OpenPrint LLC v. HP Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: OpenPrint LLC (Texas)
  • Defendant: HP Inc. (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC; Ni, Wang & Massand, PLLC; Toler Law Group, PC
• Case Identification: 1:17-cv-01077, D. Del., 08/03/2017
• Venue Allegations: Venue is asserted on the basis that the Defendant is a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s inkjet printheads, multi-function printers, and commercial presses infringe three patents related to inkjet printhead fabrication, fax-to-email communication, and hybrid color printing methods.
• Technical Context: The patents address distinct aspects of printing technology, from the micro-fabrication of printhead components to high-level system software for managing communications and color output.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the asserted patents.

Case Timeline

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

U.S. Patent No. 6,209,993 - Structure and Fabricating Method for Ink-Jet Printhead Chip

Issued April 3, 2001

The Invention Explained

• Problem Addressed: The patent’s background section identifies a problem in conventional inkjet printheads where long ink slots, formed through a thick silicon substrate, create high fluidic resistance, which limits the printhead's operating frequency (’993 Patent, col. 1:15-20). A secondary problem is the potential for overflow paste to clog these ink slots during manufacturing ('993 Patent, col. 1:20-22).
• The Patented Solution: The invention proposes a fabrication method where a groove is first etched into one surface of the silicon substrate, thinning a portion of the substrate without breaking through to the second surface ('993 Patent, col. 2:9-12; Fig. 1A). Subsequently, shorter ink slots are formed within this thinned region, creating a fluid path to firing chambers on the opposite surface ('993 Patent, col. 2:15-17, 2:22-25).
• Technical Importance: By creating shorter ink slots, this method claims to reduce the fluidic resistance, thereby allowing for higher frequency operation and an increased density of firing chambers on the chip ('993 Patent, col. 2:51-57).

Key Claims at a Glance

• The complaint asserts independent claims 1, 7, and 15 (Compl. ¶¶12, 15, 19).
• Independent Claim 1, a method claim, includes the following essential elements:
  • Providing a silicon substrate with a first and second surface.
  • Etching the first surface to form at least one groove that does not extend to the second surface.
  • After forming the groove, forming a plurality of ink slots in the substrate that extend to the second surface, connect the groove and the second surface, and have a depth between 50 µm and 200 µm.
  • Forming a plurality of firing chambers on the second surface, with each chamber connected to an ink slot.
• The complaint also asserts dependent claims 2, 6, 8, 10, 14, and 17 (Compl. ¶11).

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

Issued October 1, 2013

The Invention Explained

• Problem Addressed: The patent identifies the need to unite two traditionally separate communication systems: facsimile and electronic mail. The goal is to allow a user to transmit a hardcopy document from a conventional fax machine to a recipient's email address (’601 Patent, col. 1:28-34).
• The Patented Solution: The system is described as comprising a "local interface" and a remote "Facsimile/E-mail server system (FEM-GATEWAY)" ('601 Patent, col. 2:20-25). A user at a fax machine enters a destination email address; the system then transmits the facsimile data to the remote server, which converts the data into a computer-readable image file (e.g., TIFF), creates an email, attaches the image file, and sends it to the recipient over a data network ('601 Patent, col. 2:30-44).
• Technical Importance: The technology provided a bridge between the physical-document-oriented world of facsimile and the digital workflow of email, enabling transmission of hardcopy documents into an email system without requiring the sender to have a computer or scanner.

Key Claims at a Glance

• The complaint asserts independent claim 6 (Compl. ¶25).
• Independent Claim 6, a product claim, recites a non-transitory computer-readable storage medium with instructions that, when executed, cause an apparatus to perform the following operations:
  • Receiving facsimile information from a facsimile device.
  • Receiving a destination e-mail address in an alphanumeric form from the facsimile device.
  • Interpreting the destination e-mail address.
  • Converting the facsimile information into a computer readable image file.
  • Composing an e-mail message with the image file as an attachment.
  • Transmitting the e-mail message to an e-mail server associated with the destination e-mail address.
• The complaint also asserts dependent claims 8, 9, and 10 (Compl. ¶¶26-28).

U.S. Patent No. 6,717,699 - Method for Hybrid Printing

Issued April 6, 2004

• Technology Synopsis: The patent addresses the technical problem of digital printers having a more restricted color gamut than traditional printing presses, making it difficult to accurately reproduce certain "spot" colors like those in corporate logos (’699 Patent, col. 2:25-42). The patented solution is a "hybrid" printing method that combines the use of specific spot color inks for critical design colors with a set of standard process colors (e.g., CMYK) for the remaining, less critical colors, all within a single digital printing process ('699 Patent, col. 2:53-59).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶31).
• Accused Features: The complaint alleges that HP's Indigo series of commercial presses practice the claimed method by using "a special spot ink representing a selected design color" in combination with a "calibrated process color set" to create and print a design (Compl. ¶32).

III. The Accused Instrumentality

Product Identification

• The "Accused Printhead," identified as the HP OfficeJet Pro 8600 Printhead (Compl. ¶11).
• The "Accused Printer," which contains the Accused Printhead and provides fax-to-email functionality (Compl. ¶¶24-25).
• The "Accused Hybrid Presses," a list of over a dozen HP Indigo commercial printing press models (Compl. ¶31).

Functionality and Market Context

• The complaint alleges the Accused Printhead is fabricated using a method that infringes the ’993 Patent (Compl. ¶12). The complaint references several figures from an exhibit, including cross-sectional diagrams alleged to show the accused printhead's structure with multiple ink slots (Compl. ¶14; Ex. E, Figs. 1 and 4).
• The Accused Printer is alleged to be a multi-function device that includes a "fax portion" and software that enables a user to send a scanned document directly to an email address by converting it to a TIFF or PDF file and transmitting it over a network (Compl. ¶25). The complaint includes a figure of the accused printer's user interface, which allegedly depicts an alphanumeric keypad for receiving an email address (Compl. ¶26; Ex. F, Fig. 11).
• The Accused Hybrid Presses are commercial digital presses alleged to perform a hybrid printing method combining spot colors and process colors (Compl. ¶32).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,209,993 Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question may be the interpretation of "groove". The claim requires forming ink slots after the groove is formed. The dispute may focus on whether HP’s manufacturing process involves creating a distinct, larger "groove" as a precursor to the "ink slots", as depicted in the patent's figures, or if HP creates its ink channels in a single-step or different multi-step process that does not meet this limitation.
• Technical Questions: The complaint asserts that the Accused Printhead is fabricated using the claimed method. A factual question for the court will be what evidence exists to demonstrate that HP's specific, proprietary manufacturing process maps onto the sequential steps required by claim 1.

U.S. Patent No. 8,547,601 Infringement Allegations

Identified Points of Contention

• Scope Questions: Claim 6 recites receiving information "from a facsimile device". The accused product is an integrated, all-in-one printer/fax. A key question for claim construction will be whether internal components of a single apparatus (e.g., the scanner/modem "fax portion") can be considered a "facsimile device" from which other components of the same apparatus (e.g., the processor) "receive" information, or if the claim requires two physically distinct devices as depicted in the patent's specification.
• Technical Questions: Claim 6 is directed to a storage medium on an "apparatus." A factual question will be whether all the claimed steps (receiving, interpreting, converting, composing, transmitting) are performed by the Accused Printer itself. If any of these functions are offloaded to a remote HP server, it may raise questions of divided infringement, as the single "apparatus" would not be performing all the claimed steps.

V. Key Claim Terms for Construction

For the ’993 Patent

• The Term: "groove" (Claim 1)
• Context and Importance: This term is foundational to the claimed method. The infringement analysis depends on whether any recess qualifies as a "groove" or if the term implies a specific structure created in a distinct manufacturing step before the formation of the "ink slots" within it. Practitioners may focus on this term because its construction will determine whether a wide range of etching techniques fall within the claim scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "groove", which may support an argument for applying its plain and ordinary meaning as a long, narrow cut or depression.
  • Evidence for a Narrower Interpretation: The specification consistently describes and depicts the "groove" (102) as a feature etched first to create a thinned region (101), within which the "ink slots" (104) are subsequently formed ('993 Patent, col. 2:7-17; Figs. 1A-1B). This sequential process described in the preferred embodiment may support a narrower construction tied to this specific two-stage fabrication method.

For the ’601 Patent

• The Term: "from a facsimile device" (Claim 6)
• Context and Importance: This phrase appears twice and is critical for defining the claimed system's architecture. The infringement case against an all-in-one printer hinges on whether the "fax portion" of the printer can be considered a separate "facsimile device" from which the main processor "receives" information.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that "facsimile device" should be interpreted functionally, where any component that performs the role of scanning and transmitting facsimile data meets the definition, even if it is housed within the same chassis as the processing unit.
  • Evidence for a Narrower Interpretation: The patent specification frequently depicts the system with a physically separate "fax device (106)" and "fax interface device (102)" ('601 Patent, Fig. 1; col. 2:45-50). This depiction of discrete components could support a narrower construction requiring physically separate devices, which would raise questions about infringement by an integrated multi-function printer.

VI. Other Allegations

Willful Infringement

• The complaint does not contain a specific count for willful infringement. However, the prayer for relief requests that the Court "declare this an exceptional case and award OpenPrint reasonable attorneys' fees and costs in accordance with 35 U.S.C. § 285" (Compl., p. 11, ¶d), an allegation often predicated on claims of willful or egregious infringement.

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

This case presents three distinct infringement theories across different technology areas. The resolution will likely depend on the court's findings on the following key questions:

1. A core issue for the '993 patent will be one of process equivalence: Does the evidence show that HP's proprietary method for manufacturing the Accused Printhead follows the specific, sequential "groove-then-slot" fabrication steps required by the patent's claims, or is there a fundamental difference in the manufacturing process?
2. A central question for the '601 patent will be one of architectural scope: Can the claim term "from a facsimile device" be construed to read on the integrated components of a single multi-function printer, or does the patent's language and specification limit the claim to systems involving two or more discrete devices?
3. For all three patents, a key evidentiary burden will be one of technical mapping: Can the plaintiff demonstrate, with sufficient particularity, that the complex operations of the accused HP products—from the microscopic structure of a printhead to the software logic of a commercial press—perform each and every element of the asserted claims?