Luxottica Of America Inc v. E Vision Optics LLC

1. Case Identification

• Case #: IPR2024-01070
• Patent #: 8,801,174
• Filed: June 21, 2024
• Petitioner(s): Luxottica of America Inc.
• Patent Owner(s): E-Vision Optics, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Eyeglass Frames with Electronics Module
• Brief Description: The ’174 patent discloses eyeglass frames containing an electronics module disposed within a temple. The invention focuses on using electrical conductors to both constrain the module within the temple and provide a conductive path from the temple to the lens housing, which may contain an electronic lens.

3. Grounds for Unpatentability

Ground 1: Anticipation by Brunton - Claims 1, 2, 4, 9, and 12 are anticipated by Brunton under 35 U.S.C. §102.

• Prior Art Relied Upon: Brunton (Patent 2,915,598).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brunton, which discloses eyeglasses with an integrated hearing aid, teaches every limitation of claim 1. Brunton’s hearing aid unit, which contains electronic elements like resistors and transistors, is an "electronics module" positioned in a cavity within the eyeglass temple. Brunton's temple includes sockets that serve as first and second "electrical conductors." These sockets are coupled to the temple and provide conductive paths to the lens frame via wires. Crucially, the sockets are configured to "frictionally retain" the contact pins of the hearing aid unit, thereby coupling the module to the temple and constraining it as required by the claim.
  • Key Aspects: For dependent claims, Petitioner asserted that Brunton discloses the conductors being "embedded in the material of the temple" (integral coupling, claim 2), socket contacts acting as fittings for wires ("lugs," claim 4), the module being "removable and replaceable" (claim 9), and the tubular contacts forming the sockets being a "single structural element" (claim 12).

Ground 2: Obviousness over Brunton in view of Carling - Claims 7, 8, and 13 are obvious over Brunton in view of Carling under 35 U.S.C. §103.

• Prior Art Relied Upon: Brunton (Patent 2,915,598) and Carling (G.B. Patent No. 799,294).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Carling teaches the use of slip rings integrated within the hinge of eyeglasses to maintain a continuous electrical connection as the temple is moved. This addresses limitations in claims 7, 8, and 13 related to maintaining a conductive path during temple movement. Brunton provides the base device with an electronics module in the temple, while Carling provides the specific slip ring and hinge mechanism.
  • Motivation to Combine: Petitioner argued that Brunton discloses a design where moving the temple at the hinge breaks the electrical circuit between the temple and the lens housing. A person of ordinary skill in the art (POSITA) would recognize this as a significant design flaw, as repeated use or structural distortion could lead to connection failure. A POSITA would combine Brunton’s design with Carling’s well-known slip ring hinge solution to create a more robust and reliable electrical connection that is maintained regardless of temple position.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Carling’s hinge design was intended for straightforward assembly into normal eyeglass frames, making its integration into Brunton’s similar eyeglass structure predictable.

Ground 3: Obviousness over Kokonaski-999 and Kokonaski-579 - Claims 15-19 are obvious over Kokonaski-999 and Kokonaski-579 under §103.

• Prior Art Relied Upon: Kokonaski-999 (WO 2010/080999) and Kokonaski-579 (U.S. Provisional Application 61/157,579).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets the method claims, beginning with independent claim 15. Petitioner asserted that Kokonaski-999 teaches a method of "providing a capacitive touch switch" and "disposing a plurality of electronic components on the capacitive switch" by disclosing an electronic module for electro-active spectacles that contains both a capacitive switch and the governing electronic components (processor, power source, sensors). Petitioner argued that Kokonaski-579, a provisional application incorporated by reference into Kokonaski-999, explicitly teaches the final step of "coupling the capacitive touch switch to a partial enclosure to constrain" it. Kokonaski-579 shows an electronic module with its switch being inserted and constrained within the eyeglass temple, which serves as the claimed partial enclosure.
  • Motivation to Combine: The motivation is inherent, as Kokonaski-999 explicitly incorporates Kokonaski-579 by reference to describe methods of assembling the disclosed electro-active eyeglasses. A POSITA would naturally look to the incorporated reference for details on how to assemble and constrain the electronic module taught in the primary reference.
  • Expectation of Success: Success would be expected as the references describe compatible components of a single, unified system for electro-active eyewear.

• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against claims 1-14 based on references including Delorenzo (Patent 3,883,701), Hattori-913 (Japanese Application # S58-113913), and a combination of Kokonaski-999 and Brunton. Additional obviousness challenges against claims 15-18 were based on a combination of Howell-596 (Application # 2005/0230596), Eichelberger (Patent 4,290,052), and Sikonowiz (a 1981 treatise).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv because the parallel district court litigation is in a very early stage, with only initial discovery requests served. Petitioner stated it will file a motion to stay the litigation pending the IPR. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue in the litigation any invalidity ground that was raised or reasonably could have been raised in the petition. Petitioner also argued that the prior art has never been considered by the PTO, strengthening the case for institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’174 patent as unpatentable.