RANDD Enterprises Of San Jose LLC v. One Ink Seven LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RAAND Enterprises of San Jose, LLC (Minnesota)
  • Defendant: One Ink Seven LLC (Indiana); Electrum Supply (Indiana)
  • Plaintiff’s Counsel: DuFault Law Firm, P.C.
• Case Identification: 0:17-cv-05173, D. Minn., 11/20/2017
• Venue Allegations: Venue is alleged to be proper because Defendants are subject to personal jurisdiction in the district, based on transacting business and causing injury within Minnesota.
• Core Dispute: Plaintiff alleges that Defendants' stencil ink cartridges for inkjet printers infringe a patent related to the composition and method of manufacturing ink for creating tattoo transfer patterns.
• Technical Context: The technology concerns specialized ink formulations that enable standard inkjet printers to produce detailed, multi-color temporary stencils for tattoo artists, replacing traditional, more limited stenciling methods.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date	Event
2011-04-29	U.S. Patent No. 8,545,613 Priority Date
2013-10-01	U.S. Patent No. 8,545,613 Issue Date
2017-11-20	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

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 describes traditional methods for creating tattoo stencils, such as hand tracing or using thermal copiers, as "laborious, slow, and possibly inaccurate" and reliant on "expensive specialty transfer papers" that typically only produce a single color outline ('613 Patent, col. 1:63 - col. 2:3). Furthermore, it notes that the dyes used in these traditional methods are not specifically formulated for use on human skin, "thereby possibly leading to infection or other health concerns" ('613 Patent, col. 2:8-11).
• The Patented Solution: The invention provides a method for producing an ink composition that is compatible with common inkjet printers. This allows artists to print detailed, multi-color stencils directly from a computer onto a substrate for transfer to skin ('613 Patent, col. 2:60-64). The method involves creating a mixture of a cationic dye and a solvent, and then filtering it to ensure particles are small enough (e.g., less than 25 microns) not to clog the printer's print heads ('613 Patent, col. 2:15-28, col. 8:1-7). The resulting composition is described as substantially water-insoluble once applied to the skin, which is necessary for the stencil to remain intact during the tattooing process ('613 Patent, col. 7:3-5).
• Technical Importance: This technology allows for the creation of tattoo stencils "easily, quickly and accurately using a common and inexpensive ink jet printer," moving beyond the limitations of prior art methods ('613 Patent, col. 2:60-63).

Key Claims at a Glance

• The complaint does not identify specific claims, alleging infringement of "the '613 patent" generally (Compl. ¶10). Independent claim 1 is a method claim.
• Independent Claim 1:
  • 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 is silent on the assertion of any dependent claims.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "stencil ink cartridges for use with tattoo transfer patterns printed by an ink jet printer" made and sold by Defendants One Ink Seven LLC and Electrum Supply (Compl. ¶2, ¶3, ¶10).

Functionality and Market Context

The complaint alleges that Defendants make and sell these cartridges, and that the "composition contained within said stencil ink cartridges embody the inventions claimed in the '613 patent" (Compl. ¶10). The complaint does not provide further technical detail regarding the specific formulation of the ink, the manufacturing process for the ink, or the structure of the cartridges themselves.

IV. Analysis of Infringement Allegations

The complaint makes only a general allegation of infringement, stating that Defendants' "stencil ink cartridges" contain a composition that "embody[s] the inventions claimed in the '613 patent" (Compl. ¶10). It does not contain a claim chart or specific factual allegations mapping the accused products to the limitations of any specific claim. The analysis below is therefore based on the infringement theory implied by the complaint's allegations against the '613 patent's independent claim 1.

No probative visual evidence provided in complaint.

'613 Patent Infringement Allegations

The complaint's theory of direct infringement alleges that Defendants infringe by "making, using or selling... stencil ink cartridges" (Compl. ¶10). However, independent claim 1 of the '613 patent is a method claim directed to producing a composition, reciting the steps of "producing a mixture," "filtering the mixture," and "sterilizing the composition" ('613 Patent, col. 8:1-10). Direct infringement of this claim would require evidence that an accused party performs all of the claimed method steps. The complaint does not allege facts showing that Defendants perform these specific manufacturing steps. Instead, it focuses on the act of selling the final product (the ink cartridge).

Identified Points of Contention

• Scope Questions: A primary issue for the court may be the apparent mismatch between the complaint's allegation of direct infringement via the sale of a product and the patent's assertion of a method-of-manufacturing claim. The case may raise the question of whether Plaintiff's direct infringement theory is viable, or if the dispute is more appropriately centered on the allegations of indirect infringement.
• Technical Questions: Should the case proceed on the direct infringement theory, a key question will be whether Plaintiff can provide evidence that Defendants' manufacturing process includes discrete steps that meet the "filtering" and "sterilizing" limitations as defined in the patent. The complaint itself provides no factual basis to assess this.

V. Key Claim Terms for Construction

The Term: "sterilizing the composition" (from Claim 1)

• Context and Importance: This is the final, affirmative step in the claimed method. Its construction is critical because the required level of sterilization could be a key point of differentiation. Practitioners may focus on this term to determine whether it requires a formal, medical-grade process or if any general antimicrobial treatment suffices.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is not limiting. The specification presents "gamma radiation or EO (Ethylene Oxide) gas" as examples, suggesting these are not the only possible methods ('613 Patent, col. 5:29-30). Dependent claims 2 and 3 specifically recite these two methods, which, under the doctrine of claim differentiation, may suggest the base term in claim 1 is broader.
  • Evidence for a Narrower Interpretation: The specification states that the articles of manufacture "may be sterilized for hygienic use on human skin" ('613 Patent, col. 3:1-2). This context of "hygienic use" could support an argument that "sterilizing" implies a specific level of efficacy suitable for products that facilitate a process involving breaking the skin.

The Term: "filtering the mixture to obtain a composition that does not have particles that are greater than 25 microns in diameter" (from Claim 1)

• Context and Importance: This limitation defines a key physical characteristic of the final ink composition, which the patent links to the functional requirement of preventing inkjet print head clogs ('613 Patent, col. 5:8-10). The dispute will likely center on the evidentiary requirements to prove this negative limitation is met by the accused manufacturing process.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim focuses on the result (a composition without particles >25 microns), not the specific filtering apparatus. This could support a reading that any process achieving this outcome infringes.
  • Evidence for a Narrower Interpretation: A defendant could argue this limitation requires a deliberate, affirmative filtering step intended to achieve this outcome, rather than an incidental separation that might occur in a standard mixing process. The patent describes a multi-step filtering process as an exemplary method, which could be argued to inform the meaning of the single "filtering" step in claim 1 ('613 Patent, col. 5:18-23).

VI. Other Allegations

Indirect Infringement

The complaint pleads both induced and contributory infringement.

• It alleges Defendants are "actively inducing the infringement... by knowingly calculating to induce third parties to directly infringe" (Compl. ¶15).
• It also alleges Defendants are "actively contributorily infringing... by selling components of the patented device and/or apparatus for practicing the method of the invention" (Compl. ¶19).
• The complaint does not provide specific facts to support these allegations, such as references to user instructions, marketing materials, or an analysis of the ink's suitability for non-infringing uses.

Willful Infringement

The complaint alleges that Defendants "have long had actual knowledge of the '613 patent" and that their infringement is "willful and deliberate" (Compl. ¶13). It does not allege any specific facts regarding how or when Defendants acquired this knowledge.

VII. Analyst’s Conclusion: Key Questions for the Case

• A threshold issue will be one of infringement theory: can Plaintiff sustain a direct infringement claim based on the sale of a product (an ink cartridge) when the asserted independent claim is a method of manufacturing a composition? The resolution of this question may determine whether the case hinges on proving Defendants' own actions or shifts focus entirely to the indirect infringement allegations.
• A key evidentiary question will be one of process verification: assuming the direct infringement claim proceeds, can Plaintiff produce evidence that Defendants' manufacturing process includes distinct steps that satisfy the "filtering" and "sterilizing" limitations of Claim 1? The construction of "sterilizing" in the context of a tattoo-related product will likely be a central point of dispute.
• A third core issue will be the sufficiency of the pleadings: the complaint's allegations for both indirect and willful infringement are conclusory. A significant question will be whether Plaintiff can substantiate these claims with specific facts demonstrating Defendants' knowledge, intent, and lack of substantial non-infringing uses for their products, as will be required as the case progresses.