DCT

2:24-cv-00745

Cricut Inc v. Sainstore Technology Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00745, D. Utah, 10/04/2024
  • Venue Allegations: Venue is alleged based on Defendant being a foreign resident that has committed acts of infringement within the district, purposefully availing itself of the Utah market by advertising, offering to sell, and selling products to consumers in Utah through its own website and other channels like Amazon.com.
  • Core Dispute: Plaintiff alleges that Defendant’s line of OffNova heat press machines infringes two utility patents and three design patents related to handheld heat presses for crafting.
  • Technical Context: The technology at issue concerns portable, handheld heat press devices designed for home and hobbyist use in applying iron-on designs to fabrics and other materials.
  • Key Procedural History: The complaint notes that all five asserted patents are concurrently being litigated against the same Defendant in an investigation before the International Trade Commission (ITC), which may have implications for discovery, claim construction, and allegations of knowledge.

Case Timeline

Date Event
2017-08-01 Earliest Priority Date for ’758 and ’646 Patents
2020-08-18 Issue Date for U.S. Patent No. D893,563
2021-02-16 Issue Date for U.S. Patent No. D910,724
2021-07-27 Issue Date for U.S. Patent No. D926,237
2021-12-28 Issue Date for U.S. Patent No. 11,208,758
2024-02-20 Issue Date for U.S. Patent No. 11,905,646
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 identifies that industrial heat presses are often "large, unwieldy, unsafe, and made with expensive materials," creating a need for a "safe and cost effective heat press" suitable for "a home-use setting" (’758 Patent, col. 1:25-31).
    • The Patented Solution: The invention is a handheld heat press with a specific internal structural arrangement designed for safety and ease of use. It comprises a body, a heat plate at one end, and a handle at the other, with a control compartment containing electronics. A key aspect is an "insulation portion" positioned between the hot heat plate and the cooler control compartment to protect both the user and the internal circuitry from high temperatures (’758 Patent, Abstract; col. 3:1-10). The specification further details a metal substrate within the handle to provide structural support (’758 Patent, col. 4:52-58).
    • Technical Importance: This design enabled the development of compact, portable, and user-friendly heat presses, moving the technology from an industrial setting to the consumer crafting market (Compl. ¶¶15-17).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 18 (Compl. ¶32).
    • Claim 18 requires:
      • a body with first and second ends
      • a heat plate with a partially embedded metallic member, located near the first end
      • a handle located near the second end to withstand user forces
      • a substrate located within the handle
      • a cover for the body and handle
      • a control compartment spaced from the heat plate
      • an insulation portion between the control compartment and heat plate
      • an electrical circuit in contact with the substrate
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,905,646 - "Heat Press," issued February 20, 2024

  • The Invention Explained:
    • Problem Addressed: Similar to its related patent, this invention addresses the need for a heat press that provides "uniform, consistent and optimal heat in a home-use setting" while being safe and cost-effective (’646 Patent, col. 1:24-30).
    • The Patented Solution: This patent focuses more granularly on the material composition and physical interface of the internal components to manage heat and pressure. The invention specifies an insulation portion that comprises "glass reinforced nylon" and a heat plate that features a "plurality of pressure points," which limit direct contact with the insulation layer (’646 Patent, col. 6:8-16). This structure is intended to enhance thermal isolation and promote uniform pressure application during use.
    • Technical Importance: This refined approach to thermal management and pressure distribution is critical for achieving consistent, professional-quality results in a consumer-grade, handheld device (Compl. ¶17).
  • Key Claims at a Glance:
    • The complaint asserts independent claims 8, 9, 12, and 14 (Compl. ¶42).
    • Claim 8 (representative) requires:
      • a heat plate
      • a control compartment spaced from the heat plate
      • an insulation portion between the control compartment and heat plate
      • wherein the insulation portion comprises "glass reinforced nylon"
      • wherein the heat plate includes a "plurality of pressure points" that limit contact with the insulation portion
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. D893,563 - "Heat Press," issued August 18, 2020

  • Technology Synopsis: The patent claims the ornamental design for a handheld heat press. The design features a smooth, rounded, generally square body with an integrated handle and a specific arrangement of display and control shapes on the top surface (Compl. ¶51). The complaint includes FIG. 1 of the patent, depicting the claimed ornamental design for a handheld heat press with a smooth, rounded body and specific top-surface features (Compl. p. 13).
  • Asserted Claims: The single design claim (Compl. ¶52).
  • Accused Features: The overall "non-functional visual design" of the OffNova Impression and Impression 2 heat presses, including their alleged "smooth, inviting, rounded, and essentially square overall shape with a handle" (Compl. ¶¶27, 51).

U.S. Patent No. D910,724 - "Heat Press," issued February 16, 2021

  • Technology Synopsis: This patent claims the ornamental design for a smaller, compact handheld heat press. The design is characterized by a smooth, rounded, teardrop-like shape with a prominent internal handle cutout, producing a "unified, rounded and cohesive ornamental design" (Compl. ¶61). The complaint includes FIG. 1 from the patent, illustrating a small, rounded heat press with a distinctive internal handle cutout (Compl. p. 15).
  • Asserted Claims: The single design claim (Compl. ¶62).
  • Accused Features: The overall design of the "OffNova Impression Comma Mini Heat Press Machine," which is alleged to mimic the patented design (Compl. ¶¶27, 61).

U.S. Patent No. D926,237 - "Heat Press," issued July 27, 2021

  • Technology Synopsis: This patent claims an ornamental design for a small handheld heat press similar to the D724 patent. It features a "unified, rounded and cohesive ornamental design" but distinguishes itself by disclaiming a "rounded center portion of the product" through the use of broken lines in the patent figures (Compl. ¶71). The complaint includes FIG. 1 of the patent, which shows a small heat press design where broken lines disclaim a portion of the product's center (Compl. p. 18).
  • Asserted Claims: The single design claim (Compl. ¶72).
  • Accused Features: The overall design of the "OffNova Impression Comma Mini Heat Press Machine" is accused of infringing the claimed ornamental features (Compl. ¶¶27, 71).

III. The Accused Instrumentality

Product Identification

The accused products are the "OffNova Impression Heat Press Machine," "OffNova Impression 2 Smart Heat Press Machine," and "OffNova Impression Comma Mini Heat Press Machine" (Compl. ¶27).

Functionality and Market Context

The accused products are handheld heat press machines marketed for applying designs to materials like T-shirts and totes (Compl. ¶17, implied). The complaint alleges they are "copycats" of Cricut Inc's successful EasyPress line of products, designed to "mimic the innovative look and feel" that Cricut Inc established in the consumer crafting market (Compl. ¶18). The complaint provides a visual comparison of multiple generations of its Cricut Inc EasyPress products to illustrate the innovative look and feel it claims to have established (Compl. p. 6). Plaintiff alleges Defendant targets U.S. consumers through its website and Amazon.com, and ships products from a U.S. warehouse (Compl. ¶¶10-12).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that were not provided with the filing. The narrative infringement theories are summarized below.

’758 Patent Infringement Allegations

The complaint alleges that the accused OffNova products embody all elements of at least independent claim 18 of the ’758 Patent (Compl. ¶32). The narrative theory suggests that the accused products possess the claimed structural arrangement, including a body, a heat plate, a handle with an internal substrate, a cover, a control compartment, an insulation portion, and an electrical circuit in contact with the substrate (Compl. ¶31). The complaint refers to an unattached Exhibit 1 for a detailed element-by-element breakdown (Compl. ¶32).

  • Identified Points of Contention:
    • Scope Questions: What is the scope of "substrate located within the handle"? Does the internal structure of the accused products contain an element that meets this limitation, both structurally and in relation to other components?
    • Technical Questions: What evidence demonstrates that the accused products contain "an electrical circuit...in contact with the substrate" as required by the claim? The nature and purpose of this contact may be a point of dispute.

’646 Patent Infringement Allegations

The complaint alleges infringement of at least independent claims 8, 9, 12, and 14 of the ’646 Patent (Compl. ¶42). The infringement theory focuses on the material composition and internal structure of the accused products, alleging that their insulation portion is made of "glass reinforced nylon" and that their heat plate uses a "plurality of pressure points" to limit contact with the insulation, as recited in the claims (Compl. ¶¶41, 42; ’646 Patent, cl. 8). Detailed allegations are referenced in unattached Exhibits 2-3 (Compl. ¶42).

  • Identified Points of Contention:
    • Technical Questions: Does the insulation within the accused products actually comprise "glass reinforced nylon"? A factual dispute may arise over the material science and composition of the accused devices.
    • Scope Questions: Does the interface between the heat plate and insulation in the accused products constitute a "plurality of pressure points" that "limit" contact in the manner claimed, or is the nature of the contact different from that described in the patent?

V. Key Claim Terms for Construction

For the ’758 Patent

  • The Term: "substrate located within the handle" (cl. 18)
  • Context and Importance: This term defines a key internal structural component. Its construction will be critical for determining infringement, as the dispute may turn on whether the accused devices contain an analogous component that performs a similar function. Practitioners may focus on this term to understand the required internal architecture of the device.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim term "substrate" is general and not explicitly defined, potentially allowing for a range of materials or structures to meet the limitation.
    • Evidence for a Narrower Interpretation: The specification repeatedly refers to this element as a "metal substrate 20" made from "sheet metal, such as aluminum or steel," and describes its function as providing "support in order to withstand forces from the user" (’758 Patent, col. 4:52-62). This could support a narrower construction limited to a metallic, structural support element.

For the ’646 Patent

  • The Term: "plurality of pressure points" (cl. 8)
  • Context and Importance: This term is central to claim 8's theory of improved thermal isolation and pressure distribution. The case may hinge on whether the accused product's internal design, specifically the interface between its heating element and insulation, can be characterized as having these "pressure points."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself is not given an explicit definition in the specification, potentially allowing any non-uniform contact surface to qualify.
    • Evidence for a Narrower Interpretation: The specification links these points to the function of limiting "contact of the heat plate 18 and the insulation portion 25, in order to limit heat transfer" (’646 Patent, col. 5:62-64). Figure 7 explicitly labels features as "pressure receiving points 23," suggesting a specific, intended structure rather than any incidental surface feature.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all five patents. It asserts that Defendant had knowledge of the patents, at a minimum from the parallel ITC complaint, and took active steps to encourage infringement by providing online tutorials and product manuals that instruct end-users on how to use the accused products in an infringing manner (Compl. ¶¶ 34, 44, 54, 64, 74).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on Defendant’s alleged continued infringement after receiving notice of the patents, with knowledge established "at least since the time of filing and service of this complaint" (Compl. ¶¶ 35, 45, 55, 65, 75).

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

  1. A central issue for the utility patents will be one of structural and material correspondence: Will discovery reveal that the internal components of the OffNova products—specifically the handle's "substrate", the insulation's composition of "glass reinforced nylon", and the heat plate's "pressure points"—map directly onto the specific limitations recited in the asserted claims of the ’758 and ’646 patents?
  2. For the design patents, the key question for the trier of fact will be: Does the overall ornamental appearance of the accused OffNova standard and mini heat presses create a visual impression that is substantially the same as the patented Cricut Inc designs in the eyes of an ordinary observer, especially when considering the scope of the claims and any relevant prior art?
  3. A pivotal evidentiary question will concern knowledge and intent: Given the allegation of a parallel ITC proceeding, the timing and extent of the Defendant’s knowledge of the asserted patents will be critical for adjudicating the claims of both willful and indirect infringement.