an "audio response system."
- Administering the subjective portion using an "iterative process" that involves selecting questions, adjusting equipment based on responses, and determining when sufficient data is collected.
- Receiving and transmitting customer examination and evaluation data between the diagnostic center and the practitioner device.
- Providing an eye health report to the customer.
U.S. Patent No. 10,083,279 - *"Method and Device for Testing Eyes"*
- Patent Identification: U.S. Patent No. 10,083,279 (“’279 Patent”), issued September 25, 2018.
The Invention Explained
- Problem Addressed: Similar to its parent '062 patent, the '279 Patent addresses the need to make comprehensive eye examinations more accessible and efficient by overcoming the time, cost, and convenience barriers of traditional in-person visits (ʼ279 Patent, col. 3:1-34).
- The Patented Solution: The invention claims a server comprising a processor and non-transitory storage media with instructions to execute a specific workflow for a remote eye exam. This workflow includes receiving a request from a diagnostic center, selecting a practitioner, and administering a test that has an objective portion (to derive objective measurements) and a subjective portion that is administered as an "iterative process." This iterative process is defined by selecting questions based on the objective measurements and customer responses, and automatically adjusting ophthalmic equipment based on those responses (’279 Patent, col. 51:4-34; Fig. 6).
- Technical Importance: The patented solution provides a specific logical framework for a server to manage and execute a hybrid examination that integrates objective data into the process for conducting the subjective portion of the exam, enhancing the structure of the remote procedure (’279 Patent, col. 4:50-58).
Key Claims at a Glance
- The complaint asserts independent claim 9 and dependent claims 10, 12, 13, and 15, as well as method claims 17, 18, and 19 which allegedly correspond to the system claims (Compl. ¶82, ¶99).
- Independent Claim 9 is a claim directed to a server with a processor and storage device storing instructions to cause the processor to:
- Permit eye-care practitioners to log in to a network platform.
- Receive a request from a diagnostic center for an eye examination.
- Select an eye-care practitioner to assist with the examination.
- Administer a test utilizing ophthalmic equipment, the test including an objective portion and a subjective portion using an audio response system.
- Administer the subjective portion via an iterative process that includes selecting questions based on objective measurements and customer responses, automatically adjusting equipment, and determining when to conclude.
- Transmit customer examination data to a practitioner device.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s "Tele-Optometry by DigitalOptometrics" system and associated services, referred to as the "Accused Products" (Compl. ¶37).
Functionality and Market Context
- The Accused Products are described as an "optical system" and "optical software" that permit patients at an optical exam location to receive a comprehensive eye examination from a licensed optometrist at a remote location (Compl. ¶36, ¶38). The system relies on "high-definition video conferencing and remote operated optical equipment" (Compl. ¶38).
- The alleged operational workflow involves a patient entering medical history on a tablet, followed by an ophthalmic technician gathering eye data through a series of tests, including a visual eye refraction. This data is then reviewed remotely by a licensed optometrist who can "further refine the corrective lens findings" and issue a prescription (Compl. ¶38-39). A screenshot provided in the complaint shows a remote technician communicating with a patient via HD video conferencing (Compl. p. 10).
- The complaint alleges that Defendant's system uses a "panel of Optometrists" who can serve multiple optical exam locations simultaneously (Compl. ¶40). The products are marketed and distributed to third-party optical providers in several states (Compl. ¶43-44).
IV. Analysis of Infringement Allegations
’062 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one server configured to: permit eye-care practitioners to login to a web-based platform to administer eye examinations to customers over a network in real-time... | The Accused Products use one or more web-based platforms that enable remote technicians and optometrists to log-in and administer eye examinations. | ¶51 | col. 6:8-14 |
| track availability data associated with the eye-care practitioners... | The Accused Products use a "panel of Optometrists" that can serve several locations simultaneously, which allegedly indicates the system tracks practitioner availability. | ¶52 | col. 6:15-22 |
| in response to receiving the request, select the eye-care practitioner to administer the eye examination based, at least in part, on analyzing the availability data... | The server receives a patient's request and selects a remote technician and optometrist from the available panel to administer the examination. | ¶55 | col. 6:23-31 |
| administer one or more tests... the eye examination including an objective portion... and a subjective portion that utilizes an audio response system... | The system enables objective tests (e.g., using an autorefractor) and a subjective portion (e.g., subjective refraction) where a technician converses with the patient via a "live remote video conference unit." | ¶56-58 | col. 6:32-42 |
| wherein the subjective portion of the eye examination is administered using an iterative process that includes: selecting questions to present to the customer... | The subjective refraction involves an iterative process where the patient is asked a series of questions and the phoropter is remotely adjusted based on the patient's responses. | ¶59 | col. 6:43-52 |
| transmit at least a portion of the customer examination data... to a practitioner device associated with the selected eye-care practitioner... | All patient data is reviewed remotely by a licensed Optometrist on a practitioner device. | ¶63 | col. 7:1-5 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "audio response system" can be construed to read on the "live remote video conference unit" (Compl. ¶58) alleged to be used by the accused system. The analysis may explore whether the claim term implies an automated system for presenting questions and receiving responses, as opposed to a general-purpose, real-time communication channel for human conversation.
- Technical Questions: The complaint alleges the system selects a practitioner based on "analyzing the availability data" (Compl. ¶55). The basis for this allegation appears to be the existence of a "panel of Optometrists" (Compl. ¶52). A point of contention could be what evidence demonstrates that the accused server performs this specific analytical and selection function, rather than a human dispatcher or a simpler queuing mechanism.
’279 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A server for providing services related to eye health or vision examinations, wherein the server includes a processor and a non-transitory storage device that stores instructions which cause the processor to: permit eye-care practitioners to login to a network platform... | The Accused Products include telehealth servers with processors and storage that enable remote technicians and optometrists to log in to a web-based platform to administer exams. A screenshot from Defendant's website shows a technician logged into such a platform (Compl. p. 26). | ¶83-84 | col. 51:4-9 |
| receive a request from a diagnostic center... and select an eye-care practitioner to assist with administering the eye examination... | The servers receive requests for eye exams from optical exam locations over a network and then select a remote technician and optometrist to administer the exam. | ¶85 | col. 51:10-12 |
| administer at least one test... including an objective portion that utilizes the ophthalmic equipment to derive at least one objective measurement... and a subjective portion that utilizes an audio response system... | The Accused Products enable objective tests (e.g., with an autorefractor, keratometer) to derive objective measurements and subjective tests (e.g., subjective refraction) using a live video conference unit. | ¶87-89 | col. 51:13-20 |
| wherein the subjective portion... is administered using an iterative process that includes: selecting questions... based, at least in part, on collected testing data comprising the one or more objective measurements... | The remote technician performs a "subjective refraction with a phoropter while conversing" with the patient, asking a series of questions and remotely adjusting the phoropter based on responses. | ¶90 | col. 51:21-27 |
| automatically adjusting ophthalmic equipment utilized in administering the subjective portion of the eye examination... | The remote adjustment of the phoropter involves automatically changing powered lenses based on the customer's responses. A screenshot from a marketing video shows a doctor with "full control of the phoropter" (Compl. p. 32). | ¶91 | col. 51:28-31 |
| transmit customer examination data... to a practitioner device associated with the selected eye-care practitioner... | All patient data is reviewed remotely by a licensed Optometrist who can refine findings and answer questions by video conferencing. | ¶93 | col. 51:35-39 |
- Identified Points of Contention:
- Scope Questions: The claim requires the iterative process to include "selecting questions to present... based, at least in part, on... objective measurements." A key dispute may arise over whether this limitation is met by a human technician using their own judgment after viewing objective data, or if it requires the claimed server itself to perform a software-based function of selecting or suggesting the questions.
- Technical Questions: What evidence does the complaint provide that the "automatic adjusting" of the phoropter is a function of the claimed server, as opposed to a direct remote-control feature operated by the technician's practitioner device? The allegation links the functionality to the server's instructions, which may become a point of factual dispute.
V. Key Claim Terms for Construction
The Term: "audio response system" (’062 Patent, cl. 13; ’279 Patent, cl. 9)
- Context and Importance: This term is critical for defining how the "subjective portion" of the examination is conducted. The infringement theory hinges on this term encompassing live, two-way video and audio conferencing. Practitioners may focus on this term because its construction could determine whether a system enabling human conversation infringes a claim that may be interpreted to require a more automated, machine-driven interaction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract refers generally to providing a "user interface for communicating with a customer" (’062 Patent, Abstract), which suggests a broad interpretation covering any form of communication.
- Evidence for a Narrower Interpretation: The claim recites a system "that is configured to output one or more questions to the customers and receive one or more responses" (’279 Patent, col. 51:15-18). This language could suggest an automated function where the system itself, rather than a human operator, outputs the questions.
The Term: "selecting questions to present to the customer based, at least in part, on collected testing data comprising the one or more objective measurements" (’279 Patent, cl. 9)
- Context and Importance: This term defines a key step in the claimed "iterative process." The central dispute will likely be whether this "selecting" is a function performed by the claimed server or by the human practitioner. If it is the latter, the server may not be practicing the claimed invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes a system that facilitates communication between the diagnostic center and a remote practitioner, which could be argued to inherently include enabling the practitioner to make informed decisions and select questions based on the data presented to them (’279 Patent, col. 11:41-47).
- Evidence for a Narrower Interpretation: The claim is directed to a "server" with a "processor" and "storage device that stores instructions." The claim structure suggests that the "selecting" is one of the functions performed by the processor executing those instructions, not an action taken by a human user of the system (’279 Patent, col. 51:4-9).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement, such as allegations of knowledge of the patents and intent to cause infringement.
- Willful Infringement: The complaint does not contain allegations of willful infringement or pre-suit knowledge of the asserted patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "audio response system," which appears in both asserted patents, be construed to cover the general-purpose live video conferencing used in the accused system, or does the patent's language and context limit the term to a more automated question-and-answer interface?
- A key evidentiary question will be one of locus of invention: does the accused system's server perform the claimed function of "selecting questions... based on... objective measurements" as required by the ’279 Patent, or does this intelligent selection occur solely within the mind of the human practitioner, placing the allegedly inventive step outside the technical operation of the accused server itself?
- A central factual question will be one of functional evidence: what technical evidence supports the allegation that the accused system "tracks availability data" and uses that analysis to "select" a practitioner, as opposed to employing a simpler, non-infringing method of assigning practitioners to incoming examination requests?