DCT
2:24-cv-00744
Cricut Inc v. Hunan Sijiu Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cricut, Inc. (Delaware)
- Defendant: Hunan Sijiu Technology, Co. Ltd.; Hunan Sijiu Electronic Technology Co., Ltd.; and Guangdong Rongtu Technology Co., Ltd. (China)
- Plaintiff’s Counsel: Snell & Wilmer L.L.P.; McDermott Will & Emery LLP
- Case Identification: 2:24-cv-00744, D. Utah, 10/04/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are foreign corporations that have committed acts of infringement in Utah by purposefully directing commercial activities to the state, including sales through their own websites and third-party platforms like Amazon.com and Walmart.com with shipping to Utah.
- Core Dispute: Plaintiff alleges that Defendant’s heat press machines and electronic cutting machines, sold under the HTVRont and LOKLiK brands, infringe two of its utility patents and four of its design patents.
- Technical Context: The technology relates to consumer-grade, do-it-yourself (DIY) crafting devices, a market segment that enables users to create custom goods at home.
- Key Procedural History: The complaint notes that the asserted patents are also the subject of a parallel investigation at the International Trade Commission. The complaint further alleges that Defendants had pre-suit knowledge of at least two of the asserted design patents, citing their identification in Information Disclosure Statements filed by Defendants during their own patent prosecution, which may be relevant to the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2014-02-20 | U.S. Patent No. D1,029,090 Priority Date |
| 2017-08-01 | U.S. Patent No. 11,208,758 Priority Date |
| 2017-08-01 | U.S. Patent No. 11,905,646 Priority Date |
| 2018-08-01 | U.S. Patent No. D893,563 Priority Date |
| 2019-08-18 | U.S. Patent No. D910,724 Priority Date |
| 2020-08-18 | U.S. Patent No. D893,563 Issue Date |
| 2021-02-12 | U.S. Patent No. D926,237 Priority Date |
| 2021-02-16 | U.S. Patent No. D910,724 Issue Date |
| 2021-04-17 | Date of Defendants' alleged awareness of D'563 & D'724 Patents |
| 2021-06-30 | Date of Defendants' alleged awareness of D'563 Patent |
| 2021-07-27 | U.S. Patent No. D926,237 Issue Date |
| 2021-12-28 | U.S. Patent No. 11,208,758 Issue Date |
| 2024-02-20 | U.S. Patent No. 11,905,646 Issue Date |
| 2024-05-28 | U.S. Patent No. D1,029,090 Issue Date |
| 2024-10-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,208,758 - "Heat Press"
- Issued: December 28, 2021
- The Invention Explained:
- Problem Addressed: The patent's background section identifies a need for a heat press suitable for home use, noting that prior industrial presses were "large, unwieldy, unsafe, and made with expensive materials" (’758 Patent, col. 1:28-30).
- The Patented Solution: The invention is a handheld heat press designed for safety and ease of use in a household setting. The design isolates heat-sensitive components from the hot lower plate by physically spacing a control compartment away from the heat plate and positioning a multi-layered "insulation portion" between them (’758 Patent, Abstract; col. 5:25-31). This configuration allows all electrical components to be housed safely within the unit itself (’758 Patent, col. 4:5-10).
- Technical Importance: This technology facilitated the transition of heat press functionality from a purely industrial application to the consumer and home crafting market (’758 Patent, col. 1:30-32).
- Key Claims at a Glance:
- The complaint asserts independent claim 18 and dependent claims 19-23 (Compl. ¶44).
- Independent Claim 18 requires:
- a body including a first end and a second end;
- a heat plate including a metallic member at least partially embedded in a plate;
- a handle configured to withstand forces from a user;
- a substrate located within the handle;
- a cover covering a portion of the body and the handle;
- a control compartment spaced away from the heat plate;
- an insulation portion positioned between the control compartment and the heat plate; and
- an electrical circuit located in contact with the substrate.
U.S. Patent No. 11,905,646 - "Heat Press"
- Issued: February 20, 2024
- The Invention Explained:
- Problem Addressed: Similar to its parent, this patent addresses the need for a "safe and cost effective heat press" capable of providing "uniform, consistent and optimal heat in a home-use setting" (’646 Patent, col. 1:30-33).
- The Patented Solution: This invention focuses specifically on the material composition of the insulation system. The claims describe an "insulation portion" constructed from specific materials, including a layer of "glass reinforced nylon" and a layer of "glass fibers," which are arranged to provide thermal protection and allow for the application of uniform pressure (’646 Patent, Claim 1; col. 5:46-51). The detailed description shows these layers working in a stack to protect the user and internal components while transferring force to the workpiece (’646 Patent, Fig. 8B).
- Technical Importance: The invention applies material science principles to solve the dual challenges of heat management and pressure application in a compact, consumer-grade device (’646 Patent, col. 1:30-33).
- Key Claims at a Glance:
- The complaint asserts independent claims 1 and 8, as well as several dependent claims (Compl. ¶54).
- Independent Claim 1 requires:
- a heat plate configured to engage ironable materials;
- a control compartment spaced away from the heat plate; and
- an insulation portion positioned between the control compartment and the heat plate;
- wherein the insulation portion comprises glass reinforced nylon; and
- wherein the insulation portion further comprises a second layer of insulating material comprising glass fibers.
Multi-Patent Capsule: U.S. Patent No. D893,563 - "Heat Press"
- Issued: August 18, 2020
- Technology Synopsis: This design patent protects the ornamental appearance of a handheld heat press. The claimed design features an integration of a "smooth, inviting, rounded, and essentially square overall shape with a handle," as well as ornamental shapes for a display and activation surfaces (Compl. ¶63). The complaint includes FIG. 1 from the patent, illustrating the overall product shape and top-surface features (Compl. p. 18).
- Asserted Claims: The single design claim of the D'563 Patent (Compl. ¶64).
- Accused Features: The overall visual appearance of the "Infringing Heat Press Products," including the HTVRont Heat Press and HTVRont Heat Press Mini models (Compl. ¶¶38, 64).
Multi-Patent Capsule: U.S. Patent No. D910,724 - "Heat Press"
- Issued: February 16, 2021
- Technology Synopsis: This patent claims the ornamental design for a small handheld heat press, characterized by a "smooth, inviting, and rounded overall shape with a rounded internal handle shape" (Compl. ¶75). The design is shown in the complaint's reference to FIG. 1 of the patent and is associated with a "mini" heat press product (Compl. ¶75, p. 21).
- Asserted Claims: The single design claim of the D'724 Patent (Compl. ¶76).
- Accused Features: The ornamental design of the "Infringing Heat Press Products," particularly Defendants' smaller heat press models (Compl. ¶¶38, 76).
Multi-Patent Capsule: U.S. Patent No. D926,237 - "Heat Press"
- Issued: July 27, 2021
- Technology Synopsis: This patent protects an ornamental design for a small handheld heat press with a "smooth, inviting, and rounded overall shape" (Compl. ¶87). A key feature of this design is the disclaimer of a "rounded center portion of the product," indicated by broken lines in the patent's drawings (Compl. ¶87, p. 24).
- Asserted Claims: The single design claim of the D'237 Patent (Compl. ¶88).
- Accused Features: The visual design of the "Infringing Heat Press Products," specifically the mini heat press models (Compl. ¶¶38, 88).
Multi-Patent Capsule: U.S. Patent No. D1,029,090 - "Electronic Cutting Machine"
- Issued: May 28, 2024
- Technology Synopsis: This patent claims the ornamental design for an electronic cutting machine. The claimed design integrates "smooth, inviting and rounded cover end shapes with two aesthetically proportioned rectangular open panel shapes" (Compl. ¶98). The claimed portions are shown in solid lines, while broken lines indicate the boundaries of the design and the surrounding environment (Compl. p. 26).
- Asserted Claims: The single design claim of the D'090 Patent (Compl. ¶99).
- Accused Features: The overall ornamental design of the "Infringing Cutting Machine Products," identified as the LOKLiK Cutting Machine (Compl. ¶¶39, 99).
III. The Accused Instrumentality
Product Identification
The complaint identifies two categories of accused products: "Infringing Heat Press Products" and "Infringing Cutting Machine Products" (Compl. ¶¶38-39). Specific models include the HTVRont Heat Press, HTVRont Heat Press Mini, and the LOKLiK Cutting Machine (Compl. ¶¶38-39).
Functionality and Market Context
The accused products are consumer-grade crafting devices. The complaint alleges they are "copycats" designed to "mimic the innovative look and feel of the Cricut products" (Compl. ¶28). The complaint provides visual evidence from product packaging identifying Defendants as the manufacturers and showing their Chinese business addresses (Compl. pp. 3-5). Plaintiff further alleges that Defendants target the U.S. market, citing a "HTVRONT SALES NETWORK" graphic from Defendants' website that depicts a flow of goods from China to the United States and claims over 142,000 "loyal customers" in the U.S. (Compl. p. 8).
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,208,758 Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body including a first end and a second end | The main housing of the HTVRont heat press products. | ¶38 | col. 3:32-37 |
| a heat plate including a metallic member at least partially embedded in a plate and located proximate the first end… | The heated lower surface of the HTVRont products, which contains a heating element. | ¶38 | col. 3:34-37 |
| a handle located proximate the second end…configured to withstand forces from a user | The upper grip portion of the HTVRont products. | ¶38 | col. 3:32-33 |
| a substrate located within the handle | An internal support structure or frame located inside the handle of the HTVRont products. | ¶38 | col. 4:52-54 |
| a cover covering a portion of the body and the handle | The outer plastic shell or casing of the HTVRont products. | ¶38 | col. 3:38-41 |
| a control compartment spaced away from and at least indirectly electrically coupled to the heat plate | The area on the HTVRont products containing the user controls and display. | ¶38 | col. 4:11-19 |
| an insulation portion positioned between the control compartment and the heat plate | Internal insulating materials within the HTVRont products that separate the electronics from heat. | ¶38 | col. 4:1-3 |
| an electrical circuit located in contact with the substrate | Electronic circuitry within the handle of the HTVRont products that is connected to the handle's internal support structure. | ¶38 | col. 4:32-34 |
- Identified Points of Contention:
- Structural Questions: The analysis may focus on the internal construction of the accused devices. A key question for discovery will be whether the HTVRont heat presses contain a distinct component that meets the claim’s requirement for a "substrate located within the handle" and an "electrical circuit located in contact with the substrate."
- Scope Questions: The dispute may raise the question of how broadly the term "substrate" should be interpreted. Does it read on any internal frame within a handle, or is it limited to a structure that more closely resembles the specific sheet-metal embodiment shown in the patent's figures?
U.S. Patent No. 11,905,646 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heat plate configured to engage ironable materials | The heated lower surface of the HTVRont products used for applying heat transfers. | ¶38 | col. 3:45-48 |
| a control compartment spaced away from and at least indirectly electrically coupled to the heat plate | The user interface section with buttons and a display on the HTVRont products. | ¶38 | col. 4:11-14 |
| an insulation portion positioned between the control compartment and the heat plate | The internal heat-blocking system within the HTVRont products. | ¶38 | col. 5:27-31 |
| wherein the insulation portion comprises glass reinforced nylon… | The allegation that the insulation system in the HTVRont products is constructed, at least in part, with glass reinforced nylon. | ¶38 | col. 5:42-45 |
| wherein the insulation portion further comprises a second layer of insulating material comprising glass fibers | The allegation that the insulation system in the HTVRont products also contains a distinct layer made of glass fibers. | ¶38 | col. 5:39-42 |
- Identified Points of Contention:
- Technical Questions: The infringement analysis will likely depend on material science. The central question is factual: does the insulation used in the accused HTVRont products actually contain both "glass reinforced nylon" and "glass fibers" as required by the claim? This will likely be resolved through expert testing and analysis of the accused products.
- Scope Questions: A potential dispute could arise over the structural nature of the "insulation portion." Does the claim require distinct, separate layers of the specified materials, as depicted in the patent's schematics, or could it read on a composite material where both glass fibers and glass-reinforced nylon are present but not necessarily in discrete layers?
V. Key Claim Terms for Construction
Patent '758
- The Term: "substrate" (Claim 18)
- Context and Importance: Infringement of the asserted claims hinges on whether the accused devices contain this internal handle component. The definition of "substrate" will be critical, as Defendants may argue their products employ a different internal support mechanism that falls outside the scope of this term.
- Intrinsic Evidence for a Broader Interpretation: The claim uses the general term "substrate" without modification. Plaintiff may argue this term should be given its ordinary meaning of a foundational or underlying layer, and is not limited to any particular material or shape, thus covering any internal support frame in the handle.
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently refers to the element as a "metal substrate 20" and depicts it as a specific, shaped sheet-metal component (’758 Patent, col. 4:52-54, FIG. 6). Defendants may argue these specific descriptions and embodiments limit the term to a metallic component with the illustrated structural features.
Patent '646
- The Term: "insulation portion comprises glass reinforced nylon...and further comprises a second layer...comprising glass fibers" (Claim 1)
- Context and Importance: This composite term is the core of the invention. The infringement analysis depends entirely on whether the accused product's insulation meets this material and structural definition.
- Intrinsic Evidence for a Broader Interpretation: The term "comprises" is open-ended, meaning the insulation portion can contain other elements. Plaintiff may argue that as long as the accused insulation system contains these two material types somewhere within it, the claim is met, regardless of the precise arrangement or the presence of other materials.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a multi-layer structure where different layers "are thermally isolated from one another" (’646 Patent, col. 5:37-38; FIG. 8B). Defendants may argue that the claim requires not just the presence of the materials, but their arrangement into distinct first and second layers with a specific thermal-isolation function, and that a single composite material would not meet this limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by providing product manuals and online tutorials that instruct customers to use the accused products in an infringing manner (e.g., Compl. ¶¶46, 56). It further alleges contributory infringement, stating the products are specially made for infringement and are not staple articles of commerce with substantial non-infringing uses (e.g., Compl. ¶46).
- Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the patents from at least the filing of the complaint and a parallel ITC investigation (e.g., Compl. ¶47). Critically, the complaint alleges pre-suit knowledge for U.S. Patents D893,563 and D910,724, citing specific dates in 2021 when Defendants allegedly identified these patents in Information Disclosure Statements submitted to the USPTO during the prosecution of their own patent applications (Compl. ¶¶67, 79).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on the following central questions:
- A question of design similarity: For the four asserted design patents, the primary issue is whether the overall ornamental appearance of the accused HTVRont and LOKLiK products is substantially the same as Cricut’s patented designs from the perspective of an ordinary observer.
- A question of internal structure: For the ’758 patent, a key evidentiary question will be whether the accused heat presses contain an internal handle component that meets the claim limitation of a "substrate" in contact with an "electrical circuit," or if there is a fundamental structural difference.
- A question of material composition: For the ’646 patent, the dispute is likely to be a technical one centered on materials science: does the insulation within the accused products contain the specific "glass reinforced nylon" and "glass fiber" components as required by the claims?