DCT

8:22-cv-00979

MGI Digital Technology SA v. Duplo USA Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:22-cv-00979, C.D. Cal., 05/12/2022
  • Venue Allegations: Venue is asserted based on Defendant having a principal place of business within the Central District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s digital spot UV coating machines and associated varnish inks infringe four U.S. patents related to inkjet deposition of protective coatings.
  • Technical Context: The technology concerns digital print embellishment, a process for applying spot coatings, such as varnish, to printed substrates to create tactile and visual effects.
  • Key Procedural History: The complaint notes that in 2017, Plaintiff MGI initiated a patent infringement lawsuit in France against a Duplo entity concerning European patents that claim priority to the same filings as the U.S. patents-in-suit. A French trial court reportedly found that the accused DDC-810 product infringed various of MGI's European patents. The complaint also alleges that Defendant had notice of the U.S. patents-in-suit as of March 17, 2017.

Case Timeline

Date Event
2005-06-14 Earliest Priority Date for ’067 Patent
2008-12-30 Earliest Priority Date for ’031 and ’806 Patents
2012-04-24 Earliest Priority Date for ’449 Patent
2013-08-13 ’031 Patent Issued
2014-07-22 ’806 Patent Issued
2014-08-12 ’067 Patent Issued
2016-08-23 ’449 Patent Issued
2017-03-17 Alleged notice of Asserted Patents provided to Defendant
2017-XX-XX French patent infringement lawsuit initiated against Duplo
2021-03-12 French trial court finds infringement by DDC-810
2022-05-12 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,783,806 - "Ink Jet Printer And Method For Depositing A Protective Layer On A Substrate," issued July 22, 2014

The Invention Explained

  • Problem Addressed: The patent’s background section identifies a drawback in prior art inkjet devices: the inability to achieve optimal deposition of protective ink layers (varnishes) across a wide range of viscosities, which limited their versatility ('806 Patent, col. 1:47-54).
  • The Patented Solution: The invention is a method and apparatus that controls the shape of an electric waveform applied to a piezoelectric actuator based on real-time properties of the ink, such as viscosity and temperature. By dynamically tailoring the waveform—for instance, by using intermediate plateaus in the voltage signal as shown in Figure 2—the system can precisely control the ejection and shape of droplets for different types of varnish ('806 Patent, Abstract; col. 6:20-46).
  • Technical Importance: This technology enabled a single digital printing machine to handle a diverse range of finishing effects, from thin protective coatings to thick, textured embellishments, enhancing the flexibility of digital print production ('806 Patent, col. 1:35-41).

Key Claims at a Glance

  • The complaint asserts method claims 1-8 and 18-26, and apparatus claims 9-17 and 27-36 (Compl. ¶¶ 26, 33, 40). Independent claims 1, 9, 18, and 27 are asserted.
  • Essential elements of independent apparatus claim 9 include:
    • A transport mechanism for moving a substrate relative to an ink jet nozzle arrangement.
    • The nozzle arrangement having a piezoelectric actuator for applying ink droplets.
    • A computer controlling a heater within the nozzle arrangement.
    • An electric source applying a waveform to the actuator to control droplet shapes.
    • The waveform’s shape being "determined by" the ink's viscosity and/or temperature.
    • At least one detector upstream from the heater for detecting the ink's viscosity and/or temperature.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶ 26).

U.S. Patent No. 9,422,449 - "Varnish Composition Transferrable by Inkjet Suitable for Sublimable or Thermal Transfer Ink," issued August 23, 2016

The Invention Explained

  • Problem Addressed: The patent identifies a need for an inkjet-deposited varnish that can withstand subsequent high-heat and high-pressure personalization processes like thermal transfer or sublimation printing without deteriorating or causing delamination ('449 Patent, col. 2:45-58).
  • The Patented Solution: The invention is a specific varnish composition with a low viscosity suitable for inkjetting, but which, when cured, is highly durable. The solution lies in a precise formulation comprising specific classes and ratios of a hardenable oligomer (e.g., polyester or epoxy), a hardenable monomer (specifically an alkoxylated acrylic monomer), and a photoinitiator ('449 Patent, Abstract; col. 2:5-22).
  • Technical Importance: This composition enables a fully digital workflow where a document can be printed, embellished with the patented varnish, and then subsequently personalized with high-quality, durable graphics, a key capability for products like customized badges, loyalty cards, and high-end packaging ('449 Patent, col. 2:59-65).

Key Claims at a Glance

  • The complaint asserts at least claim 1 (Compl. ¶¶ 17, 47).
  • Essential elements of independent composition claim 1 include:
    • A varnish deposited by inkjet comprising a hardenable oligomer, a hardenable monomer, and a photoinitiator.
    • The oligomer comprises epoxy resin, optionally combined with polyesters and/or hexa-functional aliphatic urethane acrylates.
    • The monomer is an alkoxylated and/or poly-alkoxylated acrylic monomer.
    • A specific weight ratio of total oligomer to total monomer (higher than 1:6 and lower than 1:2).
    • A specific viscosity for the hardenable oligomer (greater than 1 Pa·s at 23° C).
    • A specific viscosity for the final varnish composition (between 5 and 40 mPa·s at 25° C).
  • The complaint reserves the right to assert additional claims (Compl. ¶ 47).

Multi-Patent Capsule: U.S. Patent No. RE45,067 - "Numerical Jet Machine For The Application Of A Coating Onto A Substrate," issued August 12, 2014

  • Technology Synopsis: This patent describes a "numerical jet machine" for the contactless application of viscous products like varnish or glue. The invention centers on a system with individually controlled piezoelectric nozzles that can precisely deposit coatings in specified zones on a substrate, using a computer management system that reads markers on the substrate for accurate placement ('067 Patent, Abstract).
  • Asserted Claims: At least claims 1-34 are asserted (Compl. ¶¶ 15, 55).
  • Accused Features: The DDC-810 and DDC-8000 are accused of being numerical jet machines that use computer control to deposit UV varnish in a targeted manner (Compl. ¶¶ 15, 54-55).

Multi-Patent Capsule: U.S. Patent No. 8,506,031 - "Ink Jet Printer And Method For Depositing A Protective Layer On A Substrate," issued August 13, 2013

  • Technology Synopsis: As the parent of the ’806 Patent, this patent discloses a similar invention for an inkjet printer that controls droplet formation by adapting the electrical waveform applied to a piezoelectric actuator. The waveform's shape is controlled in response to parameters like ink viscosity, temperature, and desired layer thickness to enable the optimal deposition of a protective layer ('031 Patent, Abstract).
  • Asserted Claims: At least claims 1-11 and 12-25 are asserted (Compl. ¶¶ 15, 61, 68).
  • Accused Features: The DDC-810 and DDC-8000 are accused of embodying the patented apparatus and using the patented method to deposit UV varnish by controlling droplet formation based on ink properties (Compl. ¶¶ 15, 61-62).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are the DDC-810 Digital Spot UV Coater, the DDC-8000 Digital Spot UV Coater, and the UV curable varnish ink sold for use with these machines (Compl. ¶ 14).
  • Functionality and Market Context: The DDC-810 and DDC-8000 are identified as "print embellishment machines" or "UV spot coating printers" (Compl. ¶¶ 5, 26). They are alleged to apply "textured and tactile enhancements" to printed materials by depositing UV curable varnish in various sized and shaped droplets under the direction of a computer controller (Compl. ¶¶ 5, 15). The complaint alleges these machines include a nozzle arrangement with a heater, a reservoir for varnish with a viscosity between 100 and 1000 centipoises, and a substrate transfer device (Compl. ¶ 16). The DDC-8000 is described as a larger format version of the DDC-810 (Compl. ¶ 18). Defendant Duplo is the U.S., Canadian, and Latin American distributor for these products (Compl. ¶ 5).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’806 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
a computer controlling a heater included in the nozzle arrangement heating the covering ink... The DDC-810 includes a nozzle arrangement with a heater that heats the UV curable varnish ink. ¶16 col. 7:15-24
and an electric source for applying an electric waveform to the piezoelectric actuator, said waveform controlling the shapes of the droplets... The DDC-810 deposits UV curable varnish ink in various sized and shaped droplets at the direction of a computer controller. ¶15 col. 5:36-43
said electric waveform having a shape determined by at least one of the viscosity and/or the temperature of the covering ink... The DDC-810 deposits ink based on a thickness of the supplied UV curable varnish ink. ¶15 col. 5:43-50
the apparatus further including at least one detector upstream from the heater for detecting the viscosity of the ink... The DDC-810 deposits UV curable varnish ink... based on a thickness of the supplied UV curable varnish ink and can hold a product with a specified viscosity. ¶¶15-16 col. 7:40-45
  • Identified Points of Contention:
    • Technical Question: A key technical question is whether the accused products contain an actual "detector" for sensing ink viscosity and/or temperature to dynamically "determine" the waveform shape, as recited in claim 9 of the '806 Patent. The complaint alleges operation "based on a thickness" of the ink, which may not be equivalent to the active detection and response system described in the patent specification (Compl. ¶ 15; ’806 Patent, Fig. 1).
    • Scope Question: The analysis may focus on whether the accused products' "computer controller" performs the specific, adaptive waveform generation taught in the patent, or if it uses a set of pre-programmed, static settings for different ink types, which may fall outside the scope of a waveform "determined by" the ink's properties.

’449 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
said at least one hardenable oligomer comprises epoxy resin, alone or in combination with... polyesters and/or hexa-functional aliphatic urethane acrylates... The complaint alleges that the varnish ink used with the accused products includes a hardenable oligomer comprising these components. ¶17 col. 4:37-44
the varnish has a weight ratio between total hardenable oligomer and total hardenable monomer higher than 1:6 and lower than 1:2... The varnish ink is alleged to have a weight ratio of oligomer to monomer within this specified range. ¶17 col. 4:24-30
while said hardenable oligomer has a viscosity greater than 1 Pa·s at 23° C... The oligomer in the accused varnish ink is alleged to have a viscosity meeting this requirement. ¶17 col. 4:15-17
such that the varnish has a viscosity between 5 and 40 mPa·s at 25° C. The final varnish ink composition is alleged to have a viscosity within this claimed range. ¶17 col. 2:19-22
  • Identified Points of Contention:
    • Evidentiary Question: Infringement of the ’449 Patent hinges on the chemical composition of the varnish ink sold by the Defendant (Compl. ¶ 17). A central point of contention will be factual and evidentiary: does the specific varnish ink distributed by Duplo meet every compositional and property limitation of claim 1, an issue that will require chemical analysis and expert testimony.
    • Scope Question: The parties may dispute whether the chemical components in the accused ink fall within the patent's definitions of "hardenable oligomer" and "hardenable monomer," potentially leading to a debate over the precise chemical structures covered by the claims.

V. Key Claim Terms for Construction

Term from ’806 Patent: "shape determined by"

  • Context and Importance: This phrase from claim 9 is central to the patented method of adapting the printing process to the ink's physical properties. Its construction will define whether the invention requires a dynamic, real-time feedback loop or if a pre-configured system suffices. Practitioners may focus on this term because it distinguishes a "smart" adaptive system from a conventional one with static settings.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim requires the waveform shape be "determined by" viscosity and/or temperature, which a plaintiff may argue is satisfied if the system's control logic was designed with those parameters in mind, even if not measured in real time. The summary of the invention states the shape is controlled "in response to" these parameters, which could support a broader reading (’806 Patent, col. 2:3-9).
    • Evidence for a Narrower Interpretation: The detailed description and Figure 1 explicitly show "detectors" (58, 60) for viscosity and temperature providing input to the computer system, which then controls the waveform. This supports a narrower construction requiring an active, closed-loop system that measures properties and adjusts the waveform accordingly (’806 Patent, col. 7:40-57).

Term from ’449 Patent: "hardenable oligomer"

  • Context and Importance: The identity, chemical family, and physical properties of this component are foundational to the composition claimed in the ’449 patent. The dispute will likely center on whether the specific molecules in Defendant's varnish meet the claim's definition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim broadly defines the term by chemical class ("epoxy resin," "polyesters," "urethane acrylates") and a viscosity requirement (’449 Patent, col. 4:15-17, 4:37-44). A plaintiff may argue that any molecule fitting this general description infringes.
    • Evidence for a Narrower Interpretation: The specification provides specific commercial examples of suitable oligomers (e.g., "EBECRYL 870," "EBECRYL 5129") (’449 Patent, col. 4:40-50). A defendant could argue that these examples limit the scope of the term, or that their own product's components are chemically distinct from these embodiments.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for the '806 and '031 patents. Inducement is based on Defendant's alleged "advertisement and promotion," "demonstration... at trade shows," and providing "instructions to users" (Compl. ¶ 22). Contributory infringement is based on allegations that the accused products are "especially made or especially adapted for practicing the invention" and lack substantial non-infringing uses (Compl. ¶ 23).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents. The complaint asserts that MGI provided notice of the asserted patents to Duplo on March 17, 2017 (Compl. ¶ 19). The allegation is further supported by reference to an adverse 2021 ruling from a French court on related European patents, which suggests Defendant was aware of its potential infringement risk (Compl. ¶ 20).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of operational functionality: Do the accused DDC-810 and DDC-8000 machines implement the dynamic, feedback-based control system claimed in the apparatus patents—specifically, by using an upstream detector to actively "determine" a waveform shape based on ink properties—or do they rely on pre-programmed settings that may not satisfy this key limitation?
  • A second central issue will be one of chemical identity: Can discovery and chemical analysis prove that the specific UV curable varnish ink distributed by Defendant for use with its machines meets every compositional element of the '449 patent's claims, including the precise oligomer and monomer types, their weight ratios, and their claimed viscosity properties?
  • Finally, a key question will concern willful infringement: Given the alleged pre-suit notice in 2017 and the subsequent adverse ruling in a French court on related patents, the court will have to determine whether Defendant’s continued alleged infringement was objectively reckless, potentially exposing it to enhanced damages.