Tuesday, June 8, 2010

X6D Seeing Red Over Alleged Design Infringement of 3-D Glasses

X6D Ltd. v. Li-Tek Corp.
Civil Action No. 2:10-cv-02327 (C.D. Calif., filed Mar. 30, 2010)

In March of this year, X6D Limited filed a lawsuit alleging, among other things, infringement of its patent on the design of 3-D glasses. The design patent at issue is U.S. Patent No. D603,445 (“the ‘445 patent”), which issued on November 3, 2009. In particular, X6D has alleged that certain 3D glasses sold by Li-Tek Corporation and GDC Technology infringe the `445 patent.

Under Egyptian Goddess, a court tasked with determining whether a design patent has been infringed must apply the Ordinary Observer test, which simply asks whether an ordinary observer (that is, a layperson who is familiar with the prior art) would be deceived into thinking that the infringing product is the same as the patented design.

This case is still in the very early stages, and in fact an answer has not yet been filed by the defendants. However, I thought it would be a useful exercise to take a first look at the patent, the prior art, and the accused products to see how a court applying the Ordinary Observer test might decide the issue of infringement.

The prior art
An ordinary observer would be familiar with the following art, taken from utility and design patents listed on the face of the `445 patent. These designs include both 3-D glasses and sunglasses:

Though this is clearly not an exhaustive survey of the field, you get the sense that 3-D glasses started out resembling scuba masks, and are evolving to look more like sunglasses.

The `445 patent
The following figures are from the `445 patent:

Looking at these figures, a few design features jump out at me:

The arms: Viewed from the side, the arms are almost totally horizontal (i.e., they do not wrap down around the wearer’s ear). They also have 3 or 4 vertical notches about halfway down the arm. Viewed from above, each arm curves inwardly twice, creating a rough “3” shape for the right arm (as seen above). The portion that goes next to the wearer’s temples appears thick and bulky.

The face/lens portion: The front of the glasses are flat, in that they do not wrap around the wearer’s head. The part of the frame that retains the lenses appears thick and bulky, and also appears to be unitary with the “temple portion” of the arms described above. Viewed from the side, the front of the frames and lenses form an unbroken, nearly vertical line.

However, the Supreme Court warned in Egyptian Goddess that a “points of novelty” checklist is not the way to determine infringement. Therefore, it would be improper to review one-by-one those items listed above to determine what aspects of the design are novel and deserving of protection. Rather, the recent Crocs v. ITC decision (Ordinarily Observed here) shows the approach courts are most likely to follow for design patent infringement. Under that approach, we must perform a side-by-side comparison of the patented design and the alleged infringing design—all in view of the prior art—to see if the accused products embody the overall effect of the `445 patent.

To do the comparison, we must determine the “overall effect” of the `445 patent, perhaps by generalizing the visual effects of the elements listed above. When viewed from the side, the design is made up of clean, straight lines: the straight horizontal arms, which widen and terminate abruptly at the flat front of the glasses. When viewed from above, the inwardly-swooping arms draw attention away from the flat front of the glasses.

To summarize, the lines of the design curve very little through the vertical plane, whereas they swoop inwardly through the horizontal plane.

The allegedly infringing product
Now we consider the allegedly infringing glasses, some of which I found on a defendant’s website:

There are some obvious differences. The first two accused designs shown appear to have a wrapping, non-flat front. Furthermore, in those designs the arms swoop downwardly.

In the third accused design, the arms are generally horizontal, like the arms in the `445 patent. However, other aspects of the third accused design are markedly different, for example, the downward curve above the bridge of the nose, and the rounded sides of the temple piece.

But there are also some similarities. The lenses of the first two accused designs appear to be the same shape as the lenses of the `445 patent. The wide portion of the arm near the temple is wide and bulky, as in the `445 patent. However, this may be a functional aspect of the design, in that the enlarged structure may be necessary to house electrical components.

Functional elements of a design are the sole province of utility patents, not design patents, and therefore receive no protection under the latter. Thus, the general concept of a “bulky arm” in the `445 patent would probably be entitled to little or no protection if it were bulky for functional reasons.

One similarity that jumps out is the notches visible in the arm pieces of the first two accused designs. They appear identical to ones in the `445 patent! Since the notches appear to be for aesthetic purposes only, this could weigh in favor of a finding of infringement. Though the court must look at the “overall effect” of the design, a slavish copy of a purely aesthetic design detail will not go unnoticed.

Though this is far from a clear-cut case, I’d say the third accused design is probably not infringing. Other than the straight arms, which are hardly novel in the field of glasses generally, there are substantial differences.

It’s a closer call on the first two accused designs. They may depart somewhat from the overall effect of the `445 patent. However, the shape of the lenses, the bulky front/face portion, and the vertical notches may be enough to tip the scales in favor of infringement. That said, I did not examine all the prior art, did not look at all of the accused devices, and have no information on the functionality of various aspects of the designs.

And of course, the parties may argue for, and the court may adopt, a description of the “overall effect” that is wildly different than the one I came up with. I guess what I’m saying is: infringement is in the eye of the beholder, making the streamlined Ordinary Observer test as difficult to predict as its predecessor.

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