DCT

1:21-cv-20299

KMizra LLC v. Lexmark Intl Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-20299, S.D. Fla., 01/25/2021
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a "regular and established place of business" in the district and has committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s multifunction printers (MFPs), associated software, and consumable products such as toner cartridges infringe ten U.S. patents originally assigned to Sharp Corporation.
  • Technical Context: The patents cover a wide range of technologies central to modern office imaging equipment, including user interfaces, duplex scanning mechanics, toner composition, and networked device management.
  • Key Procedural History: The complaint details a lengthy pre-suit history between Defendant and the patents' original owner, Sharp Corporation, beginning with an infringement notice in September 2012. This history includes multiple in-person licensing negotiations and a 2016 mediation that failed to resolve the dispute. Plaintiff K.Mizra is a licensing entity that acquired the patents from Sharp.

Case Timeline

Date Event
1998-09-08 U.S. Patent 6,842,262 Priority Date
2000-10-25 U.S. Patent 7,064,874 Priority Date
2003-11-13 U.S. Patent 7,852,504 Priority Date
2004-11-01 U.S. Patent 7,449,274 Priority Date
2004-11-11 U.S. Patent 7,570,400 Priority Date
2005-01-11 U.S. Patent 6,842,262 Issued
2005-05-20 U.S. Patent 7,568,170 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
2008-11-11 U.S. Patent 7,449,274 Issued
2009-07-28 U.S. Patent 7,568,170 Issued
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
2012-04-20 U.S. Patent 9,769,342 Priority Date
2012-09-25 U.S. Patent 8,274,711 Issued
2012-09 Sharp first notifies Lexmark of alleged infringement of certain patents
2016-11 Lexmark is formally acquired by Apex Technology Co. and PAG Asia Capital
2017-09-19 U.S. Patent 9,769,342 Issued
2018-07-10 U.S. Patent 10,018,938 Issued
2021-01-25 Complaint Filed

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

U.S. Patent No. 6,842,262 - “Iconic Printer Interface Providing Document Composition Features” (issued January 11, 2005)

The Invention Explained

  • Problem Addressed: The patent’s background describes the difficulty for users to apply special printing operations (e.g., duplexing, printing on different paper stock) to only a subset of pages in a document without permanently altering the original electronic file (U.S. Patent 6,842,262, col. 2:37-54).
  • The Patented Solution: The invention is a software printing interface that operates on a copy of the original document. It presents a user with a graphical display of the document’s pages (e.g., thumbnails) and allows the user to select specific pages or groups of pages to apply formatting changes. These changes affect only the printed output, leaving the source document unmodified (U.S. Patent 6,842,262, Abstract; col. 4:18-30).
  • Technical Importance: This approach provided a more intuitive and non-destructive workflow for creating complex print jobs, separating the final print composition from the source document’s native formatting.

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶26).
  • Essential elements of Claim 1 include:
    • A printing interface for a computer system.
    • A receiver for receiving a copy of an original electronic document.
    • A user interface with a graphical display of images for a plurality of pages of the document.
    • The user interface enables applying formatting changes to less than all of the plurality of pages.
    • The changes are applied "free from changing said original electronic document."

U.S. Patent No. 7,064,874 - “Both-Side Document Reading Apparatus and Both-Side Document Reading Method” (issued June 20, 2006)

The Invention Explained

  • Problem Addressed: The patent addresses errors and artifacts in duplex (two-sided) scanning that can arise from inconsistent illumination, such as when one side's light source interferes with the other's sensor or when a light source is turned off mid-scan (U.S. Patent 7,064,874, col. 1:15-2:11).
  • The Patented Solution: The invention describes a duplex scanner where the two reading portions are physically staggered along the paper path. The core of the claimed solution is a method to maintain constant illumination: the first (upstream) light source remains on until the document has completely passed the second (downstream) reading portion. This prevents changes in light levels from affecting the quality of the second side's scan (U.S. Patent 7,064,874, Abstract; col. 2:54-62).
  • Technical Importance: This method aimed to improve the fidelity and consistency of single-pass duplex scanning by controlling for variations in illumination throughout the entire two-sided reading process.

Key Claims at a Glance

  • The complaint asserts at least independent Claim 18 (Compl. ¶30).
  • Essential elements of Claim 18 include:
    • An image forming apparatus with a both-side document reading apparatus.
    • A first reading portion with a first light source for reading one side.
    • A second reading portion with a second light source for reading the other side.
    • The first reading portion is arranged upstream from the second reading portion 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 No. 7,449,274 - "Toner for Electrostatic Image Development and Image Forming Method Using the Same" (issued November 11, 2008)

  • Technology Synopsis: The patent is directed to a toner composition with specific particle size distributions. The invention aims to improve image quality by controlling the percentage of very small particles (under 4 µm) and very large particles (over 16 µm) to enhance sharpness and reproducibility (Compl. ¶36).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶37).
  • Accused Features: The Lexmark X651AA1A toner cartridge is accused of infringing by containing toner particles that meet the claimed size and distribution parameters (Compl. ¶¶37-42).

U.S. Patent No. 7,568,170 - "Data Processing Setting Apparatus, Data Processing Setting Method..." (issued July 28, 2009)

  • Technology Synopsis: The patent describes a user interface for data setting devices, such as a printer driver. It allows a user to select multiple processing functions (e.g., stapling and hole-punching) and displays a "synthesized image" in a separate preview area that pictorially represents the combined result of the selected functions (Compl. ¶¶45-46).
  • Asserted Claims: At least Claim 13 is asserted (Compl. ¶47).
  • Accused Features: The Lexmark Universal Print Driver is accused of infringing by providing a user interface that allows selection of multiple finishing options and displays a synthesized graphical preview of the result (Compl. ¶¶48-54).

U.S. Patent No. 7,570,400 - "Document Reading Device" (issued August 4, 2009)

  • Technology Synopsis: The patent addresses the mechanical design of an automatic document feeder (ADF). The invention features a movable member on the bottom of the ADF that pivots to allow access for clearing paper jams, and a flexible document holder sheet that is fixed in a way to prevent it from creasing when the member pivots (Compl. ¶57).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶58).
  • Accused Features: The Lexmark CX860de MFP is accused of infringing by having an ADF with a pivotable bottom door for jam clearance and a flexible document-holding sheet attached in the claimed manner (Compl. ¶¶58-61).

U.S. Patent No. 7,840,165 - "Toner Replenishing Apparatus, Image Forming Apparatus, and Color Image Forming Apparatus" (issued November 23, 2010)

  • Technology Synopsis: The patent relates to a mechanism for replacing toner containers in a color printer. It describes displacement mechanisms that, in conjunction with shutter sections on the toner ports, move the toner containers from their operational position for easy removal while simultaneously closing the toner ports to prevent spills (Compl. ¶¶64, 72).
  • Asserted Claims: At least Claim 9 is asserted (Compl. ¶65).
  • Accused Features: The Lexmark CX725 printer series is accused of infringing through its imaging kit, which allegedly includes a container holder, detachable toner cartridges, and displacement mechanisms with shutter sections that function as claimed (Compl. ¶¶66-72).

U.S. Patent No. 7,852,504 - "Image Forming Device, Print Job Transmission Device..." (issued December 14, 2010)

  • Technology Synopsis: The patent describes a system for automatically selecting a paper tray in a multi-tray printer. A control section receives a print job, extracts a print condition, obtains a priority-based "order table" from stored setting information, and generates a tray selection signal to feed paper from the appropriate tray (Compl. ¶75).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶76).
  • Accused Features: The Lexmark CX860de MFP is accused of infringing by having multiple paper trays and a control system that prioritizes print settings to select and feed paper from the appropriate tray based on the print job's conditions (Compl. ¶¶76-77).

U.S. Patent No. 8,274,711 - "Document Reading Apparatus Capable of Sequentially Reading Documents..." (issued September 25, 2012)

  • Technology Synopsis: The patent discloses a method for combining documents from an ADF and a flatbed scanner into a single job. The apparatus includes detectors for documents on both the ADF tray (first document table) and the flatbed (second document table) and, when documents are detected in both locations, permits them to be read sequentially into a single output (Compl. ¶¶80-81).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶82).
  • Accused Features: The Lexmark CX860de MFP is accused of infringing through its "Custom Job" function, which allegedly detects documents on both the ADF and scanner glass and allows a user to scan from both sources sequentially into a single document (Compl. ¶¶83-93).

U.S. Patent No. 9,769,342 - "Electric Apparatus" (issued September 19, 2017)

  • Technology Synopsis: The patent describes power management for an electric device with a "power conserving state" and a "normal state." A reception unit (e.g., a button) triggers a signal output unit to send different signals depending on the current state. A control unit then interprets this signal to either "wake" the device (a return signal) or execute a function (an execution signal) (Compl. ¶¶96-97).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶98).
  • Accused Features: The Lexmark CX860de MFP is accused of infringing because its control panel buttons, such as the Power button, allegedly perform dual functions: waking the device from sleep/hibernate mode or executing a different function (like powering down) when in a normal operating state (Compl. ¶¶98-100).

U.S. Patent No. 10,018,938 - "Network System Comprising Customer Replaceable Unit" (issued July 10, 2018)

  • Technology Synopsis: This patent describes a networked system where a server monitors a printer's consumable unit (e.g., a toner cartridge). The server accumulates operation performance data from the printer, calculates the remaining toner, determines when it reaches a threshold, and sends order information to replenish the supply (Compl. ¶¶103-104).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶105).
  • Accused Features: Lexmark's Proactive Consumables Management ("PCM") service, which uses a server (the Lexmark Data Collection Manager) to monitor toner levels in networked MFPs and automatically initiate replenishment orders when supplies are low, is accused of infringing (Compl. ¶¶105-108).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies several categories of accused instrumentalities:
    • Software: The Lexmark Universal Print Driver ("Print Driver") (Compl. ¶20).
    • Multifunction Printers (MFPs): Specific models cited include the Lexmark CX725 series, CX860de, and CX825dte, as well as broader categories of "Small and Medium Business" and "Enterprise and Large Business" solutions (Compl. ¶¶17, 21, 30, 66).
    • Consumables: The Lexmark X651AA1A toner cartridge (Compl. ¶37).
    • Networked Services: The Lexmark Proactive Consumables Management ("PCM") service and its associated Lexmark Data Collection Manager ("LDCM") server software (Compl. ¶105).

Functionality and Market Context

  • The accused products are commercial office equipment and software designed for business environments (Compl. ¶17). The complaint alleges that the accused Lexmark Print Driver provides a "consistent look and feel across all printer models" and allows users to apply print settings (Compl. ¶10, ¶23). The CX860de MFP is described as capable of high-speed "single-pass duplex scan technology" (Compl. ¶30, p. 16). The PCM service is a managed print service that automates supply replenishment for customers (Compl. ¶105). The complaint uses a diagram of a Lexmark CX825dte to illustrate the location of the various patented technology categories within a representative MFP (Compl. ¶16, p. 8).

IV. Analysis of Infringement Allegations

U.S. Patent 6,842,262 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A printing interface for a computer system having an application program...and a printing device... The Lexmark Universal Print Driver, which runs on a computer system and sends commands to Lexmark MFPs. ¶20 col. 4:1-17
(a) a receiver receiving a copy of said original electronic document; The Print Driver receives a document file, such as a .pdf, from an application program like Adobe Acrobat for printing. ¶22 col. 4:21-23
(b) a user interface comprising a graphical display of an image for a plurality of pages of said original document... The Print Driver displays a user interface with a print preview showing a representative image of the document. The complaint provides a screenshot of this interface (Compl. p. 12). ¶22 col. 4:28-30
...and enabling a user to apply formatting changes to less than all of said plurality of pages of said copy... The "Watermark" option in the Print Driver allegedly allows a user to apply one watermark to the first page and a different watermark to the remaining pages, or different watermarks to odd/even pages. The complaint includes a screenshot illustrating these options (Compl. p. 13). ¶¶23-24 col. 4:24-27
...free from changing said original electronic document... The applied watermarks are allegedly only added to the printed hard copies and are not reflected on the original document file. ¶23 col. 4:43-46
  • Identified Points of Contention (’262 Patent):
    • Scope Questions: A potential issue may be whether the term "graphical display of an image for a plurality of pages" requires the specific interactive grid of thumbnails shown in the patent's figures, or if a more generic print preview pane, as alleged in the complaint, is sufficient.
    • Technical Questions: The analysis may require evidence demonstrating that the Print Driver operates on a temporary "copy" of the document data, as claimed, rather than directly on the data stream from the original file, and confirms that no modifications are written back to that original file.

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

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
An image forming apparatus comprising a both-side document reading apparatus... The Lexmark MFP model CX860de is an image forming apparatus that contains a document reader capable of duplex scanning. ¶30 col. 1:8-14
...a first reading portion, provided with a first light source, for reading one side surface of a document... The CX860de contains a flatbed scanner with a scanner lamp that illuminates the downward-facing side of a document. ¶31 col. 5:35-42
...a second reading portion, provided with a second light source, for reading another side surface of the document... The CX860de's ADF houses a second reading portion with a second light source that illuminates the upward-facing side of the document. ¶31 col. 5:43-50
...wherein the first and second reading portions are arranged so that a reading region of the one side surface by the first reading portion is arranged on an upstream side from a reading region of the other side surface... During duplex scanning, the document path allegedly moves past the flatbed scanner first and then into the ADF, making the flatbed scanner's reading region upstream of the ADF's reading region. The complaint provides a diagram illustrating this paper path (Compl. p. 18). ¶32 col. 2:45-53
...wherein the first light source is turned off after the document has passed through the reading region of the second reading portion. The complaint alleges that after scanning is complete, "the scanner lamp of the CX860de turns off automatically." ¶33 col. 8:57-62
  • Identified Points of Contention (’874 Patent):
    • Technical Questions: The central point of contention may be the final claim limitation regarding the timing of the first light source turning off. The complaint's allegation that the lamp "turns off automatically" after scanning is complete (Compl. ¶33) is conclusory. The key factual question will be whether the flatbed scanner lamp (first light source) remains illuminated until the trailing edge of the document has physically passed the ADF scanner (the second reading portion), as required by the claim.

V. Key Claim Terms for Construction

Patent: ’262 Patent

  • The Term: "graphical display of an image for a plurality of pages"
  • Context and Importance: The scope of this term is critical for determining whether the accused Lexmark Print Driver's interface meets this limitation. Practitioners may focus on this term because the accused interface shown in the complaint (Compl. p. 12) features a simple preview pane, which may differ from the interactive thumbnail grid depicted in the patent's own figures.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not specify the format of the display, only that it shows an "image for a plurality of pages," which could be read to cover a scrolling preview.
    • Evidence for a Narrower Interpretation: The patent's detailed description repeatedly references and illustrates an interface with a grid of selectable thumbnail icons representing the pages (e.g., ’262 Patent, Fig. 4; col. 4:31-35), which could be argued to define the scope of the invention.

Patent: ’874 Patent

  • The Term: "turned off after the document has passed through the reading region of the second reading portion"
  • Context and Importance: This term defines the precise timing that forms the core of the patented solution to avoid scan artifacts. Infringement hinges on whether the accused device performs this exact sequence. Practitioners may focus on this term because the complaint's allegation is not supported by specific evidence of this timing.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue this simply means the light turns off after the entire duplex scan process for a given page is finished.
    • Evidence for a Narrower Interpretation: The patent's summary of the invention explains that the purpose of this timing is to maintain a constant lighting state "until the light illumination to the document by the other light source ends," in order to prevent "reception-light-amount change" from affecting the second scan ('874 Patent, col. 2:54-62). This stated technical purpose supports a narrow construction requiring the first light to remain on until the second scan is physically complete.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe for multiple patents. The allegations are based on Defendant’s marketing materials, user manuals, support webpages, and "Lexmark How-to Videos" on YouTube, which allegedly instruct and encourage users to operate the accused products in an infringing manner (Compl. ¶¶27, 34, 43, 55, 62, 73).
  • Willful Infringement: The complaint alleges willful infringement for several patents based on alleged pre-suit knowledge. It asserts that Sharp, the original patentee, first notified Lexmark of infringement of the ’874, ’274, ’400, and ’165 Patents as early as September 2012, and followed up with years of licensing discussions and a mediation (Compl. ¶110). For the other patents, willfulness is alleged from at least the filing of the complaint (e.g., Compl. ¶27, ¶55).

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

  • A central issue will be one of willfulness and damages: given the detailed allegations of a multi-year pre-suit negotiation history between Lexmark and the original patent owner, will the court find that any infringement of the patents discussed in those negotiations was willful, potentially leading to enhanced damages?
  • A key evidentiary question will be one of operational proof: for patents with precise functional claims, such as the ’874 Patent’s requirement for when a scanner light turns off, can the Plaintiff provide the detailed technical evidence necessary to prove the accused devices operate in the specific manner required, beyond the conclusory allegations in the complaint?
  • The case may also turn on questions of claim construction: for user interface patents like the ’262 and ’170, can terms such as "graphical display of an image for a plurality of pages" and "synthesizes a plurality of resulting images" be construed to cover the specific features implemented in Defendant's accused software, or is there a fundamental mismatch between the claimed invention and the accused functionality?