DCT
2:18-cv-00796
My Sweet Pet
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: My Sweet Petunia, Inc. (Illinois)
- Defendant: Stampin' Up! Inc. (Utah)
- Plaintiff’s Counsel: Hatch, James & Dodge, P.C.; The Law Office of Shane V. Cortesi
- Case Identification: 2:18-cv-00796, D. Utah, 01/04/2019
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant is incorporated in Utah and has its principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Stamparatus" stamp positioning tool infringes three patents related to craftwork tools designed for precise and repeatable stamping.
- Technical Context: The technology at issue addresses the need within the paper crafting industry for a simple, portable, and accurate tool to align and apply rubber stamps onto substrates like cardstock.
- Key Procedural History: The complaint alleges that Plaintiff sent cease and desist letters providing Defendant with notice of the asserted patents prior to and during the alleged infringement period. Plaintiff also notes prior successful enforcement actions against other companies for similar products. Subsequent to the filing of this complaint, the patents-in-suit have undergone multiple ex parte reexaminations, resulting in the amendment and cancellation of several asserted claims, including the cancellation of claims 1-4 of the ’531 patent. This post-filing history may significantly impact the scope of the dispute.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-13 | Earliest Priority Date for ’531, ’812, and ’875 Patents |
| 2015-01-22 | Plaintiff began marking its MISTI product "Patent Pending" |
| 2017-08-15 | U.S. Patent No. 9,731,531 (’531 Patent) Issued |
| 2017-11-13 | Defendant allegedly began promoting/offering the accused Stamparatus product |
| 2017-11-14 | Plaintiff sent Defendant a cease and desist letter regarding the ’531 Patent |
| 2018-03-27 | U.S. Patent No. 9,925,812 (’812 Patent) Issued |
| 2018-04-03 | U.S. Patent No. 9,931,875 (’875 Patent) Issued |
| 2018-04-04 | Plaintiff sent Defendant a letter informing it of the newly issued ’812 and ’875 Patents |
| 2019-01-04 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,731,531 - "Craftwork Tools and Kits"
The Invention Explained
- Problem Addressed: The patent describes the difficulty for crafters to properly align a stamp to achieve a clean, correctly positioned impression on an item like a greeting card. Realigning a stamp for a second impression to fix a faint image or to add another layer of color is described as particularly challenging with existing tools, which were often costly, bulky, or imprecise (’531 Patent, col. 1:15-42).
- The Patented Solution: The invention is a portable stamping apparatus featuring a base with raised side portions that form a fixed corner. A user places a piece of paper into this corner for precise alignment. A transparent, hinged cover is then closed over the paper, picking up a stamp that has been placed on the paper. The user can then open the cover, apply ink to the stamp (which is now adhered to the cover), and close the cover again to apply the stamp to the paper in the exact same location repeatedly (’531 Patent, col. 2:46-64; Fig. 7).
- Technical Importance: This design provides a simple, mechanical solution that enables even users with unsteady hands to create batches of identical, perfectly stamped items, a significant improvement in efficiency and quality for the craft market (Compl. ¶13-14).
Key Claims at a Glance
- The complaint asserts direct infringement of claims 1-5 and indirect infringement of claims 6-20 (Compl. ¶39, 49). Independent claim 1 is central to the apparatus allegations.
- Essential elements of Independent Claim 1 include:
- A substantially rectangular base with a workspace, widthwise and lengthwise rulers, and widthwise and lengthwise rigid raised side portions disposed at approximately 90 degrees to form a corner.
- A substantially rectangular cover portion connected to the base by at least one hinge.
- The cover portion is translucent or clear, allowing a user to see the workspace when it is closed.
- The cover is configured to pivot from an open to a closed position and has an interior surface configured to accept an ink stamp.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶37).
U.S. Patent No. 9,925,812 - "Craftwork Tools and Kits"
The Invention Explained
- Problem Addressed: The technology addresses the same problem as the ’531 Patent: the difficulty of achieving accurate and repeatable stamp impressions in crafting (’812 Patent, col. 1:26-45).
- The Patented Solution: The solution is a nearly identical craftwork tool, but the claims of the ’812 patent add specific features. The claims explicitly require gridlines on the base and cover, and mandate the use of a ferromagnetic material in the tool's construction, used in conjunction with at least one magnet to secure the stampable substrate in place during use (’812 Patent, Abstract; col. 6:2-9).
- Technical Importance: The addition of an integrated magnetic fastening system and gridlines provides further convenience and precision, enhancing the core functionality of the stamping tool (Compl. ¶73).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-30 (Compl. ¶71, 80). Independent claims 1 and 21 are asserted.
- Essential elements of Independent Claim 1 include:
- A base with a workspace, gridlines, rulers, and widthwise/lengthwise rigid raised side portions at a 90-degree angle.
- A translucent or clear cover portion pivotably connected to the base by a hinge, also comprising gridlines and an interior surface to accept a stamp.
- A ferromagnetic material.
- At least one magnet configured to secure a stampable substrate on the workspace to the ferromagnetic material.
- The complaint reserves the right to assert other claims (Compl. ¶37).
U.S. Patent No. 9,931,875 - "Craftwork Tools and Kits"
Technology Synopsis
This patent covers a craftwork apparatus with a similar construction to the ’531 and ’812 patents. It describes a tool with a base, raised side portions for alignment, and a hinged, transparent cover for picking up, inking, and applying a stamp. The claims also recite the combination of gridlines, rulers, a ferromagnetic material, and magnets for securing a substrate (’875 Patent, Abstract).
Asserted Claims
Claims 1-30 (Compl. ¶103, 112).
Accused Features
The complaint alleges that the Stamparatus product, with its base, gridlines, rulers, raised side portions, hinged covers, foam pad, magnets, and ferromagnetic material, infringes the ’875 Patent (Compl. ¶104).
III. The Accused Instrumentality
Product Identification
The "Stamparatus" stamp positioning tool (Compl. ¶22).
Functionality and Market Context
- The complaint describes the Stamparatus as a stamping tool that includes a base with gridlines, a workspace, two magnets that are attracted to a ferromagnetic material below the workspace, and rigid raised side portions at a 90-degree angle for aligning paper (Compl. ¶22). The product features two clear cover portions attached to the base by hinges, which are used to pick up and apply stamps (Compl. ¶22). Product photographs from Exhibit 4, referenced in the complaint, show the overall construction of the device (Compl. ¶22, Ex. 4).
- The accused product is marketed as a "must-have tool for all stampers" intended to help users "perfectly align stamp images, stamp multiples of the same project quickly and precisely" (Compl. ¶23). It is sold by Defendant through a network of independent sales consultants known as "demonstrators" (Compl. ¶21, 32).
IV. Analysis of Infringement Allegations
’531 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substantially rectangular base comprising...a workspace configured to support a stampable substrate...a widthwise rectangular ruler...and a lengthwise rectangular ruler... | The Stamparatus includes a base with a workspace and widthwise and lengthwise rulers. | ¶40(a), (c) | col. 2:40-46 |
| a widthwise rigid raised side portion...and...a lengthwise rigid raised side portion...disposed at an angle of approximately 90 degrees relative to each other... | The Stamparatus includes a widthwise and a lengthwise rigid raised side portion bordering the workspace and disposed approximately 90 degrees relative to each other. | ¶40(d) | col. 2:40-46 |
| a substantially rectangular cover portion connected to the base by at least one hinge... | The Stamparatus has two rectangular, clear cover portions connected to the base by hinges. | ¶40(e) | col. 2:47-53 |
| the substantially rectangular cover portion is translucent or clear and is configured to allow a user to see a stampable substrate on the workspace when the...cover portion is in the closed position. | The Stamparatus includes two clear cover portions that are pivotably attached to the base. | ¶22 | col. 5:46-51 |
’812 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base comprising a base width, and a base length, the base further comprising a workspace...the base comprising gridlines... | The Stamparatus includes a base comprising a base width, a base length and gridlines, and a workspace. | ¶72(a), (b) | col. 3:21-28 |
| the base further comprising a widthwise rigid raised side portion...and a lengthwise rigid raised side portion...being disposed at an angle of approximately 90 degrees... | The Stamparatus includes widthwise and lengthwise rigid raised side portions forming a corner with an angle of 90 degrees bordering the workspace. | ¶72(d) | col. 3:12-20 |
| a translucent or clear cover portion pivotably connected to the base by a hinge...the cover portion comprising gridlines... | The accused product has two clear covers with gridlines that are pivotably connected to the base by hinges. | ¶72(e) | col. 4:46-54 |
| a ferromagnetic material; and at least one magnet configured to secure a stampable substrate located on the workspace to the ferromagnetic material. | The Stamparatus includes two magnets and a ferromagnetic material below the workspace to hold stampable substrates in place. | ¶72(g) | col. 3:40-46 |
Identified Points of Contention
- Scope Questions: A primary question regarding the ’531 Patent is whether the accused product's use of two distinct cover portions (Compl. ¶22) can meet the claim limitation of "a substantially rectangular cover portion" (singular). The defense may argue this is a dispositive difference, while the plaintiff may counter that the two plates collectively perform the function of the single claimed portion or infringe under the doctrine of equivalents.
- Technical Questions: The infringement read appears to be a very close structural and functional mapping. The dispute may focus on subtle technical distinctions. For instance, what evidence demonstrates that the accused product's hinges allow for the specific type and degree of pivotal movement described or required by the claims and specification? The complaint’s product instruction evidence, showing how to use the device, will be central to this inquiry (Compl. ¶34, Ex. 6).
V. Key Claim Terms for Construction
The Term: "a substantially rectangular cover portion" (’531 Patent, Claim 1)
Context and Importance
This term is critical because the complaint alleges the accused Stamparatus has "two rectangular, clear cover portions" (Compl. ¶22). The infringement analysis for the ’531 patent will depend on whether a two-part system can satisfy a claim reciting a singular component.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes the function of the cover portion as picking up and applying a stamp (’531 Patent, col. 2:54-59). Plaintiff may argue that any structure performing this function, regardless of whether it is unitary or multi-part, falls within the scope intended by the inventor.
- Evidence for a Narrower Interpretation: The patent consistently uses the singular term "cover portion 130" and every corresponding figure depicts a single, unitary cover (’531 Patent, Fig. 1, 4, 5). A defendant would argue that the patentee deliberately claimed a single portion and should be held to that explicit limitation.
The Term: "hinge" (’531 Patent, Claim 1; ’812 Patent, Claim 1)
Context and Importance
The functionality of the entire device relies on the pivotable connection between the base and cover. The specific characteristics of the accused product's "hinges" (Compl. ¶22) compared to the patent's disclosure will be a focus.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification provides flexibility, stating that mechanisms for movably attaching the cover "may include, for example, brass hinges, piano hinges, non-hinge assemblies, and the like" (’531 Patent, col. 2:54-56). This language suggests the term is not limited to a specific type of traditional hinge.
- Evidence for a Narrower Interpretation: The figures illustrate a specific "hinge assembly 140" (’531 Patent, Fig. 1). A defendant may argue that the term should be limited to the structures disclosed in the embodiments, especially if the accused product uses a mechanism that is functionally distinct from the depicted assembly.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement with specificity, citing Defendant’s creation and dissemination of instructional materials. These include YouTube videos demonstrating infringing uses, step-by-step product instructions included with the Stamparatus, and training materials for its network of "demonstrators" who teach consumers how to use the product (Compl. ¶33-34, 49-50). The complaint alleges contributory infringement by asserting the Stamparatus is a material part of the invention, not a staple article of commerce, and has no substantial non-infringing use (Compl. ¶57-59).
Willful Infringement
Willfulness is alleged based on Defendant’s purported actual knowledge of the patents. The complaint alleges that Plaintiff sent a cease and desist letter identifying the ’531 Patent on November 14, 2017, and a subsequent letter identifying the ’812 and ’875 Patents on April 4, 2018. Defendant's continued sales after receiving these notices are alleged to constitute willful, wanton, and deliberate infringement (Compl. ¶26, 30, 47, 78, 110).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can the accused Stamparatus, which employs two separate, hinged cover plates, be found to infringe claims in the ’531 patent that recite "a" singular "cover portion"? The resolution of this question may determine the viability of a significant portion of the plaintiff's case.
- A key question for damages will be one of willfulness: did the Defendant's continued marketing and sale of the Stamparatus after receiving multiple cease and desist letters from the Plaintiff constitute objectively reckless behavior sufficient to support a finding of willful infringement and potential enhanced damages?
- A dispositive procedural question will be the impact of post-filing reexaminations: how will the court address the fact that several asserted claims, including the lead independent apparatus claim of the ’531 patent, were cancelled by the USPTO after the complaint was filed? This development fundamentally alters the landscape of the dispute and raises questions about which claims, if any, remain for adjudication.