Intermec Corp v. Zebra Technologies

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Hand Held Products, Inc. (DE), Datamax-O'Neil Corp. (FL), and Intermec Technologies Corp. (WA)
  • Defendant: Zebra Technologies Corporation (DE)
  • Plaintiff’s Counsel: DLA Piper LLP (US)
• Case Identification: 1:22-cv-00701, D. Del., 05/27/2022
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and has committed acts of infringement within the district, including the sale and distribution of the accused products.
• Core Dispute: Plaintiffs, subsidiaries of Honeywell International Inc., allege that Defendant’s barcode printers infringe four patents related to modular printer design, wireless printhead technology, and automatic media detection systems.
• Technical Context: The technology at issue pertains to commercial and industrial thermal printers used for creating barcodes and labels, a foundational technology for logistics, retail, manufacturing, and supply chain management.
• Key Procedural History: The complaint alleges that Plaintiffs have provided constructive notice of the asserted patents by virtually marking their products. It further alleges on information and belief that Defendant has actively monitored these patent-marked products since at least 2015.

Case Timeline

Date	Event
1999-03-26	’478 and ’550 Patents Priority Date
2006-05-09	’478 Patent Issue Date
2010-04-20	’550 Patent Issue Date
2011-12-22	’928 Patent Priority Date
2016-07-14	’900 Patent Priority Date
2017-05-30	’900 Patent Issue Date
2020-04-07	’928 Patent Issue Date
2022-05-27	Complaint Filing Date

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

U.S. Patent No. 7,042,478 - Modular Printer (Issued May 9, 2006)

The Invention Explained

• Problem Addressed: The patent's background describes conventional thermal and ribbon ink printers as having complex, integrated components that are difficult to access for maintenance or repair, leading to prolonged operational downtime and reliance on service technicians (’478 Patent, col. 1:26-37). Furthermore, operators needing both thermal and ribbon printing capabilities were often required to purchase two separate, expensive machines (’478 Patent, col. 1:38-44).
• The Patented Solution: The invention proposes a printer constructed from distinct, self-contained modules—such as a media take-up assembly, printhead assembly, and motor assembly—that can be independently and quickly secured to or removed from a central support housing (’478 Patent, Abstract; col. 2:6-14). This modular architecture is designed to simplify maintenance and allow for rapid conversion between different printing technologies (e.g., direct thermal to thermal transfer) by swapping the relevant modules, as illustrated in the exploded-view diagram of Figure 1 (’478 Patent, col. 2:11-14).
• Technical Importance: This modular approach aimed to reduce the total cost of ownership and operational downtime by making repairs faster and enabling a single printer chassis to be adapted for multiple uses (’478 Patent, col. 1:46-50).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶33).
• Essential elements of Claim 1 include:
  • A rotatable supply assembly for storing print media.
  • A rotatable take-up assembly for receiving the print media.
  • A printhead assembly.
  • A ribbon supply assembly with a hub assembly for a ribbon spool, where rotation of the spool creates back tension in the ribbon.
  • A ribbon take-up assembly.
  • A first motor assembly operatively coupled to both the media take-up and ribbon take-up assemblies.

U.S. Patent No. 7,699,550 - Modular Printer (Issued April 20, 2010)

The Invention Explained

• Problem Addressed: As a continuation-in-part of the application for the '478 patent, this patent also addresses the complexity and maintenance difficulties of conventional printers (’550 Patent, col. 1:33-40). It further introduces the technical challenge of precisely managing ribbon tension, particularly in systems that may need to move the ribbon in two directions for ribbon-saving purposes.
• The Patented Solution: The patent discloses a modular ribbon assembly featuring a "bi-directional clutch assembly" (’550 Patent, col. 2:10-12). This clutch mechanism, which includes a shaft, sleeve, hub sections, and a spring, is designed to apply back tension to the print ribbon regardless of whether it is being rotated in a first direction (e.g., unwinding) or a second direction (e.g., rewinding) (’550 Patent, Claim 1).
• Technical Importance: The claimed bi-directional clutch enables more advanced ribbon control, which can facilitate ribbon-saving functions where the ribbon is only advanced when printing is occurring on a portion of a label, thereby reducing consumable waste (’550 Patent, col. 19:1-6).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶45).
• Essential elements of Claim 1 include:
  • A rotatable ribbon supply assembly.
  • A clutch assembly disposed in the ribbon supply assembly.
  • The clutch assembly includes a shaft with a sleeve, a plurality of hub sections each with a spring, with at least one hub section configured to engage a ribbon spool.
  • The clutch assembly applies back tension to the ribbon when at least one hub section is rotated in a first direction or a second direction.

Multi-Patent Capsule: U.S. Patent No. 9,662,900

• Patent Identification: U.S. Patent No. 9,662,900, "Wireless Thermal Printhead System and Method," issued May 30, 2017.
• Technology Synopsis: The patent describes a thermal printhead (TPH) that operates without physical power and/or data cables (’900 Patent, col. 1:12-16). It proposes replacing these cables with wireless technologies, such as using an inductive coil to receive power and a wireless antenna to receive data, in order to shrink printer size, increase durability, and simplify TPH replacement (’900 Patent, Abstract; col. 2:15-21).
• Asserted Claims: At least independent claim 9 (Compl. ¶57).
• Accused Features: The complaint alleges that at least Zebra's ZSB printer, which supports Wi-Fi printing, infringes this patent (Compl. ¶¶28, 57). The infringement theory appears to focus on the use of wireless technology to provide data for controlling the thermal printhead's operation.

Multi-Patent Capsule: U.S. Reissue Patent No. RE47,928

• Patent Identification: U.S. Reissue Patent No. RE47,928, "Media Detection Apparatus and Method," issued April 7, 2020.
• Technology Synopsis: The patent addresses the need for manual calibration when loading new print media, a process that can lead to misregistration and wasted labels (’928 Patent, col. 2:4-11). The invention is a method for automatically calibrating a media sensor by selecting and using at least two different light intensity levels from a light source to more accurately detect the transition between the print media (e.g., a label) and the gap or liner between labels (’928 Patent, Abstract).
• Asserted Claims: At least independent claim 1 (Compl. ¶69).
• Accused Features: The complaint accuses at least Zebra's ZT400 series printers of infringement (Compl. ¶69). The allegation suggests these printers incorporate an automatic media detection and calibration system that operates according to the claimed method.

III. The Accused Instrumentality

Product Identification

The complaint identifies "at least Zebra's ZT400 series printers, ZT600 series printers, and ZSB series printers supporting Wi-Fi printing" as the "Accused Products" (Compl. ¶28).

Functionality and Market Context

The Accused Products are barcode printers manufactured and sold by Zebra, whom the complaint identifies as a "direct competitor" of the Plaintiffs (Compl. ¶22). The complaint alleges these products are related to "Barcode Printing, Mobile Computing, Data Capture, Locationing, Data Platforms, Software, Services, and Supplies" (Compl. ¶24). The infringement allegations map specific product lines to specific patents, suggesting the ZT600 and ZT400 series printers embody the modular design claims, the ZSB series embodies the wireless printhead claims, and the ZT400 series embodies the media detection claims (Compl. ¶¶33, 45, 57, 69). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing the infringement allegations (Compl. ¶¶34, 46). The following summarizes the narrative infringement theories for the lead patents.

’478 Patent Infringement Allegations

The complaint alleges that Zebra's ZT600 series printers directly infringe at least claim 1 of the '478 Patent (Compl. ¶33). The theory is that these printers are constructed with the claimed modular assemblies, including a rotatable supply and take-up for media, a printhead assembly, a ribbon supply assembly with a hub that creates back tension, a ribbon take-up assembly, and a motor that drives the take-up systems (Compl. ¶33; ’478 Patent, Claim 1).

• Identified Points of Contention:
  • Scope Questions: A potential point of contention is whether the ZT600's architecture meets the specific structural definitions of the claimed "assemblies." For example, the claim requires a "first motor assembly operatively coupled to said rotatable take-up assembly and said ribbon take-up assembly." The nature of this coupling in the accused device compared to the patent's teachings may be a focus of dispute.
  • Technical Questions: The claim requires that the "rotation of the spool creates an amount of back tension." The specific mechanism by which the ZT600 printers create ribbon tension will be compared against the mechanism described and claimed in the patent.

’550 Patent Infringement Allegations

The complaint alleges that at least Zebra's ZT410 printer (part of the ZT400 series) infringes at least claim 1 of the '550 Patent (Compl. ¶45). The infringement theory centers on the allegation that the ZT410 contains the claimed "ribbon assembly" which includes a bi-directional "clutch assembly" that applies back tension to the ribbon when rotated in either a first or second direction (Compl. ¶45; ’550 Patent, Claim 1).

• Identified Points of Contention:
  • Scope Questions: The central legal question will be the construction of "clutch assembly." The claim recites a mechanism that applies back tension upon rotation in two different directions. Whether the accused device's tensioning system meets this functional requirement will be critical.
  • Technical Questions: A key technical question is whether the ZT410's ribbon tensioning mechanism is structurally equivalent to the claimed assembly, which recites a "shaft having a sleeve," "hub sections," and a "spring disposed therein." A finding of infringement may depend on whether the accused product's mechanism operates in substantially the same way to achieve the same result.

V. Key Claim Terms for Construction

For the ’478 Patent

• The Term: "a ribbon supply assembly...wherein rotation of the spool creates an amount of back tension in the ribbon" (Claim 1).
• Context and Importance: This limitation defines the functional requirement of the ribbon supply. The construction of this phrase will determine whether any mechanism that imparts drag on the ribbon spool infringes, or if a more specific structure is required.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Parties favoring a broader construction may argue that the claim language focuses on the function ("creates an amount of back tension") and does not limit the structure beyond requiring a "hub assembly."
  • Evidence for a Narrower Interpretation: Parties favoring a narrower view may point to the specification's description of a specific mechanical interaction involving cam surfaces and springs that create tension, arguing these details inform the meaning of the claim term (’478 Patent, col. 4:3-13).

For the ’550 Patent

• The Term: "clutch assembly...wherein when...rotated in a first direction or second direction, the clutch assembly applies a back tension to the ribbon" (Claim 1).
• Context and Importance: This term is central to the patent's asserted novelty over the prior art and the parent '478 patent. The definition of this bi-directional functionality will be a focal point of the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that any assembly providing resistance to unwinding (first direction) and also providing resistance to rewinding or slack take-up (second direction) meets the functional definition of the claim.
  • Evidence for a Narrower Interpretation: A party could argue that the term requires the specific bi-directional clutch structure detailed in the specification, where a torsion spring engages either an inner sleeve or an outer hub depending on the direction of rotation to create tension (’550 Patent, col. 18:5-30). This would suggest that a system using two separate, single-direction mechanisms would not meet the "clutch assembly" limitation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement allegations are based on Defendant's provision of marketing materials, product guides, instructional materials, and online videos that allegedly instruct users on how to use the Accused Products in an infringing manner (e.g., Compl. ¶¶36, 48). The complaint also alleges knowledge based on Defendant "actively comparing its products to Plaintiffs' products and copying Plaintiffs' patented technology" (e.g., Compl. ¶36).
• Willful Infringement: Willfulness is alleged for all four patents. The allegations are primarily based on knowledge of the patents as of the filing of the complaint, but also include broader allegations of objective recklessness and knowledge based on Defendant's alleged monitoring of Plaintiffs' patent-marked products since 2015 (Compl. ¶¶26-27, 38, 50, 62, 74).

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

This dispute between major competitors in the barcode printer market will likely focus on the technical implementation details of the accused products compared to the specific language of the patent claims. The central questions for the court appear to be:

• A core issue for the '478 and '550 patents will be one of structural and functional equivalence: do the ribbon handling and tensioning mechanisms in Zebra's ZT-series printers operate in substantially the same way as the specific modular assemblies and, critically, the bi-directional clutch claimed in the patents, or do they represent a distinct, non-infringing technical approach to achieving a similar outcome?
• A key question for the '900 patent will be one of definitional scope: does a printer's use of standard Wi-Fi to receive print jobs from a network fall within the scope of claims directed to a "wireless thermal printhead system," or are the claims limited to a more specific component-level wireless link that directly replaces the internal cabling to the printhead?
• A central evidentiary question for the '928 patent will be one of algorithmic correspondence: does the automatic media calibration feature in the accused Zebra printers perform the specific claimed method of selecting and switching between at least two distinct light intensity levels to detect media-to-gap transitions, or does it rely on a different sensing logic?