## Facts

- QR Spex, Inc. (QR Spex) was a patent-holding and licensing company that collaborated with others to develop eyewear with integrated radio transceivers.
- QR Spex obtained U.S. Patent No. 6,769,767 (the ’767 patent), directed to eyewear with detachable temples that contain electronic components, allowing users to swap temples to obtain different functions (e.g., headphones, television audio, child monitor).
- Claim 1 of the ’767 patent recited eyewear with “a Bluetooth transceiver … wherein said Bluetooth transceiver is embedded in said frame” and configured to form an ad hoc wireless network with multiple devices.
- The ’767 patent described the Bluetooth receiver as “co-molded” within a temple; the figures and written description depicted a transceiver set into a cavity as part of the temple structure, without describing a method for disassembly and removal.
- During prosecution, the PTO rejected broader claim language; QR Spex amended Claim 1 to add the limitation that the Bluetooth transceiver is “embedded in” the frame to distinguish prior art and obtain allowance.
- Motorola collaborated with Oakley and related Oakley entities to develop and sell Bluetooth-enabled eyewear called the O ROKR and O ROKR Pro (the accused Oakley eyewear).
- In the accused products, a Bluetooth transceiver on a printed circuit board sat in an indentation in a temple and was retained by internal ridges, clips, and posts, plus a screw-on plastic cover that formed a protective chamber.
- The Bluetooth transceiver modules in the accused eyewear could be removed or replaced without destroying the frame.
- QR Spex sued Motorola and the Oakley entities for infringement of Claim 1; defendants moved for partial summary judgment of noninfringement, arguing the transceiver was not “embedded in” the frame as required.

## Issues

1. Whether Claim 1’s requirement that the Bluetooth transceiver be “embedded in” the frame means the transceiver must be permanently set (rather than removably attached) within the eyewear frame.
2. Whether the accused Oakley eyewear literally infringed Claim 1 under the proper construction of “embedded.”
3. Whether the accused products infringed under the doctrine of equivalents, and whether prosecution history estoppel barred QR Spex from extending Claim 1 to non-permanent, removable transceiver configurations.

## Decision

- The court construed “embedded” in Claim 1 to require the Bluetooth transceiver to be permanently set in the frame (consistent with the patent’s co-molding description and the prosecution history narrowing to “embedded”).
- The court granted defendants’ motion for partial summary judgment of noninfringement as to Claim 1.
- There was no literal infringement because the accused transceivers were attached with clips/posts/screws and were easily removable or replaceable, so they were not “embedded” as construed.
- There was no infringement under the doctrine of equivalents because the removable module design was a substantial difference from a permanently set transceiver incorporated into the frame.
- Prosecution history estoppel also barred QR Spex from using the doctrine of equivalents to reach non-embedded implementations after QR Spex narrowed Claim 1 during prosecution to secure patentability.

## Legal Principles

- Claim construction relies primarily on intrinsic evidence: the claim language, specification, and prosecution history.
- Literal infringement requires every claim limitation, as construed, to be present in the accused product; absence of one limitation defeats literal infringement.
- Summary judgment is appropriate when no reasonable factfinder could find infringement under the properly construed claims.
- The doctrine of equivalents requires proof that the accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result, or that differences are insubstantial.
- Prosecution history estoppel can arise from a narrowing amendment made for reasons related to patentability and can prevent a patentee from recapturing surrendered subject matter through the doctrine of equivalents.

## Conclusion

Because the ’767 patent and its prosecution history supported construing “embedded” to mean permanently set within the eyewear frame, and the accused Oakley products used a removable, mechanically retained transceiver module, the court found no literal infringement and no infringement under the doctrine of equivalents, with prosecution history estoppel providing an additional bar to an equivalents theory.


QR Spex, Inc. v. Motorola Inc., 588 F. Supp. 2d 1240 (2008)