DCT
2:18-cv-02532
Infinity Computer Products Inc v. Epson America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Infinity Computer Products, Inc. (Pennsylvania)
- Defendant: Epson America, Inc. (California)
- Plaintiff’s Counsel: Henninger Garrison Davis, LLC; Shrager, Spivey & Sachs
- Case Identification: 2:18-cv-02532, E.D. Pa., 12/05/2012
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts regular business in the district, has paying customers in the district, is registered as a foreign corporation in Pennsylvania, and operates an interactive website accessible in the district.
- Core Dispute: Plaintiff alleges that Defendant’s multi-function printers infringe four patents related to interface circuits and methods for using a conventional facsimile machine as a scanner or printer for a personal computer.
- Technical Context: The technology concerns repurposing standalone facsimile machines, common in the 1990s and early 2000s, to serve as PC peripherals, offering a lower-cost alternative to dedicated scanners and printers.
- Key Procedural History: This complaint was filed after Defendant Epson America, Inc. was severed from a prior multi-defendant lawsuit initiated by the Plaintiff in 2010. The complaint notes that two of the patents-in-suit, the '811 and '423 Patents, underwent Ex Parte Reexamination proceedings, with the U.S. Patent and Trademark Office issuing certificates in 2012 that confirmed the patentability of the claims as amended. Plaintiff alleges Defendant had pre-suit knowledge of at least the '811 and '423 patents due to their disclosure in the prior litigation.
Case Timeline
| Date | Event |
|---|---|
| 1994-04-11 | Priority Date for all Patents-in-Suit |
| 2005-05-17 | U.S. Patent No. 6,894,811 Issued |
| 2009-02-10 | U.S. Patent No. 7,489,423 Issued |
| 2010-06-30 | Prior Related Action Filed |
| 2011-10-18 | U.S. Patent No. 8,040,574 Issued |
| 2012-05-01 | '423 Patent Reexamination Certificate Issued |
| 2012-07-01 | '811 Patent Reexamination Certificate Issued |
| 2012-10-23 | U.S. Patent No. 8,294,915 Issued |
| 2012-11-16 | Defendant Severed from Prior Action |
| 2012-12-05 | Complaint Filing Date |
| 2012-12-17 | Estimated Ship Date for Accused Product WF-2520 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,894,811
- Patent Identification: U.S. Patent No. 6,894,811, "INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER," issued May 17, 2005. (’811 Patent)
- The Invention Explained:
- Problem Addressed: The patent’s background section states that dedicated scanning and printing devices for personal computers are "relatively expensive," "complicated," and often require a microprocessor, increasing cost and complexity (’811 Patent, col. 1:26-39).
- The Patented Solution: The invention proposes an interface circuit of "highly simplified design and low cost" that allows a conventional facsimile machine to be connected directly to a PC to function as a scanner or printer (’811 Patent, col. 1:40-45). The circuit works by isolating both devices from the public telephone network and using a novel "ringing circuit" to generate a simulated ring signal, which tricks the PC's modem (to receive a scan) or the fax machine (to receive a print job) into activating and communicating directly with each other (’811 Patent, Abstract; col. 2:3-21).
- Technical Importance: The invention provided a method for repurposing common and existing office hardware (facsimile machines) to serve as computer peripherals, potentially saving users the cost of purchasing separate, dedicated devices (’811 Patent, col. 1:40-45).
- Key Claims at a Glance:
- The complaint generally asserts infringement of the patent; Claim 1, as amended by the Reexamination Certificate issued July 1, 2012, is a representative independent claim (’811 Patent, p. 42 of Compl.).
- Essential elements of amended Claim 1 include:
- A method of creating a scanning capability from a facsimile machine to a computer via a bi-directional direct passive link.
- By-passing or isolating the facsimile machine and computer from the public telephone network.
- Coupling the facsimile machine to the computer.
- Conditioning the computer to receive digital facsimile signals from a scanned document.
- Conditioning the facsimile machine to transmit those signals to the computer, where the computer uses "unmodified standard protocol send/receive driver communications software."
U.S. Patent No. 7,489,423
- Patent Identification: U.S. Patent No. 7,489,423, "INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE MACHINE COUPLED TO A PC AS A SCANNER OR PRINTER," issued February 10, 2009. (’423 Patent)
- The Invention Explained:
- Problem Addressed: Similar to the ’811 Patent, the background identifies the high cost and complexity of dedicated PC scanners and printers as a problem that can be solved by leveraging the capabilities of conventional facsimile machines (’423 Patent, col. 1:35-44).
- The Patented Solution: The patent describes a method and apparatus for interfacing a PC with a facsimile machine. A key feature is a simplified circuit that generates a sine wave signal from a low-voltage DC source to simulate a telephone ring, thereby initiating a communication session between the two directly connected devices and enabling the fax machine to act as a printer for the PC (’423 Patent, Abstract; col. 2:15-28).
- Technical Importance: This technology offered a low-cost pathway for PC users to gain printing and scanning functionality by using hardware they likely already owned (’423 Patent, col. 1:49-53).
- Key Claims at a Glance:
- The complaint generally asserts infringement; Claim 1, as amended by the Reexamination Certificate issued May 1, 2012, is a representative independent claim (’423 Patent, p. 65 of Compl.).
- Essential elements of amended Claim 1 include:
- A method of transferring digital image data between a computer (with send/receive driver software) and a facsimile machine to operate it as a printing device.
- Coupling the facsimile machine to the computer via a bi-directional direct connection on a passive link.
- Conditioning the facsimile machine to receive print image data.
- Conditioning the computer to initiate transmission of print image data.
- Activating the computer's driver software to transfer the print data to the facsimile machine for printing.
Multi-Patent Capsule: U.S. Patent No. 8,040,574
- Patent Identification: U.S. Patent No. 8,040,574, "INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE MACHINE TO A PC AS A SCANNER OR PRINTER," issued October 18, 2011. (’574 Patent)
- Technology Synopsis: This patent also addresses the high cost of PC peripherals by disclosing an interface circuit to connect a conventional facsimile machine to a computer. The invention uses a simplified circuit to generate a simulated ring signal from a DC power source, which initiates a direct communication link between the devices for scanning or printing, bypassing the public telephone network (’574 Patent, Abstract; col. 1:31-53).
- Asserted Claims: The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶37).
- Accused Features: The complaint accuses Defendant’s multi-function products of infringing by including an interface circuit that allows the device to be coupled to a computer to function as a printer or scanner (Compl. ¶33).
Multi-Patent Capsule: U.S. Patent No. 8,294,915
- Patent Identification: U.S. Patent No. 8,294,915, "INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE MACHINE COUPLED TO A PC AS A SCANNER OR PRINTER," issued October 23, 2012. (’915 Patent)
- Technology Synopsis: This patent describes methods for printing and scanning using a facsimile machine connected to a computer via a bi-directional direct passive link. Upon receiving an instruction, the device can either receive print data from the computer or transmit scan data to the computer, with the data being transferred using standard facsimile machine protocols (’915 Patent, Abstract).
- Asserted Claims: The complaint alleges infringement of "one or more claims" of the patent (Compl. ¶45).
- Accused Features: The complaint alleges that Defendant’s multi-function products infringe by including an interface circuit that allows coupling to a computer for use as a printer or scanner (Compl. ¶41).
III. The Accused Instrumentality
- Product Identification: The "WorkForce WF-2520 product and similar multi-function products" (Compl. ¶17, ¶25, ¶33, ¶41).
- Functionality and Market Context: The complaint identifies the accused instrumentalities as "multi-function products" that include a "facsimile machine with an interface circuit that allows it to be coupled to a computer as a printer or scanner" (Compl. ¶17). The complaint provides a screenshot from a third-party retail website showing the "Epson® WorkForce WF-2520 Networking All-in-One Color Inkjet Printer" for sale, which establishes the product's identity and marketed capabilities (Compl. Ex. E, p. 105). The complaint alleges that Defendant advertises, sells, and provides instructions for these products through its own website and other distributors (Compl. ¶20, ¶28).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,894,811 Infringement Allegations
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of creating a scanning capability... with scanned image digital data signals transmitted through a bi-directional direct connection via a passive link between the facsimile machine and the computer... | The accused product provides scanning functionality by connecting directly to a computer to transmit scanned image data. | ¶17 | col. 9:49-55 |
| by-passing or isolating the facsimile machine and the computer from the public network telephone line; | For scanning and printing functions, the accused product connects to a computer via a local interface (e.g., USB, network) that operates independently of any public telephone line. | ¶17 | col. 9:64-66 |
| coupling the facsimile machine to the computer; | The accused product is physically and communicatively coupled to a computer. | ¶17 | col. 9:67 |
| conditioning the computer to receive digital facsimile signals representing data on a scanned document; | The accused product's driver software configures the connected computer to receive image data when a document is scanned. | ¶17 | col. 10:1-3 |
| conditioning the facsimile machine to transmit digital signals... said computer being equipped with unmodified standard protocol send/receive driver communications software... | The accused product is configured to transmit scanned data to the computer, which utilizes driver software to receive and process the image data. | ¶17, ¶20 | col. 10:4-14 |
U.S. Patent No. 7,489,423 Infringement Allegations
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of transferring digital image data signals between a computer equipped with send/receive driver communications software and a facsimile machine to cause said facsimile machine to operate as a printing device... | The accused product functions as a printer for a computer using driver software to manage the transfer of print data. | ¶25 | col. 9:6-10 |
| (a) coupling the facsimile machine to the computer through a bi-directional direct connection via a passive link; | The accused product connects to a computer, allowing two-way communication for functions like printing and status monitoring. | ¶25 | col. 9:11-13 |
| (b) conditioning the facsimile machine to receive print image data from the computer; | The accused product is configured to accept and process print jobs sent from a connected computer. | ¶25 | col. 9:14-16 |
| (d) upon activating the send/receive driver communications software of the computer the print image digital data from the computer is transferred... | When a user initiates printing, the computer's driver software transmits the digital print data to the accused product. | ¶25, ¶28 | col. 9:21-26 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether the term "facsimile machine," as described in the context of the patents (a standalone 1990s-era device), can be construed to read on the integrated functionality of a modern All-in-One product like the WorkForce WF-2520. A related question is whether the claimed "interface circuit" can read on the internal, integrated circuitry of the accused product, as opposed to the external, add-on circuit described in the patents' embodiments.
- Technical Questions: The patents describe a "passive link" and a specific mechanism of simulating a ring signal to establish communication. The complaint does not allege facts suggesting that the accused products' modern interfaces (e.g., USB, Ethernet, Wi-Fi) operate in a technically analogous manner. The potential mismatch between the claimed communication method and the actual operation of the accused product’s interface raises a key technical question for the infringement analysis.
V. Key Claim Terms for Construction
The Term: "facsimile machine"
- Context and Importance: The patents were written to describe repurposing a "conventional" or "standard" standalone fax machine. The accused product is an integrated multi-function device. The scope of this term will be critical, as a narrow construction limited to standalone devices of the era could present a significant challenge to the infringement case.
- Evidence for a Broader Interpretation: The claims do not explicitly use the word "standalone." Plaintiff may argue that "facsimile machine" should be construed functionally to mean any apparatus capable of performing the core functions of a fax machine, regardless of integration with other features.
- Evidence for a Narrower Interpretation: The patent specifications repeatedly distinguish between the "facsimile machine" and the "PC" as separate devices being connected for the first time by the invention (’811 Patent, Fig. 2a; col. 1:11-12). This context of interfacing two distinct pieces of existing hardware may support a narrower construction.
The Term: "bi-directional direct connection via a passive link" (’811 Patent, Claim 1)
- Context and Importance: This term defines the nature of the physical and logical connection. Practitioners may focus on this term because the patents' embodiments show simple switched electrical paths, whereas the accused products use complex, active, protocol-driven interfaces like USB or networking. Whether these modern interfaces can be considered a "passive link" is a likely point of dispute.
- Evidence for a Broader Interpretation: Plaintiff may argue that in the context of the invention, "passive link" is meant to distinguish the direct connection from a connection over the public switched telephone network, and therefore any direct physical connection (like a USB cable) that bypasses the phone network meets the limitation.
- Evidence for a Narrower Interpretation: The specification describes an interface built with simple switches, jumpers, and relays to reroute signals, which is consistent with a technically passive electrical connection (’811 Patent, col. 2:45-65). Defendant may argue that a powered, protocol-based interface like USB is an "active" link and thus falls outside the claim's scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement for all asserted patents. The factual basis alleged is that Defendant provides instructions to customers on how to use the multi-function products in a manner that allegedly infringes, and solicits distributors and end-users to purchase and use the products (Compl. ¶21, ¶29, ¶37, ¶45).
- Willful Infringement: Willfulness is alleged for all asserted patents based on Defendant’s alleged prior knowledge. For the ’811 and ’423 Patents, this knowledge is alleged to have been obtained during the prior "Related Action" from which Defendant was severed (Compl. ¶19, ¶27). For the more recently issued ’574 and ’915 Patents, the complaint makes a general allegation of knowledge prior to the filing of the action without specifying the source (Compl. ¶35, ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "facsimile machine" and the concept of an "interface circuit," both rooted in the patents' context of connecting two separate, standalone devices from the 1990s, be construed to cover the integrated, internal architecture of a modern All-in-One printer?
- A key technical question will be one of operational equivalence: does the accused product's use of modern, protocol-driven interfaces like USB or network connections constitute infringement of claims that describe a "passive link" and a simulated "ring signal" to initiate communication, or is there a fundamental mismatch in the underlying technology?
- An evidentiary question for willfulness and inducement will be what specific facts Plaintiff can establish to prove Defendant had the requisite knowledge and intent, particularly for the ’574 and ’915 patents, for which the complaint does not specify the source of the alleged pre-suit knowledge.