DCT

1:18-cv-00649

OpenPrint LLC v. Brother Intl Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00649, D. Del., 04/30/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a corporation organized under the laws of the State of Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s Fax-to-Email multi-function devices infringe four patents related to systems and methods for sending a facsimile from a standard fax machine to an email address over a computer network.
  • Technical Context: The asserted patents describe technology that bridges legacy public telephone networks used by facsimile machines with modern packet-switched networks used for electronic mail, enabling cross-platform document transmission.
  • Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review proceedings, or licensing history related to the patents-in-suit. The four asserted patents are part of a single family and claim priority to the same 1996 provisional application.

Case Timeline

Date Event
1996-10-15 ’345, ’906, ’601, and ’888 Patents Priority Date
2000-02-08 U.S. Patent No. 6,023,345 Issued
2008-11-04 U.S. Patent No. 7,446,906 Issued
2013-10-01 U.S. Patent No. 8,547,601 Issued
2015-01-27 U.S. Patent No. 8,941,888 Issued
2018-04-30 Complaint Filed

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

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

  • Issued: February 8, 2000

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenge of uniting traditionally distinct message delivery systems—facsimile delivery over telephone networks and electronic mail delivery over computer networks—to allow a hardcopy document to be sent from a fax machine and received as an email (’345 Patent, col. 1:15-22).
  • The Patented Solution: The invention proposes a system comprising a local "interface device" connected to a conventional fax machine and a remote "Facsimile/E-mail server system" (FEM-GATEWAY) (’345 Patent, col. 2:9-14). A user inputs a recipient's email address via the local interface device, which then directs the fax machine to transmit the scanned document over the public telephone network to the remote server. The server receives the fax data, converts it into a computer-readable image file (e.g., TIFF), attaches it to an email, and sends it to the recipient's email address over a computer network like the Internet (’345 Patent, col. 2:20-28; Fig. 1).
  • Technical Importance: The described solution enabled standard, pre-existing fax machines to send documents to the rapidly growing base of email users without modification to the fax machine itself, providing a bridge between legacy and emerging communication platforms (’345 Patent, col. 2:35-38).

Key Claims at a Glance

  • The complaint asserts independent claim 13 (Compl. ¶6).
  • Essential elements of claim 13 include:
    • A communication system for communicating information originally on paper, using a public communication network (PN) and a global computer communications network.
    • A server in communication with both the PN and the computer network.
    • A facsimile device for generating facsimile information and communicating with the PN.
    • An interface device that is responsive to signals to facilitate communication between the facsimile device and the server, and to facilitate delivery of the facsimile information to an email address.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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

  • Issued: November 4, 2008

The Invention Explained

  • Problem Addressed: The ’906 Patent, a continuation of the ’345 Patent, addresses the same general problem of integrating facsimile and email systems (’906 Patent, col. 1:21-26).
  • The Patented Solution: The patent claims a method performed by a facsimile/email server system. The claimed method involves the server system receiving an email address from an interface device, receiving facsimile information from a fax machine's scanning portion, converting the information into a computer-readable image file, composing an email with the file as an attachment, and transmitting it to the destination email address (’906 Patent, Abstract). The method also includes steps for generating and outputting a report upon user request (’906 Patent, col. 26:35-38).
  • Technical Importance: This patent focuses on the server-side method for processing the fax-to-email transaction, complementing the system claims of the parent ’345 patent by defining the specific operational steps performed by the remote server (’906 Patent, Fig. 8).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 3, and 4 (Compl. ¶9).
  • Essential elements of independent claim 1 include:
    • Receiving an electronic mail address from an interface device.
    • Receiving facsimile information from a scanning portion of a facsimile machine.
    • Converting the received facsimile information into a computer readable image file.
    • Composing an e-mail message with the image file as an attachment.
    • Transmitting the composed e-mail message to an electronic mail server associated with the received email address.
    • Receiving a report request from a user.
    • Generating a report based upon the request.
    • Outputting the generated report.

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

  • Issued: October 1, 2013

Technology Synopsis

A continuation in the same family, this patent claims an Internet-based server system. The system includes a facsimile-to-e-mail server configured to receive facsimile information and a destination email address (in alphanumeric form) from a fax device, convert the fax into an image file, attach it to an email, and send it over a communication network (’601 Patent, Abstract).

Asserted Claims

Independent claims 1 and 6, and dependent claims 8 and 9 (Compl. ¶15).

Accused Features

The complaint alleges that Defendant’s products are an Internet-based server system with a gateway that receives fax information and a user-entered email address, converts the fax to a file (e.g., PDF or TIFF), attaches it to an email, and sends it to the destination address (Compl. ¶16).

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

  • Issued: January 27, 2015

Technology Synopsis

This patent claims a communications apparatus, such as a multi-function peripheral, that incorporates the fax-to-email functionality. The claimed apparatus includes a facsimile component, a user interface for receiving an email address, and a gateway component that operates in two modes: a first mode to convert and send a fax as an email attachment, and a second mode to transmit a standard fax to a remote fax device (’888 Patent, Abstract).

Asserted Claims

Independent claim 1 and dependent claims 2, 3, 4, 5, 7, 8, and 9 (Compl. ¶21).

Accused Features

The complaint alleges the accused products are a communications apparatus with a fax scanner, a user interface (touch pad or keypad), and a gateway that operates in a first mode to send a scanned document as an email attachment (e.g., PDF, TIFF, JPEG) and a second mode for standard facsimile transmission (Compl. ¶22).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as Defendant’s "Fax-to-Email Devices" (Compl. ¶6). While an "Exhibit 1" is referenced as containing a list of specific products, this exhibit was not attached to the publicly filed complaint.

Functionality and Market Context

The complaint alleges the accused products are systems that allow a user to send a document originally on paper to an email address (Compl. ¶7). The functionality is described as selecting an "Internet Fax" option, entering a recipient's email address via a user interface such as a touchscreen or keypad, and having the device scan the document, convert it to a digital image file (e.g., PDF, TIFF, JPEG), attach it to an email, and transmit it to the selected email address over the internet (Compl. ¶¶ 7, 10, 16, 22). The complaint also alleges the devices can operate in a conventional fax mode (Compl. ¶22). No allegations regarding specific market positioning are provided.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'345 Infringement Allegations

Claim Element (from Independent Claim 13) Alleged Infringing Functionality Complaint Citation Patent Citation
a communication system for communicating, with the assistance of a public communication network (“PN”) ... and a global computer communications network ... information found originally as an image on paper The Accused Instrumentalities are described as a communication system using a telephone network and the internet to send a fax. ¶7 col. 2:9-14
said system comprising: a server in communication with the PN and in communication with the computer network The complaint alleges a server in communication with the telephone network and the internet. ¶7 col. 4:5-11
a facsimile device for generating facsimile information from information found originally as an image on paper, said facsimile device communicating with PN The accused products allegedly include a facsimile device that sends faxes over phone lines. ¶7 col. 4:6-9
an interface device responsive to signals received at said interface device to facilitate communications between said facsimile device and said server and to facilitate delivery of facsimile information from said facsimile device to an e-mail address associated with the computer network A user selects "Internet Fax" and enters an email address, and the device sends the facsimile information to the selected email address. ¶7 col. 2:30-35

'906 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving an electronic mail address from an interface device A user enters a destination email address into the accused device. ¶10 col. 14:51-56
receiving facsimile information from a scanning portion of a facsimile machine The accused device receives a digital image from its scanner portion. ¶10 col. 6:55-59
converting the received facsimile information into a computer readable image file The digital image is converted into a PDF, TIFF, or JPEG file. ¶10 col. 7:1-8
composing an e-mail message with the computer readable image file as an attachment An email message is created with the PDF, TIFF, or JPEG file as an attachment. ¶10 col. 7:20-29
transmitting the composed e-mail message to an electronic mail server associated with the received electronic mail address The email message is transmitted to the mail server associated with the entered email address. ¶10 col. 8:51-54
receiving a report request from a user; g) generating a report based upon the received report request; and h) outputting the generated report The complaint alleges a user can request a fax report, which is then generated. ¶10 col. 12:35-55

Identified Points of Contention

  • Scope Questions: A central question may be the scope of the term "interface device." The ’345 Patent’s specification describes the interface device as a component that allows a "pre-existing fax machine to function... with no modification to the fax machine itself" (’345 Patent, col. 2:35-38), and Figure 1 depicts it as a physically separate unit. The accused products are described as integrated multi-function devices. This raises the question of whether an integrated user interface and control system within a multi-function device meets the "interface device" limitation as claimed and described in the patent.
  • Technical Questions: For the ’906 Patent, the complaint’s allegations for the "report" generation steps are conclusory, stating only that "the user can request a fax report which is generated" (Compl. ¶10). The court will require evidence showing what this "fax report" is and how its request, generation, and output map to the specific functions contemplated by the patent.

V. Key Claim Terms for Construction

The Term: "interface device" (from ’345 Patent, claim 13)

  • Context and Importance: The definition of this term is critical because the patent’s preferred embodiment depicts a separate, external box that connects to a standard fax machine. The accused products are alleged to be integrated systems. The outcome of the infringement analysis for the ’345 Patent may depend on whether this term can be construed to cover an integrated component within a multi-function device. Practitioners may focus on this term because of the potential physical and architectural differences between the patented embodiment and the accused products.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is functional, requiring a device that is "responsive to signals... to facilitate communications" and "facilitate delivery" of information to an email address (’345 Patent, col. 24:14-22). This language does not explicitly require a separate physical housing.
    • Evidence for a Narrower Interpretation: The specification states that the "interface device allows any pre-existing fax machine to function as the sending machine of the invented system, with no modification to the fax machine itself" (’345 Patent, col. 2:35-38). Figure 1 of the patent also explicitly shows the "FAX INTERFACE DEVICE" (102) as a separate component from the "FAX DEVICE" (106), connected by an "accessory line" (109).

The Term: "server" (from ’345 Patent, claim 13)

  • Context and Importance: The claim requires "a server" that communicates with both the telephone and computer networks. The complaint alleges the Accused Instrumentalities are a "system" that performs these functions. The location and architecture of the server functionality (e.g., whether it resides on the accused device, a remote third-party service, or is distributed) will be a key factual issue. The construction of "server" will determine what architecture satisfies this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent refers to the server system as a "remotely located Facsimile/E-mail server system (FEM-GATEWAY)" (’345 Patent, col. 2:11-13). The term "system" could imply a distributed or cloud-based architecture rather than a single, monolithic machine.
    • Evidence for a Narrower Interpretation: The patent provides block diagrams for the "Fax-Server" (Fig. 2) and "E-mail-server" (Fig. 3) that depict conventional computer components (CPU, Storage, etc.), suggesting a discrete physical or virtual machine.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement of the ’906 Patent (Compl. ¶¶ 31-38). The basis for this allegation is that Defendant provides "instruction manuals, advertisement of the infringing features, and support" that allegedly instruct resellers and end-users to operate the accused products in an infringing manner (Compl. ¶35). The complaint specifically cites a URL for a user manual as an example of such instructions (Compl. ¶37).
  • Willful Infringement: The complaint does not contain a formal count for willful infringement. However, the inducement count alleges that Defendant has knowledge of the ’906 Patent "since at least the filing of the this complaint" and "specifically intends that its resellers and end-users directly infringe" (Compl. ¶36). These allegations of post-suit knowledge and intent could form the basis for a future claim of willful infringement. The prayer for relief also requests a declaration that the case is "exceptional" under 35 U.S.C. § 285 (Compl. p. 12, ¶d).

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

This case presents a dispute over technology that integrated facsimile and email communications. The litigation will likely focus on several key questions for the court:

  • A core issue will be one of definitional scope: can the term "interface device", described in the ’345 Patent’s specification as an add-on for pre-existing fax machines, be construed to read on the integrated user interface and control systems of modern multi-function printers?
  • A second key question will be one of architectural mapping: does the architecture of the accused system, particularly the location and functionality of its "server" component(s), align with the server limitations recited in the asserted claims, or is there a fundamental mismatch?
  • Finally, an evidentiary question will center on induced infringement: does the evidence, including Defendant's user manuals and marketing materials, demonstrate a specific intent to encourage infringement of the patented methods, as required to prove inducement?