Tnals@uspio. gov
`
`571-272-7822
`
`Paper 12
`Entered: January 7, 2025
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LUXOTTICA OF AMERICA INC.,
`Petitioner,
`
`V.
`
`E-VISION OPTICS, LLC,
`Patent Owner.
`
`IPR2024-01030
`Patent 8,708,483 B2
`
`Before RICHARD H. MARSCHALL, JOHN D. HAMANN,and
`SEAN P. O7HANLON,Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 US.C. $314
`
`

`

`IPR2024-01030
`Patent 8,708,483 B2
`
`Petitioner LuxotticaofAmericaInc. filed a Petition requesting inter
`
`partes review ofclaims 1-37 ofU.S. Patent No. 8,708,483 B2 (Ex. 1001,
`
`“the °483 patent’). Paper 1 (“Pet.”). Patent Ownere-Vision Optics, LLC
`
`filed a Preliminary Response. Paper 7 (Prelim. Resp.”). With our
`
`authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`
`Response (Paper8 (Prelim. Reply’”’)) and Patent Ownerfiled a Preliminary
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`Sur-Reply (Paper 10 (Prelim. Sur-Reply”’)).
`
`Wehave jurisdiction under 35 U.S.C. § 314. Under § 314, an inter
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`partes review maynotbe instituted “unless... there is areasonable
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`likelihood that the petitioner would prevail with respect to at least 1 ofthe
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`challenged claimsin the petition.” /d. at § 314(a). Ifthe Board institutes a
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`trial, “the Board will authorizethe review to proceed onall ofthe challenged
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`claims and onall grounds ofunpatentability asserted for each claim.”
`
`37 C.F.R. § 42.108(a). Because we determinethat Petitioner demonstrates a
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`reasonablelikelihood that at least one challenged claim is unpatentable, we
`
`institute an interpartes review ofall claims as challenged in the Petition.
`
`A, Real Parties-in-Interest and RelatedMatters
`
`BACKGROUND
`
`Petitioner states that “Luxottica ofAmerica Inc. andLuxottica Group
`
`S.p.A. are the real parties in interest for Petitioner.” Pet. 84. Petitioner also
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`identifies EssilorLuxottica S.A. as the parent company to these companies.
`
`See id. Patent Owneridentifies itselfas the only real party-in-interest.
`
`Paper 6, 1. The parties are remindedoftheir continuing obligation to update
`
`their mandatory notice information “within 21 days of a change ofthe
`
`information.” 37C.F.R. § 42.8(a)(3).
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`

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`IPR2024-01030
`Patent 8,708,483 B2
`
`The parties indicate that the ’483 patent is the subject ofthe following
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`infringementactions: e-Vision Optics, LLC etal. v. Luxottica Group S.p.A
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`et al., No. 8:23-cv-02013 (C.D. Cal.) (“the Litigation”) and e- Vision, LLC et
`
`al. v. Lenovo Group Ltd. et al., No. 8:23-cv-01860 (C.D. Cal.) (the Lenovo
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`Litigation”). Pet. 84; Paper 6, 1.
`
`B. The ’483 Patent
`
`The ’483 patent “relates to integrating electronic components into an
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`electro-active frame for driving electro-active focusing lenses.” Ex. 1001,
`
`code (57). The 483 patentstates that its device allowsfor user control of
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`“an electroactive lens in a deliberate, hands free manner” while “minimizing
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`the numberof frame part SKUs [stock keeping units], and maintaining the
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`aesthetics ofthe frame. /d. at code (57), 2:23-34. Thedisclosed device
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`employs “one or more electronic modules”to achieve these goals. /d. at
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`2:35-47.
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`The electronic modules that the ’483 patent discloses may be placed
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`near the temples ofthe spectacles. Ex. 1001, 2:51—54, Fig. 6. Figures 1A—
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`1C illustrate an electronic module in the electro-active spectacles and are
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`reproducedbelow.
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`

`

`IPR2024-01030
`Patent 8,708,483 B2
`
`Or100
`
`100-8
`
`
`
`FIG. 1B
`
`FIG. 1C
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`Figure 1A illustrates a universal frame housing including upper and lower
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`lens frame componentpieces 102, 103, manual touch switch 106, frame
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`temple 110, andeye-wire 111. Ex. 1001, 3:27—29, 5:64-6:16. Figure 1B
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`showsan exploded view ofthe universal frame housing ofFigure. 1A,
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`which includes receptable 104 for electronic module 101, and receptacle
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`cover 107.
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`/d. at 3:30-31, 5:66—6:8. Figure 1C illustrates electronic module
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`

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`IPR2024-01030
`Patent 8,708,483 B2
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`101, illustrated here “as a cylinder and a block section attached to the side of
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`the cylinder.” /d. at 3:32, 5:54—57.
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`The cylinderportion of electronic module 101 “may contain both the
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`powersource and the drive circuit,” while the “block portion may contain a
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`sensing mechanism, for examplea tilt switch.” Ex. 1001, 5:58-61.
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`Electronic module 101 “may also house an antenna, a receiver, a transmitter,
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`a transceiver, a sensor, arangefinder, a micro-processor, and a controller.”
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`Id. at 5:61—63. “The module preferably houses any ofthe aforementioned
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`electrical components in a substantially water-proof and wear
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`resistant/moisture resistant environmentandis preferably hermetically
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`sealed.” /d. at 10:47—S0.
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`C. The Asserted Challenges
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`Petitioner challenges claims 1—37 on the following grounds(Pet. 10):
`
`
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`1, 2,6-10, 13-16,|103 Howell-596
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`18 19, 20, 24-28. 31—|103
`
`35,37
`
`Howell-596, Howell-833°
`
`' The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the *483
`patent issued from an application having aneffective filing date before
`March 16, 2013, we apply the pre-AJAversion ofthe statutory basis for
`unpatentability.
`7 US Patent Pub. No. 2005/0230596 Al, published October 20, 2005 (Ex.
`1003, “Howell-596”).
`> US 7,581,833 B2, issued September1, 2009 (Ex. 1004, “Howell-833”).
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`

`

`IPR2024-01030
`Patent8,708,483 B2
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`4,5,7,17,22,23,|103 Howell-596, Howell-833, Blum-
`
`25, 36
`7414
`
`1
`
`03
`
`Howell-596, Howell-833,
`Blum-741, Spitzer?
`Howell-596, Howell-833, Ogren®
`
`3,21
`
`11,29
`
`12, 30
`
`03
`
`10
`
`3
`
`aa Howell-596,Howell-833,
`
`Jannard-8687
`Blum-741, Hattori-912°
`
`1,
`2, 4-10, 13-20
`>t
`>
`~~
`22-28, 31-37
`—28,
`_
`
`>
`
`103
`
`11,29
`
`12,30
`
`Blum-741, Hattori-912, Spitzer
`
`Blum-741, Hattori-912, Ogren
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`103
`
`Blum-741, Hatton-912, Jannard-868
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`In support ofthese challenges, Petitioner submits the Declaration of
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`Dr. John Feland. See Ex. 1002.
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`D. Challenged Claims
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`Petitioner challenges all 37 claims ofthe 483 patent, including
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`independent claims 1 and 19. Claim 1 is illustrative and recites:
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`1. Eyewear comprising:
`
`a frame; and
`
`a sealed moisture resistant module attached to the frame
`wherein the module comprises within the seal any two of: a
`
`“US 6,857,741 B2, issued February 22, 2005 (Ex. 1005, “Blum-741”).
`> US 6,091,546, issued July 18, 2000 (Ex. 1007, “Spitzer’).
`© WO 2005/119344 Al, published December 15, 2005 (Ex. 1008, “Ogren’’).
`TUS 5,760,868, issued January 2, 1998 (Ex. 1009, “Jannard-868’’).
`8 Japanese Unexamined Patent Application Publication Number S58-
`113912, published July 7, 1983 (Ex. 1006, “Hatton-912”) (original at Ex.
`1006, Ex. A; translation at Ex. 1006, Ex. B). We cite to the translation of
`Hattori-912 at Ex. 1006.
`
`

`

`IPR2024-01030
`Patent8,708,483 B2
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`switch, a detector, a processor, a power source, a drive
`circuit, a transmitter, a receiver, a transceiver, anda sensor,
`
`wherein the frame comprisesa first temple and a second
`temple, and wherein the module is disposed within thefirst
`temple.
`
`Ex. 1001, claim 1.
`
`ANALYSIS
`
`A. Discretionary Denialin View ofParallel District Court Litigation
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`Patent Ownerarguesthat we should exercise discretion to deny
`
`institution under 35 U.S.C. § 314 due to parallel district court litigation,
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`citing the discretionary-denial factors articulated in Apple Inc. v. Fintiv, Inc.,
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`IPR2020-00019, Paper 11 at 5—6 (PTAB Mar. 20, 2020) (precedential)
`
`(“Fintiv”). See Prelim. Resp. 3—17; Prelim. Sur-reply 1—2.
`
`Institution of interpartes review 1s discretionary. See Harmonic Inc.
`
`v. Avid Tech., Inc. , 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled,to institute an IPR proceeding.”); 35 U.S.C.
`
`§ 314(a). The Board may,in the interest of fairness and the efficient use of
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`Board resources, deny institution under § 314(a) where there are parallel
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`district-court proceedings involving the sameor substantially the same
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`parties and invalidity challenges. Fintiv, Paper 11 at 5—6, 12-13. Fintiv
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`presents six factors, which “relate to whetherefficiency, fairness, and the
`
`merits support the exercise of authority to deny institution in view of an
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`earlier trial date in the parallel proceeding.” Jd. at 6.
`
`Our analysis under Fintiv is guided by the Director’s Memorandum
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`titled Interim Procedurefor DiscretionaryDenials in AIA Post-Grant
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`

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`IPR2024-01030
`Patent 8,708,483 B2
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`Proceedings with Parallel District Court Litigation (June 21,2022)? (“Fintiv
`
`Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not
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`discretionarily deny institution under § 314(a) when a petitioner submits a
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`so-called Sotera stipulation, i1.e., the petitioner “stipulates not to pursue in a
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`parallel district court proceeding the same groundsasin the petition or any
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`groundsthat could have reasonably beenraised in the petition.” Fintiv
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`Memo7 (citing Sotera Wireless, Inc. v. Masimo Corp. , [PR2020-01019,
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`Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of
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`potentially conflicting PTAB and district-court decisions and duplicative
`
`efforts between the district court and PTAB. /d.
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`Here, Petitioner provides a Sofera stipulation: “Petitioner hereby
`
`stipulates that, ifthe Boardinstitutes review, Petitioner will not pursue in the
`
`Litigation invalidity ofthe °483 patent based on any groundPetitionerraised
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`or reasonably could haveraised in this Petition.” Pet. 82. Petitioner argues
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`that the Fintiv Memo “unambiguously states three times that the Board ‘will
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`not’ discretionarily denyinstitution dueto parallel litigation when the
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`petitionerfiles a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at
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`3, 7,9).
`
`We agree with Petitioner. In light ofthe Director’s Fintiv guidance
`
`regarding a Sofera stipulation, we decline to exercise discretion under
`
`§ 314(a) to denyinstitution of interpartes review. See Fintiv Memo 3
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`(“[T]he PTAB will not discretionarily deny institution in view ofparallel
`
`district court litigation where a petitioner presents a stipulation not to pursue
`
`” Available at
`https://www.uspto.gov/sites/default/files/documents/interimprocdiscretion
`arydenialsaiaparalleldistrictcourtlitigationmemo20220621_.pdf.
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`

`

`IPR2024-01030
`Patent 8,708,483 B2
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`in a parallel proceeding the same groundsor any groundsthat could have
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`reasonably been raised before the PTAB.”); see alsoid. (stating that the
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`Fintiv Memo “is issued under the Director’s authority to issue binding
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`agency guidance to govern the PTAB’s implementation ofvarious statutory
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`provisions”).
`
`Moreover, we find unavailing Patent Owner’s arguments that the
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`challenged patent also is asserted against a third party (1.e., Lenovo) ina
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`separate litigation proceeding on a parallel track (1.e., the Lenovo
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`Litigation), and that “Petitioner’s stipulation should carry no weight here
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`because”it “does not bar Lenovo fromlitigating the very same invalidity
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`challenges before the district court.” Prelim. Resp. 1, 13—14. Patent Owner
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`adds that Petitioner’s stipulation thus does not mitigate any concerns of
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`duplicative efforts between the district court and the Board, orof potentially
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`conflicting decisions. /d. at 14.
`
`Wedeterminethat Petitioner’s Sotera stipulation mitigates the
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`concernsofpotentially conflicting Board and district court decisionsas to
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`the disputes between Petitioner and Patent Owner. In addition, Patent
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`Ownerdoesnotdirect us to any evidence that Lenovois areal party-in-
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`interest or privy in this proceeding. Nor does Patent Ownerdirect us to
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`evidence demonstrating any involvementor control by Lenovoin this
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`proceeding. Thus, Lenovo’s actions, including whether Lenovoraises the
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`same grounds ofunpatentability in the LenovoLitigation, shouldnot be
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`imputed to Petitioner. Moreover, as a third party, Lenovocouldsettle its
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`litigation or change tack on its unpatentability arguments, leaving
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`Petitioner’s unpatentability arguments still to be resolved. Wealso note that
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`Patent Owner submitsthat it “is unaware of any post-Memodecision
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`

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`IPR2024-01030
`Patent 8,708,483 B2
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`discretionarily denying institution in the[] circumstances” we havehere.
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`Prelim. Sur-reply 1.
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`In sum, in light ofthe above, we decline to exercise discretion to deny
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`institution under § 314(a).
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`B. Discretionary Denial under 35 U.S.C. § 325(d)
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`Patent Ownerurgesus to deny the Petition under 35 U.S.C. § 325(d).
`
`Prelim. Resp. 17—29. Pursuant to 35 U.S.C. § 325(d), in determining
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`whethertoinstitute an interpartes review, “the Director maytake into
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`account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to
`
`the Office.”'° In evaluating whether to exercise our discretion to deny
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`institution under § 325(d), we weigh the following non-exclusivefactors:
`
`(a) the similarities and material differences between the asserted
`art and the priorart involved during examination;
`
`(b) the cumulative nature ofthe asserted art andthepriorart
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`exam ination, including whetherthe prior art was the basis for
`rejection;
`
`(d) the extent ofthe overlap between the arguments made
`during examination and the mannerin whichPetitioner relies
`on theprior art or Patent Ownerdistinguishesthe priorart;
`
`(e) whether Petitioner has pointed out sufficiently howthe
`Examinererredin its evaluation ofthe asserted prior art; and
`
`(f) the extentto which additional evidence andfacts presented
`in the Petition warrant reconsideration ofthe prior art or
`arguments.
`
`'0 The Boardinstitutes trial on behalfofthe Director. 37 C.F.R. § 42.4(a).
`
`10
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`

`

`IPR2024-01030
`Patent 8,708,483 B2
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
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`Paper8 at 17-18 (PTABDec. 15, 2017) (precedential in relevantpart).
`
`The enumerated factors “should be read broadly .. . to apply to any
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`situation in which a petition relies on the same or substantially the same art
`
`or arguments previously presented to the Office during a proceeding
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`pertaining to the challenged patent.” AdvancedBionics, LLC v. Med-E1
`
`Electromedizinishe Gerdte GMBH, IPR2019-01469, Paper 6 at 10 (PTAB
`
`Feb. 13, 2020) (precedential). Factors (a), (b), and (d) relate to whether the
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`art and argumentspresentedin the petition are the same or substantially the
`
`same as those previously presented to the Office. /d. Factors (c), (e), and (f)
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`“relate to whether the petitioner has demonstrated a material error by the
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`Office”in its prior consideration ofthat art or arguments. /d. Advanced
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`Bionics summarizes the two-part framework weuse to decide whether to
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`discretionarily deny institution under § 325(d):
`
`Thus, under § 325(d), the Board uses the following two-part
`framework: (1) whether the same or substantially the same art
`previously was presented to the Office or whether the same or
`substantially the same arguments previously were presented to
`the Office; and (2) if either condition of [the] first part ofthe
`frameworkis satisfied, whether the petitioner has demonstrated
`that the Office erred in a manner material to the patentability of
`[the] challenged claims.
`
`Id. at 8.
`
`1. Part One ofthe Advanced Bionics Framework
`
`Applying the AdvancedBionics framework, wefirst determine
`
`whether the same or substantially the same art or arguments were presented
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`previously to the Office. During prosecution ofthe application leading to
`
`the ’483 patent, the Examiner rejected the pending claims. Ex. 1019, 109—
`
`11
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`

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`IPR2024-01030
`Patent 8,708,483 B2
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`113. In response, the applicant amended what 1s now independentclaim | to
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`add limitations directed to the sealed module within the temple ofthe
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`eyewear frame and amended whatis now independentclaim 19 to add
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`limitations directed to the sealed module on a portion ofthe eyewear frame
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`configured to be behind the ear of a wearer.
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`/d. at 137-45. The Examiner
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`allowed the claims in response to the amendments. /d. at 181-185.
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`Wefocus on Petitioner’s challenges basedat least in part on Blum-
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`741 and Hattori-912, which include challengesto all ofthe claims ofthe
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`°483 patent. See Pet. 10. Patent Ownerarguesthat Blum-741 “is the same
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`or substantially the same asat least two priorart references previously
`
`presented to the Patent Office,” including another Blum reference that shares
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`the same specification with Blum-741. Prelim. Resp. 25. Patent Owneralso
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`arguesthat “the disclosures ofHattori-912 cited in the petition are
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`cumulative to the disclosures contained in U.S. Patent No. 7,030,411
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`(‘Krulevitch’).” /d. at 27. According to Patent Owner,the “Petition relies
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`on Hattori-912 purportedly for the disclosure ofthe same element
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`[Krulevitch discloses], 1.¢., “a sealed moisture resistant module attached to
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`the frame.’” /d. (citing Pet. 55—56). Patent Ownerasserts that “[e]ven if
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`Hattori-912 does disclose this element (whichit does not), it stilladds no
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`new subject matter for the Board to consider because the same elementis
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`allegedly disclosed in Krulevitch.” /d.
`
`Petitioner argues that “Patent Ownerfails to cite any Krulevitch
`
`disclosure that Hattori-912 supposedly duplicates” and “[i|nstead, Patent
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`Ownerargues the references are cumulative merely because Hattori 912
`
`discloses the limitation to which the examinerapplied Krulevitch.” Prelim.
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`Reply 3—4 (citing Prelim. Resp. 27). Petitioner also asserts that “Patent
`
`12
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`IPR2024-01030
`Patent 8,708,483 B2
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`Ownerignoresthat Petitioner applies Hattori-912 to many more limitations
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`of the independent claims thanjust the one to which the examinerapplied
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`Krulevitch,” including “the limitations that led to allowance.” /d. at 4 (citing
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`Pet. 53-68). Petitioner also alleges that Hattori-912 provides better
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`motivations to combine than Krulevitch because Hattor-912, unlike
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`Krulevitch, “is directed to eyewear” and “explicitly showsa sealed,
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`moisture-resistant module enclosed within an eyeglass frame.” /d. (citing
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`Pet. 55, 65).
`
`In reply, Patent Ownerarguesthat the Examiner considered
`
`Krulevitch for the same limitations at issue with respect to Petitioner’s
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`reliance on Hatton-912, including considering a sealed module within an
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`eyeweartempleby virtue ofthe potential combination ofKrulevitch with
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`one of the Blum references. Prelim. Sur-reply 3-4. Finally, Patent Owner
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`contends that “[e]ven were Hattori-9 12 to be found unique, discretionary
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`denial would still be warranted to avoid wasted resourcesin retreading
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`previously presentedart in Grounds 1—7.” /d. at 4.
`
`Weagree with Petitioner that the record fails to show that Hatton-912
`
`is cumulative ofKrulevitch. As Petitioner correctly points out, Patent
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`Ownerdoes not adequately support its cumulativeness argument by
`
`comparing the disclosures ofHattori-912 andKrulevitch. See Prelim. Resp.
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`27. Patent Owner seems toassumethatPetitioner's mere reliance on
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`Hattori-912 to teach similar limitations as those arguably disclosed by
`
`Krulevitch establishes the cumulative nature ofthe disclosures, but merely
`
`relying on newprior art to teach the same limitationsas art before the
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`Examiner, standing alone, does not establish cumulativeness ofthe art as a
`
`whole. See id. Thesituation here underscoresthis point, where the new
`
`13
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`Patent 8,708,483 B2
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`prior art (Hattori-912) expressly discloses aspects of eyewearthat the prior
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`art before the Examiner (Krulevitch) does not, rendering Hattori-912
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`arguably morereadily combinable with other eyewearprior art such as
`
`Blum-741. See Pet. 53-65. Moreover, Petitioner expressly arguesthat
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`Hattori-912 discloses eyewear limitations that Krulevitch does not. See id.
`
`at 55—59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’
`
`in which electronic components are embedded”), 64-65 (“‘Hattori-912
`
`discloses that the sealed module is embedded in the eyewear frame.”’).
`
`Underthese circumstances, we do not view thedisclosures ofHattori-
`
`912 and Krulevitch, or the obviousness arguments theyraise, as sufficiently
`
`similar to satisfy the first prong ofthe AdvancedBionics framework. We
`
`also decline Patent Owner’s invitation to discretionarily deny on the basis
`
`that the grounds based on Blum-741 and Hattori-912 would present a waste
`
`of resources.
`
`2. Part Two ofthe Advanced Bionics Framework
`
`Although the failure to satisfy part one ofthe AdvancedBionics
`
`frameworkprovidesone basis to refuse Patent Owner’s request to
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`discretionarily deny institution, for completeness we also consider whether
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`Petitioner shows a material error under part two ofthe AdvancedBionics
`
`framework. Petitioner arguesthat the priorart discloses claim limitations
`
`added during prosecution to secure the allowance ofthe claims, such that
`
`“the claims were allowed under a mistaken premise.” Pet. 7—8. For
`
`example, Petitioner argues that Howell-596 discloses the limitation requiring
`
`a sealed module disposed within the temple of an eyewear frame. See id. at
`
`7, 15, 17 (citing Ex. 1002 9961, 68; Ex. 1003 4] 194-195); Prelim. Reply7.
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`14
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`Patent Ownerarguesthat Petitioner makes no claim ofExaminererror
`
`in the Petition. Prelim. Resp. 29. Patent Owner arguesthat the Examiner
`
`considered Howell-596, but does not argue that Howell-596 fails to disclose
`
`the limitations that Petitioner contends Howell-596 discloses. See id.;
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`Prelim. Sur-reply 4.
`
`Weagree with Petitionerthat it alleged the Examinererredin failing
`
`to appreciate that Howell-596 discloses the limitations added to the
`
`independentclaimsto gain their allowance. See Pet. 7-8, 15-18. As more
`
`fully addressed below in ouranalysis ofPetitioner’santicipation challenge
`
`based on Howell-596, we agree with Petitioner, based on the current record,
`
`that Howell-596 disclosesall ofthe limitations of claim 1 and anticipates
`
`claim 1. These limitations include the “sealed moisture resistant module
`
`attached to the frame”and “disposed within the first temple” limitations that
`
`allegedly distinguished overthe prior art during prosecution, but which
`
`Howell-596 discloses. See id. at 15, 17; Ex. 1003 4 194 (Alternatively, the
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`modulehousing 1700 does notinclude vents or holes, so as to be water-
`
`resistant or water-proof.”), 195 (“The module housing 1700 is then placed
`
`into an opening, cavity or container of an eyewear housing, such as a temple
`
`region ofthe eyewearhousing.”).
`
`Accordingly, we are persuaded that the Examinererred in a manner
`
`material to patentability by overlooking these disclosures ofHowell-596.
`
`3. Conclusion
`
`Based on ouranalysis within the AdvancedBionics framework, we
`
`find that the Petition does not implicate § 325(d) in a mannersufficient to
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`warrantdiscretionary denial, and wedecline to exercise our discretion to
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`deny institution under § 325(d).
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`15
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`IPR2024-01030
`Patent 8,708,483 B2
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`C. Level ofOrdinary Skill in the Art
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`The level of ordinary skill in theart is “a prism or lens” through which
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`weview theprior art and the claimed invention. Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
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`hypothetical person presumed to have known therelevant art at the time of
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`the invention. Inre GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
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`determining the level of ordinary skill in the art, we may considercertain
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`factors, including: “(1)the educational level ofthe inventor; (2) type of
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`problems encounteredin the art; (3) prior art solutions to those problems;
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`(4) rapidity with which innovations are made; (5) sophistication ofthe
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`technology; and(6) educational level of active workersin thefield.” Best
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`Med. Int'l, Inc. v. Elekta Inc. , 46 F .4th 1346, 1353 (Fed. Cir. 2022) (quoting
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`Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).
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`“The patent’s purpose can also be informative.” /d.
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`Petitioner contendsthat a person having ordinary skill in theart at the
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`time ofthe invention wouldhave had “at least a bachelor’s degree in
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`mechanical or manufacturing engineering; mechatronics; electrical
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`en gineering plus coursework in mechanical engineering, manufacturing
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`engineering, or mechatronics; or a similar technical degree, andat least 2
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`years of experience designing consumerelectronics, such as eyewearwith
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`electronics.” Pet. 8 (citing Ex. 1002 49 23-25). Petitioner contends that
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`“[wlork experience could substitute for formal education and additional
`
`formal education could substitute for work experience.” /d. Patent Owner
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`does not contest Petitioner’s proposed definition or proffer a definition ofits
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`own. See generally Prelim. Resp.
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`16
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`IPR2024-01030
`Patent 8,708,483 B2
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`Wefind Petitioner’s definition to be consistent with the problems and
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`solutions disclosed in the ’483 patent andprior art ofrecord, and adoptit as
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`our own for purposes ofthis Decision. See, e.g.,GPAC, 57 F.3d at 1579
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`(approving the determination ofthe level of ordinary skill in the art by
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`appealto the references ofrecord).
`
`D. Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
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`standardset forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`(en banc). Underthat standard, we give the words ofa claim their plain and
`
`ordinary meaning as would have been understood by one skilled in the art at
`
`the time ofthe invention and in the context ofthe entire patent disclosure.
`
`Id. at 1312-13. Only termsin controversy need be construed, and only to
`
`the extent necessary to resolve the controversy. See Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc. , 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`Here, Petitioner posits that “no claim terms require construction to
`
`resolve the patentability challengeshere.” Pet.9. PatentOwnerdoes not
`
`oppose Petitioner’s contentionsor proffer any constructions of its own. See
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`generally Prelim. Resp.
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`At this time, we determine that no express construction of any term is
`
`necessary. We note that this determination does not preclude the parties
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`from arguing their proposed constructions ofthe claims during trial. Indeed,
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`the parties are hereby given notice that claim construction, in general, is an
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`issue to be addressedat trial. A final determination as to claim construction
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`will be made at the close ofthe proceeding, after any hearing, based onall
`
`17
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`IPR2024-01030
`Patent 8,708,483 B2
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`the evidence ofrecord. The parties are expectedto assert all oftheir claim
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`construction arguments and evidence during the trial, as permitted by our
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`rules.
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`FE. Anticipation by Howell-596
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`Petitioner argues that Howell-596 anticipates claims 1, 9, 10, 14, 15,
`
`and 18. Pet. 10-20. Patent Owner doesnot arguethat we should deny
`
`institution because Petitioner fails to show a reasonable likelihood of
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`prevailing on this ground. See Prelim. Resp. 3-30. Wefirst provide a brief
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`overview ofHowell-596 and then address Petitioner’s arguments.
`
`1. Overview ofHowell-596
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`Howell-596 discloses an electronic circuit within eyewear that allows
`
`a user to monitor its exposureto radiation, such as ultraviolet or infrared
`
`radiation or light. Ex. 1003, code (57).
`
`Wereproduce Figure 1 ofHowell-596 below.
`
`102
`
`Figure 1 shows“a perspective view ofUV monitoring glasses according to
`
`one embodimentofthe invention.” Ex. 1003415. Figure 1 depicts glasses
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`100 that include a frame havinglens holders 104 andapair of temples 108.
`
`18
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`IPR2024-01030
`Patent 8,708,483 B2
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`Id. 4 73. Temples 108 include circuit board 112 within internal cavity 110.
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`Id. Solar cell 114 and UV detector 116 are provided within cavity 110.
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`/d.
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`Circuitry 122 and display device 124 may be coupledto circuit board 112.
`
`Id.
`
`Howell-596 discloses embodiments that include further details of
`
`modulehousings. In oneembodiment, module housing 1700 houses UV
`
`detection system 1500, display device 1510, and powersupply 1504, suchas
`
`a solar cell. Ex. 1003 ¥ 194, Fig. 17A. Module housing 1700 mayinclude
`
`vents or holesso that air can circulate through the housing,or,
`
`“la|lternatively, the module housing 1700 does not include ventsor holes, so
`
`as to be water-resistant or water-proof.” /d. Howell-596 states that module
`
`housing 1700is “placed into an opening, cavity or container of an eyewear
`
`housing, such as a temple region ofthe eyewear housing.” /d. 4 195. In one
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`embodiment, eyewear housing 1720 has an opening, cavity or container
`
`1721 for receiving the module housing 1700, with module housing 1700
`
`contained by the eyewear housing 1720. Jd. § 196, Fig. 17B.
`
`2. Discussion
`
`“Under 35 U.S.C. § 102 a claim is anticipated “if each and every
`
`limitation is found either expressly or inherently in a single prior art
`
`reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.
`
`Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp. , 150 F.3d
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`1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single
`
`prior art disclosure ofall elements of a claimed invention arranged asin the
`
`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
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`(Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co. , 722 F.2d 1542,
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`1548 (Fed. Cir. 1983)).
`
`19
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`IPR2024-01030
`Patent 8,708,483 B2
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`A reference inherently discloses an element ofa claim “ifthat missing
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`characteristic is necessarily present, or inherent, in the single anticipating
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`reference.” Schering Corp. v. Geneva Pharm. , 339 F.3d 1373, 1377 (Fed.
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`Cir. 2003) (citing Cont’/ Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
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`1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established
`
`by probabilities or possibilities. The mere fact that a certain thing may result
`
`from a given set of circumstancesis not sufficient.” 7herasense, 593 F.3d
`
`at 1332 (quoting Cont ’] Can, 948 F.2d at 1269).
`
`Petitioner asserts that Howell-596 discloses every limitation of claim
`
`1, and points to specific portions ofHowell-596 to support its assertions.
`
`Pet. 14-18. Petitioner relies on the testimony ofDr. Feland to support its
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`assertions. See id. Patent Owner does not address any ofPetitioner’ s
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`anticipation arguments.
`
`For the preamble, “[e]yewear,” Petitioner contends that Howell-596
`
`discloses eyewear. Pet. 14 (citing Ex. 1002 959; Ex. 1003 47). Assuming
`
`that the preamble limits the claim, an issue we neednotreachat this point,
`
`and based on the current record, we are persuadedthat Petitioner
`
`demonstrates, for purposesofthis institution decision, that Howell-596
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`discloses “eyewear.”
`
`Claim 1 further recites a “frame” and “a sealed moisture resistant
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`moduleattached to the frame.” Ex. 1001, claim 1. Petitioner argues that
`
`Howell-596 discloses a frame, shown in Figure 1 reproduced above, and
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`“water resistant or water-proof” module housing 1700 placed within, and
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`therefore “attached to,” the eyewear frame. Pet. 14—15 (citing Ex. 1002
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`qj 60-61; Ex. 1003 49 73, 194-195, 203-206, Fig. 1). Based on the current
`
`20
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`IPR2024-01030
`Patent 8,708,483 B2
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`record, we are persuadedthat Petitioner demonstrates, for purposesofthis
`
`institution decision, that Howell-596 discloses these limitations.
`
`Claim 1 also recites “wherein the module comprises within the seal
`
`any two of: a switch, a detector, a processor, a power source, a drive circuit,
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`a transmitter, a receiver, a transceiver, andasensor.” Ex. 1001, claim 1.
`
`Petitioner contends that Howell-596 meets these limitations becauseit
`
`discloses a module that includes power source 1504 and UVdetection
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`system 1506, including UV detector 306, which meet the claim requirements
`
`of a “power source” anda “detector,” respectively. Pet. 15—17 (citing Ex.
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`1002 4] 62-66; Ex. 1003 9] 73-75, 78-82, 184, 194-195, 211-212,
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`Fig. 17A). Based on the current record, we are persuadedthat Petitioner
`
`demonstrates, for purposesofthis institution decision, that Howell-596
`
`discloses these limitations.
`
`Finally, claim 1 recites “wherein the frame comprisesa first temple
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`and a second temple, and wherein the module is disposed within thefirst
`
`temple.” Ex. 1001, claim 1. Petitioner asserts that Howell-596 discloses a
`
`frame havingfirst and second temples 108, as shown in Figure | reproduced
`
`above, and a module within the temple ofthe eyewearframe. Pet. 17 (citing
`
`Ex. 1002 49 67—68; Ex. 1003 4] 195, 197, Fig. 1). Based on the current
`
`record, we are persuaded that Petitioner demonstrates, for purposes ofthis
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`institution decision, that Howell-596 discloses these limitations.
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`3. Conclusion
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`Petitioner adequately establishes that Howell-596 disclosesall ofthe
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`limitations of claim 1, and therefore establishes a reasonable likelihood of
`
`proving that Howell-596 anticipates claim 1. We have also reviewed
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`Petitioner’s arguments and evidence addressing claims 9, 10, 14, 15, and 18
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`21
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`IPR2024-01030
`Patent 8,708,483 B2
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`subject to this challenge, which Patent Owner doesnot

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