DCT
8:18-cv-02270
Ellison Educational Equipment Inc v. Prima Marketing Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ellison Educational Equipment, Inc. (California)
- Defendant: Prima Marketing, Inc. (California)
- Plaintiff’s Counsel: Stradling Yocca Carlson & Rauth, P.C.
- Case Identification: 8:18-cv-02270, C.D. Cal., 12/21/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Prima Marketing, Inc. is a California corporation with its principal place of business in the district and has allegedly committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s chemically-etched dies for the craft market infringe a patent related to a die design that improves alignment with printed materials.
- Technical Context: The technology relates to die-cutting tools used in the scrapbooking and crafting industries to cut precise shapes from paper or other sheet materials.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent a cease and desist letter to Defendant nine days prior to filing the lawsuit, providing actual notice of the patent-in-suit. This pre-suit notice forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2011-07-15 | Priority Date for ’325 Patent (Provisional Application Filing) |
| 2015-07-14 | ’325 Patent Issued |
| 2018-12-06 | Date of Website Images of Accused Products |
| 2018-12-12 | Plaintiff Sent Cease and Desist Letter to Defendant |
| 2018-12-21 | 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 (’325 Patent)
The Invention Explained
- Problem Addressed: The patent describes a registration problem in die-cutting where a user wishes to cut a shape that is already printed on a piece of paper (Compl. ¶23; ’325 Patent, col. 1:29-38). If the user cannot precisely see the die’s cutting blade, it is difficult to align the blade with the printed pattern, potentially resulting in an imprecise or offset cut (’325 Patent, col. 1:35-38).
- The Patented Solution: The invention is a die constructed so that its cutting edge is located at the exact periphery of an inside opening that passes through the die (’325 Patent, col. 1:56-61). By placing this die over the printed material, the user can look through the opening to align it with the printed pattern. Because the cutting edge is co-located with the edge of the opening, aligning the opening effectively aligns the unseen cutting blade, thereby solving the registration problem (’325 Patent, col. 3:30-45).
- Technical Importance: This design purports to enable users of craft die-cutting presses to accurately cut pre-printed shapes without the guesswork required by conventional dies where the cutting blade's location relative to the die body is not immediately apparent (’325 Patent, col. 1:35-41).
Key Claims at a Glance
- The complaint asserts independent method claim 1 (Compl. ¶37).
- Essential elements of claim 1 include:
- A method for cutting a printed shape from sheet material using a specific type of die.
- The die has an inside opening, a flat outside border, and a cutting edge projecting from one face of the border.
- Critically, the cutting edge "corresponds exactly with the shape that is printed" and is located such that "none of the flat outside border...extends into the inside opening...past the interface of said cutting edge."
- The method involves placing the die's cutting edge against the material and looking through the opening to align the printed shape entirely within it, such that the cutting edge is "automatically registered."
- The method concludes with moving the die and material through a roller press to cut the shape.
- The complaint does not specify assertion of any dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "chemically-etched dies" sold by Prima Marketing, Inc. (Compl. ¶27). The complaint references product links, a "Winter 2018 Catalog," and a YouTube video as sources for identifying these products (Compl. ¶¶ 28-30).
Functionality and Market Context
- The complaint alleges that Defendant’s products are dies used for crafting that "perform the method taught by the '325 Patent" (Compl. ¶27, ¶39). The complaint includes an image taken from Defendant's website showing two sets of die-cut shapes and their corresponding dies, which feature intricate outlines with a surrounding border (Compl. ¶31). The complaint alleges these dies are used by customers to create cut-outs for scrapbooking and other crafts, placing them in the same market as Plaintiff's products (Compl. ¶13, ¶27).
IV. Analysis of Infringement Allegations
’325 Patent 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... | The complaint alleges that Defendant’s customers and Defendant itself use the accused dies to cut shapes, thereby performing the claimed method. | ¶27, ¶37, ¶47 | col. 4:21-25 |
| a flat outside border having first and opposite faces that surround said inside opening, and a cutting edge that projects from the first face of the flat outside border, such that said cutting edge surrounds the inside opening... | The complaint alleges the accused dies are "chemically-etched dies that perform the method taught by the '325 Patent," which implies they have the claimed structure. An included image shows dies with an outer border surrounding an inner shape. | ¶27, ¶31, ¶39 | col. 3:4-10 |
| and none of the flat outside border of said die extends into the inside opening of said die past the interface of said cutting edge with the first face of said flat outer border... | The complaint alleges infringement of claim 1, which contains this limitation, but provides no specific factual allegations or visual evidence (such as a cross-section) to demonstrate that the accused dies meet this precise structural requirement. | ¶37 | col. 3:7-14 |
| placing the cutting edge...directly against the sheet material, and looking through the inside opening of said first die so that the shape printed on the sheet material is located entirely within the inside opening... | The complaint alleges that Defendant instructs its customers on how to perform the claimed method steps, including through a YouTube video. | ¶30, ¶47 | col. 4:32-41 |
| the cutting edge...is automatically registered so as to surround the shape to be cut from the sheet material... | By alleging performance of the full method, the complaint implicitly alleges this registration step occurs when customers use the accused dies as instructed. | ¶30, ¶34 | col. 4:40-45 |
| moving said first die and said sheet material through said roller press for causing a force to be applied...for pushing said cutting edge through said sheet material to cut the shape outwardly therefrom. | The complaint alleges inducement of infringement by teaching the public and customers to use the dies in a manner that would include this step. | ¶30, ¶47 | col. 4:46-56 |
- Identified Points of Contention:
- Direct Infringement of a Method Claim: Claim 1 is a method claim. The complaint's direct infringement count (Count I) alleges Defendant is "using the methods covered by the '325 Patent" (Compl. ¶37). A primary question will be whether Plaintiff can prove Defendant itself performed all steps of the claimed method (e.g., for testing or in demonstration videos), or if direct infringement is only performed by Defendant's customers, which would shift the focus to the indirect infringement claims.
- Structural Proof: The infringement allegation hinges on the specific physical structure of the accused dies, particularly the location of the cutting edge "at the interface" of the border and the opening. The complaint makes conclusory allegations but does not provide detailed evidence (like cross-sectional images or measurements) to show that the accused dies meet this key limitation. This suggests a central factual dispute will be whether the accused products are physically constructed as the patent requires.
V. Key Claim Terms for Construction
The Term: "corresponds exactly"
Context and Importance: Claim 1 requires the die's cutting edge to "correspond exactly with the shape that is printed on the sheet material." The interpretation of "exactly" will be critical. Defendant may argue that any minor mismatch between the die's blade and a printed image falls outside the claim, while Plaintiff may argue for a meaning that allows for practical, commercially acceptable tolerances. Practitioners may focus on this term because it appears to set a very high, potentially rigid standard for infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not define "exactly" but focuses on the overall goal of solving the user-registration problem, which may suggest the term should be interpreted functionally to mean "sufficiently precise for the user to achieve a properly aligned cut."
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes precision, stating the cutting edge "lies exactly at the periphery" and "precisely define[s] the shape" to solve the problem of "imprecise" cuts that are "not be as precise as intended" (’325 Patent, col. 1:38, col. 3:12-14). This language could support a strict, literal interpretation of "exactly."
The Term: "automatically registered"
Context and Importance: The claim recites that when the user aligns the printed shape within the die's opening, the cutting edge is "automatically registered." The meaning of "automatically" is a potential point of dispute. This term is central to how the invention is purported to work and distinguish itself from the prior art.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "automatically" simply means the registration occurs as a direct consequence of the visual alignment, without requiring extra measurement steps by the user.
- Evidence for a Narrower Interpretation: The patent describes a process where user action (placing the die and looking through the opening) leads to registration. A party could argue that "automatically" implies an inherent, self-aligning property of the die itself, rather than a result of a user's manual alignment action. The specification states that because the cutting edge's location "follows exactly the periphery of the inside opening," its location is "correspondingly known," leading to registration, which supports the interpretation that the registration is an automatic result of the die's specific geometry (’325 Patent, col. 3:40-45).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- Inducement is alleged based on Defendant providing products and "instructing, directing and/or requiring others, including customers" to perform the patented method (Compl. ¶47). The complaint specifically points to a YouTube video that allegedly "teaches members of the public how to infringe" (Compl. ¶30).
- Contributory infringement is alleged on the basis that Defendant sells the chemically-etched dies, which are claimed to be a "material part of the invention" that have "no other reasonable commercial use" and are not "staple articles of commerce" (Compl. ¶¶ 54-55).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's continued infringement despite having actual knowledge of the ’325 Patent. This knowledge is alleged to stem from a cease and desist letter sent by Plaintiff's counsel on December 12, 2018, prior to the lawsuit's filing (Compl. ¶33, ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of direct liability for a method claim: Can Plaintiff demonstrate that Defendant Prima Marketing directly performed all steps of the asserted method claim, or must it prove its case through the more complex theories of indirect infringement, which would require showing that Prima’s customers are the direct infringers?
- A key evidentiary question will be one of structural identity: Does the physical construction of the accused dies meet the precise limitation that the cutting edge is located "exactly" at the interface of the die's opening, with no portion of the border extending past it? The outcome of this factual dispute, which will likely require expert analysis of the accused products, may be determinative of infringement.
- The case will also turn on a question of claim scope: How will the court construe the term "automatically registered"? The interpretation will define whether the claim requires only a design that simplifies manual alignment for a user or a more inherent self-aligning feature, which could significantly impact the infringement analysis.