In Oakley Inc. v. Hire Order, Ltd. (3:12-cv-02346-DMS-WMC), the U.S. District Court of the Southern District of California issued an Order on March 28, 2013, denying Hire’s motion for partial summary judgment of non-infringement.

As shown in Exhibit B of the Complaint filed on September 26, 2012, Oakley, Inc. (Oakley) issued a letter to Hire Order, Ltd (Hire) on June 22, 2012, demanding that Hire cease sales of its Sportsman Eyewear video recording system.

The Complaint alleged willful and intentional infringement of Oakley's D523,461 (D461) Eyeglass Component design patent, requested a preliminary and permanent injunction, and requested that Hire pay damages for infringing acts and treble damages, profits from the alleged infringement, attorney fees and costs associated with this action.

Hire moved for partial summary judgment of non-infringement, while Oakley asserted that a genuine issue of material fact made the summary judgment inappropriate.

Reproduced below are Figure 1 of the D461 patent (top) and an image of an alleged Sportsman Eyewear infringing product (bottom).  The Court stated in the Factual Background section of the Order that the design of the D461 patent consisted of “an eyeglass frame with bulbous areas on each arm and buttons on each bulbous area.  The frames are curved and have ridges across the front bridge.  There is a dip in the nose bridge, which consists of an x-shaped piece that sits on the nose.”

Click here to view images.

As re-iterated by the Court, in determining infringement or non-infringement, the claim must first be properly construed to determine scope and meaning, before the properly construed claim can be compared to the accused device.

In addressing the first question, the Court declined to issue a verbal description of the D461 Patent, in accordance with the Supreme Court position that a design is better represented by an illustration “than it could be by any description.” The Court agreed with Oakley that the D461 patent should be construed as the ornamental design for an eyeglass component, as shown and described in Figures 1 through 6 of the patent.

In addressing the second question, the Court relied on the ordinary observer test to determine whether there was infringement.

As reported in the Order, Hire argued that its Sportsman Eyewear had “smooth arms while the arms on the claimed designs have a claw or rib-like pattern.” Hire further argued that buttons on the arms of the accused product were in different locations from the claimed design, and plain instead of ornate on the claimed design.  Hire also argued with respect to the position of the USB input port, and the presence of an additional Micro-SD input.  Finally, Hire stated that its Sportsman Eyewear lacked a scoop on the top of the nose bridge and an x-shaped protrusion on the nose bridge front.

As stated in the Order, Oakley asserted an “overwhelming similarity” between the accused product and claimed design, “or at a minimum, a question of fact sufficient to defeat summary judgment.”

The Court agreed with Oakley that Hire had not met its burden of proof to show non-infringement, since “‘mere differences of lines in the drawing or sketch … or slight variances in configuration … will not destroy the substantial identity,’” citing Egyptian Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 625-27).

The Court stated that when viewed as a whole there was at least a genuine issue of material fact whether the accused product infringes the claimed design.