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Ammunition for Ditto in its fight against a patent troll

Posted by: In: Uncategorized 03 Jun 2013 Comments: 0

About a month ago, we tweeted about the startup Ditto being sued for patent infringement by a non-practicing entity.  Ditto’s 15-person business focuses on allowing its customers to “try-on” glasses and other eyewear virtually, thereby eliminating the need to go to your nearest LensCrafters to physically try on a pair of frames – an awesome, “Why didn’t I think of that” idea in my opinion.

And so when this non-practicing entity, 1-800-Contacts, slapped Ditto with this patent infringement claim, I felt more compelled to check up on the validity of this US 7016824 patent (which has a priority date of 2/6/2001).  Using AI Patents’ search engine to “strength-test” this patent by copying and pasting claim #1 of the ‘824 and limiting by 2/6/2001 date, I quickly uncovered several patents that appear to help Ditto’s mission to defeat this NPE.  Before going into the prior art, it’s important to see the main independent claim of the ‘824:

 

1. A method for commercializing pairs of eyeglasses over a network, the method comprising: providing an interactive platform that can be displayed on a computing device;requesting a 3D face model from a user to be used in the interactive platform; determining characteristics of the 3D face model with respect to a 3D reference frame; retrieving a 3D representation of a pair of eyeglasses when a request identifying the pair of eyeglasses is received over the network; and placing the 3D representation of the glasses onto a default position with respect to the 3D face model in accordance with the characteristics thereof.

 

And the prior art (all of which was previously not cited in the patent prosecution by the Examiner or Applicant):

 

US6944327 – Method and system for selecting and designing eyeglass frames (priority date: 11/4/1999)

Excerpts from the first and third paragraphs in the Brief Summary of the Invention:  “In one embodiment, a user utilizes a method and system to design, select, and purchase eyeglasses. The user accesses the system and visualizes an inventory of eyeglass styles and shapes previously stored in a database and displayed by the system. The user selects a particular eyeglass style and “virtually tries on” the selected eyeglasses in a size that matches the user’s facial features. In addition, the method and system allow the user to interactively modify the choice by changing the shape, style, and color of the eyeglass frames… More particularly, the present method includes receiving at least one digital image of a face of a person, performing basic image processing operations such as color or light compensation, displaying to the user a variety of eyeglass shapes and styles available from manufacturers and retailers, matching a size of a selected eyeglass frame to a facial size and features of the person, and receiving input information such as inter-ocular distance or prescription details.”

frame1

 

US6692127 – Spectacles fitting system and fitting methods useful therein (priority date: 5/18/2000)

From the Abstract – “A spectacles fitting system including a wide-view imaging system operative to provide a wide-view of a client’s face, a 3D image processor operative to generate first 3D information describing the client’s physical features, a virtual try-on unit operative to receive the digital 3D representation of the client’s face and a digital 3D representation of a spectacle frame, to virtually mount the spectacle frame onto the client’s face and to generate second 3D information describing frame/facial fit, and a lens fitter operative to receive the first 3D information and the second 3D information and to generate therefrom at least one parameter for face-and-frame customized manufacture and cutting of the lens.”

frame2

US7062722 – Network-linked interactive three-dimensional composition and display of saleable objects in situ in viewer-selected scenes for purposes of promotion and procurement (priority date: 8/22/2000)

From Summary of the Invention – “In summary, a system is presented that allows customized virtual objects of known size to be interactively manipulated and placed into precise locations of photographically or virtually-derived scenes at the proper scale, over a digital network. Such “in context” interactive product displays are useful for evaluating visually attractive design concepts, and for product promotion and procurement… For example, the showing of virtual images of eyeglass frames upon the head of a prospective purchaser of eyeglasses is a proper subject for the display system of the present invention.

 

There are several takeaways here:

– Overall, it appears that is a host of prior art that Ditto can potentially use to challenge the validity of the ‘824; the upfront costs of hiring the legal team may likely the bigger challenge for Ditto.

– If Ditto is deemed not to have infringed the ‘824, are they infringing these other patents?  This would require more analysis and research as you would want to know: 1, are these other patents still active, and 2, how are the claims in these patents expressed? And, if indeed, Ditto, was worried about these other patents, they could always seek out more favorable terms.

– Yes, there is an assumption of validity when a US patent is granted.  Though with all the attention on non-practicing entities these days, they are not helping their case by not during their own due diligence before acquiring patents.  The more frivolous patent lawsuits there are, the more it will be perceived as a drain to the economy.

– Start-ups are not immune to patent infringement cases as it is not just Apple or Google or Samsung getting sued.  Patently-O blog recently published that that 55% of unique PAE defendants make $10M or less in revenue, and 66% make less than $100M a year.

 

I will be following how Ditto proceeds with this lawsuit.  In the future when all is said and done (and hopefully not 3+ years down the road), it will make for an interesting case study to analyze the economic breakdown of this lawsuit, including time and effort spent, opportunity costs, fees rendered, and rewarded outcomes covering all the stakeholders involved (and particularly, the owner of the original patent, the non-practicing entity 1-800-Contacts, and Ditto).

– Brian Bochicco

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