Sapphire Crossing LLC v. Kofax Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Sapphire Crossing LLC (Texas)
  • Defendant: Kofax, Inc. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Rabicoff Law LLC
• Case Identification: 1:20-cv-00099, D. Del., 01/30/2020
• Venue Allegations: Venue is asserted based on Defendant's incorporation in Delaware, its established place of business in the district, and alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s unspecified "Kofax products" infringe a patent related to image transfer systems that use a connected computer's resources to provide enhanced functionality.
• Technical Context: The technology concerns multi-function office equipment (e.g., scanner/printer combinations) that can leverage the processing power and memory of a connected personal computer to offer advanced features beyond their standalone capabilities.
• Key Procedural History: An Inter Partes Review (IPR) proceeding, filed in 2016, resulted in a certificate issued on February 8, 2018, cancelling claims 1-18 and 21-26 of the asserted patent. The complaint, filed nearly two years after this certificate issued, alleges the patent is "valid and enforceable" without acknowledging the IPR outcome, which leaves only method claims 19 and 20 available for assertion.

Case Timeline

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

U.S. Patent No. 6,891,633 - "Image transfer system"

• Patent Identification: U.S. Patent No. 6,891,633, "Image transfer system," issued May 10, 2005.

The Invention Explained

• Problem Addressed: The patent describes a problem where multi-function devices like copiers have a limited, static feature set due to their onboard processing and memory constraints, regardless of whether they are connected to a more powerful computer ('633 Patent, col. 1:16-20). The invention seeks to "enrich" the device's capabilities by "utilizing the processing power and memory capacity of a connected personal computer" ('633 Patent, col. 1:23-27).
• The Patented Solution: The invention is an "image transfer system" where a device (e.g., a scanner/printer) connects to a computer. When disconnected, the device offers a basic menu of functions. When connected, the computer enables the device to display a second, "enhanced" menu with advanced features (e.g., collation, adding watermarks) that leverage the computer's resources ('633 Patent, Abstract; col. 1:40-55). A key aspect is that the user can initiate these advanced jobs from the device's own control panel, with the computer's involvement being largely transparent ('633 Patent, col. 1:31-33).
• Technical Importance: This architecture allows a physically simpler and lower-cost device to perform complex document processing tasks that would otherwise require more expensive internal hardware.

Key Claims at a Glance

• While the complaint does not specify claims, the IPR history limits any potential assertion to claims 19 and 20. The sole asserted independent claim can therefore only be claim 19.
• Independent Claim 19 (Method):
  • providing an image transfer device having a scanner for reading an image;
  • reading the image on the first medium with the scanner;
  • automatically uploading electronic data including at least a portion of an image transfer menu to be displayed by the image transfer device to the transfer device from a computer connected to the transfer device;
  • with a processor of the image transfer device, automatically merging the electronic data with the image read by the scanner; and
  • transferring the merged image by the transfer device to a second medium.
• The complaint reserves the right to assert other claims, but only dependent claim 20 remains viable ('633 Patent, col. 18:20-24).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities only as "the Kofax products" and "Exemplary Kofax Products" (Compl. ¶11). No specific products, models, or services are named.

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused products' functionality or market context. It makes only a conclusory statement that the products "practice the technology claimed by the '633 Patent" (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint alleges that infringement is detailed in claim charts attached as Exhibit 2 (Compl. ¶12). However, Exhibit 2 was not filed with the complaint. The complaint's narrative infringement theory is limited to the conclusory statement that "the Exemplary Kofax Products incorporated in these charts satisfy all elements of the Exemplary '633 Patent Claims" (Compl. ¶12). Without the referenced exhibit or any specific factual allegations in the complaint body, a detailed analysis of the infringement allegations is not possible.

No probative visual evidence provided in complaint.

• Identified Points of Contention: Based on the language of the surviving claims, the infringement analysis, once developed, may raise several questions:
  • Scope Questions: What constitutes "electronic data including at least a portion of an image transfer menu"? Does this require the upload of functional code and graphical assets for a new menu, or could it be interpreted more broadly as any data from the computer that enables new options on the device's existing display?
  • Technical Questions: A central question will be whether the accused products perform the step of "automatically merging the electronic data with the image read by the scanner" using a "processor of the image transfer device," as required by claim 19. The complaint provides no facts regarding how any Kofax product performs such a function.

V. Key Claim Terms for Construction

• The Term: "automatically uploading electronic data including at least a portion of an image transfer menu" (Claim 19)

  • Context and Importance: This term is critical as it defines the mechanism by which the computer provides enhanced capabilities to the device. Its construction will determine what type of data transfer from the computer to the device meets this limitation.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the computer "enabling the device to display a second command menu," which could suggest that any data from the computer that unlocks or alters the device's display options would suffice ('633 Patent, col. 2:22-24).
  • Intrinsic Evidence for a Narrower Interpretation: The specification also describes a process where the "computer processor 32C uploads the enhanced program 210C... to the CPU 20 of the device 12," suggesting a more direct transfer of a software program or menu module ('633 Patent, col. 13:4-7).

• The Term: "with a processor of the image transfer device, automatically merging the electronic data with the image read by the scanner" (Claim 19)

  • Context and Importance: This term is central to infringement as it specifies where the core data manipulation occurs. The dispute will focus on whether the device's own processor must perform the merge, or if the "merging" can be offloaded to the connected computer.
  • Intrinsic Evidence for a Broader Interpretation: The overall purpose of the invention is to use the computer's power, which might support an interpretation where the "merging" is a systemic process orchestrated by the device's processor but executed with the computer's help ('633 Patent, col. 1:23-27).
  • Intrinsic Evidence for a Narrower Interpretation: The plain language of the claim explicitly locates the "merging" step "with a processor of the image transfer device." This is supported by a flowchart figure showing the step "DEVICE MERGES BITMAP WITH IMAGE READ BY READER" ('633 Patent, Fig. 9, T4), which points to the action occurring on the device itself.

VI. Other Allegations

• Indirect Infringement: The prayer for relief seeks a judgment of contributory and induced infringement (Compl., Prayer for Relief ¶B). However, the body of the complaint contains no factual allegations to support the required elements of knowledge and intent for such claims. The single count is for direct infringement only (Compl. ¶11).
• Willful Infringement: The complaint requests that the case be declared "exceptional" for the purpose of awarding attorneys' fees (Compl., Prayer for Relief ¶D.i). It does not, however, plead any specific facts regarding pre- or post-suit knowledge of the patent or any egregious conduct by the Defendant that would typically support such a finding.

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

1. A threshold issue is one of "case viability": Given that a 2018 IPR certificate cancelled all but two method claims of the '633 patent, a fact omitted from the complaint, the primary question is how Plaintiff can establish infringement of the narrow, surviving claims (19 and 20) against unspecified products.
2. A core evidentiary question will be one of "technical operation": Assuming the case proceeds, it will turn on whether Plaintiff can produce evidence that any accused Kofax product performs the specific method steps of claim 19, particularly the "automatically merging" of data with a scanned image using the device's own processor, a technical process for which the complaint currently provides no factual support.