DCT
8:17-cv-01149
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: Lexmark International, Inc. (Delaware)
- Plaintiff’s Counsel: S|H|K Legal, APC; Friedman, Suder & Cooke
- Case Identification: 8:17-cv-01149, C.D. Cal., 07/06/2017
- Venue Allegations: Venue is asserted based on Defendant’s operation of a sales office in Irvine, California, and its offers for sale and sales of accused products to customers within the district through its website and authorized dealers.
- Core Dispute: Plaintiff alleges that Defendant’s toner products infringe a patent related to electrophotographic toner composition, and that its network-enabled printers infringe a patent directed to remote user interfaces for controlling printers.
- Technical Context: The lawsuit spans two distinct technology areas: the material science of printer toner formulation and the software architecture enabling remote access and control of networked printers.
- Key Procedural History: The complaint notes that Plaintiff acquired the asserted patents from the original assignee, Eastman Kodak Company, for enforcement purposes. No other significant procedural history is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 1997-09-26 | Priority Date for U.S. 6,453,127 |
| 1999-11-30 | Priority Date for U.S. 6,197,466 |
| 2001-03-06 | U.S. Patent 6,197,466 Issues |
| 2002-09-17 | U.S. Patent 6,453,127 Issues |
| 2017-07-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,197,466 - Electrophotographic Toner Surface Treated with metal Oxide (Issued Mar. 6, 2001)
The Invention Explained
- Problem Addressed: The patent’s background section identifies technical challenges in electrophotographic printing, including inconsistent image density and "background" (unwanted toner deposition in white areas) caused by unstable triboelectric charging of toner particles. It also notes that introducing fresh toner can result in airborne "dusting" of low-charge particles, which can contaminate the printer and degrade print quality (’466 Patent, col. 1:29-50).
- The Patented Solution: The invention is an electrophotographic toner composition where toner particles are mixed with fine metal oxide powders (such as titanium dioxide or silicon dioxide) using a process that causes at least a portion of the oxide particles to become "embedded" below the surface of the toner particles. This controlled embedding, as distinct from simple surface adhesion, is described as producing toners with more stable triboelectric charge, leading to improved image quality with fewer voids in characters and reduced background density (’466 Patent, Abstract; col. 2:7-20).
- Technical Importance: The claimed toner formulation represented an effort to improve the reliability and output quality of high-speed laser printing by modifying the physical and electrical properties of the toner itself to achieve more consistent performance (’466 Patent, col. 1:21-24).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶18).
- 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 is from 0.1 to 5.0 weight percent of the toner composition,
- The metal oxide is selected from the group consisting of titanium dioxide, silicon dioxide, and mixtures thereof.
- The complaint reserves the right to assert additional claims of the ’466 Patent (Compl. ¶22).
U.S. Patent No. 6,453,127 - Establishment at a Remote Location of an Internet/Intranet User Interface to a Copier/Printer (Issued Sep. 17, 2002)
The Invention Explained
- Problem Addressed: The patent describes challenges with managing networked printers from a remote user’s computer. At the time, this often required installing specific, platform-dependent software on each user's machine, creating a significant maintenance burden for system administrators. Furthermore, users often lacked a way to get real-time status updates on their print jobs without physically going to the printer (’127 Patent, col. 1:31-44).
- The Patented Solution: The invention describes a printer apparatus containing its own network web server. A remote user, with a standard web browser, connects to the printer's web server, which then downloads software, described as "applets," to the user's computer. This downloaded software executes within the user's browser to create a full operational interface, allowing the user to configure print jobs, control the printer, and monitor job status in real time, independent of the user's computer platform (’127 Patent, Abstract; col. 2:48-67; Fig. 2).
- Technical Importance: This architecture leveraged then-emerging web technologies (web servers embedded in devices, Java applets) to provide platform-independent, real-time remote management for network printers, a significant advancement for office and enterprise environments (’127 Patent, col. 2:48-58).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶29).
- The essential elements of claim 1 include:
- A copier or printer apparatus with 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 page."
- This remote interface provides "control of the apparatus" by placing "apparatus control functions" on the display screen.
- The web server has a "documents file memory" that is accessible locally and remotely and retains print job status.
- The web server is operable to download "applets" for execution by the remote computer to process data for the interface screen.
- The complaint reserves the right to assert additional claims of the ’127 Patent (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two categories of accused products:
- "Lexmark Toner," with specific mention of Lexmark 24015SA Black Toner, used in various laser printers and copiers (Compl. ¶¶12, 18, 20).
- "Lexmark Printers" that are implemented with a "Remote Operator Panel" utility, with a non-exclusive list of dozens of printer models provided (e.g., C740, C925, CS720, CX820 series) (Compl. ¶¶12, 30).
Functionality and Market Context
- The accused "Lexmark Toner" is an electrophotographic toner composition. The complaint alleges, based on an analysis of a sample, that it contains toner particles with dispersed silicon and/or titanium oxides at a concentration of approximately 0.57% by weight (Compl. ¶¶19-20).
- The accused "Lexmark Printers" are alleged to contain a web server accessible via a web browser, which provides a "Remote Operator Panel" utility. This utility is alleged to allow remote users to configure, command, and monitor the printer over a network. The complaint states this utility "operates as an applet using Java programming language" (Compl. ¶¶30-32).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’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 such that at least a portion of the metal oxide is embedded within the toner particles, | Lexmark Toner is alleged to comprise toner particles and dispersed metal oxide particles, and that "at least a portion of the metal oxide particles... are embedded below the surface of the toner particles," based on imaging and spectroscopy analysis. | ¶¶20, 21 | col. 10:3-6 |
| the metal oxide content being from 0.1 to 5.0 weight percent of the toner composition | The metal oxide content of Lexmark Toner is alleged to be "between 0.1 to 5.0 weight percent," with a sample allegedly measured at "about 0.57% by weight." | ¶20 | col. 10:29-31 |
| and selected from the group consisting of titanium dioxide, silicon dioxide, and mixtures thereof. | The metal oxide in Lexmark Toner is alleged to consist of "silicon and/or titanium oxides." | ¶20 | col. 10:27-29 |
- Identified Points of Contention:
- Technical Question: A primary factual dispute may center on the "embedded below the surface" limitation. The complaint asserts this based on "HAADF STEM tomography imaging and energy-dispersive X-ray spectroscopy analysis" (Compl. ¶1). The case may turn on whether this analysis can distinguish true embedding, as taught by the patent, from mere surface adhesion of the metal oxide particles.
- Scope Question: The complaint's infringement theory for the ’466 Patent relies on the analysis of a single toner product (Lexmark 24015SA) and asserts these results "are believed to be representative of all Lexmark Toner products" (Compl. ¶¶20, 23). This raises the question of whether evidence from one product is sufficient to support a claim covering a broad and undefined category of "Lexmark Toner."
’127 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a network web server which downloads software to a workstation computer at a remote location... for establishing a user operational printer interface display screen page | Accused printers are alleged to "include a web server accessible via a web browser" that provides a "Remote Operator Panel utility" allowing users to "interface with the marking engines" and "configure and command operation." | ¶¶30, 31 | col. 8:34-40 |
| 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 Remote Operator Panel allegedly allows users to "configure one or more print settings... and initiate/cancel printing operations," suggesting control functions are presented on the remote interface. | ¶31 | col. 8:40-44 |
| wherein the web server is operable to download applets for execution by the computer at the remote location... | The complaint makes the direct factual allegation that "The Remote Operator Panel utility operates as an applet using Java programming language." | ¶31 | col. 8:50-54 |
- Identified Points of Contention:
- Technical Question: The allegation that the Remote Operator Panel "operates as an applet" (Compl. ¶31) will be a critical point of dispute. The technical implementation of the accused remote interface will be scrutinized to determine if it aligns with the "applet" architecture described in the patent, which was filed in 1997. The court will have to determine if modern client-side web technologies (e.g., JavaScript, AJAX) fall within the scope of this term.
- Scope Question: Claim 1 requires a specific system architecture, including a "user interface supervisor" that interfaces between the remote user and the printer's internal "user applications" (’127 Patent, Fig. 2). The infringement analysis will question whether the software architecture of the accused Lexmark Printers maps onto this claimed structure or operates in a fundamentally different, non-infringing way.
V. Key Claim Terms for Construction
- Term: "embedded... within the toner particles" (’466 Patent, Claim 1)
- Context and Importance: This term is central to distinguishing the claimed invention from prior art toners where additives might simply adhere to the surface. The infringement analysis for the ’466 Patent will depend heavily on the factual evidence and legal construction of what constitutes "embedding."
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not quantify the degree or depth of embedding. Plaintiff may argue that any particle that is not fully exposed on the outermost surface is "embedded."
- Intrinsic Evidence for a Narrower Interpretation: The specification links embedding to "high energy intensity mixing" that results in a "decrease in the surface concentration of metal oxide" (’466 Patent, col. 3:52-58). Defendant may argue that "embedded" should be construed as the result of such a specific process, thereby narrowing the claim’s scope.
- Term: "applets" (’127 Patent, Claim 1)
- Context and Importance: Given the evolution of web technology since the 1997 priority date, the definition of "applets" is critical. Infringement by the accused printers, which use modern web interfaces, may depend entirely on whether their client-side software meets this definition.
- Intrinsic Evidence for a Broader Interpretation: Plaintiff may argue that the term should be understood functionally, as any small, platform-independent software application downloaded from a server to run in a browser, which could potentially include modern JavaScript code. The patent describes applets as "small software applications that are platform independent" (’127 Patent, col. 5:12-15).
- Intrinsic Evidence for a Narrower Interpretation: Defendant will likely argue that "applet" is a term of art referring specifically to a Java applet that runs in a Java Virtual Machine, a technology distinct from JavaScript. The specification repeatedly refers to "Java applet," the "Java Virtual Machine," and "Java programming language," suggesting a specific technological meaning was intended (’127 Patent, col. 6:2-10, col. 7:59-67).
VI. Other Allegations
- Indirect Infringement: The prayer for relief includes a request for judgment of indirect infringement (Compl. p. 8, ¶a). However, the complaint does not plead specific facts to support the elements of inducement or contributory infringement, such as knowledge of the patents combined with specific actions intended to cause infringement by others.
- Willful Infringement: The complaint alleges "objective recklessness" and seeks enhanced damages for both asserted patents (Compl. ¶¶24, 35). The allegations are not supported by specific facts indicating that Defendant had pre-suit knowledge of the patents or their infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the ’466 Patent will be one of physical evidence: Does the plaintiff's scientific analysis provide sufficient proof that metal oxide particles are "embedded below the surface" of the accused toner, and can the plaintiff demonstrate this characteristic is representative of the entire accused product line, not just a single sample?
- A key question for the ’127 Patent will be one of technological definition: Can the term "applets," rooted in the specific 1990s Java-based client-server architecture detailed in the patent, be construed to cover the modern web technologies used in Lexmark’s accused "Remote Operator Panel," or is there a fundamental mismatch in technical operation?
- A significant procedural question will be willfulness pleading: Given that the complaint alleges willfulness without pleading specific facts to support pre-suit knowledge, a key issue will be whether the plaintiff can develop sufficient evidence during discovery to support its claim for enhanced damages under the "objective recklessness" standard.