DCT
1:17-cv-11294
MT Derm GmbH v. Needlejig Tattoo Supply Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MT. DERM GmbH (Germany) and Nouveau Cosmetique USA, Inc. (Florida)
- Defendant: Needlejig Tattoo Supply, Inc. (Massachusetts)
- Plaintiff’s Counsel: Birnbaum & Godkin, LLP; Sughrue Mion, PLLC
- Case Identification: 1:17-cv-11294, D. Mass., 07/13/2017
- Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because the Defendant resides there, maintains a regular and established place of business, and has conducted acts of infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s disposable tattoo needle cartridges and associated grips infringe a reexamined patent related to modular ink application devices designed for improved hygiene.
- Technical Context: The technology addresses the risk of cross-contamination in the tattooing and permanent make-up industry by separating a reusable drive mechanism from a single-use, sterilized module containing the needle and ink reservoir.
- Key Procedural History: The original U.S. Patent No. 6,505,530 underwent an ex parte reexamination requested by Plaintiff MT. DERM, resulting in an amended patent that issued on November 4, 2015. The complaint alleges that Defendant had pre-suit knowledge of the reexamined patent and its infringement via correspondence sent in August 2016 and January 2017.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-22 | '530 Patent Priority Date |
| 2003-01-14 | '530 Patent Issue Date |
| 2015-11-04 | '530 Reexamination Certificate Issue Date |
| 2016-08-11 | Defendant allegedly received first notice of infringement from Plaintiffs' counsel |
| 2017-01-03 | Defendant allegedly received second notice of infringement from Plaintiffs' counsel |
| 2017-07-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
Reexamined U.S. Patent No. 6,505,530 - "Ink Application Device for Tattooing or for Making Permanent Make-Up," issued January 14, 2003 (Reexamination Certificate issued November 4, 2015)
The Invention Explained
- Problem Addressed: The patent’s background section identifies the significant health risk of transmitting infectious diseases, such as AIDS and hepatitis, through bodily fluids during tattooing procedures. It notes the difficulty and expense of properly sterilizing multi-part tattoo devices and the risk of contaminating bulk ink supplies, which can infect multiple customers (’530 Patent, col. 1:16-52).
- The Patented Solution: The invention proposes a modular system to solve this problem. It consists of a reusable "basic module," which contains the handle and the electronic drive mechanism, and a "sterilized disposable module" (or "hygienic module"). This disposable module integrates all components that come into contact with a customer's skin and bodily fluids—the needle, needle nozzle, and ink reservoir—into a single, pre-sterilized unit that can be easily attached to and removed from the basic module for each new client, thereby preventing cross-contamination (’530 Patent, Abstract; col. 2:16-49).
- Technical Importance: This modular approach simplified hygienic practices for tattoo artists by eliminating the need for complex, time-consuming sterilization of individual components and ensuring the sterility of the ink used for each treatment (’530 Patent, col. 2:35-49).
Key Claims at a Glance
- The complaint asserts infringement of multiple claims, with a focus on representative independent claim 1, as amended during reexamination (Compl. ¶¶26, 29).
- Reexamined Independent Claim 1 includes the following essential elements:
- A basic module having a handle and an integrated needle drive;
- A unitary sterilized disposable module including an outer housing that substantially surrounds a needle;
- The needle is supported at one end by a needle nozzle and at another end by a portion that can contact the integrated needle drive;
- The needle is movable relative to the outer housing;
- An ink receiving portion is disposed around the needle; and
- A means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module.
- The complaint reserves the right to assert numerous other claims, including dependent claims (Compl. ¶26, fn. 1; ¶¶29, 32).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant's "Legacy Cartridges" and associated "Cartridge Tubes / Grips" (Compl. ¶14). The complaint lists numerous specific product lines, such as "#12 Tight Liner Legacy Tattoo Needle Cartridges" and "Gripitz Disposable Cartridge Grip" (Compl. ¶¶9-10).
Functionality and Market Context
The accused products are disposable needle cartridges designed for use in tattooing and permanent make-up (PMU) application devices (Compl. ¶9). The complaint alleges these cartridges are advertised as being compatible with "all major cartridge systems" and are intended to be used with various standard tattoo machines sold by the Defendant (Compl. ¶¶11-13). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references a preliminary claim chart (Exhibit C) that was not included with the filed document (Compl. ¶26). The following summary is based on the narrative allegations in the complaint.
Reexamined '530 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a basic module having a handle and an integrated needle drive | The accused cartridges are alleged to be compatible with and assembled with tattoo machines that include an integrated needle drive and handle, such as the "Cheyenne Hawk tattoo machine." | ¶27, ¶28 | col. 2:19-21 |
| a unitary sterilized disposable module including an outer housing and a needle... | Defendant's "Legacy Cartridges" are alleged to meet the "unitary sterilized disposable module" limitation. | ¶27 | col. 2:21-25 |
| an ink receiving portion disposed around the needle | The complaint alleges that when assembled, the combination includes all elements of claim 1, which implies the presence of this feature. | ¶29, ¶32 | col. 4:60-62 |
| means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module | The complaint alleges the Legacy Cartridges are designed to be operatively inserted into a tattoo machine, implying a mechanism for attachment and removal as a complete unit. | ¶27, ¶29 | col. 2:50-52 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the means-plus-function limitation "means for allowing simultaneous removal..." The court will need to determine what structure, if any, is disclosed in the patent specification that performs this function. The outcome of this construction will be critical to the infringement analysis.
- Technical Questions: What evidence demonstrates that the accused "Legacy Cartridges" are "unitary" as required by the reexamined claim? The complaint makes a conclusory allegation (Compl. ¶27), but the actual construction and assembly of the accused products will be a key factual issue.
V. Key Claim Terms for Construction
"means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module"
- Context and Importance: This means-plus-function limitation was added during reexamination and is central to the claimed invention's modularity. Its scope is limited to the corresponding structure described in the specification and its equivalents. Practitioners may focus on this term because a narrow construction could provide a path to a non-infringement defense, while a finding of no corresponding structure could render the claim indefinite.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the connection in general terms, stating it can be "established and released in a simple manner" and that the disposable module can be easily "plug[ged]... onto the basic module" (’530 Patent, col. 2:40-43, col. 2:50-52). This language could support a construction covering any simple attachment mechanism.
- Evidence for a Narrower Interpretation: The patent figures depict specific physical connections, such as threaded or bayonet-style engagements between the disposable and basic modules (’530 Patent, Fig. 1-2). A party could argue these specific disclosed embodiments are the only "structure" corresponding to the function, thus narrowing the claim's scope. An argument could also be made that the specification fails to disclose adequate structure, raising an indefiniteness issue under 35 U.S.C. § 112.
"unitary sterilized disposable module"
- Context and Importance: This term, also added during reexamination, defines the core disposable component. Infringement hinges on whether the accused "Legacy Cartridges" meet this definition (Compl. ¶27).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the disposable module as a unit integrating "all components... capable of being infected by bodily fluids" (’530 Patent, col. 2:21-25) that is "removed from the basic module after the treatment and is disposed of in the usual manner" (’530 Patent, col. 2:39-41). This could support defining "unitary" by its disposable function rather than its physical construction.
- Evidence for a Narrower Interpretation: The term "unitary" could be construed more strictly to mean formed as a single, inseparable piece or, as described in newly added dependent claim 49, "assembled together as a unitary piece in a sterile package" (’530 C1 Patent, col. 5:16-17). If the accused cartridges are sold as separate components to be assembled by the end-user, this could support a non-infringement argument.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement based on Defendant's marketing and sale of the accused products on its website, which allegedly "suggesting combinations" that result in infringement (Compl. ¶34). It further alleges contributory infringement, asserting the products are a "material part of the invention" and not a "staple article or commodity of commerce suitable for non-infringing use" (Compl. ¶36).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the Reexamined '530 Patent and its infringement since at least August 11, 2016, and January 3, 2017, via correspondence from Plaintiffs’ counsel (Compl. ¶¶37, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and validity: can the means-plus-function limitation "means for allowing simultaneous removal," added during reexamination, survive an indefiniteness challenge? The court's determination of whether the patent discloses adequate corresponding structure for this function will be dispositive for infringement.
- A key evidentiary question will be one of technical scope: do the accused "Legacy Cartridges" meet the definition of a "unitary sterilized disposable module" as required by the reexamined claims? The case may turn on the factual details of the accused products' construction and how they are packaged and sold, compared to the specific language of the patent.