Lensdigital LLC v. Rife

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: LensDigital, LLC (New Jersey)
  • Defendant: Jason Earl Rife (Florida)
  • Plaintiff’s Counsel: Bochner PLLC
• Case Identification: 3:23-cv-20530, D.N.J., 09/20/2023
• Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the plaintiff resides in the district, the defendant conducts business in the district, and a substantial part of the events giving rise to the claims allegedly occurred there.
• Core Dispute: Plaintiff alleges that its principal conceived of the ornamental design for a laser engraving device, which Defendant then improperly patented in his own name, and seeks to correct inventorship or, in the alternative, invalidate the patent.
• Technical Context: The technology involves rotary attachments for laser engravers, which enable the engraving of cylindrical objects like drink tumblers, a market segment for low-cost, customized goods.
• Key Procedural History: The dispute arises after the named inventor, Defendant Rife, allegedly sent cease-and-desist communications and made public statements accusing Plaintiff LensDigital of infringing the patent-in-suit. Plaintiff asserts these accusations are improper because its own principal is a rightful co-inventor and has assigned his rights to the Plaintiff, giving it a right to practice the patented design.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D985,640, "Rotary Laser Engraving Device," issued May 9, 2023 (the “'640 Patent”).

The Invention Explained

• Problem Addressed: The complaint centers on the market for low-cost rotary attachments for laser engraving machines, which are used to etch designs onto cylindrical items (Compl. ¶2). The implied problem is the creation of a new, original, and ornamental design for such a device.
• The Patented Solution: The ’640 Patent protects the specific visual appearance—the ornamental design—of a rotary laser engraving device. The design, as illustrated in the patent’s figures, features a frame constructed from V-slot extrusion rails, a set of V-wheels for movement, a clamping mechanism to hold an object, and a back-stopper plate (’640 Patent, FIGS. 1-10). The complaint alleges that the conception of these novel features, which define the product's overall appearance, originated with Plaintiff's principal (Compl. ¶¶ 26, 30).
• Technical Importance: The complaint alleges that this design configuration, as embodied in Plaintiff's "PiBurn Product," represents a "breakthrough" in the field of low-cost laser engraving equipment (Compl. ¶2).

Key Claims at a Glance

• The single claim of the ’640 Patent is for "the ornamental design for a rotary laser engraving device, as shown and described" (’640 Patent, CLAIM).
• The complaint alleges that Plaintiff's principal, Leonid Karchevsky, conceived of the design, which includes the following key ornamental features:
  • a vertical V-slot extrusion rail (Compl. ¶32)
  • V-wheels interfacing with the V-slot extrusion rail (Compl. ¶32)
  • a base comprising a main horizontal extrusion rail (Compl. ¶32)
  • a clamping mechanism (Compl. ¶32)
  • a back-stopper plate (Compl. ¶32)
• This is a design patent and has no dependent claims.

III. The Accused Instrumentality

Product Identification

The Plaintiff’s “PiBurn Product,” specifically its various iterations leading up to the "PiBurn 4" (Compl. ¶¶2, 24-25). It is not an "accused instrumentality" in the traditional sense of an infringing product. Rather, it is the product that Plaintiff alleges embodies the design conceived by its principal, Leonid Karchevsky, which Defendant then allegedly patented.

Functionality and Market Context

• The PiBurn Product is a rotary attachment for laser engravers, designed to hold and rotate cylindrical objects like tumblers during the engraving process (Compl. ¶2).
• The complaint alleges the PiBurn Product includes novel design features conceived by Mr. Karchevsky, such as a "vertical V-slot extrusion rail," "V-wheels," a "horizontal extrusion rail" base, a "clamping mechanism," and a "back-stopper plate" (Compl. ¶26). A photograph of an iteration of the PiBurn Product is provided in the complaint as Figure 1. (Compl. p. 6, Figure 1).
• The complaint asserts that the PiBurn Product has experienced "huge success," suggesting significant market adoption (Compl. ¶24).

IV. Analysis of Infringement Allegations

The complaint does not allege patent infringement. Instead, it alleges that the ornamental design claimed in the ’640 Patent was conceived by Plaintiff’s principal, Leonid Karchevsky. The central claim is for correction of inventorship. The following table maps the key features of the patented design to the complaint’s allegations of conception by Mr. Karchevsky.

Identified Points of Contention

• Factual Question (Conception): The primary dispute is factual: What, if any, contribution did Plaintiff's principal, Mr. Karchevsky, make to the "conception" of the ornamental design claimed in the ’640 Patent? The court will need to determine if any such contribution was significant enough to qualify him as a joint inventor.
• Evidentiary Question (Timing): The case will depend on evidence establishing that Mr. Karchevsky conceived of the key design features before or contemporaneously with the named inventor, and that the named inventor derived the design from him. Plaintiff points to a 2018 video and a 2019 crowdfunding campaign as evidence of prior conception and reduction to practice (Compl. ¶¶23-24).

V. Key Claim Terms for Construction

In a design patent case, the single claim is construed by reference to the patent's figures, not a textual description. The "claim" is the visual impression of the design as a whole. However, the complaint uses functional language to describe the ornamental features at the heart of the inventorship dispute. The interpretation of the scope of these visual features will be critical.

• The Term: "V-slot extrusion rail" (Compl. ¶26).

• Context and Importance: This feature appears to form the main structural frame of the device in both the Plaintiff's product and the patented design. Practitioners may focus on this element because its specific visual profile is a dominant part of the overall design. The dispute will question whether the specific ornamental appearance of the rail in the ’640 Patent was conceived by Mr. Karchevsky.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The figures in the ’640 Patent show a standard-looking V-slot extrusion profile, which is a common off-the-shelf component. A party could argue the design claim covers any device using this general visual element in this configuration.
  • Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the exact proportions, arrangement, and overall visual impression created by the use of these rails as depicted in Figures 1-10 of the ’640 Patent, and that any visual differences in Plaintiff's product are material.

VI. Other Allegations

• Inequitable Conduct: Plaintiff alleges that Defendant committed inequitable conduct by misrepresenting to the USPTO that he was the sole inventor and by fraudulently omitting Mr. Karchevsky as a joint-inventor (Compl. ¶4). The complaint alleges this omission was intentional and material, asserting that the patent would not have issued had the examiner known the correct inventorship (Compl. ¶¶9, 73-75).
• Tortious Interference & Trade Libel: Plaintiff alleges that Defendant intentionally interfered with its business relationships by sending false messages to customers and potential distributors (Compl. ¶¶83-84, 90). The complaint includes a screenshot of a message allegedly from the Defendant to a potential Australian distributor of Plaintiff's product, stating that Plaintiff is "selling you a product that is a copy of my product" (Compl. p. 10). Plaintiff alleges these statements are false because, as a co-owner via assignment from the alleged co-inventor, it has the right to practice the invention (Compl. ¶¶39, 91).

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

This case is not a standard patent infringement action but a dispute over ownership and the right to practice a patented design. The outcome will likely turn on the following core questions:

1. A central question of inventorship: Can Plaintiff produce sufficient corroborating evidence to prove, by clear and convincing evidence, that its principal, Leonid Karchevsky, made a contribution to the conception of the ornamental design claimed in the '640 Patent that was "not insignificant in quality, when that contribution is measured against the dimension of the full invention"?

2. A secondary question of intent: If co-inventorship is established, did the Defendant's failure to name Mr. Karchevsky on the patent application constitute inequitable conduct? This will require an inquiry into whether the Defendant knew of Mr. Karchevsky's contribution and acted with deceptive intent.

3. A determinative question for the state law claims: Do the Defendant's public and private statements accusing Plaintiff of copying and infringement constitute tortious interference and trade libel? The answer depends almost entirely on the resolution of the inventorship and ownership questions, as a co-owner of a patent cannot infringe it.