DCT
0:17-cv-05244
RANDD Enterprises Of San Jose LLC v. Derma Art Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RANDD Enterprises of San Jose, LLC (Minnesota)
- Defendant: Derma Art Technologies, Inc. (Delaware) and Painful Pleasures, Inc. (Maryland)
- Plaintiff’s Counsel: DuFault Law Firm, P.C.
- Case Identification: 0:17-cv-05244, D. Minn., 11/28/2017
- Venue Allegations: Venue is asserted on the basis that the Defendants are corporations subject to personal jurisdiction in the District of Minnesota.
- Core Dispute: Plaintiff alleges that Defendants’ stencil ink cartridges, used for printing tattoo transfer patterns, infringe a patent related to the composition of matter for such inks and the method of producing them.
- Technical Context: The technology concerns specialized ink formulations that allow tattoo artists to use common inkjet printers to create detailed, multi-color, and water-insoluble reference stencils on a person's skin.
- Key Procedural History: The complaint alleges that Defendants have "long had actual knowledge" of the patent-in-suit, which, if proven, could form the basis for the willfulness allegation. No other prior litigation, licensing, or prosecution history is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-29 | ’613 Patent Priority Date (Provisional App. 61/329,358) |
| 2013-10-01 | ’613 Patent Issue Date |
| 2017-11-28 | 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
- Patent Identification: 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 prior art methods for creating tattoo stencils, such as hand-tracing or using thermal copiers, as laborious, slow, inaccurate, and typically limited to a single color (’613 Patent, col. 1:49-67). It also notes that materials traditionally used are not specially formulated for human skin and may not be sterile, posing health risks (col. 2:6-12).
- The Patented Solution: The invention provides a method for producing a specific ink composition that can be used in a standard, inexpensive inkjet printer to create tattoo stencils (’613 Patent, col. 2:58-62). The composition comprises a cationic dye and a solvent, and is filtered to ensure particles are small enough (less than 25 microns) not to clog the printer's print heads (col. 2:14-26). This allows for the rapid and accurate printing of complex, multi-color, and water-insoluble stencils directly from a digital file onto a transfer substrate (’613 Patent, col. 5:61-67).
- Technical Importance: This approach aimed to replace expensive, single-purpose stencil equipment with ubiquitous inkjet technology, enabling artists to create more detailed and multi-colored reference patterns than was previously practical (’613 Patent, col. 6:40-54).
Key Claims at a Glance
- The complaint does not specify which claims are asserted. Independent claim 1 is a representative 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 does not explicitly reserve the right to assert dependent claims, but its general allegations could be interpreted to encompass them.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as "stencil ink cartridges for use with tattoo transfer patterns printed by an ink jet printer" that are made and/or sold by Defendants Derma Art Technologies, Inc. and Painful Pleasures, Inc. (Compl. ¶¶ 2, 3, 10).
Functionality and Market Context
- The complaint alleges the accused products are ink cartridges containing a composition that embodies the claimed invention (Compl. ¶10). No specific product names, technical specifications, or marketing materials are provided. The complaint does not provide sufficient detail for analysis of the product's specific functionality or market positioning. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that Defendants infringe by "making, using or selling" the accused ink cartridges, which implies an allegation that Defendants practice the claimed method to create the ink (Compl. ¶10). The complaint does not provide a claim chart or specific factual allegations mapping the accused manufacturing process to the elements of claim 1. The following table summarizes the allegations at a high level based on the complaint's general assertion that the accused cartridges "embody the inventions claimed" (Compl. ¶10).
’613 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| producing a mixture comprising a cationic dye and a solvent; | The complaint alleges that the composition within the accused cartridges embodies the claimed invention, which presupposes that Defendants produce a mixture containing a cationic dye and solvent. No specific details of the accused composition are provided. | ¶10 | col. 8:2-4 |
| filtering the mixture to obtain a composition that does not have particles that are greater than 25 microns in diameter; and | The complaint's allegation that the cartridges embody the invention implicitly suggests that Defendants perform a filtering step to achieve a particle size compatible with inkjet printers. No facts regarding an actual filtering process or resulting particle size are alleged. | ¶10 | col. 8:5-8 |
| sterilizing the composition. | The complaint's general allegation implicitly suggests that Defendants perform a sterilization step as part of their manufacturing process. The complaint does not allege any specific facts concerning how or if the accused product is sterilized. | ¶10 | col. 8:9 |
- Identified Points of Contention:
- Evidentiary Questions: The central issue will be whether Plaintiff can prove, through discovery, that Defendants’ manufacturing process includes each of the claimed steps. The complaint does not provide factual allegations for any specific step—mixing a cationic dye, filtering to a specific particle size, or sterilizing the final product.
- Scope Questions: The infringement analysis will depend on the scope of the claim terms. For example, a key question is what constitutes "sterilizing" under the claim, and whether Defendants' process, whatever it may be, meets that definition.
V. Key Claim Terms for Construction
- The Term: "sterilizing"
- Context and Importance: This is an active process step required by claim 1. The outcome of the case could depend on whether this term is construed to require a specific, validated sterilization method (such as those in dependent claims 2 and 3) or if it can be met by any process that reduces microbial contaminants. Practitioners may focus on this term because the patent emphasizes hygienic use on human skin, which could support a stricter definition (’613 Patent, col. 3:1-3).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is used in claim 1 without any specific methodological limitation, suggesting its plain and ordinary meaning of rendering something free from viable microorganisms could apply.
- Evidence for a Narrower Interpretation: Dependent claims 2 and 3 explicitly recite sterilization via "gamma radiation exposure" and "ethylene oxide gas exposure" (’613 Patent, col. 8:10-14). A defendant may argue that "sterilizing" in claim 1 should be interpreted in light of these more specific disclosed examples, or that the patentee distinguished the broader term from these specific methods. The specification also discloses sterilization via "gamma radiation or EO (Ethylene Oxide) gas" (col. 5:28-30).
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement by "knowingly calculating to induce third parties to directly infringe" (Compl. ¶15) and contributory infringement by "selling components of the patented device and/or apparatus" (Compl. ¶19). However, the complaint pleads these allegations in a conclusory manner and does not provide specific facts to support the requisite knowledge or intent for inducement, or to establish that the sold cartridges are material components with no substantial non-infringing use for contributory infringement.
- Willful Infringement: The complaint alleges that Defendants "have long had actual knowledge of the ’613 patent" and that their infringement "was and continues to be willful and deliberate" (Compl. ¶13). This allegation of pre-suit knowledge is made "upon information and belief" and is not supported by any specific facts, such as prior correspondence or licensing discussions.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of pleading sufficiency and evidentiary proof: The complaint makes conclusory allegations of infringement without providing specific facts detailing how Defendants' manufacturing process meets the method limitations of claim 1. A threshold question is whether these allegations meet federal pleading standards, and the ultimate question is whether Plaintiff can obtain evidence through discovery to prove Defendants actually perform the claimed steps of mixing, filtering, and sterilizing.
- The case will also turn on claim construction: The definition of the term "sterilizing" will be critical. The court’s determination of whether this term requires a specific type of sterilization process, as exemplified in the specification, or encompasses any method of reducing microbial load will significantly impact the infringement analysis.