HSM Of America LLC v. Michilin Prosperity Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: HSM of America LLC (U.S. (Pennsylvania))
  • Defendant: Michilin Prosperity Co., Ltd. (Taiwan)
  • Plaintiff’s Counsel: Culhane Meadows PLLC
• Case Identification: 1:19-cv-02652, D.D.C., 09/04/2019
• Venue Allegations: Venue is alleged based on sales of the accused product into the District of Columbia, including to the U.S. federal government, and the defendant-patentee's prior patent enforcement activities in the same district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its paper shredder does not infringe Defendant's patent related to a dual-media shredding machine structure.
• Technical Context: The technology concerns office shredders designed to destroy both paper and other media, such as optical discs or credit cards, using a single shredding mechanism fed by separate inlets.
• Key Procedural History: The patent-in-suit is a reissue of U.S. Patent No. 6,550,701. The complaint notes that the defendant previously asserted the original patent in the same judicial district against a different competitor, which may inform questions of jurisdiction and claim scope.

Case Timeline

Date	Event
2000-10-10	'865 Patent Priority Date
2003-04-22	U.S. Patent No. 6,550,701 Issue Date
2014-04-29	'865 Patent Issue Date
2019-07-19	Date of Michilin's letter accusing HSM of infringement
2019-09-04	Complaint Filing Date

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

U.S. Reissued Patent No. RE44,865 - Dual Functional Medium Shredding Machine Structure, issued April 29, 2014

The Invention Explained

• Problem Addressed: The patent’s background section identifies a need for a single device that can securely destroy information on multiple types of media (RE44,865 Patent, col. 2:41-57). Conventional paper shredders were not designed to handle items like optical discs or credit cards, and manually breaking such items was described as both ineffective for data destruction and a potential cause of injury (RE44,865 Patent, col. 2:51-54).
• The Patented Solution: The invention proposes a single shredding machine that incorporates "a single set of inter-meshing shredding blades" capable of destroying both paper and harder media like discs or cards (RE44,865 Patent, col. 6:45-47). To accomplish this, the machine features at least two separate input slots ("inports"): a wider one for paper and a narrower one for discs, both of which channel the media into the same, unified shredding mechanism (RE44,865 Patent, Abstract; col. 3:32-44).
• Technical Importance: This approach sought to consolidate the functionality of multiple specialized destruction devices into a single, more cost-effective and space-efficient unit (RE44,865 Patent, col. 4:15-19).

Key Claims at a Glance

• The complaint broadly seeks a declaratory judgment of non-infringement of "any claims of RE865" (Compl., Prayer ¶A). Independent claim 5 is a representative claim.
• Independent Claim 5:
  • A dual-functional medium shredding machine structure for shredding paper and discs or cards;
  • A machine body with "a single set of inter-meshing shredding blades";
  • "at least two spaced apart inports" on an upper lid;
  • The inports include a "paper inport" with a "greater length" for paper and a "disc or card inport" with a "lesser length" for a disc or card;
  • Both inports lead to the shredding blades so that all media types can be shredded by the same blades.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Plaintiff HSM's "Securio B26 model shredder" ("B26 shredder") (Compl. ¶14).

Functionality and Market Context

The complaint alleges the B26 shredder has been offered for sale and sold through various distributors, including to customers in the District of Columbia such as the Federal government (Compl. ¶15). It notes that government agencies can procure the shredders through contractors like OfficeAdvantage GSA (Compl. ¶19). The complaint does not provide any specific technical details regarding the operation or features of the B26 shredder, stating only that Defendant Michilin accused it of infringement in a letter dated July 19, 2019 (Compl. ¶14).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, it does not contain a detailed infringement theory from the patentee. The complaint references an accusation letter (Ex. B) that allegedly contains the infringement allegations, but this exhibit was not included with the filed complaint (Compl. ¶14). Therefore, a detailed claim chart cannot be constructed.

The core infringement dispute implied by the complaint is whether the accused Securio B26 shredder practices the limitations of the '865 patent, particularly those recited in independent claim 5. The analysis will likely focus on whether the B26 shredder possesses "a single set of inter-meshing shredding blades" that is fed by "at least two spaced apart inports" having different dimensions—one with a "greater length" for paper and another with a "lesser length" for discs or cards—where both inports guide media into that single set of blades ('865 Patent, col. 6:41-11). No probative visual evidence provided in complaint.

Identified Points of Contention

• Structural Question: Does the accused Securio B26 shredder incorporate "a single set of inter-meshing shredding blades" as claimed, or does it utilize functionally or physically separate shredding mechanisms for different media types? The complaint provides no evidence to address this question.
• Scope Question: The court will need to determine if the accused shredder's input slots meet the claim limitation of "at least two spaced apart inports" with distinct, specified dimensions for paper versus discs. A central question is whether the shredder's design falls within the scope of this claimed structure.

V. Key Claim Terms for Construction

The Term: "a single set of inter-meshing shredding blades"

• Context and Importance: This term appears central to the patent's novelty, distinguishing the invention from multi-mechanism devices. The outcome of the case may depend on whether the accused shredder's cutting components can be characterized as a "single set."
• Intrinsic Evidence for a Broader Interpretation: The specification emphasizes the goal of using an "identical set of roller blades" to reduce cost and improve space utilization, which could support an interpretation covering any configuration where one unified mechanism shreds both media types ('865 Patent, col. 4:15-19).
• Intrinsic Evidence for a Narrower Interpretation: The patent's figures depict a specific arrangement of two co-acting, intermeshing roller blades (e.g., '865 Patent, Fig. 1, element 18). A party could argue this limits the term to a single, physically contiguous pair of rollers and not, for example, separate cutting heads mounted on the same axle.

The Term: "at least two spaced apart inports"

• Context and Importance: The physical separation and distinct functionality of the media inputs is a key structural limitation of the claim. Infringement will depend on whether the physical structure of the accused product's openings meets the "spaced apart" requirement.
• Intrinsic Evidence for a Broader Interpretation: The plain language of the claim requires only that the inports be "spaced apart," which could be argued to cover any non-contiguous openings on the shredder's housing that lead to the blades ('865 Patent, col. 6:48-49).
• Intrinsic Evidence for a Narrower Interpretation: The specification describes and illustrates the inports as two structurally distinct channels: an "inclined, curved" channel for paper and a "vertical" channel for discs ('865 Patent, col. 3:36-40; Fig. 1). This could support a narrower construction requiring physically distinct and separate feeding paths, not merely two openings in a single guide structure.

VI. Other Allegations

Indirect Infringement

Plaintiff HSM seeks a judicial declaration that it "has not contributed to the infringement of, nor induced infringement of any valid claim of RE865" (Compl. ¶32; Prayer ¶A). As this is a declaratory judgment action, the complaint does not allege facts supporting indirect infringement but instead argues against its existence.

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

• A core issue will be one of structural identity: Does the accused Securio B26 shredder embody the specific architecture claimed in the '865 patent—namely, "at least two spaced apart inports" of differing dimensions that both lead to "a single set of inter-meshing shredding blades"—or does its design for handling multiple media types diverge from this claimed structure in a material way?
• A key evidentiary question will be what proof exists regarding the internal mechanics of the accused B26 shredder. Since the complaint provides no technical details, discovery will be critical to determine if the product's actual construction aligns with the patent's claims.
• A central legal question may involve the effect of the patent's reissue and the defendant's prior litigation concerning the original '701 patent. How claim terms were construed or infringement was argued in the earlier case could influence the strategies and outcomes in the present dispute.