The Eastern District of Texas case filed by EyesMatch, Ltd. against Samsung was stayed this past December to await the results of inter partes reviews (IPRs) of the two patents-in-suit. Now, Alphabet (Google) (3:25-cv-02964) has filed a complaint asking the Northern District of California for declaratory judgments of noninfringement of the same two patents, noting that while it was not named as a defendant in Texas, EyesMatch "identifie[d] functionality relating to the automatic framing of a user during a video call on the Google Duo and/or Google Meet application" as allegedly infringing the patents-in-suit.
Those patents (8,982,109; 8,982,110) belong to a family of nine with issue dates ranging between May 2011 and October 2018 and earliest estimated priority in March 2005 based on the filing of multiple provisional applications. Salvador Nissi Vilcovsky is named as the sole inventor on the earliest members of the family, with Ofer Saban also named on later patents. The two together assigned rights in the family to EyesMatch back in April 2014, with Vilcovsky moving the early patents to the same entity in January 2021.
EyesMatch sued Meta Platforms over this family in the District of Delaware back in January 2021, followed by Samsung in East Texas in August 2023. After EyesMatch served its infringement contentions, in May 2024, Google and Samsung filed petitions for IPR of the two patents-in-suit, the Patent Trial and Appeal Board (PTAB) instituting trials last fall. EyesMatch and Samsung then filed a joint motion for a stay, which the court granted. Magistrate Judge Roy S. Payne had just handed down a claim construction order in the case, turning away two indefiniteness challenges. Later in December 2024, Microsoft filed its own petitions for IPR of the two patents. Further background about the earlier litigation in this campaign can be read here.
According to the complaints in this campaign, Saban and Vilcovsky are the founders of both EyesMatch and MemoMi Labs Inc. MemoMi Labs was coplaintiff in the first case, there identified as the patents' exclusive licensee. EyesMatch was formed in the British Virgin Islands, while MemoMi was formed in Delaware in September 2014. The plaintiffs allege that Vilcovsky developed the concept of a "revolutionary 'digital mirror'" after the "proliferation of computing devices integrated with cameras" in 2004, allegedly recognizing "that, with a true digital mirror, users would want, inter alia, to: see themselves onscreen, as if they were looking in a mirror; 'try on' different clothes, makeup, hairstyle or other appearance changes; digitally alter their body appearance; and share their digital mirror images with others".
Saban (now identified as MemoMi's CTO) then joined Vilcovsky (the company's CEO) in 2012, according to the complaint, to form MemoMi and "productize the patented technologies", leading to "solutions" that have been used "by household names such as Sam's Club, Walmart, Neiman Marcus, Luxottica, L'Oréal, Estee Lauder, Shiseido, DFS, Chanel, and LVMH, including virtual hair and makeup try-ons and virtual eyeglass fit and measurement". The Google case against EyesMatch has been initially assigned to Magistrate Judge Lisa J. Cisneros.
The Northern District of California, unlike the District of Delaware and the Eastern District of Texas, requires litigants, upon first appearance, to file a certificate of interested parties. EyesMatch is represented by Farnan LLP and Tensegrity Law Group LLP in Delaware; and in Texas, Tensegrity Law Group and Truelove Law Firm, PLLC. 3/31, Northern District of California.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
