DCT
4:16-cv-00017
Lindsay Engraving Inc v. Anh
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lindsay Engraving, Inc. (Nebraska)
- Defendant: Vu Ngoc Anh, Vu Thuy Duong, Le Duy Giap, and Andu Engraving Tools (Vietnam)
- Plaintiff’s Counsel: Hilgers Graben PLLC
- Case Identification: 4:16-cv-00017, D. Neb., 01/14/2016
- Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in Nebraska, have committed acts of patent infringement in the district, and have placed infringing products into the stream of commerce with the expectation that they will be purchased by Nebraska residents.
- Core Dispute: Plaintiff alleges that Defendant’s hand-held pneumatic engraving tools and associated cutter tips infringe four U.S. patents related to the tools' internal mechanisms, control systems, and cutter geometry.
- Technical Context: The technology concerns precision pneumatic impact tools used by jewelers and artisans for fine metal engraving and stone setting.
- Key Procedural History: The complaint notes that a Certificate of Correction was issued for U.S. Patent No. 6,095,256 on September 22, 2000, which reformatted the text of claim 1.
Case Timeline
| Date | Event |
|---|---|
| 2000-01-19 | U.S. Patent No. 6,095,256 Priority Date |
| 2000-08-01 | U.S. Patent No. 6,095,256 Issue Date |
| 2000-09-22 | U.S. Patent No. 6,095,256 Certificate of Correction Date |
| 2001-06-07 | U.S. Patent No. 6,508,315 Priority Date |
| 2002-06-19 | U.S. Patent No. 6,691,798 Priority Date |
| 2002-09-17 | U.S. Patent No. 7,032,586 Priority Date |
| 2003-01-21 | U.S. Patent No. 6,508,315 Issue Date |
| 2004-02-17 | U.S. Patent No. 6,691,798 Issue Date |
| 2006-04-25 | U.S. Patent No. 7,032,586 Issue Date |
| 2016-01-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,095,256 - "HAND-HELD PNEUMATIC IMPACT TOOL AND METHOD OF CONTROLLING THE SAME," issued August 1, 2000
The Invention Explained
- Problem Addressed: The patent describes prior art pneumatic engraving tools as suffering from several drawbacks, including a limited range of impact power due to reliance on a return spring, a loss of oscillation timing at certain air pressures, and excessive vibration that fatigued the user's hand and made precise tool placement difficult (’256 Patent, col. 1:44-col. 2:38).
- The Patented Solution: The invention is a pneumatic impact tool that uses a "two-step piston" moving within a housing that has an "annular shoulder." This specific geometry divides the internal cavity into three chambers, allowing air pressure alone to oscillate the piston without a mechanical spring. This design enables the tool to operate in a low-vibration "idling ready-state" and gives the user fine control over a wide range of impact energies via a foot pedal (’256 Patent, Abstract; col. 2:40-50; Fig. 2).
- Technical Importance: This approach provided engravers with enhanced control, a broader power range from very fine to heavy impacts, and reduced vibration, which are all critical for high-precision, artistic work (’256 Patent, col. 2:51-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶21).
- Essential elements of claim 1 (as corrected) include:
- A housing with a longitudinal cylindrical cavity and an annular shoulder.
- A "two-step piston" movable within the cavity.
- The piston and shoulder dividing the cavity into a head chamber, a central chamber, and a rear chamber.
- An intake port for pressurized air connected to the central chamber.
- An exhaust port connected to the head chamber.
- At least one piston port that, depending on the piston's position, connects the rear chamber to either the pressurized central chamber or the vented head chamber, creating oscillation.
- A foot-operated air flow regulating mechanism to control the supply of pressurized air.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,508,315 - "SMALL IMPACT POWER TOOL," issued January 21, 2003
The Invention Explained
- Problem Addressed: The patent explains that adjusting the impact characteristics on a prior tool (the inventor's own ’256 patent) required loosening two setscrews, a process described as taking "valuable time from the jeweler or engraver" (’315 Patent, col. 1:19-25).
- The Patented Solution: The invention introduces a more convenient adjustment mechanism. It features an "adjustable element," such as a rotating barrel, on the exterior of the tool. By manually turning this barrel, the user can quickly and easily shift the position of an internal "tool tip holder" or anvil along the tool's axis. This movement alters the piston's stroke length and impact power without requiring any tools for adjustment (’315 Patent, Abstract; col. 2:5-10; Fig. 1).
- Technical Importance: This innovation provides a "more versatile and easily altered" tool, allowing an operator to rapidly change the tool's performance to suit different engraving tasks or materials (’315 Patent, col. 2:8-10).
Key Claims at a Glance
- The complaint asserts "the claims of the '315 patent" without specifying them (Compl. ¶28). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A body containing a bore.
- A piston received within the bore and shiftable along its longitudinal axis.
- A tool tip holder received within the bore and also shiftable along the axis.
- An oscillation means for the piston.
- A piston impacting location within the body.
- An "adjustable element protruding from said body" that, when adjusted, causes the tool tip holder and piston impacting location to move along the longitudinal axis.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 6,691,798 - "VARIABLE HAND PRESSURE ACTIVATED POWER TOOL," issued February 17, 2004
- Technology Synopsis: The patent addresses the unnatural feel of foot-pedal-operated power gravers for traditionally-trained artisans accustomed to "palm push" tools. The invention replaces the foot pedal with a pressure-sensing mechanism in the tool's handle. The tool's power is activated and modulated by the amount of pressure the user exerts with their palm, creating a more intuitive and natural user experience (’798 Patent, col. 2:5-18).
- Asserted Claims: The complaint asserts "the claims of the '798 patent" (Compl. ¶35). Independent claims 1, 6, and 11 are asserted.
- Accused Features: The complaint accuses a range of products, including "AirGraver," "Hand Control Pneumatic Graver," and "Tool Handengraver," of infringement (Compl. ¶35).
Multi-Patent Capsule: U.S. Patent No. 7,032,586 - "SINGLE POINT ENGRAVING CUTTER TIP," issued April 25, 2006
- Technology Synopsis: The patent describes a problem with V-shaped engraving cutter tips where a large "heel" needed for deep cuts creates a long trailing edge that drags and mars curved lines. This invention discloses a cutter tip with secondary "relieving facets" ground onto the bottom. These facets remove most of the primary heel, leaving a narrow, parallel heel along the cutting edge that provides stability for deep cuts without the dragging problem in curves (’586 Patent, col. 1:30-44; col. 5:1-11).
- Asserted Claims: The complaint asserts "the claims of the '586 patent" (Compl. ¶42). Independent method claims 1, 5, and 9 are asserted.
- Accused Features: The complaint specifically accuses the "Uniform-Parallel Graver Point" of infringement (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are hand-held pneumatic engraving tools and accessories sold under various names, including "AirGraver," "Hand Control Pneumatic Graver," "Pneumatic Graver," "Andu Engraver," and "Uniform-Parallel Graver Point" (Compl. ¶¶ 21, 28, 35, 42).
Functionality and Market Context
- The complaint alleges these are "hand held pneumatic engraving tools and accessories" (Compl. ¶10). It states that Defendants design, manufacture, and sell these products worldwide, including in the United States, through online channels such as Etsy.com, Facebook.com, YouTube.com, and their own e-commerce website (Compl. ¶10). The complaint does not provide specific technical details or diagrams of the accused products' internal operations. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a list of accused products for each patent but does not contain claim charts or detailed allegations mapping specific product features to claim elements. The following analysis is based on the general allegations of infringement.
U.S. Patent No. 6,095,256 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having two ends and containing a longitudinal cylindrical cavity, an annular shoulder included within said longitudinal cylindrical cavity, | The accused tools are alleged to be pneumatic impact tools that possess a housing with the claimed internal features. | ¶21 | col. 5:32-48 |
| a two-step piston accommodated and moveable within said longitudinal cylindrical cavity, | The accused tools are alleged to contain a two-step piston for oscillation. | ¶21 | col. 5:35-42 |
| said two-step piston dividing said longitudinal cylindrical cavity... into: a head chamber... a central chamber... a rear chamber... | The accused tools are alleged to have an internal piston and chamber arrangement that meets the claimed definitions. | ¶21 | col. 5:32-63 |
| at least one piston port in said two-step piston, communicating permanently with said longitudinal passage and with the side surface of the smaller step of said two-step piston, | The accused tools are alleged to utilize a piston with porting to control airflow between chambers. | ¶21 | col. 5:42-45 |
| an oscillation means by which said two-step piston will oscillate under the action of said supply of pressurized air, | The accused tools are alleged to have a mechanism that causes the piston to oscillate via pressurized air as claimed. | ¶21 | col. 6:22-33 |
| a foot-operated air flow regulating mechanism connected between said supply of pressurized air and said housing... | The accused tools are alleged to be sold for use with a foot-operated control valve. | ¶21 | col. 4:43-52 |
U.S. Patent No. 6,508,315 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body containing a bore and having first and second ends, the bore having a central longitudinal axis; | The accused tools are alleged to be small impact power tools possessing a body with a bore. | ¶28 | col. 2:38-40 |
| a piston received within said bore and being shiftable relative to the body along the longitudinal axis; | The accused tools are alleged to contain a piston that moves within the bore. | ¶28 | col. 2:65 |
| a tool tip holder received within said bore and being shiftable relative to said body along the longitudinal axis of said body; | The accused tools are alleged to contain a tool tip holder that is also movable within the bore. | ¶28 | col. 2:40-44 |
| a piston impacting location within said body; | The accused tools are alleged to have a location where the internal piston delivers an impact. | ¶28 | col. 3:38-40 |
| an adjustable element protruding from said body; when said adjustable element is adjusted it will cause said tool tip holder and said piston impacting location to move... | The accused tools are alleged to have an external adjustment feature that alters the internal impacting location and power. | ¶28 | col. 2:5-10 |
Identified Points of Contention
- Factual Evidence: The primary point of contention for all asserted patents will be factual. The complaint lacks any technical evidence demonstrating how the accused products work. The core of the dispute will depend on whether discovery reveals that the accused tools, manufactured in Vietnam and sold online, actually incorporate the specific internal mechanisms (e.g., the '256 patent's three-chamber system, the '315 patent's rotating barrel adjuster, the '798 patent's hand-pressure valve) and designs (the '586 patent's cutter tip geometry) recited in the claims.
- Scope Questions: For the '256 patent, a key question is whether the accused tools achieve piston oscillation using the claimed spring-less, three-chamber, annular-shoulder-and-stepped-piston design, or if they use a different mechanism, such as a simpler design with a return spring. For the '315 patent, the question is whether the accused tools possess an "adjustable element" that functions to "alter said impacting location" as claimed, or if any adjustment mechanism they may have operates differently.
V. Key Claim Terms for Construction
For the ’256 Patent:
- The Term: "a two-step piston" (claim 1)
- Context and Importance: This term is foundational to the claimed invention, as the interaction between the piston's different diameters and the "annular shoulder" is what creates the pressure differentials necessary for spring-less oscillation. The infringement case hinges on whether the accused devices' pistons have this specific two-diameter structure. Practitioners may focus on this term because it defines the core mechanical principle distinguishing the invention from prior art that used springs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not limit the term to specific materials, dimensions, or manufacturing methods, suggesting any piston with two distinct operational diameters could meet the definition.
- Evidence for a Narrower Interpretation: The specification consistently illustrates the piston with a specific geometry in relation to the annular shoulder (e.g., ’256 Patent, Fig. 2, elements 66, 70). A defendant could argue that the term should be construed in light of this disclosed embodiment, potentially narrowing its scope.
For the ’315 Patent:
- The Term: "an adjustable element protruding from said body" (claim 1)
- Context and Importance: This term describes the key improvement of the '315 patent—the user-friendly adjustment mechanism. The outcome of the infringement analysis for this patent will likely depend on whether any feature on the accused tools meets this definition and performs the claimed function of moving the "piston impacting location."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the preferred embodiment as a "rotating barrel" (’315 Patent, col. 2:6-8) but also explicitly contemplates other forms, such as "a slide that does not use threads" (’315 Patent, col. 5:45-49). This may support a construction covering any external component that performs the adjustment function.
- Evidence for a Narrower Interpretation: A defendant may argue that the term should be limited by the embodiments shown, such as the annular, rotating nature of the barrel depicted in the figures (’315 Patent, Fig. 1, element 20), or that "protruding from" implies a specific physical relationship that the accused product lacks.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks an injunction against inducing and contributing to infringement (Compl. ¶66). However, the specific counts for infringement only allege direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶21, 28, 35, 42). The complaint does not plead the specific elements of knowledge and intent required for an indirect infringement claim, though allegations of marketing and providing instructional videos could potentially form the basis for such a claim later (Compl. ¶¶10-11).
- Willful Infringement: The complaint alleges that for each of the four patents-in-suit, Plaintiff "has given the Defendants written notice of the infringement" (Compl. ¶¶22, 29, 36, 43). These allegations of actual notice may form the basis for a claim of willful infringement for any infringing acts occurring after Defendants received the notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical evidence: The complaint makes bare allegations of infringement without providing any analysis of the accused products. The case will therefore depend almost entirely on whether discovery reveals that the accused tools, sourced from Vietnam, replicate the specific and complex mechanical systems and designs protected by the four asserted patents.
- A key follow-on question will be one of claim scope: If the accused products are not exact copies, the dispute will shift to claim construction. The case may turn on whether terms like "two-step piston" (’256 patent) and "adjustable element" (’315 patent) are construed broadly enough to read on the defendants' potentially alternative designs, or if those designs are different enough to fall outside the scope of the claims.
- Finally, a significant practical question concerns enforcement and damages: Given the defendants are individuals and an entity based in Vietnam allegedly selling through global online platforms, key challenges may arise in conducting discovery, calculating a reliable measure of damages, and enforcing any potential judgment.