DCT

2:19-cv-00043

RevoLaze LLC v. JC Penney

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-00043, E.D. Tex., 02/14/2019
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant JCPenney maintains regular and established places of business, including numerous retail stores, within the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that denim garments sold by Defendant under its "Arizona Jeans Co." brand are manufactured abroad using laser scribing processes that infringe five U.S. patents.
  • Technical Context: The technology involves using computer-controlled lasers to create patterns, such as a "worn look," on textiles as a faster and more environmentally friendly alternative to traditional methods like sandblasting or chemical washing.
  • Key Procedural History: The complaint details extensive pre-suit correspondence beginning in June 2013, including a June 2016 notice letter that allegedly included an 80-page claim chart for one of the patents-in-suit. Plaintiff also references prior litigation against Target Corporation, which allegedly settled. These allegations form the basis of a claim for willful infringement.

Case Timeline

Date Event
1995-10-30 Earliest Priority Date Asserted (’444 Patent)
1997-04-29 Earliest Priority Date Asserted (’602 Patent)
1999-11-23 U.S. Patent No. 5,990,444 Issued
2000-10-31 U.S. Patent No. 6,140,602 Issued
2001-06-26 U.S. Patent No. 6,252,196 Issued
2003-12-16 U.S. Patent No. 6,664,505 Issued
2004-11-16 U.S. Patent No. 6,819,972 Issued
2013-06-11 Plaintiff's predecessor allegedly approaches Defendant for licensing
2016-06-13 Plaintiff sends notice letter to Defendant alleging infringement
2019-02-14 Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: The patent addresses the technical difficulty of using lasers to create graphics on materials like fabric, leather, and vinyl, which historically resulted in undesired "carbonization, burnthrough and/or melting" of the material (’444 Patent, col. 1:47-54).
  • The Patented Solution: The invention proposes a method based on identifying and controlling a new metric called "Energy Density Per Unit Time" (EDPUT). By simultaneously controlling the laser's continuous power, spot area, and speed relative to the material, the EDPUT can be kept within a predetermined range that achieves a visible graphic without causing damage (’444 Patent, col. 2:1-15, Abstract). This control allows for the creation of graphics in a "repeatable fashion" (’444 Patent, col. 2:9-10).
  • Technical Importance: The claimed method enabled the use of lasers for high-speed, precise, and repeatable textile manufacturing, offering an alternative to costly and environmentally problematic processes like sandblasting or chemical washing (Compl. ¶¶16, 22-23).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 21, 33, 46, and 69 (Compl. ¶46).
  • The essential elements of independent claim 1 include:
    • 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 laser spot, and the speed of the laser beam;
    • 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 dependent claims 2, 3, 8, 11, 12, 34, 70, and 72 (Compl. ¶46).

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

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of forming designs on thin fabrics and leathers with a laser without causing damage like carbonization or burn-through, a problem also addressed by the related ’444 Patent (’602 Patent, col. 1:35-42).
  • The Patented Solution: This invention focuses on controlling the speed of the laser relative to the material. It discloses a method of first determining a "maximum speed" above which a desired change will not occur and a "threshold speed" below which undesired damage will occur. The laser is then operated at a speed within this determined range to form the design without damaging the material (’602 Patent, claim 1). The process involves understanding a material's specific characteristics to define this operational window (Compl. ¶35).
  • Technical Importance: The invention provides a specific control methodology—calibrating a safe and effective speed range for a given material and power—to enable precise and repeatable laser marking on delicate surfaces.

Key Claims at a Glance

  • The complaint asserts independent claims 99, 112, 120, and 141 (Compl. ¶46).
  • The essential elements of independent claim 99 include:
    • A method of altering characteristics of a material, comprising:
    • determining at least one characteristic of the material which affects its propensity to be altered by a radiation source;
    • using that 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; and
    • using the controller to control the radiation source according to the determined power, speed, and stored pattern information.
  • The complaint also asserts dependent claims 122, 123, 124, 142, and 143 (Compl. ¶46).

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

  • Technology Synopsis: This patent addresses the problem of "overetching" material when a laser starts or stops moving. The claimed solution involves modifying a digital pattern to change elements likely to cause damage and controlling the laser to begin outputting its beam only after it has started moving relative to the material (Compl. ¶38).
  • Asserted Claims: 5, 11, 13, 14, and 16 (Compl. ¶46).
  • Accused Features: The complaint alleges that the processes used to manufacture JCPenney's denim garments infringe by employing methods to avoid material damage during laser scribing (Compl. ¶¶444-447).

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

  • Technology Synopsis: This patent describes a method where a user enters parameters into a system, which then performs a mathematical operation to generate values. These values are then used to control a laser to change the look of a textile material, such as creating a "worn" pattern (Compl. ¶41).
  • Asserted Claims: 1, 49, 50, and 51 (Compl. ¶46).
  • Accused Features: The complaint alleges that the manufacturing processes for the accused products use mathematical operations based on input parameters to control a laser and create designs (Compl. ¶¶512-514).

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"

  • Technology Synopsis: This patent focuses on achieving multiple "worn looks" by modulating the laser's effective applied power. The method involves storing information about power levels for a plurality of scan lines—where the power can change even within a single scan line—and then using a laser to process material by controlling the energy density based on those stored levels (Compl. ¶44).
  • Asserted Claims: 1, 2, 4, 5, 6, 11, 12, 16, 17, 18, 19, 56, and others (Compl. ¶46).
  • Accused Features: The complaint alleges the accused products are made by processes that store and use information about effective applied power levels for laser scan lines to create worn looks (Compl. ¶¶559-560).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are denim garments imported and sold by JCPenney, specifically including "Arizona Basic Flex Skinny Jeans," "Arizona Med Jegging," and "Arizona Flex Skinny Extra Slim Fit / Skinny Leg" products (Compl. ¶¶49, 241). The complaint asserts infringement under 35 U.S.C. § 271(g), which pertains to the importation or sale of a product made by a process patented in the U.S. (Compl. ¶98).

Functionality and Market Context

  • The complaint alleges that these garments are manufactured overseas using laser processes to create a "worn" or distressed appearance (Compl. ¶103). To support this, the complaint provides a Scanning Electron Microscope (SEM) image purporting to show "CO2 laser pores in the denim fiber in the 'worn' areas of the garment" (Compl. ¶102). A provided SEM image depicts microscopic pores on a textile fiber, which the complaint alleges are indicative of laser treatment (Compl. p. 21). The accused products are part of JCPenney's proprietary "Arizona Jeans Co." brand (Compl. ¶5). A photograph of the accused "Arizona Basic Flex Skinny Jeans" shows a faded, "worn" appearance on the thigh area (Compl. p. 22).

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... Manufacturers of the accused jeans allegedly used a laser beam to create the "worn" appearance, as evidenced by SEM images showing pores on the denim fibers. ¶102, ¶105 col. 1:12-15
...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 an energy density per unit time that is a function of the laser's power output, spot area, and speed relative to the material during the scribing process. ¶105 col. 2:26-42
...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 energy density per unit time to create the desired "worn" look without burning through or otherwise damaging the final saleable garment. ¶106 col. 2:11-15
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint's allegations regarding the control of specific laser parameters are made "on information and belief" (Compl. ¶¶105, 106). A central question will be what evidence Plaintiff can obtain from third-party overseas manufacturers to prove that they practiced the specific method of calculating and controlling "EDPUT" as defined by the claim's formula, rather than using a different, less-defined laser-abrading technique.
    • Technical Questions: What level of proof is required to demonstrate that the observed "laser pores" (Compl. p. 21) are the result of the claimed controlled process? The analysis will likely focus on whether the existence of a finished, undamaged garment inherently suggests that a controlled process meeting the claim limitations was used.

’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 characteristics of the denim fabric that influence how it is affected by a laser. ¶339 col. 1:44-51
using said at least one characteristic to determine a radiation source power and speed...that will cause a desired structural change...without undesired damage; On information and belief, the manufacturers used these determined material characteristics to set the laser's power and speed to achieve the "worn" look without damaging the garment. ¶340 col. 1:52-57
storing information in a controller indicating a desired pattern to be formed...; and On information and belief, the manufacturers stored a digital representation of the desired "worn" look pattern in a controller for the laser system. ¶341 col. 2:37-43
using said controller to control said radiation source according to said determined...power and speed...and...said stored information indicating the desired pattern. On information and belief, the manufacturers used the controller to operate the laser according to the pre-determined power and speed parameters and the stored digital pattern to create the worn look. ¶342 col. 2:44-50
  • Identified Points of Contention:
    • Scope Questions: A question for claim construction and infringement may be what actions satisfy the active step of "determining" a material characteristic. Does selecting a pre-existing machine setting for "denim" meet this limitation, or does it require a more specific analysis of the particular fabric batch being processed?
    • Evidentiary Questions: As with the ’444 Patent, the allegations are based on "information and belief." The case may turn on whether discovery can establish that the overseas manufacturers performed the specific sequence of "determining," "using," and "storing" recited in the claim.

V. Key Claim Terms for Construction

  • The Term: "energy density per unit time" (’444 Patent, claim 1)

  • Context and Importance: This term is the central technical concept of the ’444 Patent. The claim itself provides a mathematical definition. The infringement analysis will hinge on whether the accused process controls this specific, defined metric. Practitioners may focus on this term because its explicit definition in the claim provides a clear, but potentially narrow, boundary for infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the constituent parameters (power, spot area, speed) as influencing EDPUT in an "interactive manner," which may suggest that direct control of the final EDPUT value is not required so long as the underlying parameters are controlled with the goal of managing it (’444 Patent, col. 2:20-21).
    • Evidence for a Narrower Interpretation: The claim states that "energy density per unit time is defined as:" followed by a specific formula. This explicit definition strongly suggests that the term is limited to this precise mathematical relationship, and any process that does not control for this exact formula would not infringe (’444 Patent, col. 2:31-42).

  • The Term: "determining at least one characteristic of the material" (’602 Patent, claim 99)

  • Context and Importance: This is the foundational step of the method claimed in the ’602 Patent. The infringement analysis depends on whether the accused manufacturers performed an act of "determining" or simply used generic, pre-set parameters without analysis. Practitioners may focus on this term because it requires an action by the infringer that may be difficult to prove from the final product alone.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent does not specify how the characteristic must be determined. A plaintiff could argue that any step that accounts for the material type, such as an operator selecting a "heavy denim" setting on a machine, constitutes "determining" a characteristic. The specification is written in general terms and does not limit the method of determination (’602 Patent, col. 1:44-51).
    • Evidence for a Narrower Interpretation: A defendant could argue that "determining" requires an affirmative, empirical step of analysis or measurement for a specific batch of material, rather than simply selecting a pre-programmed recipe. The claim language frames it as an active step performed for a "specific material" (’602 Patent, claim 1).

VI. Other Allegations

  • Indirect Infringement: The complaint makes a passing reference to infringement "by inducement" (Compl. ¶46), but the infringement counts are structured as direct infringement under 35 U.S.C. § 271(g) for importing and selling products made by a patented process. The complaint does not plead specific facts to support a separate theory of inducement, such as allegations that JCPenney instructed its manufacturers on how to perform the infringing methods.
  • Willful Infringement: The complaint makes detailed allegations to support willfulness. It alleges that Defendant had knowledge of the patents-in-suit and the infringing nature of its products since at least June 13, 2016, when Plaintiff's counsel sent a notice letter identifying the ’602, ’505, and ’972 patents (Compl. ¶¶70, 847). The complaint further alleges that this letter included an 80-page claim chart for the ’972 Patent, and that Defendant continued its accused activities despite this knowledge (Compl. ¶¶71, 95).

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

  • A core issue will be one of evidentiary proof for an extraterritorial process: Can the Plaintiff, through discovery from third-party foreign manufacturers, obtain direct evidence that the specific, multi-step control methods claimed in its patents (e.g., calculating and controlling "EDPUT" per a formula) were actually practiced? The case may depend heavily on whether the physical characteristics of the final product, such as the laser pores shown in SEM images, are sufficient to create an inference that these specific control methods were used.
  • A key legal and factual question will be one of claim scope and differentiation: Given that multiple patents with distinct claim language are asserted against the same products based on the same manufacturing process, the court will need to determine if the accused process meets the separate and distinct limitations of each patent. The analysis will likely focus on whether the evidence shows infringement of a broad "laser distressing" concept or the specific, narrowly-claimed methods of controlling laser parameters recited in each patent family.
  • A central dispute regarding damages will be willfulness based on pre-suit notice: Did the detailed notice provided to the Defendant, particularly the 2016 letter allegedly including an 80-page claim chart, create an "objectively high likelihood" of infringement that makes Defendant's continued importation and sale of the accused products an act of willful infringement subject to enhanced damages?