DCT

8:17-cv-00437

Commercial Copy Innovations Inc v. Ricoh Electronics Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:17-cv-00437, C.D. Cal., 03/13/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendants have sufficient minimum contacts with the district, transact business in the district, and place the accused products into a stream of commerce directed at the district.
  • Core Dispute: Plaintiff alleges that Defendants’ printers, inks, and toners infringe four patents related to inkjet ink compositions, electrophotographic toner, and remote printer interface technology.
  • Technical Context: The technologies at issue address challenges in the commercial printing and office equipment markets, including achieving durable prints on non-porous media with aqueous-based inks and enabling remote management of networked printers via standard web browsers.
  • Key Procedural History: Plaintiff Commercial Copy Innovations, Inc. acquired the asserted patents from the original assignee, Eastman Kodak Company. The complaint alleges that Defendants Ricoh and Lanier had knowledge of U.S. Patent No. 6,453,127 since at least March 2011, as a result of citing it in an Information Disclosure Statement during the prosecution of their own patent applications. The complaint also alleges that all Defendants received actual notice of infringement of the asserted patents via correspondence from the Plaintiff on or about March 10-13, 2017, immediately preceding the filing of the lawsuit.

Case Timeline

Date Event
1997-09-26 Priority Date for ’127 Patent
1999-11-30 Priority Date for ’466 Patent
2001-03-06 Issue Date for U.S. Patent No. 6,197,466
2002-09-17 Issue Date for U.S. Patent No. 6,453,127
2002-09-27 Priority Date for ’102 and ’777 Patents
2004-08-10 Issue Date for U.S. Patent No. 6,773,102
2005-02-01 Issue Date for U.S. Patent No. 6,848,777
2011-03-23 Ricoh cites ’127 Patent in an Information Disclosure Statement
2017-03-10 Defendants allegedly receive notice of infringement from Plaintiff
2017-03-13 Complaint Filing Date

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

U.S. Patent No. 6,773,102 - "Inkjet Printing Method for an Ink/Receiver Combination"

The Invention Explained

  • Problem Addressed: The patent’s background section describes the difficulty of using aqueous-based inkjet inks to produce durable, high-quality images on non-absorbing substrates like untreated vinyl ( Compl. ¶26; ’102 Patent, col. 1:25-44). Prior solutions involving solvent-based or UV-curable inks raised environmental, health, and safety concerns, while existing aqueous inks suffered from poor durability or high viscosity that made them unsuitable for reliable inkjet printing (’102 Patent, col. 1:45-65).
  • The Patented Solution: The invention claims a method of printing that uses a specific aqueous ink formulation on a non-absorbing substrate. The ink's key component is a polymer binder that is chemically designed to be dispersible but insoluble in the aqueous ink, and which contains less than 25% hydrophilic monomer. This formulation, when printed and subjected to a heating step, is intended to produce a durable and water-resistant image without the drawbacks of prior art inks (’102 Patent, Abstract; col. 2:13-33).
  • Technical Importance: This technology sought to provide the market with the environmental and printhead-reliability advantages of water-based inks while achieving the durability required for commercial applications like outdoor banners and signs on non-porous media (’102 Patent, col. 1:32-44).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶29).
  • The essential elements of Claim 1 are:
    • A method of inkjet printing comprising providing a printer,
    • loading the printer with a non-absorbing substrate,
    • loading the printer with an aqueous inkjet ink containing a pigment, a specific polymer binder (dispersible but insoluble, <25% hydrophilic monomer), a surfactant, and a humectant, and
    • printing on the substrate accompanied by a heating step.
  • The complaint reserves the right to assert additional claims of the ’102 Patent (Compl. ¶35).

U.S. Patent No. 6,848,777 - "Aqueous Inkjet Ink and Receiver Combination"

The Invention Explained

  • Problem Addressed: The patent addresses the same technical challenge as the ’102 Patent: creating durable printed images on non-absorbing materials with environmentally safer aqueous inks. It notes that prior attempts often resulted in poor adhesion and durability (’777 Patent, col. 1:38-51).
  • The Patented Solution: Rather than claiming a method, this patent claims the combination of the ink and the receiver as a system. The invention is an aqueous inkjet ink—comprising a pigment, a polymer binder that is dispersible but insoluble and has less than 25% hydrophilic monomer, a surfactant, and a humectant—in combination with a non-absorbing receiver substrate (’777 Patent, Abstract; col. 2:10-21). This protects the consumable set itself.
  • Technical Importance: By patenting the ink-and-receiver combination, the invention provides protection for the specific consumable products marketed for use in creating durable prints, a crucial aspect of the business model in the printing industry (’777 Patent, col. 2:35-46).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶51).
  • The essential elements of Claim 1 are:
    • An aqueous inkjet ink and receiver combination,
    • wherein the ink comprises a pigment, a polymer binder (<25% hydrophilic monomer, dispersible but insoluble), a surfactant, and a humectant,
    • and wherein the receiver comprises a non-absorbing substrate.
  • The complaint reserves the right to assert additional claims of the ’777 Patent (Compl. ¶57).

Multi-Patent Capsule: U.S. Patent No. 6,197,466

  • Patent Identification: U.S. Patent No. 6,197,466, "Electrophotographic Toner Surface Treated with Metal Oxide," issued March 6, 2001.
  • Technology Synopsis: This patent describes an electrophotographic (e.g., laser printer) toner designed for improved image quality. The invention is a toner composition where fine metal oxide particles are partially embedded below the surface of the toner particles, rather than simply mixed as a surface additive ('466 Patent, col. 2:58-61). This specific configuration is intended to create more stable triboelectric charging, which in turn reduces unwanted background toner deposition and improves printed character formation (Compl. ¶70; ’466 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least Claim 9 (Compl. ¶73).
  • Accused Features: The Ricoh PxP-EQ Toner, Savin brand LP Toner, and Lanier 4800038 Black Toner are accused of infringement. The complaint alleges these toners are made by mixing toner particles with metal oxides in a manner that causes at least a portion of the oxides to become embedded below the toner particle surface (Compl. ¶¶75, 76, 82).

Multi-Patent Capsule: U.S. Patent No. 6,453,127

  • Patent Identification: U.S. Patent No. 6,453,127, "Establishment at a Remote Location of an Internet/Intranet User Interface to a Copier/Printer," issued September 17, 2002.
  • Technology Synopsis: This patent addresses a method for remotely controlling a printer over a network without requiring platform-specific software to be pre-installed on the user's computer. The solution involves a printer equipped with a web server that downloads software, such as Java applets, to a remote user's standard web browser upon connection ('127 Patent, Abstract). This downloaded software then generates a full-featured user interface on the remote machine, enabling real-time monitoring, configuration, and job submission (Compl. ¶89; '127 Patent, col. 2:48-61).
  • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶92).
  • Accused Features: The "Web Image Monitor" functionality included with numerous Ricoh, Savin, and Lanier printer/copier models is accused of infringement. This feature is alleged to provide remote users with configuration and operational control of the devices through a web browser via downloadable software (Compl. ¶¶94, 102).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities fall into three categories:

  1. Inkjet Systems: Ricoh Pro L4130 and L4160 printers used with L4160 Pro AR Ink Packs; Mimaki JV400-130LX and JV400-160LX printers used with LX101 latex inks (Compl. ¶¶13, 20).
  2. Toner Products: Ricoh PxP-EQ Toner, Savin brand LP Toner Cassettes, and Lanier 4800038 Black Toner (Compl. ¶¶14, 15, 16).
  3. Networked Printers: A wide range of Ricoh, Savin, and Lanier printers, copiers, and scanners that incorporate the "Web Image Monitor" feature, such as the MP W7100/W8140 and MP 402SPF series devices (Compl. ¶¶92-96, 102).

Functionality and Market Context

  • The complaint alleges the accused inkjet printers and inks are specifically advertised for producing durable prints on non-absorbing substrates like plastic, vinyl, and clear film for commercial applications such as signs and banners (Compl. ¶¶13, 16, 20). The Ricoh, Lanier, and Savin brands are described as comprising the "Ricoh Family Group," with products that are "largely identical but are sold through different distribution channels" (Compl. ¶18).
  • The accused toners are used in various office printers and are alleged to contain specific compositions of metal oxides mixed with toner particles (Compl. ¶¶14, 15, 16, 75).
  • The accused networked printers are alleged to implement a "Web Image Monitor" that uses downloadable software to allow remote users to configure and operate the devices via a web browser (Compl. ¶94).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,773,102 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A) providing an ink jet printer that is responsive to digital data signals; Defendants manufacture, sell, and operate inkjet printers (e.g., Ricoh Pro L4160, Mimaki JV400-160LX) that print in response to digital data. ¶¶29, 40 col. 2:21-22
B) loading said printer with an ink jet recording element comprising a non-absorbing substrate; The accused method involves loading the printers with non-absorbing media such as vinyl, PET, and other plastic films. ¶¶29, 40 col. 2:23-25
C) loading said printer with an ink jet ink composition comprising... a pigment, a polymer binder containing less than 25% of hydrophilic monomer... which is dispersible but insoluble in aqueous media...; The accused L4160 and LX101 inks are loaded into the printers and are alleged to be aqueous compositions containing a pigment and a polymer binder with the claimed properties. ¶¶26, 29, 40 col. 2:26-31
D) printing on said ink jet recording element accompanied by a heating step...; The accused printers are used to print on the non-absorbing substrate and allegedly employ a heating step during the printing process. ¶27 col. 2:32-33
  • Identified Points of Contention:
    • Technical Question: A primary factual dispute may center on the chemical composition of the accused L4160 and LX101 inks. The complaint alleges, based on "information and belief" and "analysis," that the polymer binders meet the claim requirements of being "dispersible but insoluble" and containing "less than 25% of hydrophilic monomer" (Compl. ¶¶13, 20). The evidence supporting this characterization will be a key issue for discovery and expert testimony.
    • Scope Question: The claim requires printing "accompanied by a heating step." The precise timing and function of the heating mechanism in the accused printers relative to the patent's disclosure raises a question of claim scope. Whether the accused process constitutes "accompanying" the printing as claimed may be a point of construction.

U.S. Patent No. 6,848,777 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An aqueous inkjet ink and receiver combination wherein said aqueous ink jet ink comprises: a pigment; a polymer binder containing less than 25% of hydrophilic monomer by weight of the total polymer, the binder being dispersible but insoluble in aqueous media; at least one surfactant; a humectant; The accused combination consists of the L4160 and LX101 inks, which are alleged to be aqueous inks containing a pigment, a polymer binder with the specified properties, a surfactant, and a humectant. ¶¶48, 51, 62 col. 2:12-20
and wherein the receiver comprises a non-absorbing substrate. The accused combination includes the use of the inks with non-absorbing substrates such as vinyl, PVC, and other films. ¶¶48, 51, 62 col. 2:21-21
  • Identified Points of Contention:
    • Technical Question: As with the ’102 Patent, the central technical question is whether the accused inks' polymer binders actually possess the properties of being "dispersible but insoluble in aqueous media" and having less than 25% hydrophilic monomer content. Proving these specific chemical attributes will be critical to the infringement case.
    • Legal Question: The claim covers a "combination." The complaint alleges direct infringement through making, using, and selling, as well as indirect infringement. A potential dispute may arise over how the separate sales of printers and ink cartridges constitute infringement of the claimed combination, likely focusing on evidence of inducement through marketing and instructions for the intended use.

V. Key Claim Terms for Construction

  • The Term: "dispersible but insoluble in aqueous media" (’102 Patent, Claim 1; ’777 Patent, Claim 1)

    • Context and Importance: This phrase defines the central, distinguishing feature of the polymer binder in the ink patents. The infringement analysis for both the ’102 and ’777 patents depends entirely on whether the binders in the accused Ricoh and Mimaki inks meet this definition. Practitioners may focus on this term because it is a technical characteristic that is not readily apparent and will require expert analysis to resolve.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states that the hydrophobic polymer binder needs to be "sufficiently stable as a dispersion" to ensure good ink storage stability and prevent nozzle clogging (’102 Patent, col. 2:58-61). This language could support an interpretation focused on the functional behavior of the polymer in the ink (i.e., it remains as stable particles) rather than a strict chemical definition of insolubility.
      • Evidence for a Narrower Interpretation: The patent explicitly distinguishes the invention from prior art where a binder is "soluble in the aqueous vehicle" (’102 Patent, col. 1:60-61). This direct contrast suggests "insoluble" is intended to have a specific, limiting meaning. The stated goal of achieving an image that is durable to water after printing further supports an interpretation that the binder must be fundamentally water-insoluble once dried on the substrate (’102 Patent, col. 2:63-64).

  • The Term: "embedded" (’466 Patent, Claim 1)

    • Context and Importance: This term describes the physical state of the metal oxide particles relative to the toner particles, which is the key inventive concept of the ’466 patent. Proving infringement requires showing that the oxides in the accused toners are physically "embedded" and not merely loose surface additives.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification notes that the process of "applying the surface treatment could cause embedment," suggesting that any mixing process that results in some degree of sub-surface particle location could meet the definition (’466 Patent, col. 2:59-60).
      • Evidence for a Narrower Interpretation: The patent describes a specific "high energy intensity mixing" process that results in "embedment of the metal oxide in the toner particle surface" and a corresponding "decrease in the surface concentration of metal oxide" (’466 Patent, col. 3:51-56). A defendant could argue that "embedded" requires this specific physical result, potentially quantifiable by surface analysis techniques mentioned in the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for the ’102 and ’777 patents. Inducement is alleged based on Defendants providing user manuals, brochures, and marketing materials that allegedly instruct customers to use the accused printers and inks together on non-absorbing substrates in an infringing manner (Compl. ¶¶30, 32, 53, 54). Contributory infringement is alleged on the basis that the accused ink packs are a material component of the invention, are especially designed for the infringing use, and have no substantial non-infringing use (Compl. ¶¶33, 34, 55, 56).
  • Willful Infringement: The complaint alleges willful infringement for all four asserted patents. For the ’127 patent, it alleges pre-suit knowledge against Ricoh and Lanier dating to at least March 2011, based on their citation of the patent in an IDS during their own patent prosecution (Compl. ¶¶90, 100). For all patents, it alleges actual knowledge as of March 2017 based on notice letters sent by Plaintiff, and asserts that Defendants' continued infringement is objectively reckless (e.g., Compl. ¶¶37, 59, 79, 99).

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

  • A core issue will be one of technical evidence: Can the Plaintiff develop sufficient factual evidence through discovery and expert testing to prove the specific chemical and physical properties alleged in the complaint? This includes demonstrating that the accused ink binders are "dispersible but insoluble" under the ’102 and ’777 patents, and that the accused toner additives are physically "embedded" as required by the ’466 patent.
  • A second key issue will be one of claim construction and technological scope: Can the term "downloadable software," described in the context of 1997-era "Java applets" in the ’127 patent, be construed to cover the modern scripting technologies allegedly used in the accused "Web Image Monitor"? The resolution of this and other claim construction disputes, such as the meaning of "embedded," will be critical to determining the scope of the patents.
  • A final question will center on knowledge and intent: For the willfulness claims, can the Plaintiff establish that Defendants had the requisite knowledge prior to the March 2017 notice letters? The allegation that Ricoh and Lanier cited the ’127 patent in a 2011 IDS presents a more concrete basis for pre-suit knowledge for that patent than the more general "state of the art" allegations for the ink and toner patents.