DCT

3:25-cv-00120

Jer Custom Designs Inc v. Lensdigital LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-00120, M.D. Fla., 03/26/2025
  • Venue Allegations: Venue is asserted based on the defendants' alleged residence within the Middle District of Florida, their commission of tortious acts of patent infringement within the district, and for some, their engagement in a business venture in the jurisdiction.
  • Core Dispute: Plaintiff alleges that Defendants’ "PiBurn" line of rotary attachments for laser engravers infringes three utility patents related to adjustable devices for rotating cylindrical and conical objects during engraving.
  • Technical Context: The technology addresses the need for versatile and easily adjustable rotary devices in the growing market for customized goods, enabling laser engravers to precisely etch designs onto objects of various shapes and sizes, such as tumblers and cups.
  • Key Procedural History: The complaint describes a contentious history, alleging that Defendant Lensdigital LLC previously sued Plaintiff in the District of New Jersey, claiming inventorship of and ownership in Plaintiff's design patent. Those claims were later allegedly withdrawn in an amended complaint that instead asserted "numerous substantial differences" between the parties' products. The current complaint also alleges that infringement continued after Plaintiff sent notice letters with copies of the issued patents to Defendants in January 2025.

Case Timeline

Date Event
2019-09-01 Plaintiff's RotoBoss products first sold to the public (approx.)
2020-06-15 Earliest Priority Date for ’572, ’830, and ’395 Patents
2021-03-01 Defendant's PiBurn 3.0 product introduced (approx.)
2023-03-01 Defendant's PiBurn V4 and PiBurn Grip products introduced (approx.)
2024-06-01 Defendant's PiBurn V5 and PiBurn Grip 2 products introduced (approx.)
2024-09-17 U.S. Patent No. 12,090,572 Issues
2025-01-07 U.S. Patent No. 12,186,830 Issues
2025-01-10 Plaintiff sends notice letters regarding issued patents
2025-03-11 U.S. Patent No. 12,246,395 Issues
2025-03-26 Amended Complaint Filed

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

U.S. Patent No. 12,090,572 - Rotary Laser Engraving Device (Issued Sep. 17, 2024)

The Invention Explained

  • Problem Addressed: The patent describes a need for a rotary laser engraving device that can be easily and quickly adjusted to accommodate objects of various lengths, shapes, and diameters without time-consuming processes like unbolting and re-bolting support members ('572 Patent, col. 1:36-55; Compl. ¶80).
  • The Patented Solution: The invention is a rotary device featuring a frame with a central bar on which two support assemblies are mounted. One assembly has motor-driven rollers to rotate the object, while the other has free rollers. The device incorporates both a longitudinal adjustment mechanism to change the distance between the assemblies for different object lengths and a vertical adjustment mechanism to change the height of the assemblies for different object diameters or tapers ('572 Patent, Abstract). A key feature is a gripping mechanism, such as a spring-loaded clamp, that abuts an inner surface of the object to secure it against the rollers ('572 Patent, col. 2:5-8).
  • Technical Importance: The claimed combination of horizontal, vertical, and internal gripping adjustments provides a versatile and efficient tool for the custom engraving market, allowing users to quickly switch between different types of objects ('572 Patent, col. 1:45-55).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 13, and 16 (Compl. ¶¶77-79, 120-124).
  • Independent Claim 1 includes these essential elements:
    • A frame comprising a central bar, first and second vertical support posts, and at least one support extension.
    • The central bar is offset horizontally from the centroidal axis of the support extension.
    • A first support assembly on the first post with a first set of rollers engaged with a motor.
    • The first support assembly includes a gripping mechanism configured to abut against an inner surface of the object.
    • A second support assembly on the second post with a second set of rollers.
    • The roller sets are offset diagonally from the central bar.
    • A longitudinal adjustment mechanism to move at least one support post along the central bar.
    • A vertical adjustment mechanism to move at least one support assembly vertically.
  • The complaint also asserts infringement of numerous dependent claims (Compl. ¶¶120-124).

U.S. Patent No. 12,186,830 - Rotary Laser Engraving Device (Issued Jan. 7, 2025)

The Invention Explained

  • Problem Addressed: The patent addresses the same technical problem as the ’572 Patent: the difficulty and inefficiency of adjusting conventional rotary engravers for objects of varying dimensions ('830 Patent, col. 1:20-53).
  • The Patented Solution: The ’830 Patent also discloses a device with a frame, first and second support assemblies, and mechanisms for both longitudinal and vertical adjustment. The specification explains the utility of having one assembly with driven rollers for rotation and another with free rollers to allow the object to rotate freely at its other end ('830 Patent, col. 5:31-40). The claims focus on various combinations of these core adjustable components.
  • Technical Importance: This technology aims to provide a single, highly adaptable device, reducing the need for multiple specialized tools and minimizing setup time for users in the custom engraving field ('830 Patent, col. 1:43-53).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 18, and 19 (Compl. ¶¶86-88, 136).
  • Independent Claim 1 includes these essential elements:
    • A frame.
    • A first support assembly on the frame with a first set of rollers.
    • A second support assembly on the frame with a second set of rollers.
    • A longitudinal adjustment mechanism to vary separation between the roller sets.
    • At least one vertical adjustment mechanism to vary vertical separation between the roller sets, which comprises a mechanism to move the first support assembly along a first support post.
    • A motor assembly engageable with the first set of rollers.
  • The complaint also asserts infringement of several dependent claims (Compl. ¶136).

U.S. Patent No. 12,246,395 - Rotary Laser Engraving Device (Issued Mar. 11, 2025)

Multi-Patent Capsule

  • Technology Synopsis: The ’395 Patent is directed to a similar rotary laser engraving device. The claims add further specificity to the adjustment mechanisms, reciting features such as a "glide plate" for longitudinal movement and a "vertical adjustment assembly" that may comprise a "scissor link assembly" for changing the height of the free rollers ('395 Patent, Abstract; Compl. ¶91).
  • Asserted Claims: Independent claims 1 and 13 (Compl. ¶¶90-91).
  • Accused Features: The complaint alleges that the Defendants' PiBurn 3.0, V4, Grip, V5, and Grip 2 devices infringe the ’395 patent (Compl. ¶¶144-148).

III. The Accused Instrumentality

Product Identification

  • The accused products are the "PiBurn 3.0," "PiBurn V4," "PiBurn V5," "PiBurn Grip," and "PiBurn Grip 2" rotary devices (collectively, the "Infringing Devices") (Compl. ¶97).

Functionality and Market Context

  • The complaint describes the accused products as rotary devices sold for the laser engraving of cylindrical objects (Compl. ¶¶92-96). A photograph in the complaint shows the PiBurn 3.0, which features two roller-bearing support assemblies mounted on a central rail frame (Compl. p. 29, left image). Another photograph shows the "PiBurn Grip" device, which includes what appears to be a three-jaw chuck mechanism on one of the support assemblies (Compl. p. 30, top images). The complaint positions these products as direct competitors to the Plaintiff's "RotoBoss" brand devices (Compl. ¶43).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not included in the provided document. Therefore, the infringement allegations are summarized below in prose.

'572 Patent Infringement Allegations

The complaint alleges that the Defendants' PiBurn devices infringe claims of the ’572 Patent by embodying the claimed combination of features for an adjustable rotary engraver (Compl. ¶¶120-124). The infringement theory appears to rest on the assertion that the PiBurn products include a frame with a central bar, two support assemblies with rollers, a motor to drive one set of rollers, a mechanism for adjusting the longitudinal distance between the assemblies, and a mechanism for adjusting the vertical height of the assemblies (Compl. ¶¶77-79). The complaint further alleges the accused devices meet the limitations requiring an internal "gripping mechanism" and a design where the roller assemblies are "offset diagonally from the central bar" (Compl. ¶77).

'830 Patent Infringement Allegations

The infringement allegations against the ’830 Patent, asserted specifically against the PiBurn Grip 2 device, follow a similar theory (Compl. ¶136). The complaint alleges that this product contains the core claimed architecture: a frame, two roller-based support assemblies, and both longitudinal and vertical adjustment mechanisms, as well as a motor to drive rotation (Compl. ¶¶86-88). The allegations suggest that the structure and function of the PiBurn Grip 2 directly read on the elements recited in the asserted claims of the ’830 Patent.

Identified Points of Contention

  • Scope Questions: The infringement analysis may turn on the scope of the term "gripping mechanism configured to abut against an inner surface of the object" ('572 Patent, Claim 1). The complaint includes photographs of accused "Grip" products that use a three-jaw chuck (Compl. p. 30), which raises the question of whether this structure falls within the scope of a term illustrated in the patent specification primarily as a spring-loaded clamp ('572 Patent, Fig. 5, element 188).
  • Technical Questions: A key factual question will be whether the accused products' adjustment mechanisms are structurally and functionally equivalent to those claimed. The ’395 Patent, for instance, claims a "vertical adjustment assembly" that comprises a "scissor link assembly" (Compl. ¶91). The litigation will require a determination of whether any of the PiBurn devices actually incorporate such a mechanism.

V. Key Claim Terms for Construction

The Term: "gripping mechanism configured to abut against an inner surface of the object to be engraved" ('572 Patent, Claim 1)

  • Context and Importance: This term is critical because the infringement reading on the accused "Grip" and "Grip 2" products depends on whether their chuck-style grippers meet this limitation. Practitioners may focus on this term because its construction could either limit the claim to the patent's disclosed embodiment (a spring-loaded clamp) or allow it to cover a broader range of internal gripping structures, including the accused chuck.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim uses functional language ("configured to abut"), which may support a construction that covers any structure performing the stated function. The specification also refers to the spring-loaded clamp as one "aspect" of the invention, suggesting it is not the only possible implementation ('572 Patent, col. 2:63-65).
    • Evidence for a Narrower Interpretation: The specification's detailed description and figures consistently depict the gripping mechanism as a specific spring-loaded clamp with a clamp wheel ('572 Patent, col. 9:35-41, col. 12:55-col. 13:1). A defendant may argue this context limits the claim term to the disclosed embodiment and its structural equivalents.

The Term: "wherein the first set of rollers and the second set of rollers are offset diagonally from the central bar of the frame" ('572 Patent, Claim 1)

  • Context and Importance: This geometric relationship appears to be a key feature of the claimed invention. The viability of infringement claims will depend on whether the accused devices' components are arranged in a manner that satisfies this "offset diagonally" limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is descriptive. The specification explains this feature places the object's central axis "offset a horizontal distance D" and at a different vertical height ('572 Patent, col. 11:5-12). Plaintiff may argue for a straightforward geometric interpretation based on the relative positions of the components.
    • Evidence for a Narrower Interpretation: The patent figures illustrate a specific spatial arrangement of the rollers relative to the central bar ('572 Patent, Fig. 2). A defendant could argue that the term requires the specific type of combined horizontal and vertical displacement shown in the figures, which might differ from the arrangement in their own products.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Defendant Lensdigital LLC possessed the specific intent to cause infringement by "making and selling" the accused devices to customers who then use them in an infringing manner (Compl. ¶¶125-129). This forms a basis for a claim of induced infringement.

Willful Infringement

  • Willfulness is alleged based on Defendants' knowledge of the patents since at least January 10-11, 2025, when Plaintiff sent notice letters (Compl. ¶¶118, 134). The complaint also alleges knowledge of the underlying patent applications as early as 2021 (Compl. ¶¶133, 141). The allegation of continued infringing sales after receiving notice of the issued patents supports the claim for willful infringement (Compl. ¶104).

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

  • A core issue will be one of definitional scope: can the term "gripping mechanism configured to abut against an inner surface," which is disclosed in the patent as a spring-loaded clamp, be construed to cover the three-jaw chuck mechanism utilized in the accused "PiBurn Grip" products, or does this design fall outside the claim's scope?
  • A second key issue will involve claim construction and structural analysis: will the geometric limitation requiring rollers to be "offset diagonally from the central bar" be interpreted broadly, or will it be limited to the specific spatial arrangement shown in the patent's figures? The answer will require a detailed comparison of the patent's teachings to the physical construction of the accused devices.
  • A central narrative question, likely to influence willfulness and damages, will be the impact of the parties' litigation history. How will the court consider allegations that the lead Defendant previously asserted that the Plaintiff stole its design, before later allegedly reversing course to argue its own products are substantially different from the now-patented invention?