DCT
1:17-cv-01408
Diversified Observation LLC v. Oki Data Americas Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Diversified Observation LLC (Texas)
- Defendant: Oki Data Americas, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Toler Law Group, PC
- Case Identification: 1:17-cv-01408, D. Del., 10/07/2017
- 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 Oki MB472 multifunction printer infringes three patents related to the mechanical design, motor control, and signal compensation of image scanners.
- Technical Context: The patents address distinct technical challenges in flatbed scanner design: maintaining focus in compact Contact Image Sensor (CIS) systems, dynamically controlling motor torque to reduce noise at different scan speeds, and compensating for light source instability.
- Key Procedural History: The complaint notes that Defendant Oki Data Americas, Inc. previously conceded to personal jurisdiction and venue in the District of Delaware in a prior patent case, Ricoh Company, Ltd et al v. Oki Data Americas, Inc. et al, C.A. No. 09-694.
Case Timeline
| Date | Event |
|---|---|
| 1996-04-16 | U.S. Patent No. 6,522,432 Priority Date |
| 1997-03-07 | U.S. Patent No. 5,857,133 Priority Date |
| 1999-01-05 | U.S. Patent No. 5,857,133 Issued |
| 2000-12-21 | U.S. Patent No. 6,414,461 Priority Date |
| 2002-07-02 | U.S. Patent No. 6,414,461 Issued |
| 2003-02-18 | U.S. Patent No. 6,522,432 Issued |
| 2017-10-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,857,133 - Information Reading Apparatus Having a Contact Image Sensor (Issued Jan. 5, 1999)
The Invention Explained
- Problem Addressed: The patent describes that while Contact Image Sensors (CIS) allow for smaller, more portable scanners than traditional CCD sensors, their extremely shallow depth of focus (approx. 0.3 mm) makes them highly susceptible to image degradation from any minor structural distortion or manufacturing error that affects the distance between the sensor and the document. (’133 Patent, col. 1:21-42).
- The Patented Solution: The invention proposes a mechanical design for a flatbed scanner that uses a "single guiding device" (e.g., a rail shaft) to guide the CIS carriage. This single guide, positioned at the carriage's bottom center and supported by elastic elements, is designed to keep the carriage balanced and in tight, constant contact with the scanner glass, thereby ensuring the document remains in focus as the carriage moves. (’133 Patent, Abstract; col. 2:60-65).
- Technical Importance: This approach sought to resolve a key manufacturability and reliability issue for the then-emerging CIS-based scanner technology, enabling the production of compact scanners without sacrificing image quality. (’133 Patent, col. 2:44-54).
Key Claims at a Glance
- Independent claim 1 is asserted in the complaint (Compl. ¶13).
- Essential elements of Claim 1:
- An image information reading apparatus having a housing with a sheet table on top.
- A contact image sensor module carried by a carriage beneath the sheet table, with slide-blocks on its top surface.
- A "single guiding means" crossed over the bottom center of the carriage to guide it, where the guiding means is mounted on a pair of supports.
- The mounting arrangement allows the contact image sensor module to contact the bottom surface of the sheet table "tightly."
- A "driving means" located to one side of the single guiding means to reciprocally move the carriage.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,414,461 - Scanner that Controls Stepping Motor Torque (Issued Jul. 2, 2002)
The Invention Explained
- Problem Addressed: The patent identifies an issue in prior art scanners where the stepping motor driving the scan head operates with a fixed torque. When scanning at a high resolution, the scan head moves more slowly, but the motor still generates a high level of torque. This surplus torque is unnecessary and causes "excessive noise and shock," which can negatively affect the quality of the scanned image. (’461 Patent, col. 1:32-42).
- The Patented Solution: The invention describes a control system that dynamically adjusts the motor's torque based on the scanning task. The system includes a control circuit with a memory that stores a "torque table" containing different torque values corresponding to "predetermined condition[s]" (e.g., different scan resolutions). A driving program selects the appropriate torque value from the table, and the motor driving circuit generates a corresponding torque, avoiding the surplus torque, noise, and vibration of fixed-torque systems. (’461 Patent, Abstract; col. 4:50-col. 5:18).
- Technical Importance: This technology allows a scanner to operate more quietly and efficiently across a range of different scan speeds and resolutions by matching the motor's power output to the specific task requirements. (’461 Patent, col. 2:48-52).
Key Claims at a Glance
- Independent claim 1 is asserted in the complaint (Compl. ¶27).
- Essential elements of Claim 1:
- A scanner with a housing, a scanning module, and a driving module.
- The driving module includes a stepping motor and a motor driving circuit.
- A control circuit that includes a memory, which stores a "torque table" and a "driving program."
- The torque table records a plurality of torque values, each corresponding to a "predetermined condition."
- The driving program chooses a torque value, and the motor driving circuit receives a corresponding driving signal to control the motor.
- The control circuit controls the motor to generate "different torque" so the scanning module can scan at "different speeds."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,522,432 - Image Scanner with Automatic Signal Compensation (Issued Feb. 18, 2003)
The Invention Explained
The patent addresses the problem of light source brightness instability, particularly during warm-up, which can cause inconsistent image scans (’432 Patent, col. 1:11-20). The invention proposes using a "test region" of a known color (e.g., white) on the scanner. The scanner first measures the light reflected from this test region to generate a "brightness signal," then uses a signal compensation circuit to adjust the image signal captured from the actual document, thereby compensating for any fluctuations in the light source's brightness or color temperature (’432 Patent, Abstract; col. 1:50-col. 2:11).
Asserted Claims & Accused Features
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶43).
- Accused Features: The complaint alleges that the Oki MB472's scanner module, including its CIS, light source, and associated signal processing circuitry (identifying a Texas Instruments VSP5610 chip), infringes by performing this method of automatic signal compensation using a test region on the scanner (Compl. ¶¶46-63).
III. The Accused Instrumentality
Product Identification
The Oki MB472, a multifunction printer that includes a flatbed scanner (Compl. ¶13).
Functionality and Market Context
The complaint focuses on the technical operation of the scanner component. It alleges the device uses a single guide rail to direct a Contact Image Sensor (CIS) carriage, which is moved by a belt-driven stepping motor (Compl. ¶¶17, 19, 22). The complaint provides visual evidence from a teardown of the product, identifying specific components like the Minebea ST35B-96 stepping motor and an Allegro A4984 motor driver chip (Compl. ¶¶33-34). It also alleges the scanner operates at different speeds, citing an Oki product specification sheet showing it scans "as fast as 2 sec./page Black & White; as fast as 6 sec./page Color" (Compl. ¶39). This specification sheet is presented as evidence that the device operates at different speeds requiring different motor torques.
IV. Analysis of Infringement Allegations
’133 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An image information reading apparatus having a housing comprising: a sheet table on top of said housing for supporting a document sheet | The Oki MB472 is an information reading apparatus with a housing and includes a sheet table (glass platen) on top. | ¶15-16 | col. 3:1-3 |
| a contact image sensor module carried by a carriage disposed beneath the bottom surface side of said sheet table, said contact image sensor having a plurality of slide-blocks attached onto the top surface | The accused product has a CIS module on a carriage under the sheet table. The complaint identifies features alleged to be "slide blocks" on the module. | ¶17-18 | col. 3:6-14 |
| single guiding means crossed over the bottom center of said carriage for guiding said carriage along said sheet table, said single guiding means mounted on a pair of supports at opposite ends | The product allegedly uses a single metal guide rail to guide the carriage. The complaint provides a photo showing this single rail and its mounting points. | ¶19-20 | col. 3:15-21 |
| ...in a manner that said contact image sensor module can contact the bottom surface side of said sheet table tightly with said plurality of slide-blocks interposed therebetween | The complaint alleges the supports hold the CIS module so it can contact the sheet table tightly. | ¶21 | col. 3:25-31 |
| driving means located at one side of said single guiding means for reciprocally moving said carriage | The product has a motor and belt drive system located to the side of the guide rail that moves the carriage back and forth. | ¶22-23 | col. 3:46-59 |
Identified Points of Contention
- Scope Questions: A central question will be whether the accused product's single guide rail constitutes the "single guiding means" as claimed. The defense may argue that other components in the accused device contribute to guiding and stabilizing the carriage, meaning guidance is not performed by a "single" means in the manner contemplated by the patent, which emphasizes achieving balance through the single guide.
- Technical Questions: The complaint asserts that structures on the CIS module are "slide blocks" (Compl. ¶18). The court may need to determine if these structures meet the functional and structural definition of the "slide-blocks" recited in the claim, which are intended to reduce friction while maintaining tight contact.
’461 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a control circuit for controlling the operations of the scanner, the control circuit comprising a memory, the memory storing a torque table and a driving program | The complaint identifies the Allegro A4984 motor driver chip as the control circuit and alleges that a "Step Sequencing Settings" table in that chip's datasheet constitutes the claimed "torque table." A photo from the datasheet shows this table. | ¶35-37 | col. 4:50-52 |
| the torque table recording a plurality of torque values, each of the torque values corresponding a predetermined condition when the stepping motor produces the corresponding torque | The datasheet table is alleged to contain torque values corresponding to different microstep positions, which are the "predetermined condition[s]." | ¶37 | col. 4:52-55 |
| and the driving program chooses one of the torque values according to the predetermined condition, the motor driving circuit receiving the corresponding driving signal | The complaint alleges the driving program selects a value from this table based on the required operating condition (e.g., scan speed). | ¶37-38 | col. 4:57-64 |
| wherein the control circuit controls the stepping motor to generate different torque so that the scanning module scans the document at different speeds | The complaint alleges the product scans color and black-and-white documents at different speeds (6 sec/page vs 2 sec/page), which necessitates the generation of different torques. A product specification sheet is provided as evidence. | ¶39 | col. 5:15-18 |
Identified Points of Contention
- Scope Questions: Does a table in a third-party component's datasheet satisfy the claim limitation of a "memory storing a torque table" within the accused scanner? The defense may argue that the claim requires the table to be physically stored in the device's own memory (e.g., firmware) and that a datasheet is merely an external reference document.
- Technical Questions: What evidence does the complaint provide that the accused product’s "driving program" actually "chooses one of the torque values" from the referenced table? The complaint alleges this occurs but provides its primary evidence from the component datasheet and the product's external specifications, rather than from an analysis of the device's own software or firmware. The complaint shows an oscilloscope waveform from scanning a test region, which may be offered as circumstantial evidence of the compensation circuit's operation (Compl. ¶56).
V. Key Claim Terms for Construction
For the ’133 Patent
- The Term: "single guiding means"
- Context and Importance: This term is the central inventive concept of the patent, distinguishing it from prior art designs that might use multiple guides. The infringement analysis for Claim 1 hinges on whether the accused product's guide rail assembly falls within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the term "comprises at least one of a guiding shaft, a transmission shaft or a rail shaft," suggesting the form is not rigidly limited (col. 4:35-37).
- Evidence for a Narrower Interpretation: The specification repeatedly links the "single guiding means" to the function of maintaining the carriage "in balance" and states it "crosses over the bottom center of the CIS carriage" to achieve this (col. 3:18-21; Abstract). A defendant could argue that a single rail which does not perform this specific balancing function, or is not centrally located, would not meet the claim limitation as described and illustrated in the patent's preferred embodiment (Fig. 1A).
For the ’461 Patent
- The Term: "torque table"
- Context and Importance: The existence of a "torque table" is a prerequisite for the claimed control system. Practitioners may focus on this term because the plaintiff's evidence for it is not from the accused product's memory itself, but from a component datasheet (Compl. ¶37). The case may turn on whether this evidence is sufficient to prove the element is met.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires "the memory storing a torque table" but does not specify the format or location within the memory subsystem with extreme particularity. A plaintiff might argue that if the device's control logic is configured at the factory to use values or settings derived directly from the datasheet table, then the table is functionally "stored" for use by the device.
- Evidence for a Narrower Interpretation: The patent's detailed description and Figure 7 explicitly depict the "torque table (54)" as a discrete block residing within the "memory (52)" of the "control circuit (50)" (’461 Patent, Fig. 7; col. 4:51-52). A defendant will likely argue this requires the table to be an actual data structure stored in the scanner's firmware or non-volatile memory, not merely a reference in an external document.
VI. Analyst’s Conclusion: Key Questions for the Case
This dispute presents three distinct infringement theories, each with a central question for the court.
A core issue for the ’133 patent will be one of structural and functional scope: does the accused printer’s single guide rail perform the specific function of the claimed "single guiding means"—that is, providing balanced support from the carriage's center to maintain focus—or do other unaccused structures materially contribute to guidance in a way that falls outside the claim?
For the ’461 patent, a key question will be one of evidentiary sufficiency: can a "Step Sequencing Settings" table in a component's external datasheet be construed as the claimed "torque table" that is "stor[ed]" in the accused product's "memory," or must the plaintiff provide direct evidence of such a data structure from the device's own firmware?
Finally, regarding the ’432 patent, the case will likely turn on a question of operational specificity: does the accused product's general-purpose signal processing circuitry perform the specific, multi-step method of compensation recited in the claim—namely, generating a "brightness signal" from a dedicated "test region" and using it to "amplify[] the image signal"—or does it use a different, more generalized method of image correction that is technically distinct from the patented process?