DCT
9:25-cv-80137
STS Refill Technology LLC v. Scribe OpCo Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: STS Refill Technology, LLC (Florida) and ColDesi, Inc. (Florida)
- Defendant: Scribe Opco, Inc. (Delaware, p.p.b. Florida)
- Plaintiff’s Counsel: Tucker Law
- Case Identification: 9:25-cv-80137, S.D. Fla., 01/30/2025
- Venue Allegations: Venue is alleged to be proper based on Defendant having its principal place of business in Florida and having sent cease-and-desist letters into the district.
- Core Dispute: Plaintiffs, suppliers of direct-to-film printers, seek a declaratory judgment that their products do not infringe Defendant's patents related to multi-layered heat-transfer applicators and the processes for making them.
- Technical Context: The technology relates to direct-to-film (DTF) digital printing, a method used to create durable, high-quality graphic transfers for application onto various substrates, particularly textiles for custom apparel.
- Key Procedural History: The action was precipitated by cease-and-desist letters sent by Defendant to Plaintiffs on December 20, 2024, alleging infringement. The complaint raises a threshold issue of Defendant’s standing to sue, alleging that a May 2023 assignment granted a third party a "continuing security interest" in the patents-in-suit, which Plaintiffs contend divests Defendant of the right to enforce them. Plaintiffs also bring a cause of action under the Florida Patent Troll Prevention Act.
Case Timeline
| Date | Event |
|---|---|
| 2021-03-29 | Priority Date for ’010 and ’699 Patents |
| 2022-10-07 | ’699 Patent Application Filing Date |
| 2023-05-31 | Defendant executes patent assignment granting a security interest |
| 2024-09-03 | ’010 Patent Issue Date |
| 2024-10-29 | ’699 Patent Issue Date |
| 2024-12-20 | Defendant sends cease-and-desist letters to Plaintiffs |
| 2025-01-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,077,010 - "Digital Heat Transfer of an Image" (Issued Sep. 3, 2024)
The Invention Explained
- Problem Addressed: The patent describes prior art printing methods—such as screen printing, direct digital printing, and hybrid methods—as having drawbacks related to cost, production speed, complexity, and limitations on the types of substrates that can be used, especially dark-colored materials (’010 Patent, col. 1:11 - col. 2:24).
- The Patented Solution: The invention is a pre-fabricated, multi-layered "applicator" for transferring a digital image to a substrate via heat. This applicator is built upon a removable carrier film and includes, in order, a lacquer layer, a release layer, a non-white ink layer forming the image, a white ink layer serving as a background, and a final heat-activated adhesive layer (’010 Patent, Abstract; col. 4:10-14, FIG. 1). The structure is designed to be created digitally and then transferred as a single unit, intended to combine photorealistic quality with production efficiency (’010 Patent, col. 2:35-39).
- Technical Importance: This technology aims to provide an efficient, cost-effective method for producing high-quality, detailed digital transfers that can be applied to a wide variety of materials, overcoming the limitations of printing directly onto a final substrate (’010 Patent, col. 7:35-41).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 13 as being asserted by the Defendant (Compl. ¶22).
- Independent Claim 1 recites an "applicator" comprising:
- an ink layer forming the indicia
- a white layer disposed on the ink layer
- an adhesive layer disposed on the white layer
- a carrier film supporting the layers
- a release layer disposed between the carrier film and the ink layer
- a lacquer layer disposed between the carrier film and the ink layer
- Independent Claim 13 recites an applicator "consisting of" a similar set of layers, but omits the lacquer layer.
- The complaint notes that dependent claims 2-12 and 14-20 are necessarily implicated (Compl. ¶¶22-24).
U.S. Patent No. 12,128,699 - "Digital Heat Transfer of an Image" (Issued Oct. 29, 2024)
The Invention Explained
- Problem Addressed: As a divisional of the application leading to the ’010 Patent, this patent addresses the same set of problems in the digital printing field (’699 Patent, col. 1:16 - col. 2:34).
- The Patented Solution: While the ’010 Patent claims the final "applicator" structure, the ’699 Patent claims the processes and methods for creating that applicator. The claimed process involves a sequence of steps: transferring non-white ink onto a layered carrier film using a first print head, curing that ink, printing a white ink layer with a second print head, and then disposing a powder adhesive onto the uncured white layer, among other steps (’699 Patent, Abstract; col. 2:50-col. 3:4).
- Technical Importance: The claimed process provides a systematic, multi-stage workflow for manufacturing the heat transfer applicators, aiming to ensure quality and consistency in a high-volume production environment (’699 Patent, col. 7:47-53).
Key Claims at a Glance
- The complaint identifies independent claims 1, 7, and 13 as being asserted by the Defendant (Compl. ¶¶27-30).
- Independent Claim 1 recites a "process" that includes steps of transferring non-white ink to a specific three-layer carrier film, selectively curing the ink, printing white ink, and disposing an uncured adhesive layer.
- Independent Claim 7 recites a more detailed "method" including providing a carrier film to a conveyor, transferring ink, curing, transferring liquid white ink, dispensing a powder adhesive, removing excess powder, and curing the adhesive.
- Independent Claim 13 recites a "process" that requires the use of a "carousel printing machine" with a specific configuration of a conveyor and multiple print heads and a dispenser.
- The complaint notes that dependent claims are necessarily implicated (Compl. ¶¶27-29).
III. The Accused Instrumentality
Product Identification
- Plaintiffs’ direct-to-film (“DTF”) printers, including specific models such as the STS 24” XPD-924D DTF and the ColDesi Roland VersaSTUDIO BY-20 (Compl. ¶¶11, 12).
Functionality and Market Context
- The complaint describes the accused products as printers used to print a graphic onto a piece of film using various colored inks (Compl. ¶9). This printed film is subsequently used by the end-user, in a separate process, to transfer the graphic onto a substrate like fabric, plastic, or wood (Compl. ¶9). The core of the Plaintiffs' position is that they provide only the printing equipment and are not in the business of creating, selling, or using the final transfer applicators or the decorated apparel themselves (Compl. ¶10).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize Plaintiffs' asserted reasons for why their products do not meet the claim limitations.
’010 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An applicator for transferring an indicia to a substrate comprising: | Plaintiffs allege they do not make, use, sell, or import an "applicator," but rather sell DTF printers, which are equipment used to perform one step of creating an applicator. | ¶22 | col. 7:47-49 |
| an ink layer forming the indicia; a white layer disposed on the ink layer; | While the printers create these layers on film, Plaintiffs contend they are not part of a complete, infringing "applicator" as sold or offered for sale by them. | ¶22 | col. 4:41-47, 57-58 |
| an adhesive layer disposed on the white layer, the adhesive layer configured to adhere the ink layer and the white layer to the substrate; | Plaintiffs allege that none of their DTF printers embodies, includes, creates, or can create the claimed "adhesive layer." This is typically a powder applied by the end-user after printing. | ¶23 | col. 5:7-14 |
| a release layer disposed between the carrier film and the ink layer; and | Plaintiffs allege that none of their DTF printers embodies, includes, creates, or can create the claimed "release layer." This is a feature of the consumable film, not the printer. | ¶24 | col. 4:26-31 |
| a lacquer layer disposed between the carrier film and the ink layer... | This element is also a feature of the consumable film, not the printer itself, and is thus denied by implication in the Plaintiffs' general denial of making or selling an "applicator." | ¶22 | col. 4:32-34 |
’699 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A process of transferring an indicia to a substrate comprising: | Plaintiffs allege that neither they nor their printers perform or facilitate the full claimed "process." | ¶27 | col. 7:5-6 |
| a first conveyor transferring a carrier film... | The printers are equipment; they do not, by themselves, perform the step of transferring a carrier film. | ¶27 | col. 7:7-13 |
| a first heating element selectively curing the nonwhite color ink; | Plaintiffs allege their printers do not perform this specific step as recited in the full claimed process. | ¶28 | col. 7:18-19 |
| a dispenser disposing an adhesive layer on the white layer which is uncured. | Plaintiffs allege their printers do not perform the step of disposing an adhesive layer; this is a separate, manual or semi-automated step performed by the end-user. | ¶28 | col. 7:26-28 |
- Identified Points of Contention:
- Scope Questions: The central dispute is whether selling a DTF printer, which is a tool used to create a component of the claimed "applicator," constitutes direct infringement of apparatus claims. Similarly, a question arises as to whether selling the printer constitutes direct infringement of the process claims, which require multiple steps beyond the function of the printer itself.
- Technical Questions: A key factual question is what functions the accused printers actually perform versus what functions are performed by the end-user with separate materials (e.g., film, adhesive powder) and equipment (e.g., curing ovens). The complaint suggests a clear separation, alleging the printers only print ink and do not apply or cure adhesive layers (Compl. ¶¶23, 28).
V. Key Claim Terms for Construction
The Term: "applicator" (’010 Patent)
Context and Importance: The definition of "applicator" is fundamental. The complaint's non-infringement theory rests on the distinction between selling a printer and selling the finished, multi-layered "applicator" recited in the claims (Compl. ¶22). Practitioners may focus on this term to determine if liability for direct infringement can attach to the seller of a machine that only creates a sub-component of the claimed apparatus.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent title, "Digital Heat Transfer of an Image", and the overall description of the system could be used to argue that the term should be understood in the context of the entire system, potentially implicating key components.
- Evidence for a Narrower Interpretation: Claim 1 explicitly recites a combination of specific physical layers: "an ink layer," "a white layer," "an adhesive layer," "a carrier film," "a release layer," and "a lacquer layer" (’010 Patent, col. 7:50-col. 8:2). This detailed recitation strongly suggests the "applicator" is the physical, consumable transfer sheet itself, not the machinery used to make it.
The Term: "process of transferring an indicia" (’699 Patent)
Context and Importance: This term's construction is critical for determining who is the direct infringer. Plaintiffs contend they do not perform this "process"; rather, their customers do (Compl. ¶27). The outcome will hinge on whether selling the printer can be seen as performing the claimed multi-step process.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: An argument could be made that by automating certain steps, the printer "performs" the process, with the user merely facilitating.
- Evidence for a Narrower Interpretation: Claim 1 recites a sequence of discrete actions: "transferring," "curing," "printing," and "disposing" (’699 Patent, col. 7:14-28). This suggests the "process" requires the completion of all enumerated steps in sequence, which is an action attributable to the party operating the machinery and materials, not the machinery manufacturer alone.
VI. Other Allegations
- Indirect Infringement: The Defendant’s cease-and-desist letters accuse Plaintiffs of "induc[]ing and/or contributing to the infringement" (Compl. ¶¶ 11, 12). The complaint does not directly address these allegations but focuses on the lack of direct infringement. Any future analysis will likely center on whether Plaintiffs' printers have substantial non-infringing uses and whether Plaintiffs possessed the requisite knowledge and intent for inducement.
- Willful Infringement: Willfulness is not alleged in the provided documents.
- Other: Plaintiffs bring a claim under the Florida Patent Troll Prevention Act (FPTPA) in Count III (Compl. ¶¶32-36). This claim is based on two primary allegations: (1) Defendant made bad faith assertions because it "lacks a current right to...enforce the patent" due to a 2023 assignment granting a security interest to a third party (Compl. ¶34), and (2) the demand letters failed to include the sender's address as required by the statute (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold question will be one of standing and ownership: Does the 2023 assignment, which granted a "continuing security interest" in the patents to a third party, divest Defendant Scribe Opco of its right to sue for infringement, thereby rendering its demand letters a bad faith assertion under Florida law?
- The primary infringement dispute will turn on the locus of infringement: Do Plaintiffs, as sellers of printing equipment, directly infringe claims directed to a finished "applicator" (a consumable good) or a multi-step "process" that is completed by the end-user? The case appears poised to shift from a question of direct infringement to one of indirect infringement.
- A key evidentiary question will concern the division of labor: What specific technical functions are performed by the accused DTF printers versus the actions required of the end-user? This factual determination will be critical for assessing whether the full scope of any single apparatus or method claim is met by any single actor.