DCT

8:18-cv-01047

Lexmark Intl Inc v. Universal Imaging Industries LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:18-cv-01047, M.D. Fla., 03/12/2019
  • Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, has a regular and established place of business, and has committed alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s universal authentication devices for toner cartridges infringe ten patents related to microchip-based authentication and usage-tracking technologies.
  • Technical Context: The dispute centers on microchip technology used in printer consumables, like toner cartridges, to authenticate them for use with a printer and to monitor consumable levels.
  • Key Procedural History: The complaint details a history of litigation between Plaintiff and companies associated with Defendant's president, Steven Miller, including a 2004 patent infringement suit in Kentucky that resulted in a judgment for Plaintiff. It is also alleged that a patent Mr. Miller later obtained specifically references Plaintiff's authentication technology, suggesting a long-standing focus on Plaintiff's products.

Case Timeline

Date Event
2004-01-01 Lexmark sues a Steven Miller company in the "Kentucky suit"
2005-06-16 Priority Date for U.S. Patent No. 7,844,786
2006-04-19 Priority Date for U.S. Patent No. 8,966,193
2008-11-06 ’786 Patent application first published
2009-05-28 Priority Date for U.S. Patent Nos. 8,225,021 and 8,386,657
2010-11-30 U.S. Patent No. 7,844,786 issues
2010-12-02 ’021 Patent application first published
2011-03-02 Date Plaintiff alleges Defendant had knowledge of asserted patents
2011-06-30 Priority Date for U.S. Patent No. 9,245,591
2011-08-26 Priority Date for U.S. Patent Nos. 8,850,079 and 9,176,921
2012-07-17 U.S. Patent No. 8,225,021 issues
2012-10-17 Priority Date for U.S. Patent No. 9,335,698
2013-02-26 U.S. Patent No. 8,386,657 issues
2013-10-14 Priority Date for U.S. Patent No. 9,837,136
2014-03-05 Priority Date for U.S. Patent No. 9,400,764
2014-09-30 U.S. Patent No. 8,850,079 issues
2015-02-24 U.S. Patent No. 8,966,193 issues
2015-11-03 U.S. Patent No. 9,176,921 issues
2016-01-26 U.S. Patent No. 9,245,591 issues
2016-05-10 U.S. Patent No. 9,335,698 issues
2016-07-26 U.S. Patent No. 9,400,764 issues
2017-12-05 U.S. Patent No. 9,837,136 issues
2019-03-12 Complaint Filing Date

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

U.S. Patent No. 8,225,021 - Dynamic Address Change for Slave Devices on a Shared Bus

  • Issued: July 17, 2012

The Invention Explained

  • Problem Addressed: In computer systems using a shared bus, such as a printer communicating with components like toner cartridges, there is a security risk that an unauthorized "imposter device" can connect to the bus, intercept communications, and corrupt the system by using a known, valid device address. (’021 Patent, col. 1:46-62).
  • The Patented Solution: The invention proposes a method to enhance security by having the slave devices (e.g., a microchip on a toner cartridge) periodically change their unique addresses. Crucially, the master device (e.g., the printer) and the slave device run a synchronized address generation algorithm, allowing the master to predict the new slave address without it being transmitted over the bus, thereby preventing an imposter from learning it. (’021 Patent, Abstract; col. 2:19-28).
  • Technical Importance: This technology allows for secure authentication of replaceable components in a system without broadcasting potentially sensitive address information, a key element in preventing the use of unauthorized or counterfeit consumables. (Compl. ¶24, ¶45).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶107).
  • Claim 1 of the ’021 Patent requires:
    • A data communication system with a master device communicating over a shared data bus with one or more slave devices.
    • Each slave device is identified by a unique address.
    • An address generator associated with each slave device for generating plural addresses so the slave device address can be changed.
    • The slave device is responsive to a command from the master device to change its address.
    • The slave device that processes the command controls its own address generator.
    • The slave address includes a variable address bit portion and a fixed address bit portion.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,844,786 - Addressing and Command Protocols for Non-Volatile Memories Utilized in Recording Usage Counts

  • Issued: November 30, 2010

The Invention Explained

  • Problem Addressed: As computing devices like printers become more complex, they require an increasing number of non-volatile memory modules to track the usage of consumable components. Conventional protocols for updating these memories can be too slow to keep up with faster page rates and can be inefficient. (’786 Patent, col. 1:26-48).
  • The Patented Solution: The patent discloses a method and command protocol for efficiently updating memory modules. The invention provides for a single command that can comprise both "an increment counter command" and "a punch out bit field command." This allows a processing device to instruct a memory module to both update a usage counter and permanently change a bit field (e.g., to mark a portion of a consumable as used), all within a single, efficient command structure. (’786 Patent, Abstract; col. 15:10-22).
  • Technical Importance: This protocol enables fast, secure, and non-resettable tracking of consumable usage, which is a foundational technology for business models like Lexmark's "Return Program" that rely on enforcing single-use restrictions. (Compl. ¶25, ¶47).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶120).
  • Claim 1 of the ’786 Patent requires:
    • A method of updating memory modules.
    • Receiving, at one or more memory modules, a command from a processing device.
    • The command comprises (a) an increment counter command operable to instruct the module(s) to increment an internal counter.
    • The command also comprises (b) a punch out bit field command operable to instruct the module(s) to punch out a specified bit field.
    • Processing the command at the memory module(s).
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsules

  • U.S. Patent No. 8,386,657 - Dynamic Address Change for Slave Devices on a Shared Bus (Issued: February 26, 2013)

    • Technology Synopsis: This patent is a continuation of the '021 Patent and is similarly directed to enhancing security on a shared bus by dynamically changing slave device addresses. (Compl. ¶45, ¶108).
    • Asserted Claims: At least independent claim 1. (Compl. ¶108).
    • Accused Features: The accused authentication devices are alleged to provide slave circuitry and an address generator that generates plural addresses, allowing the slave address to be changed in response to a command from a printer. (Compl. ¶108).

  • U.S. Patent No. 8,850,079 - Dynamic Address Change Optimizations (Issued: September 30, 2014)

    • Technology Synopsis: This patent discloses optimizations for the dynamic address change technology, focusing on the process of generating new component addresses after a series of address change requests. (Compl. ¶45, ¶109).
    • Asserted Claims: At least independent claim 7. (Compl. ¶109).
    • Accused Features: The accused devices are alleged to include a dynamic address generator that, after a series of requests and acknowledgements, generates a new component address for subsequent communications. (Compl. ¶109).

  • U.S. Patent No. 9,176,921 - Dynamic Address Change Optimizations (Issued: November 3, 2015)

    • Technology Synopsis: A continuation of the ’079 Patent, this patent is also directed to optimizations for dynamic address changes, detailing a sequence of operations upon device power-up or reset. (Compl. ¶45, ¶110).
    • Asserted Claims: At least independent claim 1. (Compl. ¶110).
    • Accused Features: The accused devices are alleged to perform a succession of operations after being coupled to a master, including receiving an address change request and generating a new component address in response. (Compl. ¶110).

  • U.S. Patent No. 9,335,698 - Transferable Page Countdown for a Replaceable Unit Between Image Forming Devices (Issued: May 10, 2016)

    • Technology Synopsis: This patent is directed to a memory device (microchip) that stores a record of toner status, including whether the cartridge is out of toner, the number of pages remaining, and the amount of toner used. (Compl. ¶46, ¶111).
    • Asserted Claims: At least independent claim 18. (Compl. ¶111).
    • Accused Features: The accused devices are alleged to contain memory cells that store a record of whether the toner cartridge is out of usable toner, an estimated number of pages remaining, and an amount of toner used. (Compl. ¶111).

  • U.S. Patent No. 8,966,193 - Addressing, Command Protocol, and Electrical Interface for Non-Volatile Memories Utilized in Recording Usage Counts Sensor (Issued: February 24, 2015)

    • Technology Synopsis: This patent is related to the '786 Patent family and concerns methods for measuring consumption on an authentication microchip without being resettable. (Compl. ¶47, ¶121).
    • Asserted Claims: At least independent claim 1. (Compl. ¶121).
    • Accused Features: The accused devices are alleged to receive a command indicative of toner usage and process that command by punching out a specified bit field. (Compl. ¶121).

  • U.S. Patent No. 9,245,591 - Addressing, Command Protocol, and Electrical Interface for Non-Volatile Memories Utilized in Recording Usage Counts (Issued: January 26, 2016)

    • Technology Synopsis: This patent family discloses a memory module that uses voltage clamping on a signal line to indicate status (e.g., busy), allowing a common conductor to be time-shared for both receiving signals and communicating status. (Compl. ¶48, ¶122).
    • Asserted Claims: At least independent claim 1. (Compl. ¶122).
    • Accused Features: The accused devices are alleged to limit a voltage on a signal line to an intermediate level to indicate the occurrence of a busy condition while processing a command. (Compl. ¶122).

  • U.S. Patent No. 9,400,764 - Addressing, Command Protocol, and Electrical Interface for Non-Volatile Memories Utilized in Recording Usage Counts (Issued: July 26, 2016)

    • Technology Synopsis: A continuation of the ’591 patent, this patent is also directed to the use of voltage clamping on a signal line to report a busy condition to the printer. (Compl. ¶48, ¶123).
    • Asserted Claims: At least independent claim 1. (Compl. ¶123).
    • Accused Features: The accused devices are alleged to clamp a voltage on a signal line to an intermediate level to report a busy condition while concurrently receiving a binary input signal on the same line. (Compl. ¶123).

  • U.S. Patent No. 9,837,136 - Addressing, Command Protocol, and Electrical Interface for Non-Volatile Memories Utilized in Recording Usage Counts (Issued: December 5, 2017)

    • Technology Synopsis: A continuation in the same family as the '591 and ’764 patents, this patent is also directed to using an intermediate voltage level on a signal line to indicate a busy condition. (Compl. ¶48, ¶124).
    • Asserted Claims: At least independent claim 1. (Compl. ¶124).
    • Accused Features: The accused devices are alleged to limit the voltage on a signal line to an intermediate level to indicate a busy condition while receiving a clock signal on the same line. (Compl. ¶124).

III. The Accused Instrumentality

Product Identification

  • The accused products are "universal authentication devices" manufactured and sold by Defendant for use in Plaintiff's toner cartridges. (Compl. ¶50). The complaint groups these devices into families corresponding to the Lexmark printer families they target, such as the “E260 Family,” “T650 Family,” “MS/MX (310 Family),” and others. (Compl. ¶52). The complaint provides an image of the device for the "MS/MX" family of printers. (Compl. ¶58).

Functionality and Market Context

  • The complaint alleges that these devices are designed to circumvent Plaintiff's technological protection measures. (Compl. ¶27, ¶59). For the patents related to dynamic address changing (the '021 Patent family), the accused devices allegedly generate valid, changing addresses to establish and maintain communication with the printer, thereby fooling it into accepting an unauthorized or counterfeit cartridge. (Compl. ¶59-60). For patents related to usage tracking (the '786 Patent family), the devices allegedly employ voltage clamping and execute counter and punch-out commands in the same manner as Plaintiff's own microchips to record toner usage. (Compl. ¶56-57). The complaint alleges these devices are marketed specifically to enable unauthorized and counterfeit toner cartridges to function with a wide range of Lexmark printers. (Compl. ¶52).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,225,021 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
In a data communication system... a master device communicatively coupled to a shared data bus; and one or more slave devices... The accused devices are used as part of a data communication system where an application specific integrated circuit in a printer (master) communicates over a shared data bus with the accused devices (slave). ¶107 col. 1:12-24
an address generator associated with said slave device, said address generator generating plural addresses... The accused authentication devices contain an address generator for generating plural addresses so that the address of the device can be changed. An image provided in the complaint shows the infringing device contains an ON Semiconductor® component. (Compl. ¶62). ¶107 col. 2:49-53
said slave device is responsive to a command from the master device for changing the respective address thereof... The accused devices are responsive to a command from the printer's integrated circuit for changing their address. ¶107 col. 2:53-55
wherein said slave address includes a variable address bit portion and a fixed address bit portion. The address of each accused device includes a variable address bit portion and a fixed address bit portion. ¶107 col. 2:40-44

U.S. Patent No. 7,844,786 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of updating memory modules, comprising: receiving, at one or more memory modules, a command transmitted from a processing device... Each accused device contains a memory module that receives a command transmitted from a printer. The complaint provides an image showing one of the accused devices, which is designed for use with "Color Printers." (Compl. ¶54). ¶120 col. 2:11-14
wherein the command comprises a) an increment counter command operable to instruct the one or more memory modules to increment a counter within the one or more memory modules... The received command comprises an increment counter command operable to instruct the device to increment an internal counter. ¶120 col. 2:15-18
and b) a punch out bit field command operable to instruct the one or more memory modules to punch out a specified bit field within the one or more memory modules; and The received command also comprises a punch out bit field command operable to instruct the device to punch out a specified bit field within the device. ¶120 col. 3:23-28
processing the command at the one or more memory modules. The accused device processes the command it receives. ¶120 col. 2:18-19

Identified Points of Contention

  • Scope Questions: A central issue may be the construction of "address generator" in the '021 Patent. The dispute could turn on whether Defendant's method of generating addresses is structurally and functionally equivalent to the specific pseudorandom algorithms and fixed/variable bit portions described in the patent. For the '786 Patent, the scope of "punch out bit field command" will be critical, specifically whether it requires a permanent, non-reversible change to a memory bit, as this is key to the patent's goal of creating non-resettable usage counters.
  • Technical Questions: A key factual question will be one of operational equivalence. The complaint alleges that Defendant's devices "execute these commands in the same manner as the Lexmark authentication microchips" (Compl. ¶57). The court will have to determine if the accused devices, which were allegedly reverse-engineered, perform the exact technical steps required by the claims or if they achieve a similar result through a technically distinct method that falls outside the claim scope.

V. Key Claim Terms for Construction

The Term: "address generator" (’021 Patent, Claim 1)

  • Context and Importance: The infringement allegation for the '021 patent family rests entirely on the assertion that the accused devices contain an "address generator" that creates changing addresses. The definition of this term will be dispositive for those patents. Practitioners may focus on whether this term requires the specific type of pseudorandom linear feedback shift register (LFSR) disclosed in the specification or if it can be read more broadly to cover any circuit that produces a sequence of addresses.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is broad, simply requiring a "generator generating plural addresses." The specification also refers to the generator more generally as a "means for generating addresses." (’021 Patent, col. 3:19-21).
    • Evidence for a Narrower Interpretation: The detailed description and figures focus heavily on specific embodiments using a "pseudorandom address generator," often implemented as a Galios linear feedback shift register. (’021 Patent, Fig. 3; col. 6:50-65). A defendant may argue that the invention is limited to these disclosed embodiments.

The Term: "punch out a specified bit field" (’786 Patent, Claim 1)

  • Context and Importance: This term is central to the '786 patent family's function of creating a non-resettable usage record. The meaning of "punch out" will determine whether the accused devices' method of recording usage infringes. Practitioners may focus on whether "punch out" implies a permanent, one-way change from an erased state to a programmed state, which is a common feature in technologies designed to prevent tampering or resetting.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language does not explicitly state the change must be permanent or irreversible, only that a bit field is "punched out."
    • Evidence for a Narrower Interpretation: The specification describes the process as changing a bit "from an erased state to a programmed state," which in the context of non-volatile memory technologies often implies a permanent change that cannot be easily reversed, distinguishing it from a standard rewritable memory bit. (’786 Patent, col. 5:5-13; col. 12:45-49).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement. The inducement claims are based on allegations that Defendant aids, abets, and encourages its customers to use the accused devices in an infringing manner—specifically, by installing them in toner cartridges for use in Lexmark printers. (Compl. ¶131, ¶139). The contributory infringement claims allege the devices are a material part of the patented inventions, are not staple articles of commerce suitable for substantial noninfringing use, and are known by Defendant to be especially adapted for infringement. (Compl. ¶147, ¶155).

Willful Infringement

  • The complaint alleges willful infringement based on Defendant's alleged full knowledge of the asserted patents since at least March 2, 2011. (Compl. ¶112, ¶125). The allegations are supported by a detailed history of prior litigation against a company run by Defendant's president for infringing other Lexmark patents, and by evidence that Defendant’s president later obtained a patent that specifically discusses reverse-engineering Lexmark's authentication technology. (Compl. ¶65-70).

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

  • A core issue will be one of technical equivalence: Given the complaint's allegations of reverse-engineering, a central evidentiary question for the court will be whether the accused "universal authentication devices" operate in a manner that is functionally identical to the patented technology, or if they achieve a similar outcome through a different technical implementation that falls outside the literal scope of the claims.
  • The case will also turn on a question of definitional scope: The dispute will likely involve significant claim construction arguments over terms such as "address generator" and "punch out bit field command." Whether these terms are given a broad, functional definition or are limited to the specific embodiments disclosed in the patents could be dispositive for infringement.
  • A third key question relates to intent and history: The extensive history alleged between Plaintiff and Defendant's president, including prior litigation and patents explicitly referencing Plaintiff's technology, will be a focal point for the willfulness claims. The court will need to determine if this history demonstrates a deliberate and egregious pattern of copying that warrants enhanced damages.