RevoLaze LLC v. JC Penney

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RevoLaze LLC (Delaware)
  • Defendant: J. C. Penney Company, Inc., J. C. Penney Corporation, Inc., and J. C. Penney Purchasing Corporation (Delaware/New York)
  • Plaintiff’s Counsel: Global IP Law Group
• Case Identification: 2:19-cv-00043, E.D. Tex., 07/30/2019
• Venue Allegations: Venue is alleged to be proper based on Defendant's regular and established places of business in the district, including its corporate headquarters in Plano, Texas, and numerous retail stores.
• Core Dispute: Plaintiff alleges that denim apparel sold by Defendant is manufactured abroad using patented laser scribing processes that create fashionable "worn look" effects, and that Defendant's importation and sale of these products constitutes infringement.
• Technical Context: The technology concerns methods for using computer-controlled lasers to alter the surface of textiles, such as denim, to simulate aging, abrasion, or other designs without burning or damaging the fabric.
• Key Procedural History: The complaint details extensive pre-suit communications, alleging that Plaintiff's predecessor first contacted Defendant in June 2013 to discuss licensing. Plaintiff alleges it provided specific notice of infringement of several patents-in-suit as early as June 2016, including an 80-page claim chart for one patent. The complaint also notes that Plaintiff has licensed its portfolio to 35 other companies and previously litigated against Target Corporation.

Case Timeline

Date	Event
1995-10-30	Earliest Priority Date ('444 and '196 Patents)
1997-04-29	Earliest Priority Date ('602 Patent)
1999-10-05	Earliest Priority Date ('972 Patent)
1999-11-23	'444 Patent Issued
1999-12-06	Earliest Priority Date ('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
2013-06-11	Plaintiff's predecessor allegedly first contacts Defendant about licensing
2016-06-13	Defendant allegedly notified of infringement of the '602, '505, and '972 Patents
2019-07-30	Complaint Filing Date

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

U.S. Patent No. 5,990,444 - Laser Method and System of Scribing Graphics (Issued Nov. 23, 1999)

The Invention Explained

• Problem Addressed: The patent's background describes how prior attempts to use lasers to form graphics on materials like fabric, leather, and vinyl were unsuccessful, as the laser beam would cause "complete carbonization, burnthrough and/or melting at the point of contact," resulting in undesirable holes or defects (’444 Patent, col. 1:47-53).
• The Patented Solution: The invention introduces a method based on identifying and controlling a new energy measurement called "Energy Density Per Unit Time" (EDPUT). EDPUT is defined by a formula incorporating the laser's continuous power, the area of the laser spot, and the speed of the laser relative to the material (’444 Patent, col. 2:2-10). By determining a proper range for EDPUT for a given material and graphic, and then controlling the laser's operating parameters to stay within that range, the method claims to achieve desired graphic results repeatably, without burning or melting the material (’444 Patent, Abstract; col. 2:5-15).
• Technical Importance: This control methodology enabled lasers to become a viable high-speed industrial tool for textile finishing, offering a precise and environmentally cleaner alternative to widespread practices like sandblasting or chemical washing (Compl. ¶¶17, 23).

Key Claims at a Glance

• The complaint asserts independent claims 1, 21, 33, 46, 69, and 72 (Compl. ¶47). Claim 1 is representative:
  • 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 the laser's continuous power, the area of the spot, and the speed of the laser beam,
  • wherein the material is one of a fabric, leather, 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.

U.S. Patent No. 6,140,602 - Marking of Fabrics and Other Materials Using a Laser (Issued Oct. 31, 2000)

The Invention Explained

• Problem Addressed: The patent addresses the same technical challenge as the ’444 Patent: forming designs on thin fabrics and leathers with a laser without causing undesirable damage like carbonization or burn-through (’602 Patent, col. 1:36-44).
• The Patented Solution: The patented method involves a more sophisticated control process. It begins by "determining at least one characteristic of the material" that affects its propensity to be altered by a laser. This characteristic is then used to determine the appropriate laser power and speed. A desired pattern is also stored in a controller, which then operates the laser according to both the determined power/speed settings and the stored pattern information to create the design without damage (’602 Patent, Abstract).
• Technical Importance: This approach allows the laser scribing process to be tailored to the specific properties of the material being treated, which could improve precision and process reliability for different textiles (Compl. ¶¶36-37).

Key Claims at a Glance

• The complaint asserts independent claims 99, 120, and 141 (Compl. ¶47). Claim 99 is representative:
  • 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 of the material 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...and according to said stored information indicating the desired pattern.

Multi-Patent Capsule: U.S. Patent No. 6,252,196

• Patent Identification: U.S. Patent No. 6,252,196, "Laser Method of Scribing Graphics," issued June 26, 2001.
• Technology Synopsis: The patent addresses the technical problem of "overetching" that can occur at the beginning of a laser scribing operation. The solution is a method where the laser begins moving relative to the material before the laser beam is output, thereby avoiding a concentrated energy blast at the startup point (Compl. ¶¶332, 346).
• Asserted Claims: Independent claims 5, 11, 13, and 16 are asserted (Compl. ¶47).
• Accused Features: The accused manufacturing processes for creating a "worn" look on denim garments are alleged to use the claimed startup-delay method to avoid damaging the material (Compl. ¶¶325-328, 340-342).

Multi-Patent Capsule: U.S. Patent No. 6,664,505

• Patent Identification: U.S. Patent No. 6,664,505, "Laser Processing of Materials Using Mathematical Tools," issued December 16, 2003.
• Technology Synopsis: This patent describes a method where a user can enter or change a plurality of different parameters (e.g., power). A mathematical operation is then carried out based on these parameters to form values that are individualized for different areas of a textile, and these values are then used to control a laser to change the look of the material (Compl. ¶¶385, 399).
• Asserted Claims: Independent claims 1 and 49 are asserted (Compl. ¶47).
• Accused Features: The accused processes are alleged to allow a user to enter parameters, perform a mathematical operation, and use the resulting values to control a laser to create a "worn" look on denim fabric (Compl. ¶¶393-395).

Multi-Patent Capsule: U.S. Patent No. 6,819,972

• 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.
• Technology Synopsis: The technology involves modulating the "effective applied power" of a laser within a single scan line to create varied looks. The method includes storing information about these changing power levels for multiple scan lines and then using that information to control the laser's energy density to process a material (Compl. ¶¶432, 548).
• Asserted Claims: Independent claims 1, 56, 72, 78, 83, and 92 are asserted (Compl. ¶47).
• Accused Features: The manufacturing processes for the accused denim products are alleged to store and use information about effective applied power levels that change within a single scan line to create effects like a "worn" look (Compl. ¶¶440-441).

III. The Accused Instrumentality

Product Identification

• The complaint names specific apparel products sold by Defendant, including "Arizona Basic Flex Skinny Jeans," "Arizona Med Jegging," and "Arizona Flex Skinny Extra Slim Fit / Skinny Leg" jeans (Compl. ¶50). The infringing instrumentalities are the foreign manufacturing processes used to create these garments (Compl. ¶49).

Functionality and Market Context

• The relevant feature of the accused products is their "worn," "sandblasted," or "aged" appearance, which is a popular aesthetic in the denim apparel market (Compl. ¶¶16, 100). The complaint alleges this appearance is not the result of natural wear but is created during manufacturing using the patented laser scribing processes (Compl. ¶99). To support this, the complaint provides a scanning electron microscope (SEM) image allegedly showing "CO2 laser pores in the denim fiber," which is presented as evidence of laser treatment (Compl. ¶98; p. 22). The complaint also includes a photograph of the accused "Arizona Basic Flex Skinny Jeans" to illustrate the resulting "worn" appearance (Compl. ¶100; p. 23).

IV. Analysis of Infringement Allegations

'444 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A laser method of forming a graphic on a material comprising: scribing the material with a laser beam...	The accused denim products are allegedly manufactured by a process that uses a laser beam to scribe a "worn" look graphic onto the fabric material.	¶¶98, 101	col. 1:12-14
...and controlling an energy density per unit time during the scribing, where the energy density per unit time is defined as [continuous power / (area of spot * speed)]...	The manufacturing process allegedly controls this specific, defined "energy density per unit time" by manipulating the laser's power, spot area, and speed.	¶101	col. 2:2-10
...wherein the material is one of a fabric material, a leather material, or a vinyl material...	The accused products are made of denim, which is a fabric material.	¶101	col. 1:12-14
...and wherein said energy density per unit time is controlled in a way to prevent undesired carbonization, melting or burn-through.	The process is allegedly controlled to create the desired worn look without causing holes, melting, or other damage to the denim.	¶102	col. 2:11-15

• Identified Points of Contention:
  • Evidentiary Question: Because the infringement allegation is made under 35 U.S.C. § 271(g), Plaintiff must prove the steps of the manufacturing process used abroad. A central question will be whether the presence of "laser pores" in the final product (Compl. ¶98) is sufficient evidence to establish that the foreign manufacturers performed the specific steps of controlling the mathematically defined "energy density per unit time."
  • Scope Question: A potential dispute may arise over the meaning of "controlling." Does merely pre-setting laser parameters that result in an acceptable outcome meet this limitation, or does it require a more active monitoring or feedback system that specifically tracks the EDPUT value as defined in the claim?

'602 Patent Infringement Allegations

Claim Element (from Independent Claim 99)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of altering characteristics of a material, comprising: determining at least one characteristic of the material, said at least one characteristic being of a kind which affects a propensity of the material to be physically altered by a radiation source;	The manufacturing process allegedly involves determining a characteristic of the denim fabric that affects how it will react to a laser.	¶244	col. 3:1-4
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 to the material;	Based on the determined characteristic, the process allegedly sets the laser's power and speed to achieve the "worn" look without causing damage.	¶245	col. 3:4-8
storing information in a controller indicating a desired pattern to be formed on said material; and	The desired "worn" look pattern is allegedly stored in a manufacturing system controller.	¶246	col. 4:1-3
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 controller allegedly operates the laser using both the power/speed settings derived from the material characteristic and the stored pattern data.	¶247	col. 4:4-8

• Identified Points of Contention:
  • Evidentiary Question: The allegations regarding the manufacturers' internal decision-making process (e.g., "determining a characteristic" and "using" it to set parameters) are made "on information and belief." A key point of contention will be what evidence Plaintiff can obtain through discovery from foreign manufacturers to prove that this specific, multi-step control logic was actually implemented.
  • Scope Question: The phrase "determining at least one characteristic of the material" may be a central point of claim construction. Does this require an active measurement of the specific fabric being processed, or can it be satisfied by simply identifying the fabric type (e.g., "12-ounce denim") and selecting a corresponding pre-programmed set of laser parameters?

V. Key Claim Terms for Construction

'444 Patent: "energy density per unit time"

• The Term: "energy density per unit time"
• Context and Importance: This term is the central technical concept of the '444 Patent. Its definition is explicitly provided in the claim as a specific mathematical formula. The infringement dispute will likely focus on whether the accused process controls this precise parameter, raising questions about the required nature and directness of that control.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself provides the full definition, suggesting that any process whose inputs (power, speed, spot area) are set to achieve a desired outcome falling within the formula's range practices the invention, regardless of whether the EDPUT value itself is explicitly calculated or monitored in real time. The specification describes achieving "desired results in a repeatable fashion" (’444 Patent, col. 2:8-10).
  • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes "simultaneous control" of the parameters that influence EDPUT, and the use of a "computer numerically controlled mirror system" to do so (’444 Patent, col. 2:6-10; col. 5:35-42). This may suggest that "controlling" requires more than simply choosing static values, perhaps implying an active system that calculates or targets the specific EDPUT value.

'602 Patent: "determining at least one characteristic of the material"

• The Term: "determining at least one characteristic of the material"
• Context and Importance: This is the predicate step of claim 99; without it, the subsequent steps of "using" that characteristic to set parameters cannot be met. Practitioners may focus on this term because its construction will dictate whether simply selecting a material type from a menu is sufficient, or if a more active measurement or analysis step is required to prove infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification does not provide specific examples of "determining," leaving the term open to its plain and ordinary meaning, which could include simple identification or selection. The context is a manufacturing process where efficiency may favor pre-set recipes for known material types.
  • Evidence for a Narrower Interpretation: The claim links the "determining" step to the subsequent "using" step to set power and speed, which suggests a direct causal link. This could support an interpretation that requires a more active analysis or measurement of the specific material to account for variations in properties like dye concentration or fabric density, which would inform the subsequent parameter settings.

VI. Other Allegations

• Indirect Infringement: The complaint states that Defendant infringes "directly and by inducement" (Compl. ¶47), but the factual allegations focus entirely on direct infringement under 35 U.S.C. § 271(g) through the importation, sale, and use of products made by an allegedly infringing process. The complaint does not provide sufficient detail for analysis of inducement.
• Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents-in-suit and the infringing nature of its products since at least June 13, 2016 (Compl. ¶719). This allegation is supported by extensive factual claims detailing years of licensing negotiations, multiple written notices of infringement, and Plaintiff's provision of an 80-page claim chart for the '972 Patent to Defendant's counsel (Compl. ¶¶60-89, 719-720).

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

• A core issue will be one of evidentiary proof: As this is a process patent case asserted under 35 U.S.C. § 271(g), can Plaintiff, through discovery from foreign manufacturers, obtain direct evidence that the accused processes perform the specific, claimed control steps? Or will the case turn on whether indirect evidence, such as microscopic analysis of the finished garments, is sufficient to infer the use of those claimed processes?
• A second central issue will be one of definitional scope: How will the court construe key claim limitations that describe the control process? Specifically, does "controlling an energy density per unit time" ('444 Patent) require active calculation and feedback, and does "determining at least one characteristic of the material" ('602 Patent) require measurement of the specific workpiece, or can these steps be met by selecting pre-programmed manufacturing recipes?
• A final key question will be one of subjective intent: Given the extensive pre-suit notice alleged in the complaint, including the provision of a detailed claim chart, what evidence will Defendant present to counter the allegation that its continued sale of the accused products constituted willful infringement?