DCT
3:24-cv-00798
Lensdigital LLC v. Rife
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LensDigital, LLC (New Jersey)
- Defendant: Jason Earl Rife; JER Custom Designs, Inc. (Florida)
- Plaintiff’s Counsel: Bochner PLLC
- Case Identification: 3:24-cv-00798, M.D. Fla., 04/01/2025
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the district and are subject to personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s "Talon Chuck Rotary" product infringes a patent related to an attachment apparatus for laser engraving, while also seeking a declaratory judgment of non-infringement regarding patents owned by Defendants.
- Technical Context: The technology concerns rotary attachments for laser engraving machines, a niche but important market for customizing cylindrical items such as drink tumblers.
- Key Procedural History: This Third Amended Complaint arises from a broader business dispute. Plaintiff alleges Defendants previously sent letters to Plaintiff's customers accusing Plaintiff's "PiBurn" products of infringing Defendants' patents. This action includes an offensive claim for infringement of Plaintiff's own patent and defensive claims seeking declarations of non-infringement of Defendants' patents.
Case Timeline
| Date | Event |
|---|---|
| 2018-09-18 | Plaintiff LensDigital (LD) unveils its PiBurn V1 product |
| 2020-06-15 | Priority date for Defendants' '572, '830, and '640 patents |
| 2022-03-13 | LD unveils its PiBurn V4 product |
| 2023-01-12 | Priority date for Plaintiff's '544 Patent |
| 2023-05-09 | Defendants' '640 design patent issues |
| 2024-01-12 | LD files utility patent application that becomes the '544 Patent |
| 2024-08-23 | LD unveils its PiBurn V product |
| 2024-09-17 | Defendants' '572 utility patent issues |
| 2025-01-07 | Defendants' '830 utility patent issues |
| 2025-01-10 | Defendants allegedly send cease-and-desist letters to LD's customers |
| 2025-01-13 | Defendant JER's counsel contacts LD's counsel regarding the pending '544 Patent application |
| 2025-01-14 | Plaintiff's '544 Patent issues |
| 2025-04-01 | Third Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,194,544 - "ATTACHMENT APPARATUS FOR LASER ENGRAVING"
The Invention Explained
- Problem Addressed: The patent's background describes limitations of existing rotary attachments for laser engravers. It notes that "roller-style" attachments can allow article slippage, while traditional "chuck-style" attachments are often cumbersome, can damage delicate items like glassware, lack tilting capabilities for tapered objects, and are typically limited to clamping an article's exterior, which reduces the available engraving area (’544 Patent, col. 1:46-65, col. 2:1-6).
- The Patented Solution: The invention is a versatile chuck-style attachment apparatus. Its core components include a chuck housing containing multiple "self-centering jaws bases" that are moved in tandem by a "scroll wheel." These bases are designed to accept a plurality of "interchangeable jaws," allowing the device to securely hold a wide variety of objects, including delicate or irregularly shaped items, without the need for additional tools (’544 Patent, Abstract; col. 2:25-30). The design aims to provide a more adaptable and precise solution for holding objects during laser engraving (’544 Patent, col. 2:6-14).
- Technical Importance: This approach provides a single, highly configurable tool for the consumer and small business laser-engraving market, intended to replace multiple specialized or less reliable devices.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3-4, 6-7, 10-11, 18-19, and 22-23 (Compl. ¶71).
- The essential elements of independent claim 1 include:
- A chuck housing with channels
- Self-centering jaws bases within the channels, each having at least one jaws base hole, an I-shaped cross section, and circular indicators
- The channels have ridges to interface with the I-shaped cross section and are accessible from the perimeter, allowing the jaws bases to extend past it
- A scroll wheel that mechanically communicates with the jaws bases and has protrusions extending beyond the circumference of the chuck housing
- Interchangeable jaws with a protuberance configured to be received by the jaws base hole
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant JER's "Talon Chuck Rotary" (Compl. ¶70).
Functionality and Market Context
- The Talon Chuck Rotary is an attachment for laser engraving machines designed to hold and rotate cylindrical or other objects during the engraving process (Compl. ¶72). The complaint alleges the product incorporates the key features of the asserted patent, including a chuck housing, self-centering jaw bases, a scroll wheel with protrusions, and interchangeable jaws (Compl. ¶¶73-75). An annotated image in the complaint identifies these specific components on the accused product (Compl. Figure 11, p. 25). The Talon Chuck Rotary competes directly with the Plaintiff's "Chuck Grip" product in the laser rotary industry (Compl. ¶142).
IV. Analysis of Infringement Allegations
'544 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a chuck housing defining a plurality of channels; | The Talon Chuck Rotary includes a chuck housing that defines multiple channels for jaw bases. | ¶73 | col. 13:49 |
| a plurality of self-centering jaws bases disposed within the plurality of channels, wherein the plurality of self-centering jaws bases comprise at least one jaws base hole... | The Talon Chuck Rotary has self-centering jaw bases within the channels, which contain at least one hole. | ¶73 | col. 13:50-54 |
| wherein each of the plurality of channels is accessible through a circumferential perimeter of the chuck housing enabling at least a portion of the self-centering jaws bases to extend past the circumferential perimeter, | The channels are accessible from the perimeter, allowing the jaw bases to extend past it. | ¶73 | col. 13:55-59 |
| wherein each of the plurality of self-centering jaws bases includes one or more circular indicators, | Each jaw base on the accused product includes one or more circular indicators. | ¶73 | col. 13:60-61 |
| wherein each of the channels includes one or more ridges... and wherein each of the plurality of self-centering jaws bases has an I-shaped cross section configured to interface with the one or more ridges; | The channels include ridges, and the jaw bases have an I-shaped cross section designed to interface with those ridges. | ¶73 | col. 13:62-67 |
| a scroll wheel in mechanical communication with the plurality of self-centering jaws bases, wherein the scroll wheel comprises a plurality of protrusions extending radially from a circumference of the scroll wheel beyond the circumference of the chuck housing; | The Talon Chuck Rotary has a scroll wheel mechanically linked to the jaw bases, with protrusions that extend radially beyond the housing's circumference. | ¶74 | col. 14:1-5 |
| a plurality of interchangeable jaws, each... further comprising a jaws protuberance configured to be received by the at least one jaws base hole and extending off a face of at least one of the self-centering jaws bases. | The Talon Chuck Rotary includes interchangeable jaws with a protuberance that fits into the jaw base hole. | ¶75 | col. 14:6-10 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the definition of specific geometric limitations. For example, does the accused product's jaw base meet the specific claim requirement of an "I-shaped cross section," or does it utilize a different, non-infringing shape (e.g., T-shaped, C-shaped)? Similarly, the meaning of "circular indicators" and whether the accused feature performs an indicating function may be contested.
- Technical Questions: The complaint's annotated photograph of the accused product, Figure 11, purports to show each claimed element (Compl. p. 25). A key question for the court will be whether this visual evidence, alongside any expert testimony, confirms that the accused components are structurally and functionally equivalent to those required by the claims. For example, do the accused "protrusions" on the scroll wheel actually extend "beyond the circumference of the chuck housing" in the manner claimed?
V. Key Claim Terms for Construction
The Term: "I-shaped cross section"
Context and Importance: This term defines a specific geometric structure of the self-centering jaw bases, which is critical to how they are guided within the chuck housing channels. Infringement of this element will depend on whether the accused product's jaw bases have this precise configuration. Practitioners may focus on this term because a defendant could argue its product employs a functionally similar but structurally different guiding mechanism to design around the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the term should be construed functionally to cover any cross-section that mates with the channel "ridges" to provide stable, linear movement, even if not a perfect geometric "I." The specification refers to the I-shape but does not appear to provide a rigid definition, stating simply that the jaws "may have an I-shaped cross section" ('544 Patent, col. 4:23-25).
- Evidence for a Narrower Interpretation: A party may argue for the plain and ordinary meaning of "I-shaped," requiring a structure with a central "web" and top and bottom "flanges." Any deviation, such as a T-shape or C-shape, would fall outside this narrow construction.
The Term: "circular indicators"
Context and Importance: This feature is explicitly recited in the claim and identified on the accused product in the complaint (Compl. Figure 11, p. 25). The term's meaning is critical because if the accused product's corresponding features are found to be merely structural or ornamental, rather than "indicators," this element may not be met.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires that the jaw bases "include" one or more circular indicators but does not assign them a specific function ('544 Patent, col. 13:60-61). A party could argue that any circular marking on the specified component meets the limitation, as the claim language does not require it to indicate anything in particular.
- Evidence for a Narrower Interpretation: A party might argue that the word "indicator" implies a function (i.e., indicating position, alignment, or some other state) and that a purely ornamental or structural circular feature would not meet the claim limitation. They may look to the specification or prosecution history for language suggesting a purpose for these features.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant JER's infringement has been willful (Compl. ¶76). The basis for this allegation is alleged pre-suit knowledge of the patent. Specifically, the complaint alleges that on January 13, 2025—one day before the '544 Patent issued—JER's counsel contacted Plaintiff's counsel regarding a reference allegedly relevant to the patentability of the then-pending application (Compl. ¶77). Plaintiff asserts this communication demonstrates that JER knew of the patent's existence and impending issuance (Compl. ¶77).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: The case may turn on the construction of specific, potentially limiting terms in Claim 1, such as "I-shaped cross section" and "circular indicators." The viability of the infringement claim will depend heavily on whether the court adopts a broader, functional interpretation or a narrower, more literal geometric interpretation of these terms.
- A key evidentiary question will be one of structural correspondence: Assuming a claim construction, the focus will shift to a factual comparison of the accused "Talon Chuck Rotary" to the claim language. The dispute will likely center on whether the accused product's components, such as its jaw bases and scroll wheel, possess the exact structural relationships and configurations—for example, protrusions extending "beyond the circumference of the chuck housing"—as required by the asserted claims.