IP Law Daily Claims for ‘resilient’ eyewear retainer unpatentable as obvious
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Tuesday, September 12, 2017

Claims for ‘resilient’ eyewear retainer unpatentable as obvious

By Thomas Long, J.D.

Substantial evidence supported a Patent Trial and Appeal Board decision finding a patent for an eyewear retention device unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has held. A prior art device created by a fisherman and described in a newspaper article made use of a "resilient" retainer—as claimed by the challenged patent—that extended backwards in a stiff manner so that it did not rest on the wearer’s neck. Other prior art references could be readily combined with this device to meet the other claim limitations. The Board did fail to adequately explain a motivation to combine the prior art, in the court’s view (Cablz, Inc. v. Chums, Inc., September 12, 2017, Reyna, J.).

Patent at issue. Cablz, Inc., owned U.S. Patent No. 8,366,268 ("the ’268 patent"), titled "Eye Wear Retention Device." The patent purported to improve upon prior art eyewear retainers—such devices as chains, strings, and ropes used by wearers to keep their eyeglasses around their necks—which were prone to get tangled in clothing or to get coated with sweat or suntan lotion because of the way they rested directly against the wearer’s back. The invention of the ’268 patent extended rearward from the head of the wearer and was suspended off the wearer’s neck. The device comprised two temple retainers connected by a resilient cable that remained raised off the wearer’s neck.

Prior art. Cablz sued competing eyewear retainer sellers Chums, Inc., and Croakies, Inc., for infringing the ’268 patent. Chums and Croakies then successfully petitioned for inter partes review (IPR) of all claims of the patent. The Board instituted the IPR over four pieces of prior art: (1) Bill Monroe, Outdoor folks don’t use trendy glasses-holders, The Oregonian, E4 (July 5, 1991) ("Monroe"); (2) U.S. Patent No. 6,941,619, "Eyeglass Retainer with Dual Use Connectors" ("Mackay"); (3) U.S. Patent App. Pub. No. 2007/0046889, "Eyewear with Weighted Flexible Temples" ("Miller") and (4) U.S. Patent No. 6,764,177, "Eyeglass Retainer" ("Chisolm"). Monroe was a 1991 news article from The Oregonian that detailed a sunglass retainer crafted by fisherman Mark Sosin. Sosin used a piece of 300-lb test monofilament tied onto his glasses with dental floss, which extended behind his head. Mackay and Chisolm disclosed eyewear retainers that included two temple retainers attached to the ends of a variety of different cords. Miller disclosed a counter-weighted eyeglass frame that uses cable "made from a metallic core coated in a smooth casing."

Board decision. The Board construed the claim term "resilient" to mean "having sufficient stiffness to maintain its shape and to return to its original form after being bent." Based on this construction, the Board concluded that Monroe in combination with the other references taught "temple retainers connected by a resilient cable" or "member." Regarding motivation to combine, the Board rejected Cablz’s arguments that the cited combinations taught away from the ’268 patent’s invention. "None of Patent Owner’s examples of purported ‘teaching away’ criticize, discredit, or otherwise discourage the solution claimed," the Board said. Cablz appealed to the Federal Circuit.

"Resilient" material—substantial evidence. Cablz first argued that substantial evidence did not support the Board’s determination that the device described in Monroe uses "resilient" material. The court initially noted that Cablz waived this argument by failing to raise it in its briefing before the IPR oral hearing. Even if the argument had not been waived, the Federal Circuit determined that that the Board’s conclusion that Monroe disclosed a "resilient" retainer was supported by substantial evidence. Cablz itself referred to Monroe’s retailer as "resilient," disputing only whether it qualified as a "cable" for purposes of the patent claim limitations. Sosin testified that "300-pound mono, you can’t bend it or keep it down there, it will pop right back up." The court noted that Monroe described the retainer as "so thick and stiff that the only knot it would take would be big enough to tie up a small ship." Chums and Croakies’ expert concluded that "the monofilament in Sosin’s eyewear retainer is an elongated piece of resilient plastic." The evidence before the Board was sufficient for a reasonable mind to conclude that Monroe’s retainer was made from material that both retained its shape and returned to its original form after being bent, the court said.

Motivation to combine. Cablz argued that the Board did not explicitly provide a reason to combine the prior art references, but rather shifted the burden to Cablz to argue why the references should not have been combined. The Federal Circuit disagreed. In the court’s view, the Board’s decision provided a reasonably discernable path for articulating a motivation to combine the prior art. The Board had accepted Chums and Croakies’ argument that one of skilled in the art would have "immediately recognized that a simple substitution of the eyewear retainers of Mackay for the attachment method employed in Monroe would have had various advantages." After analyzing the arguments, the Board concluded that achieving the ’268 patent’s configuration required only "simple substitution." Accordingly, the court affirmed the Board’s decision as to obviousness of the ’268 patent’s claims.

The case is No. 2016-1823.

Attorneys: Michael Anthony Ladra (Leak, Douglas & Morano, PC) for Cablz, Inc. Marc T. Rasich (Stoel Rives LLP) for Chums, Inc., and Croakies, Inc.

Companies: Cablz, Inc.; Chums, Inc.; Croakies, Inc.

MainStory: TopStory Patent FedCirNews

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