DCT

6:21-cv-01293

KMizra LLC v. Toshiba Corp

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:21-cv-01293, M.D. Fla., 09/07/2021
  • Venue Allegations: Plaintiff alleges venue is proper because Toshiba has committed acts of infringement in the district and maintains regular and established places of business in Orlando and Tampa, Florida.
  • Core Dispute: Plaintiff alleges that Defendant’s multifunction printers (MFPs) and associated management services infringe six U.S. patents related to duplex scanning, document feeder mechanics, print job management, and automated consumable replenishment.
  • Technical Context: The patents address various functional aspects of modern office multifunction printers, a mature and competitive market where innovations in reliability, efficiency, and user convenience are significant.
  • Key Procedural History: The complaint states the asserted patents were originally assigned to Sharp Corporation and subsequently transferred to K.Mizra. It alleges that Toshiba and Sharp had a prior patent license agreement, which has since expired; this allegation forms the basis for Plaintiff's willfulness claims. For one patent, the complaint references the prosecution history of a parent application to preemptively argue for patent eligibility under 35 U.S.C. § 101, noting that an examiner withdrew a rejection after the applicant’s arguments.

Case Timeline

Date Event
2000-10-25 U.S. Patent 7,064,874 Priority Date
2003-11-13 U.S. Patent 7,852,504 Priority Date
2004-11-11 U.S. Patent 7,570,400 Priority Date
2005-08-23 U.S. Patent 10,018,938 Priority Date
2006-06-20 U.S. Patent 7,064,874 Issued
2007-11-09 U.S. Patent 7,840,165 Priority Date
2008-03-19 U.S. Patent 8,274,711 Priority Date
2009-08-04 U.S. Patent 7,570,400 Issued
2010-11-23 U.S. Patent 7,840,165 Issued
2010-12-14 U.S. Patent 7,852,504 Issued
2012-09-25 U.S. Patent 8,274,711 Issued
2018-07-10 U.S. Patent 10,018,938 Issued
2021-09-07 First Amended Complaint Filed

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

U.S. Patent 7,064,874 - "Both-Side Document Reading Apparatus and Both-Side Document Reading Method," issued June 20, 2006 (Compl. ¶16)

The Invention Explained

  • Problem Addressed: The patent describes a problem in duplex (both-side) scanners where the light source for one side can interfere with the sensor for the other. It also notes that if one light source is turned off while the other is still reading, the change in illumination can cause errors or artifacts in the scanned image, leading to incorrect density data. (’874 Patent, col. 1:56-2:10).
  • The Patented Solution: The invention proposes a method to ensure constant reading conditions. In a scanner where the reading heads for each side are offset along the document transport path, the solution is to maintain the lighting state of the first (upstream) light source until the document has completely passed the reading region of the second (downstream) light source. This prevents a premature change in illumination from affecting the scan quality of the second side. (’874 Patent, col. 2:52-60; Compl. ¶17).
  • Technical Importance: This method enhances the accuracy and consistency of high-speed duplex scanning, a core function for document digitization in office environments. (Compl. ¶2-3).

Key Claims at a Glance

  • The complaint asserts independent claim 18. (Compl. ¶17, ¶73).
  • Essential elements of claim 18 include:
    • An image forming apparatus comprising a both-side document reading apparatus.
    • A first reading portion with a first light source for reading one side surface of a document.
    • A second reading portion with a second light source for reading the other side surface.
    • The first reading portion's reading region is arranged upstream from the second reading portion's reading region in the document transport direction.
    • The first light source is turned off after the document has passed through the reading region of the second reading portion.

U.S. Patent 7,570,400 - "Document Reading Device," issued August 4, 2009 (Compl. ¶23)

The Invention Explained

  • Problem Addressed: The patent identifies two issues with automatic document feeders (ADFs). First, clearing paper jams from complex, curved transport paths can be difficult, particularly in the lower sections of the device. Second, the flexible white sheet on the underside of the ADF lid, which holds documents flat on the scanner glass, can develop a permanent fold or crease over time from being repeatedly bent at the pivot point, potentially causing image artifacts or preventing documents from lying flat. (’400 Patent, col. 1:33-2:10).
  • The Patented Solution: The invention discloses a movable member (a door) on the bottom of the ADF that pivots on an axis perpendicular to the document path, allowing wide access to clear jams. To solve the creasing problem, the flexible document holder sheet is specifically fixed to the ADF bottom surface at points other than the portion "positioned immediately below the pivot axis," allowing it to hang freely without being folded when the access door is opened. (’400 Patent, col. 2:26-39; Compl. ¶24).
  • Technical Importance: This mechanical design improves the serviceability and long-term reliability of ADFs, which are heavily used components of office MFPs. (Compl. ¶24).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶24, ¶80).
  • Essential elements of claim 1 include:
    • A document reading device with a document tray, output tray, and document transport path.
    • A movable member serving as part of the device's bottom surface, supported to pivot around an axis perpendicular to the document transport direction.
    • A document holder with a flexible sheet extending over the document platen.
    • The movable member is pivotable to expose a portion of the transport path.
    • The document holder is fixed to the bottom surface at portions other than a portion positioned immediately below the pivot axis.

U.S. Patent 7,852,504 - "Image Forming Device, Print Job Transmission Device, Data Management Device, Program, Storage Medium and Method for Supplying Print Sheet," issued December 14, 2010 (Compl. ¶30)

  • Technology Synopsis: The patent addresses automated paper tray selection in printers with multiple paper types. The invention describes a system where the device receives a print job, extracts specific print conditions, obtains a corresponding priority from a stored "order table," and uses this information to generate a signal to select the appropriate paper tray. (Compl. ¶31, ¶33). A product diagram illustrates the accused "Sheet Feeding Tray Section" containing multiple trays. (Compl. p. 19).
  • Asserted Claims: Claim 1. (Compl. ¶87).
  • Accused Features: The functionality of Toshiba MFPs to receive print jobs over a network, extract conditions, consult a hierarchical table of print preferences, and automatically select a paper tray to commence feeding. (Compl. ¶33).

U.S. Patent 8,274,711

  • Technology Synopsis: The patent addresses the challenge of scanning a mixed batch of documents containing both standard sheets for an ADF and non-standard items (e.g., books, damaged pages) for the flatbed scanner (platen). The invention enables a user to load documents onto both the ADF and the platen and have the apparatus sequentially read both sets of documents to create a single, combined output document. (Compl. ¶36). A user manual graphic depicts placing originals on the "original feeder tray" for the ADF. (Compl. p. 23).
  • Asserted Claims: Claim 1. (Compl. ¶94).
  • Accused Features: The capability of accused Toshiba MFPs to detect documents on both the ADF tray and the scanner platen and, in response to scan commands, read documents from both locations sequentially to combine them into a single output document. (Compl. ¶45).

U.S. Patent 10,018,938 - "Network System Comprising Customer Replaceable Unit," issued July 10, 2018 (Compl. ¶46)

  • Technology Synopsis: The patent describes a networked system for managing printer consumables like toner. The invention moves the logic for tracking toner usage from a chip on the cartridge to a remote server. The server accumulates "operation performance" data from the printer, calculates the remaining toner, determines when it reaches a threshold, and sends order information automatically. (’938 Patent, Abstract; Compl. ¶47). Marketing material for the accused service highlights "Automated toner replenishment services." (Compl. p. 31).
  • Asserted Claims: Claim 3. (Compl. ¶101).
  • Accused Features: Toshiba’s Encompass Managed Print Services (“EMPS”) and e-BRIDGE Fleet Management System, which allegedly comprise servers that monitor networked MFPs, accumulate usage data, calculate remaining toner levels, and automatically initiate replenishment orders when supplies are low. (Compl. ¶49, ¶52).

U.S. Patent 7,840,165 - "Toner Replenishing Apparatus, Image Forming Apparatus, and Color Image Forming Apparatus," issued November 23, 2010 (Compl. ¶61)

  • Technology Synopsis: This patent is directed to the mechanical design of color printers that use multiple toner containers. The invention includes displacement mechanisms that move a toner container from its operative position for easy removal and shutter sections that automatically close the toner replenishing port when the container is displaced, preventing spills. (Compl. ¶62, ¶63). Technical diagrams illustrate the accused internal components, including toner cartridges and developing devices. (Compl. p. 40).
  • Asserted Claims: Claim 9. (Compl. ¶108).
  • Accused Features: The mechanical assembly in Toshiba color MFPs for holding, displacing, and removing multiple toner cartridges, including the alleged use of shutter mechanisms that close in conjunction with the displacement of the containers. (Compl. ¶68-69).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are various models of Toshiba e-STUDIO multifunction printers (MFPs) and, for the ’938 patent, the associated Toshiba Encompass Managed Print Services ("EMPS") and e-BRIDGE Fleet Management System. (Compl. ¶18, ¶22, ¶25, ¶29, ¶32, ¶38, ¶49, ¶64).
  • Functionality and Market Context:
    • The complaint identifies specific product models as representative examples for each asserted patent. For the ’874 patent, the e-STUDIO5506AC is alleged to be an image forming apparatus with a duplex scanner comprising a flatbed scanner (first reading portion) and an automated document feeder ("ADF") scanner (second reading portion). (Compl. ¶18-19).
    • For the ’400 patent, the e-STUDIO5518A is alleged to be a document reading device with an ADF that includes a movable bottom door for accessing the paper path and a flexible white sheet on its underside that acts as a background for document reading. (Compl. ¶25, ¶27-28).
    • The complaint alleges these products are central to modern office workflows and that the accused functionalities are key features. (Compl. ¶2-3). A technical diagram from a service parts list identifies the "CCD-MODULE-H616" as the second reading apparatus. (Compl. p. 10). An excerpt from a "Quick Start Guide" identifies the "Dual Scan Document Feeder" where documents are stacked and the "Platen sheet" where single documents are placed. (Compl. p. 14).

IV. Analysis of Infringement Allegations

U.S. Patent 7,064,874 Infringement Allegations

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
a first reading portion, provided with a first light source, for reading one side surface of a document... The accused e-STUDIO5506AC contains a flatbed scanner that functions as the first reading portion and first light source to read the downward-facing side of a document. ¶19 col. 5:15-22
a second reading portion, provided with a second light source, for reading another side surface of the document... The ADF of the accused printer houses a second reading portion (ADF CCDM) and a second light source (a lamp) to read the upward-facing side of the document. ¶19-20 col. 7:45-51
wherein the first and second reading portions are arranged so that a reading region of the one side surface... is arranged on an upstream side from a reading region of the other side surface... During duplex scanning, a document is moved past the flatbed scanner (first reading region) before it moves past the ADF CCDM (second reading region). ¶20 col. 9:18-22
wherein the first light source is turned off after the document has passed through the reading region of the second reading portion. After the scanning of both sides is complete, the scanner lamp (first light source) of the accused printer turns off automatically. ¶21 col. 2:56-60
  • Identified Points of Contention:
    • Technical Question: The central dispute may be evidentiary. The final claim element requires a specific sequence of operations: the first light source must remain on until the document has passed the second reading region. The complaint alleges this occurs (Compl. ¶21), but a key question for the court will be what technical evidence demonstrates that the accused device’s control logic performs this exact timing function, rather than simply turning off the lamp after the entire job is complete for power-saving reasons.

U.S. Patent 7,570,400 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a movable member that serves as part of a bottom surface of the document reading device, the movable member being supported pivotably around a pivot axis that is perpendicular to a document transport direction... The ADF of the accused e-STUDIO5518A contains a movable bottom door attached by a hinge that is perpendicular to the flow of documents, allowing it to swing open. ¶27 col. 5:58-6:4
a document holder that includes a flexible sheet... positioned so as to extend over the whole length and breadth of the document platen, On the bottom of the accused printer's ADF, there is a flexible white sheet of material that holds documents on the flatbed scanner. ¶28 col. 6:11-16
wherein the movable member is pivotable from a position to cover a portion of the document transport path to a position to expose the portion... The ADF bottom door can swing open, exposing hidden rollers located along the document transport path. ¶27 col. 6:20-31
wherein the document holder is fixed at portions other than a portion that is positioned immediately below the pivot axis, to the bottom surface of the document reading device. The document-holding sheet is attached to the ADF at fixed points that "are not immediately below the pivot axis of the ADF bottom door." ¶28 col. 6:41-44
  • Identified Points of Contention:
    • Scope Question: The analysis may turn on the construction of "immediately below the pivot axis." Practitioners may focus on this term because its spatial scope is not explicitly defined. The question will be whether the attachment points of the flexible sheet in the accused device are factually "other than" the area defined by "immediately below the pivot axis," a determination that will depend on the court's interpretation of that phrase.

V. Key Claim Terms for Construction

Patent: U.S. Patent 7,064,874

  • The Term: "after the document has passed through the reading region of the second reading portion"
  • Context and Importance: This phrase defines the critical timing for turning off the first light source. Infringement depends on whether the accused devices' operation meets this specific temporal condition. A narrow definition could allow the defendant to design around the claim, while a broad one could cover a wider range of shutdown sequences.
  • Intrinsic Evidence for a Broader Interpretation: The patent's summary states an object is to make the illumination amount "invariable... until reading operation at both the main and back surfaces of the document has been completely ended." (’874 Patent, col. 2:23-26). This could support a functional interpretation where "passed through" means the full image capture is complete.
  • Intrinsic Evidence for a Narrower Interpretation: The claim language recites a physical event: the document "pass[ing] through" a "region." This could support a more literal interpretation tied to the physical location of the trailing edge of the paper relative to the physical scanner hardware, which may be a stricter condition.

Patent: U.S. Patent 7,570,400

  • The Term: "immediately below the pivot axis"
  • Context and Importance: The novelty of the claim's solution to the document holder creasing problem lies in avoiding fixation in this specific area. The entire infringement analysis for this element hinges on the spatial scope of "immediately below."
  • Intrinsic Evidence for a Broader Interpretation: A defendant might argue the term refers to the general area underneath the entire pivot mechanism, not just a single line, suggesting that any fixation within that broader area would not be "other than" the claimed portion.
  • Intrinsic Evidence for a Narrower Interpretation: The patent's description of the problem (a fold caused by repeated pivoting) suggests the term refers to the precise line where folding would occur. The figures, such as Figure 3, show the document holder (15) hanging freely from its fixed ends (15A, 15B), with a clear gap under the pivot axis (6A), supporting an interpretation that the "immediately below" area is the specific location where a direct attachment would cause creasing. (’400 Patent, FIG. 3).

VI. Other Allegations

  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. (Compl. ¶75, 82, 89, 96, 103, 110). The primary factual basis alleged is that one or more Toshiba entities previously had a patent license agreement with Sharp (the original patent owner) that has since expired. Plaintiff alleges that as a result of this agreement, Toshiba had actual, pre-suit knowledge of the Asserted Patents and their infringement. (Compl. ¶70).

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

  • A central issue will be one of evidentiary proof: For patents like the ’874 (scanner timing) and ’938 (server-side actions), can Plaintiff produce sufficient technical evidence from the accused products and services—potentially through firmware analysis, network traffic inspection, or operational testing—to demonstrate that they perform the specific, multi-step functions required by the claims?
  • A second core issue will be one of definitional scope: For the ’400 patent, the dispute may turn on the claim construction of the spatial term "immediately below the pivot axis." The case will question whether this term defines a narrow line that the accused device avoids, or a broader region that it does not.
  • A third key question will be one of prior relationship and intent: Given the allegation of a prior, expired license between Toshiba and the original patentee, the court will have to consider whether this history establishes pre-suit knowledge sufficient to support the claims of willful infringement, potentially exposing Defendant to enhanced damages.