Luxottica Of America Inc v. E Vision Optics LLC

1. Case Identification

• Case #: IPR2024-01072
• Patent #: 10,598,960
• Filed: June 21, 2024
• Petitioner(s): Luxottica of America Inc.
• Patent Owner(s): E-Vision Smart Optics, Inc.
• Challenged Claims: 1-26

2. Patent Overview

• Title: Electronic Eyewear with Application Modules
• Brief Description: The ’960 patent discloses electronic eyewear designed to function with interchangeable application modules. These modules can be fitted within a recess or attached externally to the eyewear frame to provide a variety of electronic functions.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Eyewear Reference - Claims 1-3 and 6-10 are obvious over Jannard-740

• Prior Art Relied Upon: Jannard-740 (Application # 2012/0105740)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jannard-740, a prior art application filed by Luxottica, anticipates or renders obvious every limitation of independent claim 1. It allegedly disclosed an eyewear frame with temples, a speaker, and a detachable electronics module. This module contained a microphone and a wireless chip (Bluetooth transceiver) and was described as enabling a user to issue voice commands to control an external device (like a cell phone), receive a response (like an email or audio file), and have that response provided via the speaker. Dependent claims were allegedly met by Jannard-740’s disclosure of communicating with smart phones and computers, and its inclusion of various electronic devices within the module.
  • Motivation to Combine (for §103 grounds): While primarily argued as anticipating, Petitioner asserted that to any extent Jannard-740 did not explicitly disclose the full voice query-and-response loop, a POSITA would have been motivated to implement it. The motivation stemmed from combining known features—using voice commands to control a device and receiving audio feedback—to achieve the predictable benefit of hands-free operation and convenient access to information, a goal explicitly stated in the reference.
  • Expectation of Success: A POSITA would have had a high expectation of success, as implementing voice control with a microphone, wireless transceiver, and speaker in a wearable device was a well-understood and common practice at the time.

Ground 2: Obviousness over Combined Eyewear References - Claims 1-10 are obvious over Jannard-740 in view of Osterhout

• Prior Art Relied Upon: Jannard-740 (Application # 2012/0105740), Osterhout (Application # 2011/0214082)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jannard-740 provided the foundational smart eyewear system with a detachable application module. To the extent any limitation of claim 1 related to verbal content searching was not fully met by Jannard-740, Osterhout explicitly supplied this teaching. Osterhout disclosed eyewear that could process verbal commands to search remote databases (e.g., for repair manuals) and provide the retrieved information back to the user.
  • Motivation to Combine: A POSITA would combine these references for several reasons. Both references suggested the combination by being in the same field and addressing the same problem of providing information to a user via eyewear. A POSITA would have been motivated to incorporate Osterhout’s specific verbal search functionality into Jannard-740’s more modular design to gain the benefits of both systems: the convenience of hands-free database searching and the flexibility of an interchangeable module. This was presented as a simple addition of a known feature to a known device to obtain predictable results.
  • Expectation of Success: Success was expected because the integration would have involved, at most, minor software or hardware updates that were well within the ordinary skill in the art.

Ground 3: Obviousness over Eyewear and Proximity-Key References - Claims 11-18, 20-24, and 26 are obvious over Jannard-740 in view of Rosenblatt

• Prior Art Relied Upon: Jannard-740 (Application # 2012/0105740), Rosenblatt (Application # 2009/0006846)

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed independent claims 11 and 22, which relate to presence detection and password transmission. Petitioner asserted Jannard-740 disclosed the basic eyewear with a wireless application module. Rosenblatt disclosed a "key"—a small electronic module with a wireless chip that could be incorporated into various personal items, including a headset. This key wirelessly communicated with a host device (e.g., a computer or car) to perform an operation when in proximity, such as recognizing the user's presence to adjust environmental controls or automatically transmitting a password to log the user into a computer.
  • Motivation to Combine: A POSITA would have been motivated to incorporate the functionality of Rosenblatt’s "key" into Jannard-740’s eyewear module. Rosenblatt explicitly suggested incorporating its key into devices like a wireless headset, which is analogous to Jannard-740's electronic eyewear. The motivation was to achieve the known benefits described in Rosenblatt—such as seamless, proximity-based authentication and control—within the form factor of smart eyewear, creating a functional and fashionable device.
  • Expectation of Success: A POSITA would have reasonably expected success because it involved implementing a known wireless communication protocol (like Bluetooth, disclosed in both references) to perform a known function (proximity-based authentication) in a suitable known device (smart eyewear).

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations based on Chen (eyewear with removable cartridges) with Rosenblatt, and further combinations adding Gunaratne (drowsiness detection) and Nielsen (adaptive font sizing) to address specific dependent claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv because the parallel district court litigation was in its infancy, with discovery just beginning and no trial date set until July 2025, a date likely to be postponed. Petitioner also 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, which it argued resolves the key Fintiv factor in favor of institution.
• Petitioner further argued against denial under §325(d), asserting that the PTO had never previously evaluated the ’960 patent against the specific prior art references and combinations presented in the petition. The Examiner allowed the patent without any rejections and did not consider the core prior art relied upon by Petitioner.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of Patent 10,598,960 as unpatentable.