OpenPrint LLC v. Panasonic Corp Of North America

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OpenPrint LLC (Texas)
  • Defendant: Panasonic Corporation of North America (Delaware)
  • Plaintiff’s Counsel: DEVLIN LAW FIRM LLC
• Case Identification: 1:17-cv-01076, D. Del., 08/03/2017
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s internet-capable multifunction fax machines infringe six patents related to systems and methods for sending a facsimile from a physical device to an email address.
• Technical Context: The technology bridges traditional facsimile transmission over public telephone networks with modern email delivery over packet-switched computer networks like the Internet.
• Key Procedural History: The complaint does not mention any prior litigation involving these patents, any challenges to their validity at the Patent Office, or any prior licensing history.

Case Timeline

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

U.S. Patent No. 6,023,345 - "Facsimile to E-Mail Communication System with Local Interface"

The Invention Explained

• Problem Addressed: The patent’s background section describes a market need to integrate distinct facsimile and email communication systems, noting that prior art did not adequately address how to send a hardcopy document from a standard fax machine to an email recipient for electronic retrieval and viewing (’345 Patent, col. 1:15-39).
• The Patented Solution: The invention provides a system comprising a "local interface" device connected to a conventional fax machine, and a remote "Facsimile/E-mail server system" or "FEM-GATEWAY." A user inputs an email address into the local interface, which then directs the fax transmission over a telephone network to the gateway. The gateway receives the fax, converts the image into a computer-readable file, attaches it to an email, and delivers it to the recipient over a data network like the Internet (’345 Patent, Abstract; col. 2:9-28; Fig. 1).
• Technical Importance: This system allowed legacy fax machines to access modern email networks without requiring any modification to the fax machine itself, thereby bridging two dominant but technologically separate platforms for business communication (’345 Patent, col. 2:35-37).

Key Claims at a Glance

• The complaint asserts independent claim 13 (Compl. ¶14).
• Essential elements of Claim 13 include:
  • A communication system for communicating information found originally as an image on paper.
  • A server in communication with a public network (PN) and a computer network.
  • A facsimile device for generating facsimile information, which communicates with the PN.
  • An interface device responsive to signals to facilitate communications between the facsimile device and the server and to facilitate delivery of facsimile information to an email address.
• The complaint reserves the right to modify its infringement theories as discovery proceeds (Compl. ¶17).

U.S. Patent No. 7,446,906 - "Facsimile to E-Mail Communication System with Local Interface"

The Invention Explained

• Problem Addressed: As a continuation of the family including the ’345 Patent, this patent addresses the same general problem of bridging facsimile and email technologies to allow a user to send a hardcopy document to an email address (’906 Patent, col. 1:21-42).
• The Patented Solution: The patent claims a specific method and system for fax-to-email communication. The claimed process involves receiving an email address from an interface, receiving facsimile information from a scanner, converting it to an image file, composing and transmitting an email with the file as an attachment, and additionally includes steps for receiving a user request for a report and generating and outputting that report (’906 Patent, Abstract; Fig. 8).
• Technical Importance: The invention formalizes the end-to-end workflow for a fax-to-email service, including user-facing administrative features like report generation, enhancing the system's utility in a business environment (’906 Patent, col. 8:31-38).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method) and 12 (a system) (Compl. ¶18).
• Essential elements of Claim 1 include the steps of: (a) receiving an email address; (b) receiving facsimile information; (c) converting the information to an image file; (d) composing an email with the file as an attachment; (e) transmitting the email; (f) receiving a report request; (g) generating a report; and (h) outputting the report.
• Essential elements of Claim 12 include: (a) a communication interface for receiving an email address and facsimile information; and (b) a system processor programmed to perform the functional steps equivalent to those recited in method claim 1.
• The complaint also explicitly asserts dependent claims 2, 3, 10, 12, 13, 14, 15, and 16 (Compl. ¶18).

U.S. Patent No. 8,547,601 - "Facsimile to E-Mail Communication System"

• Technology Synopsis: This patent describes an Internet-based server system configured to receive facsimile information and a destination email address from a facsimile device. The server then converts the facsimile information into a computer-readable image file (e.g., a TIFF file), attaches it to an email message, and sends the email over a communication network to the destination address (Compl. ¶33).
• Asserted Claims: Independent claims 1 and 6 are asserted (Compl. ¶32).
• Accused Features: The complaint accuses the "internal server connected to a computer network" within the Accused Instrumentalities that performs the functions of receiving, converting, and transmitting faxes as email attachments (Compl. ¶33).

U.S. Patent No. 6,381,313 - "Fax Routing System and Method using Standard Fax Machine and Personal Computer"

• Technology Synopsis: This patent claims a system for directing a fax using an "identification code" to look up a corresponding "network address" that is different from the code. The system comprises a storage system (e.g., an address book) with records containing the identification code (e.g., a One-Touch Key) and the associated network address (e.g., an email address), and a processing system to perform the lookup and direct the fax (Compl. ¶40).
• Asserted Claims: Independent claim 13 is asserted (Compl. ¶39).
• Accused Features: The complaint accuses the address book and "One-Touch Key" functionality of the Accused Instrumentalities, which allegedly maps a key to an email address for sending an internet fax (Compl. ¶40).

U.S. Patent No. 6,639,974 - "Fax Routing System and Method using Standard Fax Machine and Personal Computer"

• Technology Synopsis: This patent claims a system "co-located with a sender" for directing a fax over the Internet. Similar to the ’313 Patent, it uses an identification code to find a corresponding Internet address in a stored table. The claims emphasize that the storage and processing systems are co-located with, or under the management of, the sender (Compl. ¶¶44, 46, 48).
• Asserted Claims: Independent claims 1 and 3 are asserted (Compl. ¶43).
• Accused Features: The complaint targets the local processing and storage systems (e.g., address book) within the Accused Instrumentalities that are managed by the user to route faxes to email addresses (Compl. ¶¶44, 46).

U.S. Patent No. 8,941,888 - "Facsimile to E-Mail Communication System with Local Interface"

• Technology Synopsis: This patent claims a communications apparatus with dual-mode functionality. In a "first mode," it operates as a fax-to-email gateway by scanning a document, converting it to an image file, and transmitting it as an email attachment. In a "second mode," it transmits a standard "facsimile device compatible file to a remote facsimile device," functioning as a traditional fax machine (Compl. ¶52).
• Asserted Claims: Independent claim 1 is asserted (Compl. ¶51).
• Accused Features: The complaint accuses the dual-mode capability of the Panasonic products to operate as both traditional fax machines and internet fax devices that send scanned documents to email addresses (Compl. ¶52).

III. The Accused Instrumentality

• Product Identification: Panasonic UF-8200 and Panasonic UF-7200 (Compl. ¶14).
• Functionality and Market Context: The complaint characterizes the accused products as "internet fax machines" that comply with the ITU-T T.37 standard for sending faxes over IP networks (Compl. ¶15). Their alleged functionality includes scanning a physical document, receiving a destination email address from a user via a touch screen or keypad, converting the scanned image to a TIFF or PDF file, creating an email message with the file as an attachment, and transmitting the email over the internet (Compl. ¶¶15, 21). The complaint also alleges these devices include an address book feature that allows a user to select a "One-Touch Key" to automatically route a fax to a pre-programmed email address (Compl. ¶40). The complaint does not provide detail on the products' market positioning.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’345 Patent Infringement Allegations

’906 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary question for the ’345 Patent will be whether the integrated components of the accused Panasonic products can satisfy the claim's requirement for three distinct elements: a "server," a "facsimile device," and an "interface device." The patent’s specification primarily describes the "interface device" as a separate apparatus that connects to a pre-existing, conventional fax machine (’345 Patent, col. 2:35-37), raising the question of whether a fully integrated system falls within the scope of claim 13.
• Technical Questions: For the ’906 Patent, a key question will concern the "report" generation steps. The complaint makes a conclusory allegation that the accused products "generate and output a fax report based on a request" (Compl. ¶21). The infringement analysis will depend on evidence showing that the accused products' standard transmission logs or status notifications meet the specific functional requirements of "receiving a report request" and "generating a report based upon" that request, as those terms are understood in the context of the patent.

V. Key Claim Terms for Construction

• For the ’345 Patent:

  • The Term: "interface device"
  • Context and Importance: The definition of this term is critical because the patent’s primary embodiment depicts the "interface device" as a physically separate, add-on unit for a conventional fax machine. The accused products are integrated systems. Practitioners may focus on this term because the outcome of the infringement analysis could depend on whether the term is construed to be limited to a separate physical device or can read on an integrated user interface component like a touchscreen.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain language of claim 13 does not require the "interface device" to be in a separate housing; it only recites its function as being "responsive to signals... to facilitate communications" (’345 Patent, col. 24:8-12).
    • Evidence for a Narrower Interpretation: The specification repeatedly describes the invention's purpose as allowing "any pre-existing fax machine to function as the sending machine... with no modification to the fax machine itself" (’345 Patent, col. 2:35-37). The Abstract also describes an interface device which "connects to a conventional fax device." This context may support a narrower construction limited to an external, add-on device.

• For the ’906 Patent:

  • The Term: "generating a report based upon the received report request"
  • Context and Importance: This claim element recites a specific, multi-part function. The infringement analysis will turn on whether a standard feature of the accused products, such as a transmission confirmation log, meets both the "request" and "generation" requirements. Practitioners may focus on this term to determine if there is a functional match or if the accused products' general status features differ from the specific reporting function claimed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim does not specify the content or format of the "report" or the mechanism of the "request." This may allow the term to cover a wide range of user-initiated status displays or printouts, such as a simple confirmation that a fax was sent (Compl. ¶24).
    • Evidence for a Narrower Interpretation: The patent's description of a comprehensive "FEM-GATEWAY" system suggests the "report" could relate to more than just a single transmission, potentially including accounting or system-level information for job tracking and problem reporting (’906 Patent, col. 8:31-38). A party could argue that a simple "transmission OK" confirmation does not constitute the "report" contemplated by the invention.

VI. Other Allegations

• Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. While it contains boilerplate language mentioning infringement "through intermediaries" (e.g., Compl. ¶14), it alleges no specific facts to support the knowledge and intent required for claims of inducement or contributory infringement.

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

• A core issue will be one of structural scope: can the elements of "server," "facsimile device," and "interface device," which are described in the ’345 patent's specification primarily as separate components, be construed to read on the integrated hardware of the all-in-one accused products?
• A key evidentiary question will be one of functional specificity: does the accused products' standard confirmation or status log functionality perform the specific, multi-part logical function of "receiving a report request" and "generating a report based upon the received report request" as required by claim 1 of the ’906 patent, or is there a fundamental mismatch in technical operation?
• A central claim construction question will be definitional consistency: with multiple related patents asserted against the same products, the case may turn on how the court distinguishes the scope of seemingly similar terms and concepts across the patent family, such as the "interface device" in the '345 patent versus the "co-located" system in the '974 patent and the dual-mode "communications apparatus" in the '888 patent.