Over the past few years Oakley Inc. (“Oakley”) has relied heavily on design patents to protect its product line.  Most recently, Oakley filed a complaint for patent infringement against Thermor Ltd. (Thermor), Fry’s Electronics, Inc. (Fry), Best Buy Co. Inc. (Best Buy), Tool King LLC. d/b/a/ Toolking.com (Toolking), Laptop Travel, LLC., and Beach Trading Co., Inc. d/b/a/ Buydig.com (Buydig), (collectively “Defendants”) on February 14, 2014, in the Southern District of California (14CV0349-GPC-DHB).

In the complaint, Oakley asserted that the Defendants manufactured, used, sold, offered for sale and/or imported into the United States, eyewear allegedly infringing Oakley’s Design Patent No. D523,461 (’461 patent), directed to an Eyeglass Component.  As discussed further below, Oakley has asserted the ‘461 patent on numerous occasions in the past.

Oakley previously sued Hire Order, Ltd. on June 2012, (3:12-cv-02346-DMS-WMC) over its ‘461 patent, demanding that Hire cease the sales of its Sportsman Eyewear video recording system.

In this case, Oakley claims Thermor was “knowingly, intentionally and willfully directly infring[ing], engag[ing] in acts of contributory infringement, and /or induc[ing] the infringement of the D461 patent by directly and/or directly making, using, selling, offering for sale and/or importing eyewear covered by the D461 patent.” Oakley listed Thermor’s BIOS Eyewear Cam as an allegedly infringing product.

Oakley made similar statements regarding Fry, and Fry’s BIOS Eyewear Cam, Best Buy and Best Buy’s Thermor – BIOS Eyewear Cam, Laptop Travel and their BIOS Eyewear Action Cam, as well as Toolking and Buydig for their Thermor 604FC BIOS Eyeware Action Camera.

Reproduced below is Figure 1 of the D461 patent, and a representation of the Thermor 604FC BIOS Eyeware Action Camera as listed on the Buydig.com website.

Click here to view image.

Click here to view image.

In the complaint, Oakley noted that the Defendant’s alleged acts of infringement were undertaken without license from Oakley, that Defendants had “actual and/or constructive knowledge of the D461 patent … [and] infringed the D461 Patent with reckless disregard of Oakley’s patent rights.” Oakley further argued that “Defendants knew, or it was so obvious that Defendants should have known” that their actions constituted infringement.

Oakley requested a preliminary and permanent injunction, damages allegedly suffered by Oakley and/or Defendants’ total profit from the alleged infringement, with treble damages. Oakley further requested an award of attorney fees, and pre-judgment and post-judgment costs. A jury by trial was demanded.

This case is ongoing.

The ’461 patent was also asserted by Oakley in the cases listed below, several of which are ongoing.

Click here to view table.