DCT
3:19-cv-01186
Tatuyou LLC v. One Ink Seven LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tatuyou L.L.C. (Minnesota)
- Defendant: One Ink Seven LLC (Indiana); Robert F. Smead (Indiana)
- Plaintiff’s Counsel: Botkin & Hall, LLP; DuFault Law Firm, P.C.
- Case Identification: 3:19-cv-01186, N.D. Ind., 12/26/2019
- Venue Allegations: Venue is alleged to be proper because Defendants are subject to personal jurisdiction in the Northern District of Indiana, where Defendant One Ink Seven LLC has its principal place of business and Defendant Smead resides.
- Core Dispute: Plaintiff alleges that Defendant’s tattoo stencil primers and inkjet stencil inks infringe patents related to chemical compositions for creating and applying tattoo stencils.
- Technical Context: The technology concerns chemical formulations used in the tattoo industry, specifically primer compositions that prepare skin for stencil transfer and ink compositions that allow standard inkjet printers to create those stencils.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement for the ’281 patent via a letter on December 20, 2018, and for the ’613 patent via a letter on June 12, 2019, prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-08 | ’281 Patent Priority Date |
| 2011-04-29 | ’613 Patent Priority Date |
| 2013-10-01 | ’613 Patent Issued |
| 2017-01-17 | ’281 Patent Issued |
| 2018-12-20 | Notice Letter Sent re: ’281 Patent |
| 2019-06-12 | Notice Letter Sent re: ’613 Patent |
| 2019-12-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,546,281 - "Tattoo Stencil Composition and Method for Manufacturing," issued January 17, 2017
The Invention Explained
- Problem Addressed: The patent describes that transfer lotions traditionally used to apply tattoo stencils to skin are often not specifically formulated for that purpose, are typically not sterilized, and may use components that can lead to health concerns or infections when pushed into the skin during the tattooing process (’281 Patent, col. 2:46-53).
- The Patented Solution: The invention is a specific chemical composition for a tattoo stencil transfer liquid, designed to be sterile, sanitary, and to remain on the skin for a long time (’281 Patent, col. 1:53-65). The composition comprises specific proportions of a fatty acid (stearic acid), water, an amino group compound (triethanolamine), a humectant (propylene glycol), and a preservative, creating a formulation intended for safe and effective stencil transfer (’281 Patent, Abstract; col. 4:45-55).
- Technical Importance: The invention provides a purpose-built, sterilizable composition for transferring tattoo stencils, aiming to improve safety and stencil longevity compared to traditional methods that often repurposed consumer products like deodorant (’281 Patent, col. 2:35-44).
Key Claims at a Glance
- The complaint does not specify which claims it asserts, stating only that Defendant infringes "at least one claim" (Compl., Prayer for Relief ¶(d)). Independent claim 2 is a representative composition claim.
- Independent Claim 2: A tattoo stencil chemical composition, comprising:
- 0.0001% to 9% by weight fatty acid;
- 0.0001% and 99% by weight water;
- 0.0001% to 3% by weight triethanolamine; and
- 0.0001% by weight to 99% of a preservative chemical composition.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,545,613 - "Tattoo Transfer Pattern Printed By An Ink Jet Printer," issued October 1, 2013
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional methods of creating tattoo stencils, such as hand tracing or using thermal copiers, are laborious, potentially inaccurate, limited to a single color, and require expensive specialty equipment and papers (’613 Patent, col. 2:1-12).
- The Patented Solution: The invention provides a method for producing a specialized ink that allows a standard, inexpensive inkjet printer to create detailed, multi-color tattoo stencils on flexible substrates (’613 Patent, col. 5:61-66). The ink composition comprises a cationic dye and a solvent, and is filtered to remove particles larger than 25 microns to prevent clogging the printer’s print heads (’613 Patent, Abstract).
- Technical Importance: This technology enables tattoo artists to move from specialized, single-color thermal copiers to common inkjet printers for creating detailed and multi-color reference stencils, increasing efficiency and the level of detail possible in the transferred design (’613 Patent, col. 7:60-col. 8:2).
Key Claims at a Glance
- The complaint does not specify which claims it asserts (Compl., Prayer for Relief ¶(a)). Independent claim 1 is the patent's primary method claim.
- Independent Claim 1: A method for producing a composition of matter comprising:
- producing a mixture comprising a cationic dye and a solvent;
- filtering the mixture to obtain a composition that does not have particles that are greater than 25 microns in diameter; and
- sterilizing the composition.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- For the ’281 Patent: "Electrum Premium Tattoo Stencil Primer" and "Electrum Gold Standard Tattoo Stencil Primer" (Compl. ¶18).
- For the ’613 Patent: "NOX Violet" and "Eco Stencils" tattoo stencil ink compositions (Compl. ¶¶35, 36).
Functionality and Market Context
- The accused primers are described as skin-applicable compositions that aid in the transfer of tattoo stencil patterns printed by an inkjet printer (Compl. ¶18).
- The accused inks are compositions sold for use in inkjet printers to create tattoo transfer patterns (Compl. ¶¶35, 36). The complaint alleges that the "NOX Violet" and "Eco Stencils" products are substantially the same composition (Compl. ¶37).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide claim charts or specific factual allegations mapping product features to claim elements. The following tables are constructed based on the general allegations in the complaint.
’281 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A tattoo stencil chemical composition, comprising: | Defendant makes, uses, or sells "skin applicable compositions that aid in the transfer of tattoo stencil patterns" under the names "Electrum Premium" and "Electrum Gold Standard" primers. | ¶18 | col. 4:45-46 |
| 0.0001% to 9% by weight fatty acid | The complaint alleges the accused primers are infringing compositions but provides no facts regarding the presence or weight percentage of a fatty acid. | ¶18 | col. 5:18-24 |
| 0.0001% and 99% by weight water | The complaint alleges the accused primers are infringing compositions but provides no facts regarding the presence or weight percentage of water. | ¶18 | col. 5:50-57 |
| 0.0001% to 3% by weight triethanolamine | The complaint alleges the accused primers are infringing compositions but provides no facts regarding the presence or weight percentage of triethanolamine. | ¶18 | col. 5:26-34 |
| 0.0001% by weight to 99% of a preservative chemical composition | The complaint alleges the accused primers are infringing compositions but provides no facts regarding the presence or weight percentage of a preservative. | ¶18 | col. 5:58-col. 6:4 |
’613 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for producing a composition of matter comprising: producing a mixture comprising a cationic dye and a solvent | The complaint alleges Defendant infringes by "making" the "NOX Violet" and "Eco Stencils" ink compositions, which are alleged to embody the claimed invention. | ¶¶35, 36 | col. 6:5-10 |
| filtering the mixture to obtain a composition that does not have particles that are greater than 25 microns in diameter | The complaint alleges infringement of the patent but provides no specific facts about whether Defendant's manufacturing process includes the claimed filtering step. | ¶¶35, 36 | col. 7:7-11 |
| and sterilizing the composition. | The complaint alleges infringement of the patent but provides no specific facts about whether Defendant's manufacturing process includes a sterilization step. | ¶¶35, 36 | col. 7:27-30 |
- Identified Points of Contention:
- Factual Questions: A primary issue for both patents is the absence of specific factual allegations in the complaint. For the ’281 patent, the complaint does not identify the chemical constituents of the accused primers. For the ’613 patent, the complaint does not describe the accused manufacturing process. An evidentiary question will be whether discovery reveals facts to support the conclusory allegations of infringement.
- Legal Questions (’613 Patent): The asserted independent claim of the ’613 patent is a method of manufacture. The complaint alleges infringement by "making, using or selling" the resulting ink (Compl. ¶¶35, 36). This raises the question of whether allegations of "selling" a product can sustain a claim for direct infringement of a method-of-manufacture claim.
V. Key Claim Terms for Construction
Term (’281 Patent): "preservative chemical composition"
- Context and Importance: The identity and properties of the preservative are central to the claimed formulation. Claim 1 recites a highly specific preservative, while the broader independent Claim 2 uses this more general term. The definition of this term will be critical to determining the scope of Claim 2 and whether the accused primers, which may use a different preservative system, fall within it.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests flexibility, stating that "other suitable types of preservative chemical compositions can also be utilized with the tattoo stencil chemical composition" (’281 Patent, col. 5:13-16).
- Intrinsic Evidence for a Narrower Interpretation: The patent’s only detailed example and its most specific claim (Claim 1) identify a particular commercial product, "Germaben II," and its components (’281 Patent, col. 5:11-13; col. 6:9-13). A defendant may argue this context limits the term to preservatives with similar components or properties.
Term (’613 Patent): "cationic dye"
- Context and Importance: This term defines the core colorant in the claimed inkjet ink. Infringement will depend on whether the dye used in the accused "NOX Violet" and "Eco Stencils" inks is properly classified as "cationic."
- Intrinsic Evidence for a Broader Interpretation: The specification provides a non-exclusive list of examples, including "methyl violet," "resorcin blue," and "fuchsin," suggesting the term covers a variety of such dyes (’613 Patent, col. 6:8-11).
- Intrinsic Evidence for a Narrower Interpretation: The specification also describes a "particularly suitable dye type" as one that is "oily or greasy" because skin is also oily, facilitating adhesion (’613 Patent, col. 6:6-8). A defendant may argue this functional language imposes a limitation on the term beyond its simple chemical definition.
VI. Other Allegations
- Indirect Infringement:
- The complaint alleges active inducement and contributory infringement for both patents. For the ’281 patent, inducement is based on the product’s description (Compl. ¶25). For the ’613 patent, inducement is based on the "Eco Stencils" instructions (Compl. ¶44).
- The legal basis for indirect infringement of the ’613 patent raises a question, as the asserted independent claim is a method of manufacture performed by the defendant, not a method of use performed by a third-party customer. The complaint does not plead facts showing how a third party directly infringes this manufacturing method claim, which is a prerequisite for indirect infringement liability.
- Willful Infringement: The complaint alleges willful infringement of both patents. The allegations are based on pre-suit notice letters allegedly sent to Defendant OIS, establishing knowledge of the patents as of December 20, 2018, for the ’281 patent and June 12, 2019, for the ’613 patent (Compl. ¶¶23, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Sufficiency: A threshold issue is whether the plaintiff can substantiate its infringement theories with facts. Given the complaint's lack of specific technical allegations, a central question will be whether discovery reveals evidence that the accused products' chemical compositions and the defendant’s manufacturing methods meet the specific limitations recited in the asserted patents.
- Liability Theory for the ’613 Patent: The case presents a key legal question regarding the ’613 patent: can the plaintiff’s claims for direct infringement based on "selling" a product, or its claims for indirect infringement, be sustained when the only independent claim identified in the patent is a method of manufacture that would be performed by the defendant, not by end-users?
- Claim Scope and Construction: The dispute may turn on claim construction, particularly the scope of the term "preservative chemical composition" in the ’281 patent. The court’s interpretation will determine whether the claim is limited to the specific formulation disclosed in the patent's examples or read more broadly to encompass other types of preservatives.