Luxottica Of America Inc v. E Vision Optics LLC

1. Case Identification

• Case #: IPR2024-01071
• Patent #: 8,905,541
• 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: Eyewear with Electronics Module
• Brief Description: The ’541 patent describes eyewear comprising a frame with an embedded "electronics module" located within a "housing module." The claims recite generic electronic components, such as a power source, controller, and sensing mechanism, housed within the eyewear frame, and in some claims, an insulating layer between the electronics and the frame.

3. Grounds for Unpatentability

Ground 1: Obviousness over Howell-596 and Howell-158 - Claims 1-19 are obvious over Howell-596 in view of Howell-158.

• Prior Art Relied Upon: Howell-596 (Application # 2005/0230596) and Howell-158 (Application # 2006/0023158).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Howell-596 discloses all elements of the challenged claims except for an explicit insulating layer. Howell-596 teaches eyewear with a frame, temples, and an electronics module (a UV detection system with a power source, sensor, and controller) contained within a "module housing" that is itself inserted into a cavity in the temple ("eyewear housing"). To supply the final limitation, Petitioner asserted that Howell-158 discloses an "insulating layer between the electrical components or circuit board and the metallic frames" to prevent shorting and current leakage. Dependent claims reciting features like a capacitive switch, removability, and specific dimensions were also argued to be disclosed or rendered obvious by the combination.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would be motivated to combine these references for multiple reasons. Howell-158 expressly incorporates Howell-596 by reference and instructs a POSITA that its disclosed eyeglasses should be used with a radiation detection system like the one in Howell-596. A POSITA would therefore have been motivated to apply Howell-158's insulating layer to the electronic eyewear of Howell-596 to achieve the predictable result of preventing short circuits, especially when using metallic frames.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as applying insulation to electrical components was a standard, well-known practice long before the priority date. Howell-158 identifies specific ways to incorporate such layers, making the combination straightforward.

Ground 2: Obviousness over Howell-596 - Claims 1-11 and 13-19 are obvious over Howell-596.

• Prior Art Relied Upon: Howell-596 (Application # 2005/0230596).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Howell-596 alone renders the claims obvious. Petitioner argued that the "module housing 1700" of Howell-596, which contains and protects the UV detection system's printed circuit board and integrated circuits, serves as the claimed "insulating layer." According to the ’541 patent, an exterior wall of an electronics module made of an insulating material can be considered the insulating layer.
  • Motivation to Combine (Rationale): Petitioner argued that selecting an insulating material (e.g., plastic) for the module housing of Howell-596 would have been an obvious design choice for a POSITA. Protecting the sensitive electronic components from a potentially conductive frame is a fundamental engineering principle. Since plastic was a common and predictable material choice for eyewear components, a POSITA would have found it obvious to make the module housing from an insulating material, thereby providing the claimed insulating layer.
  • Expectation of Success: A POSITA would have had a high expectation of success because using plastic for insulation in eyewear was common and its properties were well understood. This represents a simple design choice from a finite number of predictable solutions.

Ground 3: Obviousness over Kokonaski-166 and Howell-158 - Claims 1-9, 11, and 13-19 are obvious over Kokonaski-166 in view of Howell-158.

• Prior Art Relied Upon: Kokonaski-166 (Application # 2008/0273166) and Howell-158 (Application # 2006/0023158).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Kokonaski-166 discloses an eyeglass frame with a housing module (receptacle 104) containing a removable electronic module with a power source, controller, and sensing mechanism (e.g., a capacitive touch sensor). Kokonaski-166 discloses that its frame can be made of metal. Petitioner again relied on Howell-158 to teach the addition of an insulating layer between the electronics and the frame.
  • Motivation to Combine: The motivation to combine was argued to be the same as in Ground 1. A POSITA, seeking to implement the electronic eyewear of Kokonaski-166 using a disclosed metal frame, would have been motivated to incorporate the insulating layer taught by Howell-158 to prevent short circuits and current leakage. This addresses a known problem with a known solution to yield a predictable result.
  • Expectation of Success: The expectation of success was argued to be high, as the combination involves applying a standard electrical insulation technique to a known electronic device configuration.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Hattori-913 (JP S58-113913) for its teaching of a two-part temple to house electronics and Kokonaski-999 (WO 2010/080999) as an alternative primary reference for electronic eyewear.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that it will move to stay the parallel district court litigation, which is in its very early stages with minimal investment and a trial date not expected until after the Final Written Decision (FWD). Crucially, Petitioner stipulated that if 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, which it argued resolves the Fintiv concerns in favor of institution.
• §325(d): Petitioner contended that denial under §325(d) is inappropriate because the PTO has never substantively evaluated the asserted prior art combinations. The examiner allowed the claims during prosecution after the applicant added the "insulating layer" limitation and argued it was not present in the primary reference (Kokonaski-166). Petitioner argued this was a material error, as Howell-158 (which was in an IDS but never discussed by the examiner) explicitly discloses this exact feature. Therefore, the asserted grounds were presented as new and non-cumulative.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 8,905,541 as unpatentable.