DCT
8:17-cv-01143
Commercial Copy Innovations Inc v. Xerox Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Commercial Copy Innovations, Inc. (Delaware)
- Defendant: Xerox Corporation (New York)
- Plaintiff’s Counsel: S|H|K Legal, APC; Friedman, Suder & Cooke
- Case Identification: Commercial Copy Innovations, Inc. v. Xerox Corporation, 8:17-cv-01143, C.D. Cal., 07/05/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant maintains a regular and established place of business in the district, offers for sale and sells the accused products in the district, and directs its products into the stream of commerce with the knowledge they will be sold or used there.
- Core Dispute: Plaintiff alleges that Defendant’s electrophotographic toners infringe a patent on toner composition and that its network-enabled printers infringe a patent related to remote printer management via a web-based user interface.
- Technical Context: The patents address two distinct areas of digital printing technology: the chemical composition of toner to improve print quality and the software architecture for managing printers over a network.
- Key Procedural History: Plaintiff Commercial Copy Innovations, Inc. asserts that it acquired all rights and title to the patents-in-suit from the original developer and assignee, Eastman Kodak Company.
Case Timeline
| Date | Event |
|---|---|
| 1997-09-26 | ’127 Patent Priority Date |
| 1999-11-30 | ’466 Patent Priority Date |
| 2001-03-06 | ’466 Patent Issue Date |
| 2002-09-17 | ’127 Patent Issue Date |
| 2017-07-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,197,466 - "Electrophotographic Toner Surface Treated with Metal Oxide," issued March 6, 2001
The Invention Explained
- Problem Addressed: The patent’s background section describes the technical challenge of unstable triboelectric charging in toner, which can lead to inconsistent image density, unwanted background toner deposition ("background"), and airborne toner particles ("dusting") in printing systems (’466 Patent, col. 1:31-44, col. 2:1-4).
- The Patented Solution: The invention is a toner composition where metal oxide particles (such as titanium or silicon dioxide) are mixed with toner particles using a process that causes at least a portion of the metal oxide to become "embedded" below the surface of the toner particles (’466 Patent, col. 2:50-59, col. 9:1-5). This embedment, as opposed to simple surface adhesion, is described as creating toners with more stable charge characteristics, which in turn reduces image defects and improves print quality (’466 Patent, col. 2:50-59).
- Technical Importance: The specified toner formulation claims to provide more consistent print quality and cleaner printer operation by stabilizing the electrostatic properties of the toner itself, potentially reducing the need for complex active process controls within the printer (’466 Patent, col. 1:38-44).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶18).
- The essential elements of independent claim 9 are:
- An electrophotographic toner composition comprising toner particles and at least one particulate metal oxide dispersed with the toner particles such that at least a portion of the metal oxide particles is embedded below the surface of the toner particles,
- the metal oxide content being from 0.1 to 5.0 weight percent of the toner composition,
- and selected from the group consisting of titanium dioxide, silicon dioxide, and mixtures thereof.
- The complaint expressly reserves the right to assert additional claims of the ’466 Patent (Compl. ¶23).
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
The Invention Explained
- Problem Addressed: The patent describes the difficulty of managing networked printers from remote computers, which traditionally required users to have specific, platform-dependent software installed on their local machines. This created administrative burdens for software installation and updates and lacked real-time, bidirectional communication with the printer (’127 Patent, col. 1:31-44).
- The Patented Solution: The invention proposes a printer with an on-board network web server that downloads a platform-independent application, or "applet," to a user's standard web browser on demand (’127 Patent, col. 2:52-58). This applet then establishes a direct communication channel with a "user interface supervisor" on the printer, creating a full-featured, real-time user interface within the browser without requiring any pre-installed proprietary software on the user's computer (’127 Patent, col. 5:17-23, col. 6:11-17).
- Technical Importance: This architecture leverages the ubiquity of web browsers to provide a universal, zero-installation method for remotely monitoring and controlling network printers, simplifying administration and improving user accessibility (’127 Patent, col. 2:46-52).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶30).
- The essential elements of independent claim 1 are:
- A copier or printer apparatus comprising a marking engine, a user interface supervisor, and a network web server.
- The network web server downloads software to a remote computer to establish a user operational printer interface display screen for communicating print job requirements.
- The interface display screen provides control of the apparatus by placing control functions on the screen.
- The web server has a documents file memory, accessible from both the local and remote locations, that retains the print job status.
- The web server downloads "applets" that provide a program for the remote computer to process data for the printer interface display screen.
- The complaint expressly reserves the right to assert additional claims of the ’127 Patent (Compl. ¶34).
III. The Accused Instrumentality
- Product Identification: The complaint names two categories of accused products:
- "Xerox Toner," with a specific example of "Xerox 106R02759 Black Toner" used in printers like the Xerox Phaser and WorkCentre series (Compl. ¶¶12, 18).
- "Xerox Printers" implemented with the "CentreWare Internet Services utility," including models from the ColorQube, DocuColor, Phaser, VersaLink, and WorkCentre product families (Compl. ¶¶12, 30-31).
- Functionality and Market Context:
- The accused Xerox Toner is an electrophotographic toner composition used for printing in Xerox laser printers and copiers (Compl. ¶19). The complaint alleges its physical and chemical composition infringes the ’466 Patent.
- The accused Xerox Printers are network-enabled printing devices. The allegedly infringing functionality resides in the "CentreWare Internet Services utility," which allows remote users to access the printer through a standard web browser to monitor status, configure print settings, and command printing operations (Compl. ¶¶31-32).
IV. Analysis of Infringement Allegations
’466 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An electrophotographic toner composition comprising toner particles and at least one particulate metal oxide dispersed with the toner particles... | Xerox Toner is alleged to be an electrophotographic toner composition containing toner particles and dispersed metal oxide particles, specifically silicon and/or titanium oxides (Compl. ¶20). | ¶20 | col. 9:1-5 |
| ...such that at least a portion of the metal oxide particles is embedded below the surface of the toner particles, | Based on "HAADF STEM tomography imaging and energy-dispersive X-ray spectroscopy analysis" of a sample, Plaintiff alleges that metal oxide particles were found embedded below the surfaces of the toner particles in the accused Xerox Toner (Compl. ¶21). | ¶21 | col. 9:1-5 |
| the metal oxide content being from 0.1 to 5.0 weight percent of the toner composition... | Analysis of a sample of Xerox Toner allegedly found a collective weight of titanium and silicon oxides of "about 0.54%," which falls within the claimed range (Compl. ¶20). | ¶20 | col. 9:28-30 |
| ...and selected from the group consisting of titanium dioxide, silicon dioxide, and mixtures thereof. | The accused Xerox Toner is alleged to contain metal oxide particles consisting of "silicon and/or titanium oxides," which falls within the claimed group (Compl. ¶20). | ¶20 | col. 9:24-27 |
’127 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A copier or printer apparatus... comprising: a marking engine... a user interface supervisor... [and] a network web server... | The accused Xerox Printers are alleged to be apparatuses that include marking engines, a web server, and the "CentreWare Internet Services utility," which allegedly performs the function of the user interface supervisor (Compl. ¶¶31-32). | ¶¶31-32 | col. 6:50-54 |
| ...network web server which downloads software to a workstation computer at a remote location to provide user interface software... for establishing a user operational printer interface display screen... | The CentreWare utility is allegedly accessible via a web browser, allowing remote users to interface with the printer, thereby establishing a user interface on the remote computer (Compl. ¶¶31-32). | ¶¶31-32 | col. 8:1-6 |
| ...the user operational printer interface display screen page additionally providing control of the apparatus at the remote location by placing apparatus control functions on the user operational printer interface display screen... | The CentreWare utility allegedly allows remote users to "configure one or more print settings of the Xerox Printers, and initiate/cancel printing operations," which constitute apparatus control functions (Compl. ¶32). | ¶32 | col. 7:38-46 |
| ...the network web server having a documents file memory accessible from each the marking engine locally and the remote location that retains status the print job status... | The accused printers are alleged to be implemented with a memory for storing document files and print job statuses, which can be accessed either from a local control panel or remotely via the CentreWare utility (Compl. ¶33). | ¶33 | col. 7:44-49 |
| ...wherein the web server is operable to download applets for execution by the computer at the remote location wherein downloaded applets provide a program for the computer at the remote location to process data for the printer interface display screen... | The complaint alleges that the "CentreWare Internet Services utility operates as an applet using Java programming language" to provide the remote interface (Compl. ¶32). | ¶32 | col. 8:50-54 |
- Identified Points of Contention:
- ’466 Patent - Factual/Technical Question: The central infringement question appears to be factual: does the accused Xerox Toner actually have metal oxide particles "embedded below the surface" as claimed? The complaint's reliance on specific, advanced materials analysis (HAADF STEM) suggests that this will be a key evidentiary battleground, likely involving competing expert testimony on the physical structure of the toner particles.
- ’127 Patent - Technical/Scope Question: A primary issue may be whether the architecture of the accused "CentreWare Internet Services utility" maps onto the specific functional blocks recited in claim 1. This raises questions such as: Does the utility, in its entirety or in part, meet the definition of a "user interface supervisor" as described in the patent? Further, does the system's memory function precisely as the claimed "documents file memory," which must be accessible in a specific manner and retain specific status information?
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
For the ’466 Patent:
- The Term: "embedded below the surface"
- Context and Importance: This term is the central point of novelty distinguishing the invention from conventional toners where additives are only adhered to the surface. The definition of "embedded" will determine whether the accused toner, which the complaint alleges was found to have subsurface particles via testing, falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification suggests that embedment results from a specific process, describing "high energy intensity mixing" that "resulted in embedment of the metal oxide in the toner particle surface" (’466 Patent, col. 3:53-56). A defendant may argue this process-related description limits the term to structures created by such specific high-energy methods.
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular method of embedment, only the resulting physical structure. A plaintiff may argue the term should be given its plain meaning—partially or wholly beneath the outer plane of the toner particle—irrespective of the manufacturing process used to achieve it.
For the ’127 Patent:
- The Term: "user interface supervisor"
- Context and Importance: This is not a standard industry term but a specific functional module defined by the patent. Its construction is critical because the infringement allegation hinges on mapping the accused "CentreWare Internet Services utility" to this claimed element. Practitioners may focus on this term because its definition could either encompass a wide range of remote-access server software or be limited to the specific "translator" architecture described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The detailed description defines the User Interface Supervisor as a specific software program "that translates user requests coming from Java applets... into events going to a User Applications Program" and vice-versa (’127 Patent, col. 5:17-25). This suggests a specific intermediary or translation layer, which a defendant might argue the accused product lacks.
- Evidence for a Broader Interpretation: The claims and overall description portray the supervisor more generally as the software component "for controlling interface between users and the marking engine" (’127 Patent, col. 7:32-34). A plaintiff could argue that any server-side software that manages the remote user session and communicates with the printer's core functions meets this broader definition.
VI. Other Allegations
- Indirect Infringement: While the factual allegations in the body of the complaint focus on direct infringement by Xerox, the prayer for relief seeks judgment that claims of the Asserted Patents have been "indirectly infringed by Defendant, to the extent Defendant contributed to or induced such direct infringement by others" (Compl. p. 8, ¶a).
- Willful Infringement: The complaint alleges that Xerox’s infringement was characterized by "objective recklessness" and seeks enhanced damages under 35 U.S.C. § 284 (Compl. ¶¶25, 36). The complaint does not specify whether this alleged recklessness is based on pre- or post-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on two central questions, one evidentiary and one of claim scope:
- A key evidentiary question will be one of physical structure: Does the accused Xerox Toner possess metal oxide particles "embedded below the surface" as required by the ’466 Patent? This is a purely factual dispute that will likely be decided by a battle of experts interpreting advanced materials-characterization data.
- A core issue will be one of architectural mapping: Can the functions and components of Xerox’s "CentreWare Internet Services" software be mapped onto the specific, multi-part system recited in claim 1 of the ’127 Patent? This will require the court to first construe terms like "user interface supervisor" and then determine if the accused system embodies that precise software architecture.