DCT
1:17-cv-00949
MT Derm GmbH v. J Graphics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MT. DERM GmbH (Germany) and NOUVEAU COSMETIQUE USA, Inc. (Florida)
- Defendant: Joker Tattoo Supply LLC (California)
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 1:17-cv-00949, E.D. Cal., 07/14/2017
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, maintains a regular and established place of business, and has conducted acts of infringement within the district, including selling and offering to sell the accused products.
- Core Dispute: Plaintiffs allege that Defendant’s disposable tattoo needle cartridges and associated grips infringe a patent related to modular ink application devices designed for improved hygiene.
- Technical Context: The technology concerns tattoo and permanent makeup devices that utilize a system of a reusable handle/motor and a single-use, sterilized, disposable cartridge containing the needle and ink-contacting components to prevent cross-contamination between clients.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 6,505,530, underwent an ex parte reexamination requested by Plaintiff MT. DERM, resulting in the issuance of a Reexamination Certificate on November 4, 2015. The complaint alleges that Defendant was notified of its infringement via correspondence on two occasions prior to the filing of the suit.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-22 | Earliest Priority Date for '530 Patent |
| 2003-01-14 | U.S. Patent No. 6,505,530 Issued |
| 2015-11-04 | '530 Patent Reexamination Certificate Issued |
| 2016-08-11 | First Alleged Notice of Infringement Sent to Defendant |
| 2017-01-03 | Second Alleged Notice of Infringement Sent to Defendant |
| 2017-07-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,505,530 (the "'530 Patent"), "Ink Application Device for Tattooing or for Making Permanent Make-Up," issued January 14, 2003. All allegations pertain to the patent as amended by Reexamination Certificate US 6,505,530 C1, issued November 4, 2015 (the "Reexamined '530 Patent"). (Compl. ¶19-20).
The Invention Explained
- Problem Addressed: The patent’s background highlights the substantial health risks in tattooing and permanent makeup, particularly the transmission of infectious diseases like AIDS and hepatitis through contaminated equipment. It notes the difficulty and cost of properly sterilizing conventional, multi-use tattoo device components that come into contact with a customer's bodily fluids. (’530 Patent, col. 1:15-38).
- The Patented Solution: The invention is a two-part modular system. It comprises a reusable "base module" containing the handle and motor drive, and a separate, pre-sterilized "disposable module." This disposable module integrates all components that could be contaminated—the needle, needle nozzle, and ink reservoir—into a single unit that can be attached to the base module for a single use and then safely discarded. (’530 Patent, Abstract; col. 2:16-32). This design physically isolates the reusable, non-sterile components from the sterile, single-use components that contact the client.
- Technical Importance: This modular approach sought to simplify hygienic procedures and enhance safety by eliminating the need for artists to disassemble, clean, and sterilize multiple small parts between clients, thereby reducing the potential for human error and cross-contamination. (’530 Patent, col. 2:33-49).
Key Claims at a Glance
- The complaint asserts infringement of representative independent claim 1 of the Reexamined ’530 Patent. (Compl. ¶25).
- The essential elements of reexamined claim 1 are:
- a basic module having a handle and an integrated needle drive; and
- 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 needle being movable relative to the outer housing, and an ink receiving portion disposed around the needle,
- means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module.
- The complaint reserves the right to assert additional claims, including numerous dependent claims. (Compl. ¶25 n.1, ¶28, ¶31).
III. The Accused Instrumentality
- Product Identification: The "JOKER Pro Cartridge Needle Cartridges" and the "Pro Grip Disposable Tattoo Needle Cartridge Grips" are collectively identified as the "Infringing Products." (Compl. ¶13).
Functionality and Market Context
- The accused products are described as disposable needle cartridges and grips for use in tattooing and permanent make-up (PMU) application devices. (Compl. ¶8, 11).
- The complaint alleges that Defendant markets its "Pro Cartridge Needle Cartridges" as being compatible with Plaintiff MT. DERM's "Cheyenne Hawk Machines" and as a "direct replacement" for Plaintiff's own "Cheyenne Hawk® line of disposable needle cartridges." (Compl. ¶9-10).
- The "Pro Grip" products are alleged to be adapters designed for connecting the accused needle cartridges with standard tattoo machines, such as "Rotary Tattoo Machines" and "Coil Tattoo Machines," also sold by Defendant. (Compl. ¶11-12).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
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; and | The accused cartridges are designed to be operatively inserted into a tattoo machine that includes an integrated needle drive and handle, which constitutes the claimed "basic module." | ¶26 | col. 2:19-22 |
| a unitary sterilized disposable module including an outer housing and a needle...[and other internal components] | The "Pro Cartridge Needle Cartridges" are alleged to be the "unitary sterilized disposable module," which are sold as a pre-packaged, single-use unit. | ¶26 | col. 2:22-25 |
| means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module. | The complaint alleges the accused cartridges are "disposable module[s]" designed to be "operatively inserted" into tattoo machines, implying they are also removable as a single unit. | ¶26 | col. 5:35-39 |
- Identified Points of Contention:
- Scope Questions: The term "unitary" was added to "sterilized disposable module" during reexamination. A central question will be whether the construction of "unitary" requires a single, indivisible component versus a pre-assembled kit, and whether the accused cartridges meet that definition. Further, it raises the question of whether standard tattoo machines, not specifically co-designed with the cartridges, can meet the definition of a "basic module."
- Technical Questions: Infringement is predicated on the combination of Defendant's cartridge with a tattoo machine. A key evidentiary question will be whether this assembled system, as used by customers, actually includes every element recited in the claim, such as the specific "means for allowing simultaneous removal." The complaint does not detail the specific structure of the accused cartridges that would meet this limitation.
V. Key Claim Terms for Construction
The Term: "unitary sterilized disposable module"
Context and Importance: This term defines the heart of the invention—the single-use, hygienic component. Its construction is critical because it will determine the breadth of products that can infringe. Practitioners may focus on this term because "unitary" was added during reexamination, suggesting a deliberate narrowing of scope that the defense will likely leverage.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification functionally describes the module as integrating "all components of the manual device capable of being infected by bodily fluids." (’530 Patent, col. 2:22-25). This could support a reading that covers any single-use cartridge that achieves hygienic separation.
- Evidence for a Narrower Interpretation: The claim itself recites a list of specific internal components (housing, needle, nozzle, etc.) that must be part of the module. Reexamined claim 10 further describes these components as forming a "unitary unit." This suggests the components must be integrated into a single, cohesive article, not merely packaged together.
The Term: "basic module"
Context and Importance: This term defines the reusable part of the claimed system. The complaint's theory hinges on third-party tattoo machines qualifying as the "basic module." The viability of the infringement claim depends on whether the term can be construed this broadly.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a general definition: "a reusable base module with an integrated needle drive" that "corresponds to the handle which includes the drive." (’530 Patent, col. 2:19-22, 29-30). This general language may support an argument that it covers standard, off-the-shelf tattoo machines.
- Evidence for a Narrower Interpretation: The specification states the basic module is "designated such that the hygienic module can be safely attached and connected to the integrated needle drive." (’530 Patent, col. 2:30-32). A defendant could argue this requires a purpose-built interface, not just incidental compatibility, thereby excluding combinations with generic machines.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by offering the products for sale and marketing them as compatible with and "direct replacement[s]" for Plaintiff's own products, thereby encouraging infringing combinations. (Compl. ¶10, 33-34). It alleges contributory infringement on the grounds that the accused cartridges are a "material part of the invention" and are "not a staple article or commodity of commerce suitable for non-infringing use." (Compl. ¶35).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that Defendant received letters from Plaintiffs' counsel detailing the infringement on August 11, 2016, and January 3, 2017. Defendant's alleged continuation of infringing activities after receiving notice is the basis for the willfulness claim. (Compl. ¶36, 41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "unitary sterilized disposable module," as amended during reexamination, be construed to cover Defendant’s accused cartridges, or does the addition of "unitary" impose a structural limitation that the accused products do not meet?
- A second central question will be one of divided infringement: since infringement requires an end-user to combine Defendant’s cartridge with a tattoo machine (the "basic module"), the case will likely test whether Plaintiffs can prove Defendant directs or controls its customers' actions sufficiently to be liable for direct infringement, or alternatively, whether the evidence of marketing and instructions is strong enough to establish inducement to infringe.
- Finally, an evidentiary question will be whether off-the-shelf tattoo machines can legally constitute the "basic module" of the claims. This will depend on whether the court interprets the patent to require a purpose-built, co-designed system or allows for infringement by combining the patented module with a generic, third-party device.