PTAB

IPR2025-00216

Luxottica Of America Inc v. E Vision Smart Optics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Eyewear Docking Station and Electronic Module
  • Brief Description: The ’138 patent describes electronic eyewear with an "application module" containing a microphone and wireless chip. The system allows a wearer to make a verbal query, transmit it to a Bluetooth-enabled external device (e.g., a smartphone), and receive a spoken response generated by the external device searching the Internet.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-20 over Thiel and Gruber

  • Prior Art Relied Upon: Thiel (Application # 2010/0272304) and Gruber (Application # 2012/0016678).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Thiel taught the core hardware of the claimed invention: eyewear with an attached audio module containing a microphone, speaker, and Bluetooth chip for two-way communication with a mobile phone to handle verbal commands (e.g., for music playback). Petitioner asserted Gruber disclosed the missing functional element: an intelligent automated assistant (Siri) on a smartphone that receives verbal queries from a Bluetooth headset, searches the Internet for information (e.g., weather, restaurants), and returns a response.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Thiel's eyewear device was functionally equivalent to a Bluetooth headset, and Gruber explicitly taught using its Siri-enabled phone with Bluetooth headsets. The combination was presented as a simple and predictable substitution of Gruber's advanced phone functionality for the more basic phone interaction disclosed in Thiel.
    • Expectation of Success: Success was expected because the combination involved applying a known software feature (Siri) to a known hardware platform (Bluetooth-enabled eyewear) to achieve the already-demonstrated and well-understood result of hands-free, voice-activated internet queries.

Ground 2: Obviousness of Claims 1, 5-6, 8, 11-16, and 19 over Jannard-740

  • Prior Art Relied Upon: Jannard-740 (Application # 2012/0105740).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Jannard-740 alone rendered the claims obvious. Jannard-740 disclosed eyewear with a detachable electronics module containing a microphone, speaker, and Bluetooth transceiver. The system was designed for wireless communication with an external device like a cellular phone, which could in turn communicate with a remote source, explicitly including the Internet. Petitioner argued that Jannard-740's disclosure of using voice commands to select and receive content (e.g., news, email) from Internet-connected sources taught or suggested all claimed limitations.
    • Motivation to Combine (within the single reference): The argument centered on implementing the functions broadly disclosed in Jannard-740. A POSITA would have been motivated to configure Jannard-740's system to perform an Internet search for specific content in response to a verbal query, as this was a natural and obvious application of its described voice control and remote network communication capabilities. This was presented as a simple implementation of a disclosed feature, not an inventive step.
    • Expectation of Success: A POSITA would have had a high expectation of success, as implementing this functionality would involve, at most, minor software updates to a system already designed for voice control and Internet connectivity.

Ground 3: Obviousness of Claims 1-20 over Jannard-740 and Gruber

  • Prior Art Relied Upon: Jannard-740 (Application # 2012/0105740) and Gruber (Application # 2012/0016678).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative primary challenge to all claims. Petitioner argued that Jannard-740 provided the Bluetooth-enabled eyewear platform, which it characterized as a headset. Gruber again supplied the teaching of an intelligent assistant on a smartphone that uses the Internet to respond to verbal queries received from a Bluetooth headset. The combination of Jannard-740's hardware and Gruber's software functionality allegedly met all limitations of the challenged claims.
    • Motivation to Combine: The motivation was to achieve the benefits disclosed in Gruber by using Jannard-740's eyewear as the hands-free input/output device. Since Jannard-740 described its device as a headset and Gruber taught using its system with headsets, the combination was portrayed as an obvious design choice to enhance the functionality of Jannard-740's eyewear with the well-known capabilities of Siri.
    • Expectation of Success: Success was predictable, as it involved the simple addition of known elements (a Siri-like assistant) to a compatible device (Jannard-740's eyewear module) to achieve a commonplace and expected result.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Thiel, Gruber, Jannard-740, Maddern (Application # 2010/0330908), Lu (Application # 2019/0081937), and Osterhout (Application # 2011/0214082). These grounds primarily added a third reference to address specific dependent claim limitations, such as adding a voice recognition chip (Maddern) or clarifying the requirement for Bluetooth pairing (Lu).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate. The core argument was that the U.S. Patent and Trademark Office had not previously considered the asserted prior art or arguments. Although the Examiner considered Jannard-382 (a parent application), the asserted Jannard-740 is a continuation-in-part with additional, material disclosures that were never before the Examiner and are central to the invalidity contentions.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’138 patent as unpatentable.