DCT
1:03-cv-01267
Trintec Industries Inc v. Pedre Promotional Products Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Trintec Industries, Inc. (Canada) & Time To Invent LLC (District of Columbia)
- Defendant: Pedre Promotional Products, Inc. (New York)
- Plaintiff’s Counsel: Nixon & Vanderhye P C
- Case Identification: 1:03-cv-01267, D.D.C., 06/12/2003
- Venue Allegations: Venue is asserted on the basis that the defendant is a corporation that resides in the judicial district.
- Core Dispute: Plaintiffs allege that Defendant’s method for producing custom clocks and instrument faces, advertised as "Multicolor Photo Dial," infringes patents related to the automated, small-volume production of such items.
- Technical Context: The technology addresses methods for cost-effectively manufacturing customized, multicolor instrument dials in small batches using computer-controlled digital printing and cutting.
- Key Procedural History: U.S. Patent No. 6,169,932 is identified as a continuation of the application that resulted in U.S. Patent No. 5,818,717, indicating a direct relationship and shared technical disclosure between the two patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1993-06-02 | Priority Date for U.S. Patent No. 5,818,717 |
| 1993-06-02 | Priority Date for U.S. Patent No. 6,169,932 |
| 1998-10-06 | Issue Date for U.S. Patent No. 5,818,717 |
| 2001-01-02 | Issue Date for U.S. Patent No. 6,169,932 |
| 2003-06-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,818,717: "AUTOMATED SMALL VOLUME PRODUCTION OF INSTRUMENT FACES" (Issued Oct. 6, 1998)
- The Invention Explained:
- Problem Addressed: The patent describes that traditional methods for producing high-quality, multicolor instrument faces, such as those for clocks or barometers, are not cost-effective for small production volumes (e.g., 1-500 units) due to high set-up costs for processes like screen printing and die-cutting (’717 Patent, col. 1:21-31).
- The Patented Solution: The invention proposes a method where an instrument face is designed in a computer, printed in color using a computer-controlled color photocopier, laminated to a rigid substrate, and then automatically cut to the desired shape, preferably by a laser cutter also controlled by the computer (’717 Patent, Abstract; col. 2:41-51; Fig. 1).
- Technical Importance: This automated, computer-driven process allowed for the quick and high-quality production of customized instrument faces in small quantities, which was previously impractical (’717 Patent, col. 1:8-14).
- Key Claims at a Glance:
- The complaint asserts dependent claims 3 and 4, which rely on independent claim 1.
- The essential elements of independent claim 1 include:
- (a) Electronically creating or providing an electronic simulation of a multicolor element in a computer.
- (b) Transmitting signals from the computer to a color photocopier to print the element onto paper.
- (c) Using the printed element to produce a functioning object.
- (d) Cutting the paper into a shape using a laser cutter under computer control.
- (e) Laminating the paper to a more rigid material before cutting.
- The complaint explicitly asserts dependent claims 3 and 4, with claim 3 relating to producing a functional instrument (like a clock) and claim 4 specifying the type of instrument.
U.S. Patent No. 6,169,932: "AUTOMATED PRODUCTION OF INSTRUMENT FACES AND INSTRUMENTS" (Issued Jan. 2, 2001)
- The Invention Explained:
- Problem Addressed: Similar to its parent patent, the ’932 Patent addresses the lack of a cost-effective technique for producing small volumes of customized, multicolor instrument faces (’932 Patent, col. 1:19-32).
- The Patented Solution: The invention discloses a method of creating an instrument face design in a computer, using a computer-controlled printer to print the multicolor face, cutting it to the appropriate shape, and assembling it with instrument components (like clock hands and a movement) to create a final, operable instrument (’932 Patent, col. 2:4-9; col. 2:19-31).
- Technical Importance: The technology provides a complete, automated workflow from digital design to a finished, functional custom instrument, making small-batch production economically viable (’932 Patent, col. 1:8-18).
- Key Claims at a Glance:
- The complaint asserts independent claims 7 and 13, product-by-process claim 12 (dependent on claim 7), and dependent claims 14-16 (dependent on claim 13).
- The essential elements of independent claim 7 include:
- (a) Electronically creating or providing a clock face with time indicia thereon in a computer.
- (b) Transmitting signals from the computer to a printer to print a multicolor clock face.
- (c) Cutting the clock face from the sheet material on which it was printed.
- The essential elements of independent claim 13 include:
- (a) Electronically creating or providing an instrument face in a computer.
- (b) Transmitting signals to a color printer to print the face.
- (c) Forming the instrument face to the appropriate shape and size, including an opening for a shaft.
- (d) Assembling the face with a casing, movement, and hands to produce a functional instrument.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "custom clocks (including watches) and other instruments and instrument faces" produced by Defendant Pedre (Compl. ¶8).
- Functionality and Market Context: The complaint alleges these products are produced via a "digital printing method" and are advertised under the name "Multicolor Photo Dial" (Compl. ¶8). The defendant's name, "Pedre Promotional Products, Inc.," suggests the custom clocks are created for promotional purposes, which aligns with the small-volume, custom-order context described in the patents-in-suit (Compl. ¶3). The complaint does not provide further technical detail on the specific steps or equipment used in the "Multicolor Photo Dial" method. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’717 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) electronically creating or providing in the computer an electronic simulation of the desired functional multicolor element... | The accused "digital printing method" is alleged to produce "custom clocks," implying a computer-based design process (¶8). | ¶8 | col. 2:58-61 |
| (b) under the control of the computer, transmitting electronic signals from the computer to the photocopier...to print... | The accused "digital printing method" is alleged to print the instrument faces (¶8). | ¶8 | col. 2:61-65 |
| (c) using the functional multicolor element with other elements to produce a functioning object; | The accused products are "custom clocks (including watches) and other instruments," which are functioning objects (¶8). | ¶8 | col. 2:1-5 |
| (d) ...cutting the paper into a different geometric shape...using a laser cutter... | The complaint does not provide sufficient detail for analysis of the cutting method used. | ¶8 | col. 4:45-54 |
| (e) laminating the sheet of paper to a piece of more rigid sheet material... | The complaint does not provide sufficient detail for analysis of whether lamination occurs. | ¶8 | col. 2:8-14 |
’932 Patent Infringement Allegations
Independent Claim 7
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) electronically creating or providing a clock face with time indicia thereon in the computer... | The accused "digital printing method" is alleged to produce "custom clocks," implying a computer-based design process (¶8). | ¶8 | col. 4:60-65 |
| (b) under the control of the computer, transmitting electronic signals...to the printer to...print a multicolor clock face... | The accused "digital printing method" advertised as "Multicolor Photo Dial" is alleged to print the clock faces (¶8). | ¶8 | col. 5:1-5 |
| (c) cutting the appropriate shape and size of the multicolor clock face from the piece of sheet material... | The complaint does not provide sufficient detail for analysis of how the accused clock faces are cut. | ¶8 | col. 5:9-12 |
Independent Claim 13
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) electronically creating, or providing, in the computer the instrument face in electronic format; | The accused "digital printing method" is alleged to produce "custom clocks," implying a computer-based design process (¶8). | ¶8 | col. 8:16-18 |
| (b) ...transmitting electronic signals from the computer to the color printer to...print a multicolor instrument face... | The accused "digital printing method" is alleged to print the instrument faces (¶8). | ¶8 | col. 8:19-23 |
| (c) forming the appropriate shape and size of the instrument face...and the opening for passage of the shaft therethrough; | The complaint does not provide sufficient detail for analysis of how the accused faces are formed or if an opening is created. | ¶8 | col. 8:24-28 |
| (d) assembling the instrument face and casing...to produce an instrument with functional indicia. | The complaint alleges the production of finished "custom clocks" and "instruments," which implies assembly (¶8). | ¶8 | col. 8:29-34 |
- Identified Points of Contention:
- Factual Questions: The complaint makes broad allegations but provides no specific facts about the Defendant's "Multicolor Photo Dial" process. A central question will be what evidence Plaintiffs can produce to show that the accused method actually performs the specific steps recited in the claims, such as lamination and computer-controlled cutting.
- Scope Questions: Claim 1 of the ’717 Patent requires a "laser cutter." Infringement of this claim will depend on whether the Defendant's process uses this specific technology. The complaint is silent on this point.
- Technical Questions: The ’717 Patent claims a method using a "color photocopier," while the ’932 Patent claims a method using a "printer" or "color printer." A technical question arises as to whether the device used in the accused "digital printing method" meets the definition of both a "photocopier" and a "printer" as understood in the context of the patents.
V. Key Claim Terms for Construction
- The Term: "laser cutter" (’717 Patent, claim 1)
- Context and Importance: This term appears as a specific limitation in independent claim 1 of the ’717 Patent. Proving infringement of this claim will require evidence that the accused process uses a laser cutter.
- Evidence for a Broader Interpretation: The specification states that the cutting means "preferably comprises a laser cutter," which may suggest to a fact-finder that other forms of automated cutting were contemplated by the inventor, even if not explicitly claimed (’717 Patent, col. 2:51-52).
- Evidence for a Narrower Interpretation: The claim language itself is specific, reciting "using a laser cutter" without qualification. Furthermore, the specification provides a specific example of a suitable commercial laser cutter, which could be argued to reinforce a narrow construction limited to the specific technology disclosed (’717 Patent, col. 4:46–54).
- The Term: "photocopier" (’717 Patent) vs. "printer" (’932 Patent)
- Context and Importance: Practitioners may focus on these terms because the patents, which are in the same family, use different words for the image-creating device, while the complaint alleges a single accused method infringes both. The relationship between these terms will be critical.
- Intrinsic Evidence for Interpretation: The specification of the ’717 Patent introduces the device as a "[a] color photocopier or like color printer," suggesting the terms may be interchangeable or that "printer" is a broader category encompassing "photocopier" (’717 Patent, col. 2:42–43). The fact that the continuation patent (’932) uses the term "printer" could further support an argument that the patentee viewed the terms as related. Conversely, a defendant may argue that the choice to use the more specific term "photocopier" in the claims of the ’717 Patent was a deliberate act of limitation.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of induced and contributory infringement "by others" but provides no supporting factual basis, such as identifying the third parties or the specific actions constituting inducement or contribution (Compl. ¶8).
- Willful Infringement: The complaint alleges that the defendant "is aware of its infringement" and has not stopped, claiming the infringement is "willful, wanton, egregious" (Compl. ¶9). This allegation forms the basis for the request for trebled damages, but the complaint does not specify the grounds for the defendant's alleged knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can Plaintiffs produce evidence to demonstrate that the Defendant's "Multicolor Photo Dial" method actually performs every step recited in the asserted claims? The complaint's lack of detail on key process steps, such as the specific cutting technology and whether lamination occurs, highlights that discovery will be critical to establishing the factual basis for infringement.
- The case may also turn on a question of claim scope and construction: How will the court construe the terms "photocopier" in the ’717 patent and "printer" in the ’932 patent? The viability of the infringement claim against a single accused process will depend on whether that process utilizes a device that falls within the scope of both terms, as defined by the patents' intrinsic evidence.
- A third key question will be the limitation of "laser cutter": Can the Plaintiffs prove that infringement of the ’717 patent occurred, given the explicit claim requirement for a "laser cutter"? The resolution of this issue will depend entirely on the specific equipment used in the Defendant's undisclosed manufacturing process.