DCT
3:17-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: 3:17-cv-11294, D. Mass., 07/13/2017
- Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because the Defendant resides in, maintains a regular and established place of business in, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s disposable tattoo needle cartridges and associated grips infringe a patent related to modular, hygienic ink application devices.
- Technical Context: The technology addresses safety and sterility in the tattoo and permanent makeup industry by using a reusable handle with a separate, single-use disposable cartridge containing the needle and other components exposed to bodily fluids.
- Key Procedural History: The patent-in-suit was the subject of an ex parte reexamination requested by Plaintiff MT. DERM, which concluded in 2015 with the issuance of a certificate confirming the patentability of amended claims. The complaint also alleges that Defendant was notified of its alleged infringement via correspondence from Plaintiffs' counsel on two separate occasions prior to the lawsuit's filing.
Case Timeline
| Date | Event |
|---|---|
| 1999-10-22 | '530 Patent Priority Date |
| 2003-01-14 | U.S. Patent No. 6,505,530 Issue Date |
| 2015-11-04 | '530 Reexamination Certificate (C1) Issue Date |
| 2016-08-11 | First alleged pre-suit notice of infringement sent to Defendant |
| 2017-01-03 | Second alleged pre-suit notice of infringement sent to Defendant |
| 2017-07-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,505,530, “Ink Application Device for Tattooing or for Making Permanent Make-Up,” issued January 14, 2003 (as amended by Reexamination Certificate C1, issued November 4, 2015).
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the substantial health risks associated with tattooing and permanent make-up procedures, specifically the transmission of "highly infectious bacterial or viral infectious diseases such as AIDS and hepatitis" through contaminated equipment and ink (’530 Patent, col. 1:21-27). Traditional sterilization of multi-use device parts is described as time-consuming, costly, and difficult to perform reliably (’530 Patent, col. 1:45-49).
- The Patented Solution: The invention proposes a modular system divided into a reusable "basic module" containing the handle and drive mechanism, and a "sterilized disposable module" that integrates all components susceptible to contamination, such as the needle and needle nozzle (’530 Patent, Abstract). After a single use, the entire disposable module is removed and discarded, and a new sterile module is attached for the next client, which "becomes superfluous" the need to sterilize individual parts (’530 Patent, col. 2:34-39).
- Technical Importance: This design sought to simplify hygienic practices and reliably prevent cross-contamination between customers in the tattooing field by eliminating the need for users to sterilize individual components that contact bodily fluids (’530 Patent, col. 2:11-15).
- Key Claims at a Glance:
- The complaint asserts infringement of multiple claims, with a focus on Reexamined Independent Claim 1.
- The essential elements of Reexamined Independent Claim 1 are:
- a basic module having a handle and an integrated needle drive;
- a unitary sterilized disposable module including an outer housing and 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
- 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 apparatus claims and method claims (Compl. ¶¶ 29, 32, 33).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant’s "Legacy Cartridges" and various "Cartridge Tubes / Grips" designed for use with tattoo machines (Compl. ¶¶ 9, 10, 14).
- Functionality and Market Context: The complaint describes the accused products as disposable needle cartridges intended for tattooing and permanent make-up procedures (Compl. ¶ 9). They are allegedly marketed as being compatible with "all major cartridge systems" and for use with standard tattoo machines, such as rotary and coil machines also sold by the Defendant (Compl. ¶¶ 11, 13). The infringement allegation is based on the combination of Defendant's cartridges with such tattoo machines (Compl. ¶¶ 29, 32).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint provides a narrative infringement theory rather than a detailed claim chart exhibit. The following table summarizes the allegations for the representative independent claim.
'530 Patent Infringement Allegations
| Claim Element (from Reexamined 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 allegedly designed for assembly with standard tattoo machines that provide the handle and drive, such as those sold by Defendant. | ¶¶ 29, 32 | col. 2:25-30 |
| a unitary sterilized disposable module including an outer housing and a needle... | The complaint asserts that Defendant’s "Legacy Cartridges" constitute the claimed "unitary sterilized disposable module." | ¶27 | col. 2:21-24 |
| ...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 complaint alleges that the assembled combination of the Legacy Cartridges with compatible tattoo machines includes all elements of the claims. | ¶29 | col. 4:59-62; Fig. 1 |
| ...an ink receiving portion disposed around the needle... | The assembled combination of the accused cartridges and compatible tattoo machines is alleged to include an ink receiving portion. | ¶¶ 29, 32 | col. 5:40-41; Fig. 2 |
| 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 and removed from a tattoo machine. | ¶27 | col. 2:50-52 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the term "unitary," which was added during reexamination. The question will be whether the Defendant’s cartridges, which may be assembled from multiple parts, meet the "unitary" limitation as construed in light of the patent's specification.
- Technical Questions: The complaint alleges that the accused cartridges, when combined with a tattoo machine, satisfy the "means for allowing simultaneous removal" limitation. As this is a means-plus-function element, its scope is tied to the specific connection structures disclosed in the patent. A key question will be whether the connection mechanism of the accused cartridges is structurally equivalent to those disclosed structures, an issue for which the complaint offers no specific technical evidence.
V. Key Claim Terms for Construction
The Term: "unitary sterilized disposable module"
Context and Importance: This term was added to Independent Claim 1 during reexamination and is therefore critical to defining the scope of the invention over the prior art. Practitioners may focus on this term because its construction will likely determine whether the accused cartridges, which are self-contained but may be assembled from multiple sub-components, fall within the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses that the disposable module’s housing can be made of multiple parts ("a rear housing part 1 and a front housing part 2"), suggesting "unitary" may not require a single, monolithic piece but rather a pre-assembled, self-contained unit that functions as one (’530 Patent, col. 4:51-53).
- Evidence for a Narrower Interpretation: The specification also states that, "In an alternative embodiment, it can also be formed as one piece," which could be used to argue that "unitary" implies a more integrated construction to distinguish it from a mere collection of separable parts (’530 Patent, col. 4:55-56).
The Term: "means for allowing simultaneous removal of the entire unitary sterilized disposable module from the basic module"
Context and Importance: This is a means-plus-function limitation governed by 35 U.S.C. § 112(f). Its scope is not defined by the words alone, but by the corresponding structure disclosed in the specification and its equivalents. The infringement analysis for this element will be a two-step process of identifying the patent's structure and then comparing it to the accused device's structure.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function in broad terms, stating the connection "can be established and released in a simple manner" (’530 Patent, col. 2:50-52), potentially supporting a range of equivalent connection types.
- Evidence for a Narrower Interpretation: The scope will be limited to the specific structures shown in the patent figures that achieve the connection between the disposable module (e.g., housing part 1) and the basic module (20), such as the threaded or snap-fit style interface depicted, and their structural equivalents (’530 Patent, Figs. 1-2).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by selling the accused cartridges and suggesting their combination with tattoo machines in a manner that infringes the patent claims (Compl. ¶ 34). It further alleges contributory infringement, stating the cartridges are a material part of the patented invention, are not a staple article of commerce, and are especially made for an infringing use (Compl. ¶¶ 36, 38). Knowledge is alleged based on pre-suit notice letters (Compl. ¶ 37).
- Willful Infringement: The willfulness claim is based on Defendant’s alleged continued infringement after receiving actual notice via correspondence from Plaintiffs’ counsel on August 11, 2016, and January 3, 2017 (Compl. ¶¶ 37, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "unitary sterilized disposable module," which was added during reexamination to distinguish the invention from prior art, be construed to read on the accused cartridges, which are self-contained but may be assembled from multiple sub-components?
- A second issue will be one of means-plus-function analysis: does the connection mechanism of the accused cartridges perform the function of the claimed "means for... removal" using a structure that is the same as or equivalent to the specific connection structures disclosed in the patent's specification?
- A third key question will be one of liability for system claims: given that the asserted claims cover a system combining a disposable cartridge with a reusable drive, and Defendant is alleged to sell only the cartridge component, the case will test whether Plaintiffs can prove direct infringement by Defendant or must rely on theories of indirect infringement, which would require proving both direct infringement by end-users and Defendant's requisite intent.