DCT
2:19-cv-10386
Decatur Diamond LLC v. CDP Diamond Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Decatur Diamond LLC (Indiana)
- Defendant: CDP Diamond Products, Inc. (Michigan)
- Plaintiff’s Counsel: Howard & Howard Attorneys PLLC
- Case Identification: 2:19-cv-10386, E.D. Mich., 02/07/2019
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the district and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s process of refurbishing and re-selling Plaintiff's patented cutting tool cartridges constitutes impermissible reconstruction and therefore infringes patents covering the original cartridges.
- Technical Context: The technology relates to replaceable cutting tool cartridges used in industrial machining, where precision and durability are critical.
- Key Procedural History: The complaint alleges that U.S. Patent 9,868,163 is a continuation of U.S. Patent 9,266,174. Plaintiff also states it provided Defendant with written notice of infringement regarding the '174 patent on or about May 23, 2018, nearly nine months before filing the suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-06-10 | Priority Date for '174 and '163 Patents |
| 2016-02-23 | '174 Patent Issue Date |
| 2016-12-23 | Date of Defendant's Marketing Material |
| 2018-01-16 | '163 Patent Issue Date |
| 2018-05-23 | Plaintiff's Alleged Written Notice of Infringement to Defendant |
| 2019-02-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,266,174 - "Cutting Tool" (issued Feb. 23, 2016)
The Invention Explained
- Problem Addressed: The patent describes conventional cutting tools as requiring numerous, distinct tool cartridges to accommodate cutting inserts for various depths of cut. Furthermore, these prior art cartridges did not "positively locate the cutting insert," which could lead to misalignment during the brazing process and result in "undesirable machining of the workpiece" ('174 Patent, col. 1:25-33).
- The Patented Solution: The invention is a cutting tool cartridge featuring a "universal pocket" designed to securely hold cutting inserts of different sizes ('174 Patent, col. 1:47-52). The geometry of this pocket, which includes a specific shoulder and recess, is designed to "positively locate the cutting insert" and ensure its position is controlled during the brazing process, thereby improving machining precision ('174 Patent, col. 3:20-26; Fig. 2).
- Technical Importance: The design's stated benefit is a more economical and versatile system, allowing a single type of cartridge to be used with a variety of cutting inserts while enhancing the precision of the final tool ('174 Patent, col. 1:34-43).
Key Claims at a Glance
- The complaint asserts infringement of claims 16-20, identifying claim 20 as representative (Compl. ¶¶35-36).
- Independent Claim 20 includes these essential elements:
- A main body including a cutting head having a pocket configured to receive a cutting insert.
- The pocket includes a shoulder and a recess formed between the shoulder and a substantially planar surface to position the cutting insert.
- The substantially planar surface is substantially parallel to a central longitudinal axis of a cutter body in which the cartridge is configured to be disposed.
- The main body has a generally triangular cross-sectional shape.
U.S. Patent No. 9,868,163 - "Cutting Tool" (issued Jan. 16, 2018)
The Invention Explained
- Problem Addressed: As a continuation of the '174 patent, the '163 patent addresses the same technical problems of prior art cutting cartridges: the need for numerous cartridge types for different cut depths and the lack of precise, positive location for the cutting insert during manufacturing ('163 Patent, col. 1:28-39).
- The Patented Solution: The '163 patent also discloses a cartridge with a precisely machined pocket to secure a cutting insert. The claims of this patent place a greater emphasis on the specific geometry of the pocket's shoulder, detailing the orientation of its constituent surfaces to ensure proper positioning of the insert ('163 Patent, cl. 7). The figures and detailed description illustrate how these surfaces cooperate to hold the insert securely ('163 Patent, Fig. 2; col. 3:40-58).
- Technical Importance: This invention likewise aims to provide an economical and easy-to-machine universal cartridge that improves upon the precision and reliability of prior art cutting tools ('163 Patent, col. 1:40-49).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-13, identifying claims 7-9 as representative (Compl. ¶¶48-49).
- Independent Claim 7 includes these essential elements:
- A main body with a cutting head having a pocket to receive a cutting insert.
- The pocket includes a shoulder and a substantially planar surface that cooperate to position the insert.
- The shoulder includes a first surface and a second surface.
- The second surface includes a first portion arranged substantially perpendicular to the first surface and a second portion angled with respect to the first portion.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "reconstructed" cutting tool cartridges that Defendant, CDP Diamond Products, Inc. ("CDP"), acquires as "spent and worn out cartridges from Decatur's customers" and then re-sells (Compl. ¶¶1, 17-18).
Functionality and Market Context
The complaint alleges that CDP's process involves multiple steps: inspecting the spent cartridge, using high heat to de-braze and remove the worn insert, sandblasting and cleaning the original metal body, "making a completely new diamond insert," and then brazing the new insert into the reconditioned body (Compl. ¶23). The complaint includes a photograph of two varieties of the accused cartridges, noting they have different model numbers corresponding to different insert sizes (Compl. ¶¶22-23, p. 7). Plaintiff alleges that CDP markets these products using Decatur Diamond's own part numbers and presents itself as a "leading manufacture [sic]," which allegedly causes customer confusion as to the source and origin of the products (Compl. ¶¶24, 28-29). One piece of marketing material, a blog post, is included as a visual exhibit to support this allegation (Compl. ¶27, p. 9).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory centers on the doctrine of "reconstruction," alleging that CDP’s activities go beyond permissible repair and instead create a new, infringing article (Compl. ¶¶20, 39, 52).
'174 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main body including a cutting head having a pocket configured to receive a cutting insert... | Defendant reuses the original main body and its integrated cutting head from a spent Decatur Diamond cartridge, which is then reconditioned. | ¶¶17, 23(c) | col. 4:55-57 |
| wherein the pocket includes a shoulder and a recess formed between the shoulder and a substantially planar surface to position the cutting insert... | The reused main body contains the pocket with the claimed shoulder and recess geometry, which Defendant uses to position its newly manufactured insert. | ¶23(e) | col. 3:49-54 |
| wherein the substantially planar surface is substantially parallel to a central longitudinal axis of a cutter body in which the cutting tool cartridge is configured to be disposed... | This is an inherent geometric feature of the original Decatur Diamond cartridge body that Defendant reuses for its reconstructed products. | ¶¶37-38 | col. 4:38-40 |
| and wherein the main body has a generally triangular cross-sectional shape. | This shape is an inherent feature of the original main body reused by Defendant. | ¶¶37-38 | col. 4:57-59 |
'163 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main body including a cutting head having a pocket configured to receive a cutting insert... | Defendant reuses the original main body and its pocket from a spent Decatur Diamond cartridge. | ¶¶51, 23 | col. 5:60-65 |
| wherein the pocket includes a shoulder and a substantially planar surface, the shoulder and the substantially planar surface cooperating to position the cutting insert... | The specific geometry of the pocket, including the shoulder and planar surface, is part of the original cartridge body and is used by Defendant to position a new insert. | ¶¶50, 23(e) | col. 3:30-35 |
| the shoulder including a first surface and a second surface, the second surface including a first portion arranged substantially perpendicular to the first surface and a second portion angled with respect to the first portion. | This detailed shoulder geometry is a feature of the original cartridge body that Defendant reuses in its reconstruction process. | ¶¶51-52 | col. 3:40-49 |
- Identified Points of Contention:
- Legal Question (Repair vs. Reconstruction): The central dispute is unlikely to be a typical element-by-element infringement analysis. Instead, it raises the question of whether CDP's actions constitute permissible repair of a lawfully purchased product or impermissible reconstruction. The court will need to assess whether CDP's process of removing a spent component (the insert) and replacing it with a newly manufactured one "recreates a new cartridge" (Compl. ¶39), thereby extinguishing the patent holder's rights in that specific item.
- Technical Question: A key factual issue will be the nature of the replaced component. The court may need to determine if the diamond insert is the essential, novel component of the patented cartridge or if it is an unpatented, wearable part. The complaint asserts that the patentee "did not design the cartridges to be repaired" and that the patented cartridges "do not include any readily replaceable parts" (Compl. ¶¶19, 21).
V. Key Claim Terms for Construction
- The Term: "cutting tool cartridge"
- Context and Importance: The definition of this term is fundamental to the repair vs. reconstruction analysis. Practitioners may focus on this term because if the "cartridge" is legally construed as the combination of the main body and the cutting insert, then replacing the insert could be viewed as making a new cartridge. Conversely, if the "cartridge" is construed as only the main body designed to hold a wearable insert, CDP's actions may be viewed as permissible repair.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language recites "A cutting tool cartridge, comprising: a main body... having a pocket configured to receive a cutting insert" ('174 Patent, cl. 20). This phrasing could support an interpretation that the claim is directed to the body itself, with the language about the insert merely defining the body's structure and function.
- Evidence for a Narrower Interpretation: The claims state that the pocket's surfaces "cooperate to position the cutting insert" ('163 Patent, cl. 7), and the specification emphasizes that this positive location "militate[s] against misalignment" during brazing ('174 Patent, col. 3:24-26). This focus on the interaction between the body and the insert may support an interpretation that the patented "cartridge" is the integrated combination, not just the body.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b) for both patents, based on the allegation that CDP sells the cartridges and "induc[es] its customers to use the infringing cartridges" (Compl. ¶¶40, 53).
- Willful Infringement: The complaint alleges willfulness for both patents, but on different grounds. For the '174 patent, willfulness is alleged based on pre-suit knowledge stemming from written notice provided "as early as May 23, 2018" (Compl. ¶41). For the '163 patent, willfulness is alleged based on knowledge acquired "at least by virtue of the filing of this Complaint" (Compl. ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of legal characterization: does the defendant's process of acquiring spent cartridge bodies, manufacturing new diamond inserts, and brazing them into the original bodies constitute permissible "repair" of an existing article, or does it cross the line into impermissible "reconstruction" of a new, patented article? The outcome will likely depend on the court's assessment of the "essence" of the patented invention.
- A key question of claim scope will be determinative: what is the patented "cutting tool cartridge"? Is it the durable main body with its specific pocket geometry, or is it the entire assembly including the single-use, brazed-in diamond insert? The court's construction of this term, based on the patent's language and specification, will be central to resolving the reconstruction question.