DCT
8:25-cv-00027
KMizra LLC v. Epson America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: KMizra LLC (Delaware)
- Defendant: Epson America, Inc. (California) and Seiko Epson Corporation (Japan)
- Plaintiff’s Counsel: Payne & Fears LLP; SHERIDAN ROSS P.C.
- Case Identification: 8:25-cv-00027, C.D. Cal., 01/07/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant Epson America, Inc. maintains its principal place of business in the district, and both Defendants have a regular and established place of business and have allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s multifunction printers and related supply services infringe three patents related to automatic document feeder mechanics, user interface power-saving functions, and automated consumable replenishment.
- Technical Context: The technologies at issue concern the design and operation of multifunction office printers, a mature market where improvements in usability, serviceability, and supply chain management are key competitive features.
- Key Procedural History: The complaint notes that U.S. Patent No. 7,570,400 was subject to an Inter Partes Review (IPR) petition filed by a third party, which the Patent Trial and Appeal Board (PTAB) declined to institute, finding the petitioner failed to show a reasonable likelihood of prevailing on any challenged claim. For U.S. Patent No. 10,018,938, the complaint highlights the prosecution history of a parent application, where the U.S. Patent and Trademark Office allegedly withdrew a patent-eligibility rejection under 35 U.S.C. § 101 after reviewing the applicant's arguments. Plaintiff also alleges providing Defendant with notice of infringement for all asserted patents at least 18 months prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-11 | U.S. Patent No. 7,570,400 Priority Date |
| 2005-08-23 | U.S. Patent No. 10,018,938 Priority Date |
| 2009-08-04 | U.S. Patent No. 7,570,400 Issues |
| 2012-04-20 | U.S. Patent No. 9,769,342 Priority Date |
| 2017-09-19 | U.S. Patent No. 9,769,342 Issues |
| 2018-07-10 | U.S. Patent No. 10,018,938 Issues |
| 2021-03-30 | Notice of infringement for ’400 Patent sent to Epson |
| 2021-07-02 | Notice of infringement for ’342 and ’938 Patents sent to Epson |
| 2022-08-15 | IPR Petition filed against ’400 Patent by a third party |
| 2023-03-02 | PTAB denies institution of IPR against ’400 Patent |
| 2025-01-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,570,400 - "Document Reading Device," issued August 4, 2009
The Invention Explained
- Problem Addressed: The patent's background describes issues with automatic document feeders (ADFs) where clearing paper jams is difficult, and where flexible document holders, used to press originals against the scanner glass, can become permanently creased after repeated opening and closing of the ADF assembly, leading to light leaks and degraded scan quality ('400 Patent, col. 1:39-2:11).
- The Patented Solution: The invention proposes a specific mechanical arrangement for an ADF. This includes a "movable member" that forms part of the bottom surface of the ADF and pivots open to provide access to the paper path. Crucially, a flexible "document holder" sheet is attached to this assembly, but its fixation points are designed to avoid the area "immediately below the pivot axis." This configuration allows the ADF to be opened for jam clearance without creating a fold or crease in the flexible sheet, ensuring it consistently presses documents flat against the scanner platen. ('400 Patent, Abstract; col. 2:26-38).
- Technical Importance: This design aims to improve both the long-term reliability of scan quality and the user-friendliness of servicing common paper jams in high-throughput office document scanners ('400 Patent, col. 2:12-24).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶57).
- The essential elements of claim 1 include:
- A document reading device with a document tray, output tray, and a transport path.
- A "movable member" that is part of the device's bottom surface and is "supported pivotably around a pivot axis that is perpendicular to a document transport direction."
- A "document holder" with a "flexible sheet" positioned to extend over the document platen.
- The movable member is pivotable to expose a portion of the transport path.
- A key structural limitation: "the document holder is fixed at portions other than a portion that is positioned immediately below the pivot axis, to the bottom surface of the document reading device."
U.S. Patent No. 9,769,342 - "Electric Apparatus," issued September 19, 2017
The Invention Explained
- Problem Addressed: The patent describes the inefficiency of requiring a dedicated hardware key to wake an electronic device from a power-saving or "sleep" mode, as this increases hardware cost and complexity. It notes the difficulty of using a multi-function "home key" for this purpose, because the key's primary function is typically unavailable when the device's operating system is asleep ('342 Patent, col. 2:1-13).
- The Patented Solution: The invention discloses an apparatus where a single input mechanism (a "reception unit") generates different signals based on the device's power state. When the device is in a "power conserving state," an instruction from the user triggers a "return signal" to wake the device up. When the device is in a "normal state," the same user instruction triggers an "execution signal" to perform a standard function. This is accomplished by a "signal output unit" that outputs "signals of different levels" depending on the power state, which are then interpreted by a "control signal unit." ('342 Patent, Abstract; col. 4:40-54).
- Technical Importance: This technology allows for simplified hardware design and improved user experience by enabling a single physical control to perform distinct, state-dependent functions, such as both waking the device and navigating the user interface.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶65).
- The essential elements of claim 1 include:
- An electric equipment with a "reception unit" for user instructions and having both "power conserving" and "normal" states.
- A "signal output unit" configured to "output signals of different levels depending on the operation state" when an instruction is received.
- A "control signal unit" that, based on the signal from the signal output unit, selectively outputs either a "return signal" (to return to the normal state) or an "execution signal" (to execute a function).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 10,018,938, "Network System Comprising Customer Replaceable Unit," issued July 10, 2018.
- Technology Synopsis: The patent describes a network system that addresses the security and data storage limitations of managing printer consumables (like toner) via memory chips on the consumable itself. The invention shifts this intelligence to a remote server, which accumulates usage data from the printer, calculates the remaining consumable level, determines when it reaches a threshold, and sends order information to facilitate automatic replenishment. (Compl. ¶¶48-50; '938 Patent, col. 2:34-54).
- Asserted Claims: The complaint asserts independent claim 3 (Compl. ¶73).
- Accused Features: The complaint accuses Epson's "ReadyInk" service, which it describes as a system that monitors ink levels in customers' printers over a network and automatically triggers replenishment orders when ink is running low (Compl. ¶¶42-43).
III. The Accused Instrumentality
- Product Identification: The complaint targets a broad range of Epson multifunction printers (MFPs) from its WorkForce, EcoTank, SureColor, and Expression product lines, as well as the related Epson "ReadyInk" automated supply service (Compl. ¶¶29, 37, 42). The WorkForce Enterprise WF-C17590 and WorkForce Pro WF-4720 are identified as representative infringing products for the '400 and '342 patents, respectively (Compl. ¶¶25, 35).
- Functionality and Market Context: The accused MFPs are office machines that integrate printing, scanning, and copying functions (Compl. ¶¶2-3). The infringement allegations focus on specific technical features:
- The mechanical design of the automatic document feeder (ADF), including its pivoting cover and flexible document holding sheet, is alleged to infringe the ’400 Patent (Compl. ¶¶25-28).
- The power management system, where pressing the LCD touch screen can either wake the device from sleep or perform user interface functions when awake, is alleged to infringe the ’342 Patent (Compl. ¶¶35-36).
- The ReadyInk service, which networks with the MFPs to monitor ink usage and automatically trigger shipments of new cartridges, is alleged to infringe the ’938 Patent (Compl. ¶¶42-45).
IV. Analysis of Infringement Allegations
’400 Patent Infringement Allegations
The complaint provides an annotated diagram from a product manual to illustrate the accused ADF components. This visual shows the Automatic Document Feeder (ADF) and the scanner glass, key components of the claimed device (Compl. p. 13).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a movable member that serves as part of a bottom surface of the document reading device, the movable member being supported pivotably around a pivot axis that is perpendicular to a document transport direction... | The ADF of the WorkForce Enterprise WF-C17590 printer contains a movable ADF bottom cover attached by a hinge that is perpendicular to the document flow, allowing it to swing open. | ¶27 | col. 5:58-6:4 |
| a document holder that includes a flexible sheet, the document holder being positioned so as to extend over the whole length and breadth of the document platen... | A flexible white sheet of material is present on the bottom of the ADF, acting as a background for document reading and holding documents on the flatbed scanner. | ¶28 | col. 6:7-15 |
| wherein the document holder is fixed at portions other than a portion that is positioned immediately below the pivot axis, to the bottom surface of the document reading device. | The flexible holding sheet is attached at several fixed points, and these points are allegedly "not immediately below the pivot axis of the ADF bottom cover." | ¶¶2-3, 28 | col. 6:26-31 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the term "immediately below the pivot axis." The infringement analysis will depend on how much separation is required between the pivot axis and the fixation points of the flexible sheet to satisfy this negative limitation.
- Technical Questions: The case will require factual evidence establishing the precise physical construction of the accused ADFs. What is the exact location of the pivot axis relative to the points where the flexible document holder is attached to the device's bottom surface?
’342 Patent Infringement Allegations
The complaint includes a screenshot from an Epson user manual that states, "Note: If the screen is dark, press the screen to wake the product from sleep mode," directly supporting the allegation of dual-mode functionality for the LCD screen (Compl. p. 18).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An electric equipment including a reception unit... having operation states of a power conserving state... and a normal state... | The WorkForce Pro WF-4720 is an electronic device with a control panel that has both a low power "sleep or hibernate" state and a "normal operating state." The LCD screen is alleged to be the "reception unit." | ¶¶35-36 | col. 4:56-65 |
| a signal output unit configured to output signals of different levels depending on the operation state... | The complaint does not provide sufficient detail for analysis of the specific "signals of different levels" generated within the accused product. The allegation is based on the device's observable external behavior. | ¶36 | col. 8:35-40 |
| a control signal unit configured to selectively output a return signal... or an execution signal... based on the signal output from the signal output unit. | When the unit is in a low power state, pressing the LCD screen returns it to the normal state (a "return signal"). When in the normal state, pressing the screen performs other functions, such as character entry (an "execution signal"). | ¶36 | col. 8:41-50 |
- Identified Points of Contention:
- Scope Questions: Does a touch screen, whose input is interpreted by software, meet the claim limitation of a "reception unit" connected to a "signal output unit" that outputs "signals of different levels"? Defendant may argue the patent contemplates a more direct hardware-level signaling mechanism, as depicted in its figures ('342 Patent, Fig. 3).
- Technical Questions: What evidence does the complaint provide that the accused device's architecture involves generating distinct "levels" of signals based on its power state, as opposed to the operating system simply interpreting a standard touch input signal differently depending on its active or sleep state?
V. Key Claim Terms for Construction
For the ’400 Patent:
- The Term: "fixed at portions other than a portion that is positioned immediately below the pivot axis"
- Context and Importance: This negative limitation appears to be the primary point of novelty over prior art. Infringement hinges on the physical construction of the accused ADF and the spatial interpretation of "immediately below."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a precise definition or numerical distance for "immediately below," which could support an argument that any fixation point not perfectly and directly underneath the center of the pivot axis meets the limitation.
- Evidence for a Narrower Interpretation: The figures (e.g., '400 Patent, Fig. 3) and the stated purpose of the invention—to prevent the holder from being "folded" ('400 Patent, col. 1:62-67)—may support a narrower construction requiring a meaningful, functional separation between the fixation points and the pivot axis.
For the ’342 Patent:
- The Term: "signals of different levels"
- Context and Importance: The interpretation of this term is critical to determining whether the software-driven behavior of a touch screen can infringe. The dispute will be whether "levels" refers to distinct physical properties (e.g., voltage) or can encompass different types of data signals. Practitioners may focus on this term because it sits at the boundary of hardware- and software-based functionality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not explicitly restrict "levels" to an electrical property. An argument could be made that any reliably distinguishable signal type that correlates with the device's power state would suffice.
- Evidence for a Narrower Interpretation: The specification describes the invention in the context of specific hardware signals like "WAKE_N" and "HM_BACK," and uses terms like "high impedance" and logic levels "0" and "1," suggesting a physical, electrical, or logic-level distinction rather than a higher-level software interpretation ('342 Patent, col. 6:36-54).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all three patents. The allegations are based on Epson providing user manuals and advertising that allegedly instruct customers on how to use the infringing features, such as operating the ADF ('400 Patent), waking the device with the screen ('342 Patent), and enabling the ReadyInk service ('938 Patent) (Compl. ¶¶58, 66, 74).
- Willful Infringement: Willfulness is alleged for all three patents based on pre-suit knowledge. The complaint cites notice letters sent to Epson on March 30, 2021 ('400 Patent) and July 2, 2021 ('342 and '938 Patents), alleging that Epson continued its infringing activities despite knowing or being willfully blind to the likelihood of infringement (Compl. ¶¶59, 67, 75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical implementation: For the ’342 patent, can the functionality of the accused touch-screen interface, where behavior is differentiated by the operating system's software state, be mapped onto the patent’s claim language of a "signal output unit" generating "signals of different levels," which the specification describes in a hardware-centric context?
- A second key issue will be one of factual infringement and claim construction: For the ’400 patent, the dispute will likely center on the physical evidence of the accused ADF's construction and the court's interpretation of the phrase "immediately below the pivot axis," a determination that will be dispositive for infringement.
- A third question may concern the doctrine of equivalents: For the ’938 patent, which claims a system for monitoring "toner," the complaint anticipates a dispute over whether this term literally covers the liquid "ink" used in the accused "ReadyInk" system, raising the question of whether ink is functionally equivalent to toner in the context of an automated supply monitoring and reordering system (Compl. ¶42, fn. 2).