Luxottica Of America Inc v. E Vision Optics LLC

1. Case Identification

• Case #: IPR2024-01069
• Patent #: 10,613,355
• Filed: June 21, 2024
• Petitioner(s): Luxottica of America Inc.
• Patent Owner(s): E-Vision Optics, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Eyewear System and Method of Manufacturing the Same
• Brief Description: The ’355 patent discloses an eyewear system that incorporates an electronics assembly within the temple of an eyewear frame. The system includes a capacitive touch switch for control and a moisture-proof conformal layer to seal and protect the electronic components.

3. Grounds for Unpatentability

Ground 1: Obviousness over Howell-719 and Sikonowiz - Claims 1 and 3-13 are obvious over Howell-719 in view of Sikonowiz.

• Prior Art Relied Upon: Howell-719 (Application # 2005/0248719) and Sikonowiz (a 1981 book, DESIGNING AND CREATING PRINTED CIRCUITS).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Howell-719, which discloses eyewear with a built-in audio player, teaches nearly all limitations of independent claim 1. Howell-719 explicitly describes an eyewear frame with temples, an electronics assembly (e.g., a printed circuit board with a processor) embedded in the temple to control a speaker, and a capacitive touch switch to operate the device. The only elements Petitioner asserted were missing from Howell-719 are the claimed moisture-proof conformal layer and its placement within an enclosure. Sikonowiz, a foundational text on printed circuit board (PCB) manufacturing, was argued to remedy this deficiency by teaching the well-known practice of applying a conformal coating to a PCB assembly to protect it from environmental hazards, particularly moisture.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because protecting electronics from moisture is a common and desirable goal. Applying the standard conformal coating taught by Sikonowiz to the PCB-based electronics of Howell-719's eyewear is a straightforward solution to a known problem, especially for a wearable device exposed to the elements and perspiration.
  • Expectation of Success: A POSITA would have a high expectation of success. Conformal coatings were a commonplace, well-understood technology used with PCBs for decades before the ’355 patent’s priority date. Applying a known protective technique (Sikonowiz) to a known electronic device (Howell-719) would predictably result in a moisture-protected version of that device.

Ground 2: Obviousness over Howell-719, Sikonowiz, and Howell-158 or Blum-130 - Claims 14-21 are obvious.

• Prior Art Relied Upon: Howell-719 (Application # 2005/0248719), Sikonowiz (a 1981 book), Howell-158 (Application # 2006/0023158), and Blum-130 (Patent 6,733,130).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims requiring a specific plurality of electronic components, including an accelerometer or gyroscope. Petitioner asserted that Howell-719 discloses most of the required components (processor, memory, power source, antenna, transceiver) within a temple cavity. The final required component—an accelerometer or gyroscope—is supplied by either Howell-158 or Blum-130. Howell-158 discloses eyewear similar to Howell-719 that explicitly includes an accelerometer to detect if the glasses are being worn. Blum-130 discloses eyewear with electro-active lenses that includes a micro-gyroscope or micro-accelerometer in the temple to control a switch via head movement. Sikonowiz again supplies the teaching of a protective conformal coating.
  • Motivation to Combine: A POSITA would combine Howell-158 or Blum-130 with Howell-719 as a simple substitution of one known component for another to achieve a predictable result. For instance, incorporating Howell-158's accelerometer-based "being worn" detector into Howell-719's audio glasses would be an obvious improvement over Howell-719's less sophisticated magnetic sensor. Similarly, adding Blum-130's motion-based switch would offer the benefit of hands-free control, an advantageous feature for wearable electronics.
  • Expectation of Success: Success would be expected, as incorporating motion sensors like accelerometers into consumer electronics was a widespread and well-understood practice by the mid-2000s.

Ground 3: Obviousness over Blum-130, Howell-719, and Sikonowiz - Claims 1-21 are obvious.

• Prior Art Relied Upon: Blum-130 (Patent 6,733,130), Howell-719 (Application # 2005/0248719), and Sikonowiz (a 1981 book).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground uses Blum-130 as the primary reference. Blum-130 discloses an eyewear system with an integrated circuit controller embedded in the temple to control electro-active lenses. Petitioner argued this teaches the core system of claim 1 but uses a manual switch. To arrive at the claimed invention, a POSITA would replace Blum-130's manual switch with the capacitive touch switch taught by Howell-719. Further, a POSITA would mount Blum-130's integrated circuit on a PCB, as taught by Howell-719, and then apply a conformal coating as taught by Sikonowiz.
  • Motivation to Combine: A POSITA would be motivated to substitute Howell-719's capacitive touch switch into Blum-130's system to improve durability (no mechanical wear) and aesthetics (no protruding button). Mounting the electronics on a PCB is a standard, cost-effective manufacturing choice, and applying a conformal coating is a standard protective measure. This combination represents an arrangement of well-known elements in a predictable manner.
  • Expectation of Success: The combination of these known elements would yield predictable results. A capacitive switch would function as expected, and a conformal coating would protect the electronics as it had for decades in countless other applications.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations adding Thomas (Patent 3,612,744) and Vogt (Patent 5,606,743) to supply teachings of a multi-conductor cable for claim 4, and Eichelberger (Patent 4,290,052) as an alternative source for a detailed capacitive touch switch for claims 13, 14, and 18.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors is unwarranted. The parallel district court litigation is in a very early stage, with no claim construction or expert discovery conducted. Petitioner stipulated that if the IPR is instituted, it will not pursue in litigation any invalidity ground that was raised or reasonably could have been raised in the petition.
• Petitioner also argued that denial under §325(d) is unwarranted because the petition presents new, non-cumulative prior art and arguments that the examiner did not previously consider. Specifically, Petitioner asserted that key references like Sikonowiz (teaching conformal coating) and Eichelberger (teaching capacitive switches) were never before the examiner. The examiner was said to have allowed the claims based on the recitation of these very features without appreciating their extensive history in the prior art.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 10,613,355 as unpatentable under 35 U.S.C. §103.