Luxottica Of America Inc v. E Vision Optics LLC

1. Case Identification

• Case #: IPR2024-01030
• Patent #: 8,708,483
• Filed: June 21, 2024
• Petitioner(s): Luxottica of America Inc.
• Patent Owner(s): E-Vision Optics, LLC
• Challenged Claims: 1-37

2. Patent Overview

• Title: Eyewear with Integrated Electronic Components
• Brief Description: The ’483 patent relates to eyewear comprising a frame and a sealed, moisture-resistant module attached to the frame. The module is disposed within a temple and contains at least two electronic components, such as a power source, processor, or sensor.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 9-10, 14-15, and 18 under 35 U.S.C. §102 by Howell-596

• Prior Art Relied Upon: Howell-596 (Application # 2005/0230596).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Howell-596, which discloses eyewear with an integrated radiation monitoring system, teaches every limitation of independent claim 1. Howell-596 describes a module housing for its UV detection system that can be made water-resistant or waterproof (a "sealed moisture resistant module") and placed within the temple region of an eyewear frame. Petitioner asserted this module explicitly contains a power source (e.g., a battery) and a detector (a UV detector), satisfying the requirement for two electronic components within the seal. Dependent claims were also allegedly met, as Howell-596 described the module could be removably attached via an interference fit (claim 9), affixed with adhesive (claim 10), be waterproof (claims 14-15), and include display circuitry (claim 18).

Ground 2: Obviousness of Claims 19-20, 24-28, 31-35, and 37 over Howell-596 in view of Howell-833

• Prior Art Relied Upon: Howell-596 (Application # 2005/0230596) and Howell-833 (Patent 7,581,833).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Howell-596 provides the base eyewear with a sealed electronic module in the temple, as argued in Ground 1. The key distinction in independent claim 19 is the requirement that the module be disposed, at least partially, on a portion of the frame configured to be behind the ear of a wearer. Petitioner argued Howell-833 explicitly teaches this limitation by disclosing the integration of electronic components into an eyewear frame behind the ear to minimize impact on the eyeglasses' design.
  • Motivation to Combine: A POSITA would combine Howell-833’s teaching of placing electronics behind the ear with Howell-596’s sealed module to achieve the known benefits of that placement. These benefits included improved balance, reduced aesthetic compromise, and distributing weight to the ear rather than more sensitive facial regions.
  • Expectation of Success: The technique of embedding components within an eyewear frame behind the ear was well-known, as shown by both Howell-833 and other references, giving a POSITA a reasonable expectation of success in the proposed modification.

Ground 3: Obviousness of Claims 1-2, 4-10, 13-20, 22-28, and 31-37 over Blum-741 in view of Hattori-912

• Prior Art Relied Upon: Blum-741 (Patent 6,857,741) and Hattori-912 (Japanese Application Publication JPS58-113912).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative invalidity theory using a different primary reference. Petitioner argued Blum-741 discloses eyewear with electro-active lenses and various electronic components, including a controller (processor) and power source, contained within the temple of the frame. Hattori-912 was argued to supply the "sealed moisture resistant module" limitation, as it discloses eyewear with electronics embedded in a hollow part of the frame that is sealed by a waterproof ring.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Hattori-912's method for sealing electronic components into the eyewear taught by Blum-741. The primary motivation was the predictable benefit of protecting Blum-741's electronic components (e.g., controller, battery) from potentially damaging moisture, dirt, or chemicals, thereby improving reliability and durability.
  • Expectation of Success: Petitioner asserted that using sealed modules or waterproof rings to protect electronics was a well-known and common practice in the art, leading a POSITA to reasonably expect success in applying Hattori-912's sealing technique to Blum-741's electronic eyewear.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on combinations of the above references with other prior art. These grounds relied on similar modification theories to add further known features, including: adding flex circuits for electrical connections (in view of Spitzer, Patent 6,091,546); using a rimless frame design (in view of Ogren, International Publication No. WO 2005/119344); and using a hinge-less frame design (in view of Jannard-868, Patent 5,760,868).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. Petitioner stated it will move to stay the co-pending district court litigation, which has a high likelihood of being granted. It argued that discovery in the litigation is in its infancy, and the scheduled trial date is likely to be extended beyond the statutory deadline for a Final Written Decision (FWD). Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue in the litigation any invalidity ground raised or that reasonably could have been raised in the petition. Petitioner also contended that the asserted prior art combinations have never been considered by the PTO, favoring institution on the merits.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-37 of the ’483 patent as unpatentable.