DCT

1:20-cv-01134

Sapphire Crossing LLC v. HubSpot Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-01134, D. Del., 08/27/2020
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, has an established place of business in the district, and has committed alleged acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s products and services infringe a patent related to systems where an image transfer device (e.g., a scanner/printer) uses a connected computer's resources to provide enhanced features.
  • Technical Context: The technology concerns leveraging the processing power and memory of a connected PC to expand the capabilities of a hardware peripheral, such as a multi-function printer, beyond its standalone functions.
  • Key Procedural History: A 2018 Inter Partes Review (IPR) proceeding (IPR2016-00723) resulted in the cancellation of claims 1-18 and 21-26 of the asserted patent, leaving only claims 19 and 20 available for assertion. The complaint was filed after this IPR decision.

Case Timeline

Date Event
1999-07-30 '633 Patent Priority Date
2005-05-10 '633 Patent Issue Date
2018-02-08 IPR Certificate Issued, cancelling claims 1-18 and 21-26
2020-08-27 Complaint Filing Date

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

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 peripherals (e.g., combination printer/scanners) had a fixed set of features limited by their on-board memory and processing power. Adding advanced features like document collation or pagination would increase the device's manufacturing cost (U.S. Patent No. 6,891,633, col. 15:20-30).
  • The Patented Solution: The invention proposes a system where a peripheral device, when connected to a PC, gains access to an "enhanced" operating menu on its own display. This enhanced menu presents new features. To execute these features, the peripheral offloads the necessary processing to the more powerful PC, which manipulates the image data (e.g., by adding a watermark or collating pages) and sends it back to the peripheral for output. The process is designed to be initiated from the peripheral's user interface, making the PC's involvement transparent to the user (’633 Patent, col. 1:22-38; Abstract).
  • Technical Importance: This approach aimed to reduce the hardware cost of peripherals by "borrowing" the processing and memory of an attached PC to offer advanced features on demand, rather than building that capability into the peripheral itself (’633 Patent, col. 15:30-41).

Key Claims at a Glance

  • The complaint does not specify which claims it asserts, stating only "one or more claims" (Compl. ¶11). However, post-grant proceedings have cancelled all claims except 19 and 20. The independent claim available for assertion is:
  • Independent Claim 19: A method for transferring information, comprising the steps of:
    • 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, which would include dependent claim 20.

III. The Accused Instrumentality

Product Identification

  • The complaint does not identify any specific accused products, methods, or services by name. It refers generally to "Exemplary Defendant Products" that are identified in an "Exhibit 2" (Compl. ¶11, 13). This exhibit was not filed with the complaint.

Functionality and Market Context

  • The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific features or functionality. All infringement-related details are incorporated by reference from an exhibit that is not publicly available (Compl. ¶14).

IV. Analysis of Infringement Allegations

The complaint alleges that infringement is detailed in claim charts included as Exhibit 2, which is not provided (Compl. ¶13-14). The narrative allegations state only that the "Exemplary Defendant Products practice the technology claimed by the '633 Patent" (Compl. ¶13). Without access to the claim charts or a more detailed narrative, a direct analysis of the infringement allegations is not possible.

No probative visual evidence provided in complaint.

  • Identified Points of Contention: Based on the patent's disclosure and the nature of the defendant's business as a software-as-a-service (SaaS) provider, several points of contention may arise.
    • Scope Questions: A primary question concerns the scope of the term "image transfer device". The patent consistently describes this as a physical hardware apparatus with a scanner and print head (’633 Patent, col. 3:13-24; Fig. 1). The infringement case may turn on whether this term can be construed to cover Defendant's software products and services.
    • Technical Questions: A key technical question will be what evidence supports the allegation that the accused system performs the specific method of claim 19. For example, the claim requires "automatically uploading electronic data including... a portion of an image transfer menu... from a computer" to a separate "image transfer device". Evidence will be needed to show that this specific data transfer from a computer to a distinct "device" for menu generation occurs in the accused system.

V. Key Claim Terms for Construction

  • The Term: "image transfer device" (Claim 19)

    • Context and Importance: Practitioners may focus on this term because the patent's specification and embodiments describe a physical hardware apparatus, such as a multi-function printer (’633 Patent, claim 2). Defendant HubSpot, Inc. is primarily a software and services provider. The viability of the infringement claim may depend on whether this term can be construed to cover a software system.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is not explicitly limited to hardware in the language of claim 19. A party might argue that any system component that transfers images fits the plain meaning.
      • Evidence for a Narrower Interpretation: The specification repeatedly describes the "image transfer device" as a physical object, an "electronic assembly" that includes a "reader 18" (scanner), a "print head 28," a "display 24," and a physical "connector 16" (’633 Patent, col. 3:13-24; Fig. 1). The patent summary contrasts this device with the "computer 14" to which it is "removably connected" (’633 Patent, col. 2:40-49).

  • The Term: "merging the electronic data with the image read by the scanner" (Claim 19)

    • Context and Importance: The construction of this term is critical for understanding the specific technical action required. The claim's grammar suggests the antecedent for "the electronic data" is the previously recited "electronic data including at least a portion of an image transfer menu." This raises the question of whether the claim requires merging the menu data itself with the scanned image, or merging other data (e.g., a watermark) associated with a menu choice.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation (merging associated data): The specification provides an example where activating an enhanced menu function causes the device to upload a separate "bitmap" (e.g., for a "Confidential Document" watermark) from the computer's memory and merge that bitmap with the scanned image (’633 Patent, col. 12:1-12; Fig. 9, step T4). This interpretation aligns with the patent's functional description.
      • Evidence for a Narrower Interpretation (merging menu data): A party could argue for a more literal reading of the claim language, where the "portion of an image transfer menu" that was uploaded is the same data that is subsequently "merged" with the scanned image.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect infringement. The single count is for "Direct Infringement" (Compl. ¶11).
  • Willful Infringement: The complaint contains no factual allegations to support a claim of willful infringement. However, the prayer for relief requests a judgment that the case be "declared exceptional within the meaning of 35 U.S.C. § 285," a remedy that can be awarded in cases of willful infringement or other litigation misconduct (Compl. ¶E.i).

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

  • A core issue will be one of definitional scope: can the term "image transfer device," which the patent describes as a physical hardware apparatus for scanning and printing, be construed to read on Defendant’s software-based products and services?
  • A threshold question for the court will be the viability of the suit itself, given that an Inter Partes Review cancelled 24 of the patent's 26 claims before the complaint's filing. The infringement analysis will be strictly confined to the two surviving claims, 19 and 20.
  • A key evidentiary question will be one of factual support: as the complaint lacks specific factual allegations, the case will depend on what evidence Plaintiff can produce to show that the accused system performs the specific, multi-step method of claim 19, particularly the "uploading" of menu data to a device and the subsequent "merging" of data with a scanned image.