Square One Choices Inc v. Ditec Solutions LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Square One Choices Inc. (New York)
  • Defendant: Ditec Solutions LLC, d/b/a MYNT3D (Utah)
  • Plaintiff’s Counsel: Muncy, Geissler, Olds & Lowe, P.C.
• Case Identification: 22-cv-7680, S.D.N.Y., 09/08/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains a "regular and established place of business" in the district, citing a Brooklyn, NY address listed on its Amazon storefront and on import records. The complaint further alleges that Defendant changed its New York corporate registration to "inactive" shortly after learning of potential litigation in the district.
• Core Dispute: Plaintiff alleges that Defendant’s 3D printing accessory, the "Design Mat Kit," infringes a patent related to a grooved silicon mat for guiding a 3D drawing pen.
• Technical Context: The technology addresses the consumer market for handheld 3D drawing pens, providing a tool to overcome the imprecision of freehand drawing and enable the creation of more accurate and complex objects.
• Key Procedural History: The complaint alleges significant pre-suit interactions, including that Defendant’s CEO contacted the patent’s inventor in June 2020 in an attempt to purchase the business, allegedly demonstrating awareness of the pending patent application. It further alleges that after the patent issued, Plaintiff successfully had the accused products removed from Amazon, and that Defendant appealed this removal.

Case Timeline

Date	Event
2016-12-29	'901 Patent Priority Date
2020-06-26	Alleged date Defendant’s CEO contacted Plaintiff about acquiring the business and pending patent application
2021-09-21	'901 Patent Issue Date
2021-10-21	Plaintiff’s infringement complaint submitted to Amazon
2022-09-08	Complaint Filing Date

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

U.S. Patent No. 11,123,901 - "DEVICE AND METHOD FOR THE CREATION OF 2D AND 3D OBJECTS BY USING A 3D DRAWING PEN"

• Patent Identification: U.S. Patent No. 11,123,901, "DEVICE AND METHOD FOR THE CREATION OF 2D AND 3D OBJECTS BY USING A 3D DRAWING PEN", issued September 21, 2021.

The Invention Explained

• Problem Addressed: The patent addresses the difficulty of creating precise two-dimensional (2D) and three-dimensional (3D) objects using only a free-hand 3D drawing pen, which is subject to "human free hand instability, and consequent lack of precision" (’901 Patent, col. 2:48-52; Compl. ¶12).
• The Patented Solution: The invention is a flexible, non-sticky, and transparent silicon mat with pre-cut grooves on its surface (’901 Patent, col. 3:29-38). These grooves serve as a "guide for the drawer and as a depository for the filament," allowing a user to trace patterns to form accurate 2D and 3D shapes that can be easily removed from the mat once hardened (Compl. ¶13; ’901 Patent, col. 2:35-45).
• Technical Importance: The device provides a structured guide that improves the accuracy and repeatability of objects created with 3D pens, solving a key usability problem for the technology (Compl. ¶12).

Key Claims at a Glance

• The complaint asserts independent claim 1.
• The essential elements of independent claim 1 include:
  • A flexible mat with a number of templates, where each template has a surface with a plurality of template grooves of predetermined shapes and sizes.
  • The template grooves define walls and a bed and are capable of being filled with filament from a 3D drawing pen to form objects.
  • The template grooves function as a guide and depository for the filament.
  • A "fuse-and-join area" that functions as a base for placing and joining the 2D and 3D objects.
  • The fuse-and-join area is characterized by grooves having sizes that exceed the corresponding template grooves by an "extra length."
  • This extra length produces an "external edge of the base" for joining parts.
• The complaint reserves the right to assert other claims (Compl. ¶20).

III. The Accused Instrumentality

Product Identification

• The "MYNT3D Design Mat Kit" (the "Accused Products") sold via Defendant's website and the Amazon marketplace (Compl. ¶19).

Functionality and Market Context

• The complaint alleges the Accused Products are devices for creating 2D and 3D objects with a 3D drawing pen (Compl. ¶12). The complaint includes images of the Accused Products, described as the "MYNT3D Design Mat Kit," as Exhibit E (Compl. ¶19). It is alleged to infringe by embodying the features of the patented device, including having templates and grooves that guide the creation and assembly of 3D objects (Compl. ¶¶13, 20). The complaint suggests the patented features provide "significant commercial value" (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint references an infringement claim-chart exhibit (Exhibit F), which was not provided with the filed complaint (Compl. ¶20). The analysis below is based on the complaint's narrative summary of infringement, which quotes the elements of claim 1.

’901 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a number of templates, each said template is characterized with a template surface including a plurality of template grooves of predetermined shapes and predetermined sizes	The Accused Products allegedly include templates with grooves for forming objects, reading on this element.	¶13, ¶20	col. 5:54-58
said template grooves each defines walls and a bed	The grooves in the Accused Products allegedly define walls and a bed for containing filament.	¶13, ¶20	col. 5:58-59
said template grooves are capable of being filled in with a filament extruded by the 3-D drawing pen, such that the filament forms the 2-dimensional and 3-dimensional objects	The Accused Products are allegedly sold for use with 3D drawing pens to fill the grooves with filament and create objects.	¶13, ¶20	col. 5:59-62
said template grooves function as a guide for the drawer and as a depository for the filament thereby allowing for a correct and accurate formation	The grooves in the Accused Products allegedly function as guides for a 3D pen user.	¶13, ¶20	col. 5:62-67
a fuse-and-join area functioning as a base for concentrically placing the 2-dimensional and 3-dimensional objects formed... as parts for assembling thereof	The Accused Products allegedly contain a "fuse-and-join area" for assembling parts into more complex objects.	¶13, ¶20	col. 6:1-8
wherein said fuse-and-join area is characterized by a plurality of fuse-and-join grooves having sizes exceeding the respective predetermined sizes of said template grooves by an extra length...	The Accused Products allegedly possess a fuse-and-join area with grooves that are larger than other template grooves.	¶13, ¶20	col. 6:9-14

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the accused "MYNT3D Design Mat Kit" contains a distinct "fuse-and-join area" as claimed. The patent describes this area as a specific template with grooves that are dimensionally larger than grooves in other templates to create an "external edge" for joining parts (’901 Patent, col. 5:5-11, 32-42). The analysis may turn on whether the accused mat has a comparable, structurally distinct area or if it is a more generic mat where any area could be functionally used for joining.
  • Technical Questions: The infringement analysis raises the question of whether the grooves in the accused mat meet the "extra length" limitation. The claim requires that the fuse-and-join grooves have "sizes exceeding the respective predetermined sizes of said template grooves by an extra length" (’901 Patent, col. 6:10-12). Evidence will be needed to show that the accused mat not only has a joining area but that its grooves are dimensionally larger in the specific manner recited by the claim.

V. Key Claim Terms for Construction

• The Term: "fuse-and-join area"

• Context and Importance: This term appears to be a core inventive concept, as the complaint highlights its "specific and important advantage" in providing stability (Compl. ¶14). Its construction will likely be determinative of infringement, as it distinguishes the invention from a simple mat with generic geometric grooves.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue the term should be given its plain and ordinary meaning, covering any portion of the mat designated or used for joining separately created components.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the "fuse-and-join" area as a specific template (template 5) with a "plurality of fuse-and-join grooves having sizes exceeding the respective predetermined sizes of said template grooves by an extra length" (’901 Patent, col. 6:9-12). Further, it specifies that the grooves are "2 mm longer than all the other grooves" to create an "external edge" for joining, suggesting a specific, structural limitation rather than a purely functional one (’901 Patent, col. 5:8-11, 32-42).

• The Term: "extra length"

• Context and Importance: This term quantifies the key feature of the "fuse-and-join area." Practitioners may focus on this term because infringement will depend on whether the accused mat’s grooves meet this dimensional requirement.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: One might argue this simply means any additional length sufficient to facilitate joining.
  • Evidence for a Narrower Interpretation: Claim 1 states "the extra length is at least one size of predetermined sizes of said template grooves" (’901 Patent, col. 6:12-14). The specification provides a concrete example: "the length of the grooves of the 'fuse & join' area are 1 mm×1 mm longer than the other grooves of the same shape" (’901 Patent, col. 5:32-35). This suggests "extra length" is not an arbitrary value but is a specific, measurable dimension tied to the groove sizes themselves.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting Defendant had knowledge of the patent and, with specific intent, encouraged infringement by distributing the Accused Products and related materials to customers and partners (Compl. ¶¶ 25-27).
• Willful Infringement: The complaint alleges willful infringement, entitling Plaintiff to enhanced damages. The allegations are based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged based on a June 2020 email from Defendant’s CEO regarding a potential purchase of Plaintiff's business and its then-pending patent application (Compl. ¶22). Post-suit knowledge is alleged based on an infringement notice sent to Amazon on October 21, 2021, which resulted in the removal of the Accused Products (Compl. ¶23).

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

• A core issue will be one of definitional scope: Can the term "fuse-and-join area," which the patent describes as a specific template with dimensionally larger grooves, be construed to read on the features of the accused mat? The case may turn on whether the Defendant's product contains this specific, structurally defined feature or a more generic equivalent.
• A second key issue will be one of evidentiary proof related to willfulness: The complaint makes strong allegations of pre-suit knowledge based on business acquisition discussions (Compl. ¶22). The authenticity and content of the alleged communications (Exhibit G) will be critical in determining whether Defendant's alleged infringement was willful, which could substantially impact potential damages.