DCT

1:17-cv-02417

RevoLaze LLC v. Target Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-02417, N.D. Ohio, 11/20/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Ohio because Target has a regular and established place of business in the district and has committed acts of infringement there, including offering for sale and selling products manufactured by the allegedly infringing methods.
  • Core Dispute: Plaintiff alleges that Defendant’s denim garments are manufactured by foreign suppliers using patented laser scribing processes to create "worn" or faded aesthetic effects, and that Defendant infringes by importing and selling these garments in the U.S.
  • Technical Context: The technology involves using computer-controlled lasers to alter the surface of textiles, particularly to simulate wear patterns on denim, as a faster, safer, and more environmentally friendly alternative to traditional methods like sandblasting and chemical washing.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement of at least three of the patents-in-suit as early as November 23, 2016, approximately one year before filing the complaint. This notice allegedly included a 75-page claim chart detailing infringement of one of the asserted patents. The complaint also notes that Plaintiff has licensed its patent portfolio, including the patents-in-suit, to 32 other companies in the denim industry.

Case Timeline

Date Event
1995-10-30 Earliest Priority Date for ’444 and ’196 Patents
1997-04-29 Priority Date for ’602 Patent
1999-10-05 Priority Date for ’972 Patent
1999-11-23 ’444 Patent Issued
1999-12-06 Priority Date for ’505 Patent
2000-10-31 ’602 Patent Issued
2001-06-26 ’196 Patent Issued
2003-12-16 ’505 Patent Issued
2004-11-16 ’972 Patent Issued
2016-07-08 Plaintiff purchases accused Target products
2016-11-23 Plaintiff sends first notice letter to Target
2017-04-19 Plaintiff purchases additional accused Target products
2017-08-10 Plaintiff sends second notice letter to Target
2017-11-20 Complaint Filed

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

U.S. Patent No. 5,990,444 - Laser Method and System of Scribing Graphics

Issued November 23, 1999

The Invention Explained

  • Problem Addressed: The patent’s background section states that prior attempts to use lasers to form graphics on materials like fabric, leather, and vinyl resulted in undesirable "complete carbonization, burnthrough and/or melting" (’444 Patent, col. 1:47-54). Traditional non-laser methods such as dyeing and printing were described as costly and environmentally problematic (’444 Patent, col. 1:35-39).
  • The Patented Solution: The invention proposes a method centered on controlling a new metric called "Energy Density Per Unit Time" (EDPUT), which is defined as a function of the laser’s continuous power, the area of the laser spot on the material, and the speed of the laser relative to the material (’444 Patent, col. 2:5-15, 2:30-34). By identifying and maintaining the EDPUT within a specific range for a given material, the method claims to scribe graphics repeatably without causing the damage that plagued prior art laser methods (’444 Patent, Abstract). The specification explains that parameters such as the laser's focus distance can be adjusted to alter the spot size and thereby control the EDPUT (’444 Patent, col. 6:45-65).
  • Technical Importance: This control method enabled the use of lasers to create detailed aesthetic effects on textiles efficiently and safely, providing an alternative to hazardous industrial processes like sandblasting and chemical-intensive enzyme washing (Compl. ¶18-19).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 21, 33, 46, 69, and 72 (Compl. ¶32). Claim 1 is representative and includes the following essential elements:
    • A laser method of forming a graphic on a material comprising:
    • scribing the material with a laser beam and controlling an energy density per unit time during the scribing,
    • where the energy density per unit time is defined as a function of continuous power, area of spot, and speed,
    • wherein the material is one of a fabric material, a leather material, or a vinyl material,
    • and wherein said energy density per unit time is controlled in a way to prevent undesired carbonization, melting or burn-through.
  • The complaint also asserts numerous dependent claims (Compl. ¶32).

U.S. Patent No. 6,140,602 - Marking of Fabrics and Other Materials Using a Laser

Issued October 31, 2000

The Invention Explained

  • Problem Addressed: The patent addresses the same technical problem as the ’444 Patent: the difficulty of using lasers to mark thin fabrics and leathers without causing damage such as carbonization or complete penetration (’602 Patent, col. 1:31-41).
  • The Patented Solution: The patented solution is a systematic method where one first determines a characteristic of the material that affects how it will be altered by a laser. This characteristic is then used to determine the specific laser parameters (e.g., power and speed) required to produce a desired change without damage. Finally, a controller uses a stored digital pattern to control the laser according to these predetermined parameters, ensuring a repeatable process. (’602 Patent, Abstract).
  • Technical Importance: This invention provides a framework for creating consistent, high-quality laser-etched designs by systematically linking material properties to process parameters, a key step for scalable manufacturing (Compl. ¶12).

Key Claims at a Glance

  • The complaint asserts independent claims 99, 120, and 141 (Compl. ¶32). Claim 99 is representative and includes the following essential elements:
    • A method of altering characteristics of a material, comprising:
    • determining at least one characteristic of the material...which affects a propensity of the material to be physically altered by a radiation source;
    • using said at least one characteristic to determine a radiation source power and speed of movement...that will cause a desired structural change...without undesired damage...;
    • storing information in a controller indicating a desired pattern to be formed on said material; and
    • using said controller to control said radiation source according to said determined radiation source power and speed of movement...and according to said stored information indicating the desired pattern.
  • The complaint also asserts numerous dependent claims (Compl. ¶32).

U.S. Patent No. 6,252,196 - Laser Method of Scribing Graphics

  • Patent Identification: U.S. Patent No. 6,252,196, "Laser Method of Scribing Graphics", issued June 26, 2001 (Compl. ¶29).
  • Technology Synopsis: The patent addresses the problem of "overetching" or burning at the start of a laser path, where the laser's energy is concentrated before movement begins. The proposed solution is a method where the laser begins moving relative to the material before the laser beam is activated, thereby preventing a damaging concentration of energy at the startup point.
  • Asserted Claims: Independent claims 5, 11, 13, and 16 are asserted (Compl. ¶32).
  • Accused Features: The complaint alleges that the processes used to manufacture Target's garments employ this controlled startup method to create "worn" looks without causing burn-through (Compl. ¶299, ¶309).

U.S. Patent No. 6,664,505 - Laser Processing of Materials Using Mathematical Tools

  • Patent Identification: U.S. Patent No. 6,664,505, "Laser Processing of Materials Using Mathematical Tools", issued December 16, 2003 (Compl. ¶30).
  • Technology Synopsis: This patent describes a method for creating complex, mathematically-generated patterns on textiles. The system allows a user to input various parameters, which are then used in a mathematical operation to generate individualized values for different areas of the material; a laser is then controlled according to these values.
  • Asserted Claims: Independent claims 1 and 49 are asserted (Compl. ¶32).
  • Accused Features: The complaint alleges that the manufacturing processes for the accused garments use a system where user-entered parameters and mathematical operations control the laser to create the "worn" look (Compl. ¶360-362).

U.S. Patent No. 6,819,972 - Material Surface Processing With a Laser That Has a Scan Modulated Effective Power to Achieve Multiple Worn Looks

  • Patent Identification: U.S. Patent No. 6,819,972, "Material Surface Processing With a Laser That Has a Scan Modulated Effective Power to Achieve Multiple Worn Looks", issued November 16, 2004 (Compl. ¶31).
  • Technology Synopsis: The invention discloses a method of modulating the "effective applied power" of a laser within a single scan line to create varied looks like simulated abrasion or whiskers. This is accomplished by storing information about different power levels for various scan lines and using that information to control the laser's energy density as it moves.
  • Asserted Claims: Independent claims 1, 56, 72, 78, 83, and 92 are asserted, among others (Compl. ¶32).
  • Accused Features: The complaint alleges the accused manufacturing processes involve storing and using information to vary the laser's effective power within a single scan line to achieve the desired "worn" appearance (Compl. ¶407-408).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are denim garments imported and sold by Target, including products from the "Mossimo," "Cat & Jack," and other brands, such as "Mossimo Women's Midrise Crop Boyfriend Dark Wash" and "Mossimo Men's Slim Straight Vintage Indigo" (Compl. ¶34).

Functionality and Market Context

  • The relevant functionality of the accused products is not their use as apparel, but rather the aesthetic "worn," "faded," or "sandblasted" appearance of the denim fabric (Compl. ¶67). The complaint alleges these visual effects are the result of manufacturing processes practiced abroad by Target's suppliers in countries including Mexico and Bangladesh (Compl. ¶34, ¶62). The complaint asserts that these laser-based finishing techniques are an important innovation in the denim industry, replacing older, more hazardous methods and allowing for rapid, precise production of fashionable garments (Compl. ¶17-19). An image of one accused product shows a typical "worn" appearance with fading on the thighs (Compl. p. 15).

IV. Analysis of Infringement Allegations

’444 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
scribing the material with a laser beam... The manufacturers allegedly treated the denim garments with lasers. The complaint offers as evidence a scanning electron microscope (SEM) image showing "CO2 laser pores in the denim fiber." (Compl. p. 14). ¶65-66, ¶68 col. 1:14-16
...and controlling an energy density per unit time during the scribing, where the energy density per unit time is defined as... [a function of] continuous power...area of spot...and speed... On information and belief, the manufacturers controlled the laser's power, spot area, and speed to manage the energy density per unit time applied to the fabric. ¶68 col. 2:30-34
...wherein the material is one of a fabric material, a leather material, or a vinyl material... The accused products are made of "denim fabric material." ¶68 col. 6:52-53
...and wherein said energy density per unit time is controlled in a way to prevent undesired carbonization, melting or burn-through. On information and belief, the manufacturers controlled the process to achieve the "worn" appearance without creating holes or burning the fabric. The provided photo of the finished product shows a faded look without such damage. (Compl. p. 15). ¶69 col. 2:11-14
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint's allegations regarding the specific control of the EDPUT formula are made "on information and belief." A central question for the court will be whether the physical evidence presented—primarily an SEM image showing "laser pores" (Compl. p. 14)—is sufficient at the pleading stage to plausibly suggest that the manufacturers performed the specific, controlled process claimed, rather than just using a laser in some manner.
    • Scope Questions: The dispute may turn on the definition of "controlling." It raises the question of whether simply adjusting laser power and speed to achieve a desired visual outcome inherently constitutes "controlling an energy density per unit time" as defined by the patent's specific formula, or if it requires a more direct calculation and targeting of that precise metric.

’602 Patent Infringement Allegations

Claim Element (from Independent Claim 99) Alleged Infringing Functionality Complaint Citation Patent Citation
determining at least one characteristic of the material...which affects a propensity of the material to be physically altered by a radiation source; On information and belief, the manufacturers determined a characteristic of the denim fabric that affects its response to laser treatment. ¶211 col. 2:36-39
using said at least one characteristic to determine a radiation source power and speed of movement...that will cause a desired structural change...without undesired damage...; On information and belief, the manufacturers used that determined characteristic to set the laser's power and speed to create the "worn" look without damaging the denim. ¶212 col. 2:9-15
storing information in a controller indicating a desired pattern to be formed on said material; and On information and belief, the manufacturers stored a digital file of the desired "worn" look pattern in a laser system controller. ¶213 col. 5:10-14
using said controller to control said radiation source according to said determined radiation source power and speed of movement...and according to said stored information indicating the desired pattern. On information and belief, the manufacturers used the controller to execute the stored pattern using the pre-determined power and speed settings. ¶214 col. 2:15-18
  • Identified Points of Contention:
    • Technical Questions: A key factual question will be whether the accused manufacturing processes actually involve the discrete, sequential steps of first "determining" a material characteristic and then "using" that characteristic to determine laser settings. The court may need to consider whether a standard production setup for denim involves this level of material analysis for each batch, or if a more generic, pre-set process is used that does not map to the claim's specific sequence of operations.
    • Scope Questions: The interpretation of "determining at least one characteristic" will be critical. This raises the question of whether simply identifying a fabric as "12-ounce denim" satisfies this limitation, or if a more quantitative analysis (e.g., measuring dye density or fabric reflectivity) is required by the claim language.

V. Key Claim Terms for Construction

  • For the ’444 Patent:

    • The Term: "controlling an energy density per unit time"
    • Context and Importance: This term is the central inventive concept of the ’444 Patent. The claim provides an explicit mathematical definition for "energy density per unit time." The dispute will likely center on what actions constitute "controlling" this specific, defined variable.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification describes the invention as teaching the "simultaneous control of the laser operating parameters which influence this energy measurement" (’444 Patent, col. 2:8-11). This language could support an argument that any intentional manipulation of the inputs (power, speed, spot size) to achieve a desired result constitutes "control" of the output (EDPUT).
      • Evidence for a Narrower Interpretation: The patent repeatedly refers to EDPUT as a "new energy measurement" (’444 Patent, col. 2:6-8). This framing may support an argument that "controlling" requires a process that specifically calculates and targets this metric, rather than one that merely adjusts its constituent variables based on trial and error to achieve a visual effect.

  • For the ’602 Patent:

    • The Term: "determining at least one characteristic of the material"
    • Context and Importance: This is the foundational step of independent claim 99. Whether the accused process infringes depends entirely on whether this step is performed before laser parameters are set. Practitioners may focus on this term because its interpretation will define whether a routine manufacturing choice (e.g., selecting a type of denim) meets the claim limitation or if a more active, technical analysis is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides examples of material characteristics such as "different colors and weights of material" (’602 Patent, col. 2:36-38). This could support an argument that simply identifying the type and weight of denim to be processed satisfies the "determining" step.
      • Evidence for a Narrower Interpretation: The claim requires using the determined characteristic to then determine the power and speed. This two-step causal link suggests "determining" is more than a passive identification. It may imply an active analysis or measurement that provides data used to calculate the correct operational parameters for the laser.

VI. Other Allegations

  • Indirect Infringement: The complaint includes a general allegation of inducement (Compl. ¶32), but does not provide sufficient detail for analysis of indirect infringement. The factual allegations primarily support a claim of direct infringement under 35 U.S.C. § 271(g) based on the importation of products made by a patented process.
  • Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents-in-suit since at least November 23, 2016 (Compl. ¶695). This knowledge is based on pre-suit notice letters, one of which allegedly included a 75-page claim chart for the ’972 Patent and identified the ’602 and ’505 Patents, and Defendant’s alleged continued importation and sale of the accused products thereafter (Compl. ¶37-40, ¶58).

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

  • A central evidentiary issue will be one of process verification: The infringement allegations for all five patents rely heavily on "information and belief" regarding the specific, multi-step control processes used by foreign manufacturers. The case will likely depend on whether discovery uncovers evidence that these manufacturers' actual methods map onto the precise sequences recited in the claims, or if they use a more generalized or trial-and-error approach.
  • A key legal issue will be one of definitional scope: The dispute may turn on the construction of foundational claim terms. Can "controlling an energy density per unit time" (’444 Patent) be satisfied by any process that adjusts laser settings to achieve a non-damaging visual effect, or does it require a process that explicitly calculates and targets the patent's specific formula? Similarly, what level of technical assessment is required to meet the "determining at least one characteristic" step of the ’602 Patent?
  • A final question will be one of causation and proof: Can the presence of "laser pores" on a finished garment, as shown in the complaint’s SEM images, serve as sufficient circumstantial evidence to plausibly infer that the highly specific, computer-controlled methods claimed in the patents-in-suit were necessarily the ones used to create them?