DCT
8:18-cv-02043
Ellison Educational Equipment Inc v. Stephanie Barnard Designs Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ellison Educational Equipment, Inc. (California)
- Defendant: [Stephanie Barnard](https://ai-lab.exparte.com/party/stephanie-barnard) Designs, Inc. d/b/a The Stamps of Life, and Stephanie Barnard (California)
- Plaintiff’s Counsel: Stradling Yocca Carlson & Rauth, P.C.
- Case Identification: 8:18-cv-02043, C.D. Cal., 12/17/2018
- Venue Allegations: Venue is alleged to be proper based on Defendants’ residence and commission of infringing acts within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendants’ chemically-etched craft dies, and the methods for their use, infringe a patent related to die-cutting technology that enables precise alignment of a cut with a pre-printed image.
- Technical Context: The technology is situated in the arts and crafts market, specifically addressing the manufacturing and use of steel-rule dies for cutting shapes from paper or other materials using a press.
- Key Procedural History: The complaint alleges a prior business relationship between the parties, including a consulting relationship beginning in 2009 and a subsequent licensing agreement, under which Plaintiff manufactured dies for Defendants. This history is cited as the basis for Defendants’ alleged knowledge of the patented technology, forming a foundation for the willfulness and indirect infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-20 | Alleged start of consulting relationship between Barnard and Ellison |
| 2011-07-15 | Priority Date for ’325 Patent (Provisional Application Filing) |
| 2015-07-14 | U.S. Patent No. 9,079,325 Issued |
| 2018-12-17 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,079,325 - “Chemical-Etched Die Having Improved Registration Means,” issued July 14, 2015.
The Invention Explained
- Problem Addressed: The patent addresses a problem in crafting where a user must align a die’s cutting blade with a pre-printed pattern on a sheet of material. With conventional dies, the user often cannot see the exact location of the cutting blade when placing the die, leading to imprecise cuts that are not properly registered with the printed image (’325 Patent, col. 1:29-43).
- The Patented Solution: The invention is a chemically-etched die constructed so that its cutting edge is located precisely at the periphery of an interior opening through the die. This design allows a user to look through the opening, align its visible edge with the printed pattern on the material below, and be certain that the unseen cutting blade is perfectly aligned with that same edge. This structure is intended to ensure an accurate cut corresponding to the printed shape (’325 Patent, Abstract; col. 2:57-65). Figure 8 of the patent illustrates a user aligning the die (1) over a printed "STAMP" image (25).
- Technical Importance: This design provides a simple, visual method for achieving precise registration in die-cutting, a key requirement for crafters seeking to create layered or matched sets of stamped images and die-cut shapes (’325 Patent, col. 1:11-18).
Key Claims at a Glance
- The complaint asserts independent claim 1 (’325 Patent; Compl. ¶40).
- The essential elements of Claim 1, a method claim, include:
- Providing a first die with an inside opening, a flat outside border, and a cutting edge projecting from one face that "corresponds exactly with the shape that is printed on the sheet material."
- Locating the printed shape on the sheet material.
- Placing the die's cutting edge against the material while looking through the inside opening to ensure the printed shape is located entirely within it, thereby achieving "automatic" registration.
- Positioning the die and sheet material in a roller press.
- Moving the die and material through the press to cut out the shape.
- The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief requests a declaration of infringement of "one or more claims" (Compl. ¶22A).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants’ "‘The Stamps of Life by Stephanie Barnard’ chemically-etched dies" (Compl. ¶42). The complaint alleges infringement through the making, using, selling, and importing of these dies, as well as by inducing customers to use them in an infringing manner (Compl. ¶¶40, 48-50).
Functionality and Market Context
The complaint alleges these dies are manufactured via a chemical-etching process and are designed to be used with a press to cut shapes from sheet material (Compl. ¶¶25, 31). The complaint provides a photograph showing several accused dies, each featuring a cutting blade surrounding a central void, designed to cut shapes like an elephant, a monkey, and a paw print. This image from the Defendants' website shows dies sold for crafting purposes, often in conjunction with matching rubber stamps (Compl. p. 7). The complaint alleges that Defendants are "making or having their patterns made into chemically-etched dies that perform the method taught by the ’325 Patent, rather than purchasing from Ellison" (Compl. ¶31).
IV. Analysis of Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for cutting out, by means of a first die, a shape that is printed on a sheet material, wherein the die includes an inside opening that corresponds to the shape to be cut... a flat outside border... and a cutting edge that projects from the first face... | Defendants are alleged to make, use, and sell dies having this structure, and to induce customers to use them in the claimed method. | ¶¶31, 42 | col. 2:48-54 |
| such that said cutting edge surrounds the inside opening of said first die and corresponds exactly with the shape that is printed on the sheet material and none of the flat outside border... extends into the inside opening... | The complaint alleges Defendants' dies perform the method taught by the patent, which requires this specific die geometry for registration. A product photograph shows dies with a cutting edge surrounding an opening. | ¶31; p. 7 | col. 3:4-14 |
| locating the shape printed on the sheet material to be cut therefrom; | Defendants are alleged to induce customers to perform this step through instructions and videos. | ¶¶33, 35, 50 | col. 4:32-34 |
| placing the cutting edge... directly against the sheet material, and looking through the inside opening... so that the shape printed... is located entirely within the inside opening... and the cutting edge... is automatically registered... | This core alignment step is allegedly induced by Defendants, whose product design (cutting edge at the periphery of an opening) facilitates the action. | ¶¶35, 50 | col. 4:35-44 |
| positioning said first die and the sheet material... within a roller press; and | Defendants are alleged to induce customers to perform this standard step in die-cutting. | ¶¶35, 50 | col. 4:45-48 |
| moving said first die and said sheet material through said roller press for... pushing said cutting edge through said sheet material to cut the shape outwardly therefrom. | Defendants are alleged to induce customers to complete the cutting process. | ¶¶35, 50 | col. 4:51-58 |
Identified Points of Contention
- Technical Question: A central factual question will be whether the accused dies possess the specific geometry required by the claims, namely that the cutting edge "corresponds exactly" with the printed shape and is located at the precise interface of the outside border and the inside opening, with "none of the flat outside border" extending past the blade (’325 Patent, col. 4:25-31). The infringement analysis may depend on evidence establishing these specific structural characteristics in the accused products.
- Scope Question: The claim requires that the cutting edge be "automatically registered" when the user looks through the opening. The interpretation of "automatically registered" may be disputed. Defendants might argue this implies a hands-free or self-aligning feature not present in their products, while Plaintiff may argue it simply means registration is inherent to the die's design, removing the guesswork required with conventional dies.
V. Key Claim Terms for Construction
"corresponds exactly with the shape that is printed"
- Context and Importance: This term is critical because it defines the necessary relationship between the die's cutting edge and the target image. The infringement case rests on the accused dies meeting this level of precision. Practitioners may focus on this term to determine the required tolerance for alignment and whether any minor deviation from a perfect match falls outside the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification’s general description focuses on solving the user-visibility problem and achieving a "precise shape corresponding to the printed pattern" (’325 Patent, col. 1:35-37), which could suggest that "exactly" implies a functional, rather than mathematically perfect, correspondence that achieves the intended visual result.
- Evidence for a Narrower Interpretation: The repeated use of "exactly" and "precisely" (e.g., "cutting edge lies exactly at the periphery," col. 2:60-61; "precisely define the shape," col. 3:13-14) could support an argument that the term requires a very high, measurable degree of fidelity between the blade and the target image.
"automatically registered"
- Context and Importance: This term describes the result of the user's alignment action. Its meaning is central to the infringement analysis for the method claim, particularly for inducement. The dispute will likely center on what level of action or result qualifies as "automatic."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent explains that because the cutting edge's location is known to be at the periphery of the visible opening, the user's alignment of that opening inherently aligns the blade. The specification states, "the location of the cutting edge 9 will be correspondingly known" (’325 Patent, col. 3:44-45). This suggests "automatically" refers to the registration being a direct and certain consequence of the design, not a separate, complex user task.
- Evidence for a Narrower Interpretation: An opponent could argue that "automatically" implies a process that occurs without user intervention or judgment, such as a physical self-aligning mechanism. Since the user still must "look[ ] through the inside opening" and manually place the die, one could argue the process is user-guided, not automatic.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants instruct customers on how to use the accused dies in an infringing manner through methods including online videos (Compl. ¶¶33, 35, 50). Contributory infringement is based on the allegation that the accused dies are a material part of the invention, are not staple articles of commerce, and have no substantial non-infringing use (Compl. ¶¶57-58).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ alleged pre-suit knowledge of the ’325 patent. This knowledge is purportedly derived from a prior consulting and licensing relationship with Plaintiff, during which Plaintiff allegedly manufactured dies for Defendants embodying the patented technology (Compl. ¶¶29-30, 44). The complaint also asserts knowledge based on the filing of the lawsuit itself for any post-suit conduct (Compl. ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of structural and functional equivalence: Does the physical construction of the accused dies meet the claim requirement that the cutting edge lies "exactly" at the periphery of the inside opening? The case may turn on factual evidence, such as expert analysis and product teardowns, to determine if the accused products embody this key inventive concept.
A second central question will concern inducement and knowledge: Can Plaintiff prove that Defendants, through their instructions and product marketing, specifically intended for their customers to perform every step of the claimed method? The alleged prior business relationship will be critical evidence in establishing Defendants’ knowledge of the patent and their intent.
The case will also likely feature a significant dispute over claim scope: How should the term "automatically registered" be construed? The resolution of this question—whether it means registration is simply inherent in the design or requires a more complex, self-acting mechanism—will be fundamental to the determination of infringement.