Cricut Inc v. Zhan

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Cricut, Inc. (Delaware)
  • Defendant: LiPing Zhan (China)
  • Plaintiff’s Counsel: Snell & Wilmer L.L.P.; McDermott Will & Emery LLP
• Case Identification: 2:24-cv-00746, D. Utah, 10/04/2024
• Venue Allegations: Venue is asserted based on the defendant being a foreign resident who has allegedly committed acts of infringement in the district by selling products through established distribution channels like Amazon.com into Utah.
• Core Dispute: Plaintiff alleges that Defendant’s handheld heat press machines infringe a utility patent and a design patent related to the internal construction and external appearance of heat press devices.
• Technical Context: The technology concerns handheld heat presses designed for the consumer and "Do-It-Yourself" crafting market, used to apply iron-on graphics and materials to fabrics.
• Key Procedural History: The complaint notes that the asserted patents are also the subject of a parallel investigation against the Defendant before the U.S. International Trade Commission (ITC), which may affect the timing and substance of this district court case.

Case Timeline

Date	Event
2017-08-01	Priority Date for U.S. 11,905,646 Patent
2018-08-01	Filing Date for U.S. D893,563 Patent
2020-08-18	U.S. D893,563 Patent Issues
2024-02-20	U.S. 11,905,646 Patent Issues
2024-10-04	Complaint Filed

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

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

The Invention Explained

• Problem Addressed: The patent identifies a need in the market for a heat press suitable for home use, noting that prior industrial presses were often "large, unwieldy, unsafe, and made with expensive materials" (’646 Patent, col. 1:28-30).
• The Patented Solution: The invention is a handheld heat press with a specific internal architecture designed for safety and cost-effectiveness. The core of the solution is an "insulation portion" with multiple, thermally isolated layers positioned between the hot heat plate and the user-facing handle and control compartment (’646 Patent, col. 5:26-45; Fig. 8B). This design allows all electrical components to be housed safely within the compact device, providing uniform heat in a home setting (’646 Patent, Abstract; col. 4:5-7).
• Technical Importance: This technology sought to translate the function of an industrial tool into a portable, consumer-friendly product for the crafting market (’646 Patent, col. 1:30-33).

Key Claims at a Glance

• The complaint asserts independent claims 8, 9, and 12 (Compl. ¶25).
• Independent Claim 8 requires, among other things:
  • A heat plate, a control compartment, and an insulation portion positioned between them.
  • The insulation portion must comprise "glass reinforced nylon."
  • The heat plate must have a "plurality of pressure points" that limit its contact with the insulation portion.
• Independent Claim 9 requires, among other things:
  • A body with a heat plate at one end and a handle, hand clearance area, and control panel at the other.
  • The hand clearance area is defined by a "concave portion."
  • Specific geometric relationships between planes bisecting the handle and the planar surface of the display.
• Independent Claim 12 requires, among other things:
  • A similar body, handle, and control panel arrangement as claim 9.
  • The "concave portion" defining the hand clearance area must have an "apex" that is closer to the heat plate end of the body than the control panel is.
• The complaint does not explicitly reserve the right to assert dependent claims.

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

The Invention Explained

• Problem Addressed: The complaint alleges that before its products, no other heat presses had the same "innovative look and feel," suggesting a market need for a distinct product identity (Compl. ¶13).
• The Patented Solution: The patent protects the ornamental, non-functional design of a heat press. The complaint characterizes this design as a "smooth, inviting, rounded, and essentially square overall shape with a handle" (Compl. ¶34). The claimed design, illustrated in the patent's figures, establishes a specific aesthetic for the device (D’563 Patent, Figs. 1-8). The complaint includes a figure from the patent to illustrate the claimed ornamental design, showing a rounded, generally square-shaped device with an integrated handle and top-mounted controls (Compl. p. 10).
• Technical Importance: The design creates a recognizable product appearance that, according to the complaint, promotes consumer awareness and trust (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts the single claim of the D’563 Patent (Compl. ¶35).
• Design patents contain a single claim for the ornamental design as shown in the drawings. The claim is for "The ornamental design for a heat press, as shown and described" (D’563 Patent, Claim).

III. The Accused Instrumentality

• Product Identification: Konduone Smart Heat Press Machine (Compl. ¶20).
• Functionality and Market Context: The complaint identifies the accused instrumentality as a heat press machine imported and sold in the United States through online channels such as Amazon.com (Compl. ¶¶8, 20). The complaint provides photographs of several generations of its own "EasyPress" products to illustrate the innovative "look and feel" it alleges Defendant has mimicked (Compl. p. 6). Plaintiff alleges that the accused product is part of a "deluge of copycats" designed to mimic Cricut's products and "capitalize off the industry created by Cricut" (Compl. ¶14). The complaint does not provide further technical detail on the operation of the accused product, but alleges it possesses the features claimed in the asserted patents (Compl. ¶¶24-25, 34-35).

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits 1 and 2 as providing non-limiting examples of infringement, but these exhibits were not included with the complaint filing. Therefore, the infringement allegations are summarized below in prose based on the complaint's narrative.

• '646 Patent Infringement Allegations: The complaint alleges that the Defendant's "Konduone Smart Heat Press Machine" infringes at least claims 8, 9, and 12 of the ’646 Patent (Compl. ¶25). The infringement theory is that the accused product is a heat press machine that includes the structural and compositional elements required by the claims, such as the specific arrangement of the heat plate, control compartment, and multi-layered insulation portion, as well as the claimed geometric and physical features (Compl. ¶24).
• D’563 Patent Infringement Allegations: The complaint alleges that the accused product infringes the single claim of the D’563 Patent because its ornamental design is substantially similar to the patented design (Compl. ¶35). The infringement theory is based on the ordinary observer test, asserting that the accused product copies the "smooth, inviting, rounded, and essentially square overall shape with a handle" and other ornamental features protected by the patent (Compl. ¶34).

V. Key Claim Terms for Construction

For the ’646 Patent:

• The Term: "insulation portion"

• Context and Importance: This term is central to the asserted independent claims, particularly claim 8, and captures the core safety innovation of the patent. The outcome of the case may depend on whether the internal components of the accused device meet the definition of this term as defined and described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The Summary section describes the element generally as "an insulation portion" that "includes a first layer of insulating material," which might support a less restrictive definition (’646 Patent, col. 2:49-51).
  • Evidence for a Narrower Interpretation: Claim 8 explicitly requires this portion to comprise "glass reinforced nylon" (’646 Patent, col. 8:11-12). The detailed description further specifies a multi-layer structure including a "microporous material including glass fibers" and "glass reinforced nylon," which could be used to argue for a more limited construction tied to the specific disclosed embodiments (’646 Patent, col. 5:32-45).

• The Term: "concave portion"

• Context and Importance: This geometric term defines the "hand clearance area" in independent claims 9 and 12. Infringement of these claims will hinge on whether the accused product's physical shape includes a feature that satisfies this limitation. Practitioners may focus on this term because geometric limitations are often key points of dispute.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue for the term’s plain and ordinary meaning, covering any inwardly curved surface that provides hand clearance.
  • Evidence for a Narrower Interpretation: A party could argue that the scope of "concave portion" is limited by the patent’s drawings, such as the specific curve shown under handle (16) in Figures 2 and 8A (’646 Patent, Figs. 2, 8A). The claim language "defined by a concave portion" could be argued to tie the term's meaning more closely to the depicted embodiments (’646 Patent, col. 8:8).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. It asserts that Defendant had knowledge of the patents and infringement based on the filing of this complaint and a parallel ITC complaint (Compl. ¶¶27, 37). The complaint alleges intent to induce based on Defendant's promotion and facilitation of importation and sales by its partners and resellers. Contributory infringement is alleged on the basis that the accused products are "specially made or adapted" for infringement and are not staple articles of commerce (Compl. ¶¶27, 37).
• Willful Infringement: The complaint alleges willful infringement for both patents, basing the claim on Defendant's continued infringement at least from the time of filing and service of the complaint (Compl. ¶¶28, 38).

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

1. A central question for the D’563 design patent will be one of visual similarity: would an ordinary observer, familiar with the prior art, be deceived into purchasing the Defendant's "Konduone" product, believing it to be the Plaintiff's product, based on the similarity of their overall ornamental designs?
2. A key evidentiary issue for the ’646 utility patent will be one of technical correspondence: does the internal construction of the accused product contain the specific materials (e.g., "glass reinforced nylon") and structural features (e.g., a "concave portion" with an "apex") required by the asserted independent claims, or is there a material difference in composition or geometry?
3. The parallel ITC investigation will likely be significant. A critical procedural question is how findings from that expedited forum—on issues such as infringement, validity, and domestic industry—might influence discovery, claim construction, and potential remedies in this district court action.