Kodak Alaris Inc v. Citizen Systems Japan Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kodak Alaris, Inc. (Delaware)
  • Defendant: Citizen Systems Japan Co., Ltd (Japan); DNP Imagingcomm America Corporation (Delaware); Dai Nippon Printing Co., Ltd. (Japan)
  • Plaintiff’s Counsel: Ashby & Geddes; Jones Day (Of Counsel)
• Case Identification: 1:18-cv-01324, D. Del., 08/27/2018
• Venue Allegations: Venue is alleged based on Defendant DNP Imagingcomm America Corporation being a Delaware corporation and all defendants allegedly placing products into the stream of commerce, conducting business, and deriving substantial revenue within the district.
• Core Dispute: Plaintiff alleges that Defendants’ dye sublimation printers, when configured to create panoramic photographs, infringe a patent related to thermally printing elongated images by combining multiple, overlapping sub-images.
• Technical Context: The lawsuit concerns thermal dye-sublimation printing, a technology widely used for on-demand, high-quality photo printing in consumer, retail, and professional event settings.
• Key Procedural History: The complaint alleges that Plaintiff notified Defendants of the patent-in-suit via letters beginning in September 2017. It further alleges that subsequent communications, including with Defendants' counsel, and failed licensing negotiations establish pre-suit knowledge of the patent and the alleged infringement.

Case Timeline

Date	Event
2003-11-06	'075 Patent Priority Date
2005-11-01	'075 Patent Issue Date
2017-09-21	Plaintiff sends letter to Defendant DNP identifying '075 patent
2017-10-20	Plaintiff sends follow-up letter to DNP
2017-11-20	Defendant Citizen Systems' counsel responds, acknowledging review of patent
2018-01-18	Counsel for Plaintiff and Citizen Systems discuss technical merits of patent
2018-07-18	Plaintiff captures screenshots of accused product marketing from DNP website
2018-08-27	Complaint Filing Date

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

U.S. Patent No. 6,961,075 - "Method and Apparatus for Thermal Printing of Longer Length Images by the Use of Multiple Dye Color Patch Triads or Quads," issued November 1, 2005

The Invention Explained

• Problem Addressed: The patent's background describes the challenge of using thermal printers to create images, such as panoramic photos, that are longer than the standard-sized color dye patches on the printer's donor ribbon. Prior art solutions to "stitch" images together could be computationally intensive and often resulted in "visually discernible distortions" or alignment issues at the seam between printed segments (ʼ075 Patent, col. 2:13-44).
• The Patented Solution: The invention proposes a method and apparatus to create a seamless elongated image by printing multiple, overlapping sub-images using consecutive sets of color patches from the donor ribbon. The core of the solution lies in how the overlap region is printed: instead of simply feathering or abutting the images, the controller forms pixels in the overlap zone by combining the deposition of dye from both the first and second sub-image printing passes. This is achieved by printing a "partial pixel" during the first pass and overlapping it with "another partial pixel" during the second pass, creating a single, complete pixel with the correct gray level, thereby hiding the seam (ʼ075 Patent, Abstract; col. 3:6-14). Figure 15 of the patent illustrates how a pixel in the overlap region is formed using dye from two different cyan patches, whereas pixels outside the overlap use only one (ʼ075 Patent, Fig. 15).
• Technical Importance: This technique allows printers to use conventional, cost-effective donor media to produce high-quality, large-format prints without the visible artifacts common in earlier methods, a key capability for the on-demand photo kiosk and event photography markets (ʼ075 Patent, col. 2:40-44).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-26, highlighting independent claims 17 (method) and 26 (apparatus) as illustrative (Compl. ¶¶58, 62, 63).
• Independent Claim 26 (Apparatus):
  • An apparatus for thermal printing an elongated image from a donor sheet with a repeating series of color patches
  • A thermal printhead in contact with the donor sheet
  • A controller programmed to use at least two of the series of color patches to form respective sub-images
  • The sub-images form a composite image with gray level pixels in an overlap region
  • The overlap region is formed by combining deposition of material from color patches of each series
  • A gray level pixel in the overlap region is formed by material from both series of color patches
• Independent Claim 17 (Method):
  • (a) Thermally printing a first sub-image on a first region using a first dye-donor patch shorter than the receiver
  • (b) Subsequently printing a second sub-image on a second region using a second dye-donor patch shorter than the receiver
  • The first and second regions have a partial overlap region, and the combined sub-images form a desired image longer than either patch
  • (c) Thermally transferring a transparent overcoat onto the first sub-image, but exclusive of the overlap region
  • (d) Thermally transferring a transparent overcoat onto the second sub-image, inclusive of the overlap region
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶58).

III. The Accused Instrumentality

Product Identification

• The complaint names the DNP DS620A and DS820A printers, as well as other DNP dye sublimation printers capable of printing panoramic images (Compl. ¶¶30, 58).

Functionality and Market Context

• The accused products are thermal dye sublimation printers. The complaint alleges that the infringing functionality is enabled when the printers are configured with specific firmware (v1.52 or later) and used with DNP's "Hot Folder Print (HFP) Utility v.2.2" software (Compl. ¶¶34, 59). This configuration allows the printers to produce panoramic photos (e.g., 6"x14" or 6"x20") using standard media (e.g., 6"x8") (Compl. ¶32). A screenshot of the DNP website, captured by Plaintiff, describes the process: "When printing pano prints the printer will print the image in sections and the paper will exit and rewind into the printer several times before being cut" (Compl. p. 8).
• The complaint positions the DS620A as DNP's "flagship" product and an "extremely valuable revenue-generating asset" for professional photographers and retail operators (Compl. ¶31). It also alleges the printer is a "dominant market share printer maker in the photo booth market" (Compl. ¶51). The complaint includes a screenshot from DNP's website showing the DS620A printer (Compl. ¶33, p. 7).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,961,075 Infringement Allegations (Illustrative Claim 26)

Claim Element (from Independent Claim 26)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An apparatus for thermal printing an elongated image wherein material is transferred from a donor sheet or ribbon having a repeating series of color patches, each series having plural different colors...	The accused DS620A and DS820A are thermal dye sublimation printers that are marketed as being able to print elongated "panoramic photos" using standard media with repeating color patches.	¶32, ¶59	col. 1:7-12
...the apparatus comprising: a thermal printhead in contact with the donor sheet or ribbon;...	The accused products are dye sublimation printers that function by bringing a thermal printhead into contact with a dye donor ribbon to transfer dye to a receiver sheet.	¶62, ¶70	col. 6:21-22
...and a controller programmed to control operation of the printhead with each of at least two of the series of color patches to transfer material...from each of the series of color patches to a receiver sheet to form on the receiver sheet a respective color sub-image from each of the series of color patches...	The printers' controller, using specific firmware and software, is allegedly programmed to print panoramic images "in sections," which the complaint alleges constitutes printing successive sub-images using at least two series of color patches from the media roll.	¶59, ¶64, p. 8	col. 6:49-56
...the respective sub-images forming a composite image that has gray level pixels in an overlap region formed by combining deposition of material from the color patches of each series of color patches...	The complaint alleges that the separately printed sub-images are configured to partially overlap, creating a composite elongated image with an overlap region.	¶66, ¶67	col. 3:47-54
...so that a gray level pixel in the overlap region is formed by material from both the series of color patches.	It is alleged that for each pixel within the overlap region, material is deposited from a color patch used for the first sub-image and also from a color patch used for the second sub-image.	¶72	col. 3:51-54

Identified Points of Contention

• Technical Question: The complaint alleges that the accused printers form pixels in the overlap region from two separate print passes, but it does not provide detailed evidence of the specific algorithm used. A central question will be what technical evidence demonstrates that the printers' method for blending sections constitutes the "combining deposition of material" required by the claims, as opposed to a different technique such as simple abutment or edge feathering.
• Scope Question: Does the term "formed by material from both the series of color patches," as used in the patent, read on the specific blending technique implemented in the accused printers' firmware? The patent's specification describes a specific "partial pixel" overlap method, raising the question of whether the claims are limited to that embodiment or can cover other methods of combining dye from two passes.

V. Key Claim Terms for Construction

The Term: "gray level pixel in the overlap region is formed by material from both the series of color patches" (Claim 26)

• Context and Importance: This limitation is central to the patent's proposed solution for creating a seamless composite image. The construction of this term will be critical to determining infringement, as it defines the specific technical mechanism for handling the overlap region. Practitioners may focus on this term because the core of the dispute is whether the accused printers' method of "stitching" panoramic sections together meets this specific functional requirement.
• Intrinsic Evidence for a Broader Interpretation: A party could argue that the plain language covers any process where dye from a patch in a first series and dye from a patch in a second series both contribute to the final color of a single pixel location in the overlap region, regardless of the precise control method (ʼ075 Patent, col. 3:51-54).
• Intrinsic Evidence for a Narrower Interpretation: A party could argue the term is implicitly limited to the specific embodiment described in the patent, where a "partial pixel" from a first printing step is overlapped with "another partial pixel" from a second step (ʼ075 Patent, Abstract). The detailed discussion of modulating high-level and low-level strobe signals (HLSTR/LLSTR) to achieve this effect could be cited as evidence that this specific control scheme defines the claimed function (ʼ075 Patent, col. 11:4 - col. 12:38).

The Term: "thermally transferring a transparent overcoat on the first sub-image in the first region exclusive of the overlap region" (Claim 17)

• Context and Importance: This limitation in method claim 17 recites a very specific, two-part process for applying the protective overcoat. Proving that the accused printers perform this exact sequence—applying the first overcoat while omitting the overlap, then applying the second overcoat to include it—is necessary to show infringement of this claim.
• Intrinsic Evidence for Interpretation: The language is highly specific. A party seeking a narrower construction would point to the plain meaning of "exclusive of the overlap region," arguing it requires the first overcoat application to stop at the boundary of the overlap. The complaint makes this direct allegation (Compl. ¶74). The patent's own description of how to handle overcoats from multiple "quads" supports this reading, as it contemplates the completing quad's transparent patch being used to cover the overlap area, implying the first one does not (ʼ075 Patent, col. 16:63 - col. 17:11).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendants provide instructions, user manuals, firmware updates (v1.52), and software utilities (HFP Utility v.2.2) that direct and enable customers to operate the printers in an infringing manner to create panoramic prints (Compl. ¶¶11, 34, 81-82).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint details correspondence starting in September 2017 in which Plaintiff identified the ’075 patent. It further alleges that Defendants' counsel acknowledged receipt and review of the patent prior to the lawsuit, but that Defendants continued to sell the accused products (Compl. ¶¶25-29, 85-87).

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

• A key evidentiary question will be one of operational mechanics: what is the precise algorithm that the accused printers' firmware and software use to manage the transition between printed sections? Will discovery produce evidence that the printers perform the "combining deposition of material" from two separate print passes to form a single pixel, as required by Claim 26, or will it reveal a technically distinct method of image stitching?
• The case will likely involve a core issue of definitional scope: how will the court construe the phrase "formed by material from both the series of color patches"? Will the term be limited to the specific "partial-pixel-overlap" technique detailed in the patent's specification, or will it be interpreted more broadly to encompass any blending technique where dye from two passes contributes to a final pixel's color? The answer will likely determine the outcome of the infringement analysis for the apparatus claims.
• For the asserted method claims, a central question will be one of functional proof: can the Plaintiff demonstrate that the accused printers execute the highly specific two-part overcoat application recited in Claim 17, where the first overcoat is applied exclusive of the overlap region and the second overcoat is applied inclusive of it?