DCT
8:17-cv-01205
MT Derm GmbH v. Bishop Tattoo Supply Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mt. Derm GmbH (Germany) and Nouveau Cosmetique USA, Inc. (Florida)
- Defendant: Bishop Tattoo Supply, Inc. (California)
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 8:17-cv-01205, C.D. Cal., 07/14/2017
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the defendant resides there, maintains a regular and established place of business, and has conducted acts of infringement within the district, including selling, offering to sell, and importing the accused products.
- Core Dispute: Plaintiffs allege that Defendant’s disposable tattoo needle cartridges and associated grips infringe a patent related to modular, hygienic ink application devices for tattooing and permanent makeup.
- Technical Context: The technology addresses hygiene and cross-contamination risks in the tattoo and permanent makeup industries by using a disposable, pre-sterilized needle cartridge system.
- Key Procedural History: The patent-in-suit was the subject of an ex parte reexamination requested by Plaintiff Mt. Derm, which resulted in the issuance of a Reexamination Certificate on November 4, 2015, confirming the patentability of amended claims. The complaint also alleges that Plaintiffs notified Defendant of the infringement on at least two occasions prior to filing suit, which may support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-22 | '530' Patent Priority Date |
| 2002-02-12 | '530 Patent Application Filing Date |
| 2003-01-14 | '530 Patent Issue Date |
| 2015-11-04 | '530 Patent Reexamination Certificate Issued |
| 2016-08-11 | Plaintiff Notifies Defendant of Alleged Infringement |
| 2017-01-03 | Plaintiff Sends Second Notification to Defendant |
| 2017-07-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,505,530 - "Ink Application Device for Tattooing or for Making Permanent Make-Up"
- Patent Identification: U.S. Patent No. 6,505,530 (as reexamined by Certificate US 6,505,530 C1), "Ink Application Device for Tattooing or for Making Permanent Make-Up," issued January 14, 2003.
The Invention Explained
- Problem Addressed: The patent background describes the significant health risks in tattooing, particularly the transmission of infectious diseases like AIDS and hepatitis through bodily fluids. It notes the difficulty of ensuring sterility for reusable device components and the danger of contaminating bulk ink supplies between customers ('530 Patent, col. 1:15-38).
- The Patented Solution: The invention proposes a two-part system: a reusable "basic module" containing the handle and motor drive, and a single-use "sterilized disposable module" that integrates all components that come into contact with the customer's skin and bodily fluids, such as the needle, needle nozzle, and an ink reservoir. This disposable cartridge can be removed from the basic module and discarded after one use, allowing a new, sterile module to be attached for the next customer, thereby preventing cross-contamination ('530 Patent, Abstract; col. 2:15-32). The disposable module is designed to connect simply and securely to the drive in the basic module ('530 Patent, col. 3:38-48).
- Technical Importance: This modular design significantly simplified hygiene protocols for tattoo artists and cosmeticians by eliminating the need for complex sterilization of device parts between clients ('530 Patent, col. 2:33-47).
Key Claims at a Glance
- The complaint asserts infringement of multiple claims, with a focus on representative independent claim 1 of the Reexamined '530 Patent (Compl. ¶¶28, 31).
- Independent Claim 1 (as reexamined) requires:
- A basic module having a handle and an integrated needle drive.
- A unitary sterilized disposable module which includes an outer housing, a needle, a needle nozzle, a portion to contact the drive, and an ink receiving portion.
- Means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module.
- The complaint reserves the right to assert numerous other claims, including dependent claims (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
- The "Fantom Cartridge Needles" and the "Fantom Tubes Cartridge Grips," collectively identified as the "Infringing Products" (Compl. ¶¶9, 12, 16).
Functionality and Market Context
- The accused products are disposable needle cartridges and associated grips designed for use in tattooing and permanent make-up (PMU) application devices (Compl. ¶¶9, 17).
- The complaint alleges the Fantom Cartridge Needles are marketed as being compatible with various tattoo machines, including the Plaintiffs' own "Cheyenne Hawk" line of machines and T-Tech needle cartridges (Compl. ¶¶10, 13).
- It is alleged that the needles are sold in "individual sterile blister packs" and are marketed as a "direct replacement" for Plaintiffs' Cheyenne Hawk® disposable needles, positioning them as direct competitors (Compl. ¶¶10, 11).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
Reexamined '530 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a basic module having a handle and an integrated needle drive | The complaint alleges the accused needles are used with tattoo machines, such as the "Cheyenne Hawk tattoo machine," which constitute the claimed basic module with an integrated drive and handle (Compl. ¶¶30, 31). | ¶¶29, 30, 31 | col. 2:19-21 |
| a unitary sterilized disposable module including an outer housing and a needle, wherein the outer housing substantially surrounds the needle, which is supported at one end of the unitary sterilized disposable module by a needle nozzle and which is supported at another end of the disposable module by a portion that can contact the integrated needle drive | The complaint alleges that the "Fantom Cartridge Needles" are a "unitary sterilized disposable module" that is "designed to be operatively inserted into a tattoo machine" and includes an "integrated needle drive and handle." | ¶29 | col. 3:49-54 |
| the needle being movable relative to the outer housing, and an ink receiving portion disposed around the needle | The accused products are tattoo needle cartridges, which by their nature must have a needle that moves relative to its housing to apply ink. The cartridge body itself functions as the ink receiving portion. | ¶29 | col. 3:61-64 |
| means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module | The "disposable" nature of the accused Fantom Cartridge Needles and the allegation that they are "operatively inserted" into tattoo machines implies the existence of a mechanism for attachment and removal, which is alleged to constitute the claimed "means." | ¶29 | col. 2:48-52 |
Identified Points of Contention
- Scope Questions: The interpretation of "unitary sterilized disposable module" will be critical. The court will have to determine if the accused Fantom Cartridge Needles, which are sold separately from grips and tattoo machines, meet the "unitary" limitation as understood in the patent. A question arises as to whether the "module" is the needle cartridge itself, or the combination of the cartridge and a grip.
- Technical Questions: A key evidentiary question will concern the "means for allowing simultaneous removal" limitation. As this is a means-plus-function element, its scope is defined by the corresponding structures in the patent specification. The analysis will focus on whether the connection mechanism of the accused products is structurally equivalent to the "magnetic coupling" or other simple connection methods described in the '530 patent (e.g., '530 Patent, col. 4:26-34).
V. Key Claim Terms for Construction
"unitary sterilized disposable module"
- Context and Importance: This term encapsulates the core of the invention's hygienic solution. Its construction will determine whether the accused product, a disposable needle cartridge sold separately from the grips and machines it connects to, falls within the scope of the claims. Practitioners may focus on this term because the defendant could argue their product is merely a component, not a complete "module."
- Evidence for a Broader Interpretation: The patent's focus is on the disposability of all contaminated parts as a single unit to be removed and replaced. Language describing the module as a unit that is "removed from the basic module after the treatment and is disposed of in the usual manner" could support an interpretation where "unitary" refers to its function as a single disposable piece, even if constructed from multiple parts ('530 Patent, col. 2:38-41).
- Evidence for a Narrower Interpretation: The abstract distinguishes between a "disposable or hygienic module" and an "optional ink module," suggesting a specific and potentially limited scope for what constitutes the claimed module ('530 Patent, Abstract). A defendant might argue that "unitary" implies a single, integrated piece that does not require a separate grip to function as a complete module.
"means for allowing simultaneous removal of the entire unitary sterilized disposable module"
- Context and Importance: As a means-plus-function limitation, its scope is not its literal meaning but is restricted to the specific structures disclosed in the patent that perform the stated function. The infringement analysis for this element will be a direct comparison of the accused product's structure to the patent's disclosed structures.
- Intrinsic Evidence for Interpretation: The specification describes the connection as one that can be "established and released in a simple manner" ('530 Patent, col. 2:48-52). It also discloses a specific structure for a drive connection: a "magnet 10 attached at the distal end of the needle shaft" that creates a "non-positive connection" with a "corresponding magnetic counter piece 31" in the basic module ('530 Patent, col. 4:26-34). The structure corresponding to the "means" would be this magnetic coupling or other similarly simple, releasable connection mechanisms implied by the specification, which allow the entire module to be detached.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement to infringe by claiming Defendant encourages end-users to combine the accused cartridges with tattoo machines in an infringing manner. This is based on allegations that Defendant's website and marketing materials advertise compatibility and instruct on use with such machines (Compl. ¶¶10, 13-15, 36). Specific intent is alleged based on Defendant’s knowledge of the patent from pre-suit notice letters (Compl. ¶¶37, 39).
Willful Infringement
- Willfulness is alleged based on Defendant’s continued infringement after having been notified of the '530 patent and the alleged infringement on August 11, 2016, and January 3, 2017, nearly a year before the suit was filed (Compl. ¶¶39, 44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "unitary sterilized disposable module," as defined by the patent, be construed to read on the accused needle cartridges, which are sold as standalone components intended for use with separate grips and tattoo machines?
- A second central question will be one of structural equivalence: for the "means for allowing simultaneous removal," does the accused products' attachment mechanism constitute an equivalent to the specific structures (e.g., a magnetic coupling) disclosed in the '530 patent specification?
- Finally, the viability of the inducement claim may depend on whether Plaintiffs can demonstrate that Defendant’s marketing and instructions, particularly after receiving notice of the patent, showed a specific intent for its customers to assemble and use the components in a way that directly infringes the patent claims.