DCT
8:17-cv-01145
Commercial Copy Innovations Inc v. Xerox Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Commercial Copy Innovations, Inc. (Delaware)
- Defendant: Brother International Corporation (Delaware); Brother Industries (U.S.A.), Inc. (Delaware)
- Plaintiff’s Counsel: Friedman, Suder & Cooke
- Case Identification: 8:17-cv-01145, C.D. Cal., 07/05/2017
- Venue Allegations: Venue is asserted based on Defendant Brother International Corporation maintaining a regular and established place of business in the district, including a Printer Customer Support Center and a sales office, and offering the accused products for sale within the district.
- Core Dispute: Plaintiff alleges that Defendant’s toner products infringe a patent related to toner particle composition, and that Defendant's network-enabled printers infringe a patent related to remote user interfaces for controlling printers via a web browser.
- Technical Context: The lawsuit addresses two distinct technologies: the chemical and physical composition of electrophotographic toner and the software architecture for managing networked printers.
- Key Procedural History: The complaint states that the asserted patents were originally developed by Eastman Kodak Company and that Plaintiff Commercial Copy Innovations, Inc. acquired all rights, title, and interest in the patents for the purpose of enforcement.
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"
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges in electrophotographic printing related to inconsistent triboelectric charging of toner particles. This instability can lead to image defects such as "background" (toner depositing in white areas), "dusting" (airborne toner particles), and "character voids" (missing portions of printed characters), all of which degrade print quality (ʼ466 Patent, col. 1:21-26, 2:1-4).
- The Patented Solution: The invention proposes a toner composition where fine metal oxide particles (such as titanium dioxide or silicon dioxide) are mixed with toner particles in a manner that causes at least a portion of the metal oxides to become "embedded" below the surface of the toner particles (ʼ466 Patent, col. 10:2-5). This surface treatment is intended to create toners with more stable triboelectric charge, leading to improved image quality with fewer voids and less background haze (ʼ466 Patent, col. 2:30-35, 2:61-64).
- Technical Importance: The invention aimed to enhance the reliability and quality of laser printing by directly manipulating the surface properties of toner, which is a critical factor in controlling how toner adheres to the drum and transfers to paper (ʼ466 Patent, col. 1:21-26).
Key Claims at a Glance
- The complaint asserts independent Claim 9 (Compl. ¶21).
- The essential elements of 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 (Compl. ¶25).
U.S. Patent No. 6,453,127 - "Establishment at a Remote Location of an Internet/Intranet User Interface to a Copier/Printer"
The Invention Explained
- Problem Addressed: The patent identifies the difficulty of managing networked printers in the prior art, which required installing and maintaining specific, platform-dependent software on every user's computer. This process was cumbersome for system administrators, especially when software upgrades were needed, and did not support real-time, bidirectional communication with the printer (ʼ127 Patent, col. 1:31-44).
- The Patented Solution: The invention describes a system where the printer hosts its own network web server. A user at a remote computer can access the printer using a standard, Java-enabled web browser without any pre-installed proprietary software (ʼ127 Patent, col. 2:54-59). The printer's web server downloads an "applet" to the user's computer, which then executes to create a full operational user interface. This allows the remote user to view printer status, manage jobs, and configure settings in real-time ('127 Patent, Abstract; col. 6:11-24).
- Technical Importance: This architecture simplified network printer administration by leveraging the platform-independent nature of web browsers and Java applets, thereby eliminating the need for client-side software installation and enabling direct, real-time interaction between a user and a printer over a network (ʼ127 Patent, col. 2:48-54).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶32).
- The essential elements of 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 user's workstation computer to establish a user operational printer interface display screen.
- The web server is operable to download "applets" for execution by the remote computer.
- The downloaded applets provide a program for the remote computer to process data for a printer interface display screen page for viewing by the remote user.
- The complaint expressly reserves the right to assert additional claims (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The complaint accuses "Brother Toner," with "Brother TN660 Black Toner" cited as a specific example (Compl. ¶¶ 15, 21).
- The complaint also accuses "Brother Printers" that are compatible with "Brother's Web Based Management utility," citing models such as the DCP-L5500DN, DCP-L5600DN, DCP-L5650DN, and DCP-L5700DN as examples (Compl. ¶¶ 13, 32).
Functionality and Market Context
- The accused "Brother Toner" is an electrophotographic toner composition for use in Brother laser printers (Compl. ¶22). The complaint alleges it contains metal oxides, specifically silicon and/or titanium oxides, dispersed within the toner (Compl. ¶23).
- The accused "Brother Printers" allegedly include a "Web Based Management utility" that allows users to remotely monitor, configure, and manage the devices via a standard web browser (Compl. ¶33). The complaint alleges this utility is accessed by navigating to the printer's IP address and functions as a Java-based "applet" to provide an interface for controlling the printer's operations (Compl. ¶34).
IV. Analysis of Infringement Allegations
'466 Patent Infringement Allegations
No probative visual evidence provided in complaint.
| 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... | Brother Toner is described as an electrophotographic toner composition comprising toner particles and metal oxide particles dispersed within. | ¶22, ¶23 | col. 10:1-3 |
| ...such that at least a portion of the metal oxide particles is embedded below the surface of the toner particles... | Analysis of a sample of Brother TN660 Black Toner using HAADF STEM tomography imaging and energy-dispersive X-ray spectroscopy allegedly found "several such metal oxide particles embedded below the respective surfaces of toner particles." | ¶24 | col. 10:3-5 |
| ...the metal oxide content being from 0.1 to 5.0 weight percent of the toner composition... | The metal oxide content of Brother Toner is alleged to be "between 0.1 to 5.0 weight percent," and analysis of a sample allegedly found approximately 1.11% by weight. | ¶23 | col. 10:5-7 |
| ...and selected from the group consisting of titanium dioxide, silicon dioxide, and mixtures thereof. | The metal oxide is alleged to consist of "silicon and/or titanium oxides." Analysis of a sample allegedly found it to "comprise... collectively, of titanium and silicon oxides." | ¶23, ¶24 | col. 10:7-9 |
- Identified Points of Contention:
- Technical Question: The infringement claim hinges on scientific evidence. A key question will be whether the plaintiff's testing methodologies (e.g., STEM tomography) can withstand scrutiny and definitively prove that metal oxide particles are "embedded below the surface," as opposed to merely adhering to the surface.
- Scope Questions: The patent specification links the "embedment" of particles to "high energy intensity mixing" ('466 Patent, col. 4:51-58). A potential dispute is whether the term "embedded" should be construed to implicitly require a result from such a high-intensity process, which may raise questions about the manufacturing method of the accused toner.
'127 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A copier or printer apparatus... comprising... a network web server which downloads software to a workstation computer at a remote location... | The Brother Printers are alleged to include a "web server accessible via a web browser" that provides a "Web Based Management utility" to remote users. | ¶34, ¶33 | col. 7:35-37 |
| ...wherein the web server is operable to download applets for execution by the computer at the remote location... | The complaint alleges that the "Web Based Management utility operates as an applet using Java programming language." | ¶34 | col. 7:50-51 |
| ...wherein downloaded applets provide a program for the computer at the remote location to process data for the printer interface display screen page for viewing by the remote user. | The utility allegedly allows remote users to interface with the printers to view status and command operations, effectively creating an interface on the remote computer. | ¶33 | col. 7:52-55 |
- Identified Points of Contention:
- Technical Question: A central factual question is whether the accused "Web Based Management utility" functions as an "applet" in the manner described by the patent. The complaint specifically alleges a "Java programming language" applet (Compl. ¶34), but modern web applications often use other client-side technologies like JavaScript or WebAssembly. The actual technology employed by the accused products will be critical.
- Scope Questions: Given the patent's 1997 priority date, the term "applet" will be a key term for construction. The court will have to determine whether "applet" is limited to the specific technology of Java Applets, which are heavily referenced in the specification ('127 Patent, col. 4:14, 5:60-65), or if it can be interpreted more broadly to encompass other forms of downloaded, client-side executable code common today.
V. Key Claim Terms for Construction
For the '466 Patent
- The Term: "embedded below the surface"
- Context and Importance: This limitation appears to be the primary point of novelty over prior art surface treatments. The infringement case rests on proving this specific physical arrangement exists in the accused toner. Practitioners may focus on this term because its definition will determine the type and strength of scientific evidence needed to prove infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of Claim 9 requires only that "at least a portion" of the particles be embedded, suggesting that complete or majority embedment is not required ('466 Patent, col. 10:4-5).
- Evidence for a Narrower Interpretation: The specification repeatedly connects the degree of embedment to the "mixing intensity" used during manufacturing, detailing how "high energy intensity mixing" results in embedment ('466 Patent, col. 4:51-58). A defendant may argue that "embedded" should be construed as the result of a particular type of process, thereby narrowing the claim's scope.
For the '127 Patent
- The Term: "applet"
- Context and Importance: The patent’s solution relies on downloading an "applet" to achieve platform independence, a key departure from prior art that required installing full software packages. Infringement depends on whether the accused Brother utility is an "applet." Practitioners may focus on this term because of the significant evolution of web technology since the patent's 1997 priority date.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 first refers generally to downloading "software" and later specifies that the server downloads "applets" ('127 Patent, col. 7:35, 7:50). Plaintiff may argue this suggests "applet" should be understood as a type of small, downloadable software application, not limited to a specific implementation.
- Evidence for a Narrower Interpretation: The detailed description extensively and specifically references "Java applet," the "Java Virtual Machine," and the "Java programming language" ('127 Patent, col. 5:58-65, 6:1-10). This provides strong evidence that the inventors may have contemplated a specific technology, potentially limiting the term's scope to Java Applets, which are now largely obsolete.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks judgment for indirect infringement (Compl., p. 8). However, the factual allegations in the body of the complaint focus on direct infringement and do not specify acts supporting inducement (e.g., instructions to infringe) or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement for both patents based on the defendants' "objective recklessness" (Compl. ¶¶ 27, 38). The complaint does not plead specific facts to support pre-suit knowledge of the patents, such as prior correspondence or litigation.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof and definition: For the '466 patent, can the plaintiff’s scientific evidence definitively establish that metal oxides in the accused toner are physically "embedded below the surface," and will that term be construed to cover any product with that physical characteristic, regardless of the manufacturing process used?
- A second central issue will be one of technological translation and claim scope: For the '127 patent, can the term "applet," which the patent's text links strongly to 1990s-era "Java applet" technology, be construed broadly enough to read on the modern client-side scripting technologies likely used in the accused "Web Based Management" utility?