DCT

1:22-cv-21631

Ui Tech Inc v. Ricoma Intl Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-11117, S.D.N.Y., 12/28/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because a substantial part of the events giving rise to the claims occurred in the district and Defendants conduct business and have committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant, a former reseller of Plaintiff's products, misappropriated confidential information to develop and sell competing products that infringe six patents related to methods for converting standard toner printers to print with specialty toners.
  • Technical Context: The technology at issue involves methods and systems for modifying standard CMYK (Cyan, Magenta, Yellow, Black) toner printers to enable them to print with non-standard toners—such as white, metallic, sublimation, or fluorescent toners—for specialty applications like textile transfers and security printing.
  • Key Procedural History: The complaint details a prior business relationship where Defendant Ricoma was an authorized reseller of Plaintiff UI’s products under a "Reseller Agreement." Plaintiff alleges that after the termination of this agreement, Defendant used confidential information obtained during the partnership to launch a competing product. A demand letter was sent by Plaintiff to Defendant approximately four months prior to the filing of the complaint.

Case Timeline

Date Event
2015-06-05 Priority Date for ’968, ’981, ’982, ’446, and ’372 Patents
2017-12-05 U.S. Patent Nos. 9,835,968, 9,835,981, and 9,835,982 Issued
2018-01-15 Priority Date for ’670 Patent
2019-06-04 U.S. Patent No. 10,310,446 Issued
2019-10-29 U.S. Patent No. 10,459,670 Issued
2020-05-11 Parties enter into Authorized Reseller Agreement
2020-05-12 U.S. Patent No. 10,649,372 Issued
2021-03-01 Defendant Ricoma allegedly stops purchasing product from Plaintiff
2021-04-09 Reseller Agreement is terminated
~2021-08-01 Plaintiff becomes aware of Defendant offering Accused Product for sale
2021-08-13 Plaintiff sends demand letter to Defendant
2021-12-28 Complaint Filed

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

U.S. Patent No. 9,835,968 - "Toner cartridge printer devices, systems, and methods for over printing and under printing"

The Invention Explained

  • Problem Addressed: The patent describes a need for a single printer that can perform both "under printing" (laying down a base layer, like white, on dark media before color) and "over printing" (laying down a top layer, like a clear coat, after color) in a single pass, which was not possible with existing toner printers (Compl. ¶2; ’968 Patent, col. 1:47-62).
  • The Patented Solution: The invention is a method for converting a standard four-cartridge CMYK printer to enable it to print a layer of non-standard toner (e.g., white) over a color image in a single pass. This is achieved by physically swapping the positions of certain toner cartridges (e.g., moving the cyan cartridge to the black cartridge's original position) and installing a non-standard cartridge in an empty slot, then using specialized Raster Image Processor (RIP) software to "remap" the printer's logic to account for the new configuration (’968 Patent, Abstract; Compl. ¶28).
  • Technical Importance: This approach allows users to add specialty printing capabilities to standard, off-the-shelf hardware, potentially avoiding the cost of purchasing dedicated, specialized printing systems (Compl. ¶22).

Key Claims at a Glance

  • The complaint asserts Independent Claim 1 and notes that the patent also includes dependent claims 2-11 (Compl. ¶23, ¶74).
  • Essential elements of asserted independent method claim 1 include:
    • Providing a CMYK color toner printer with four specific toner cartridges.
    • Removing the black toner cartridge from a first position and the cyan toner cartridge from a fourth position.
    • Providing a non-standard toner printing cartridge.
    • Installing the cyan cartridge into the first position and the non-standard cartridge into the fourth position.
    • Providing RIP software that is configured to remap the cartridges and allows the printer to print a layer of non-standard toner over a CMY image in a single pass (Compl. ¶28).

U.S. Patent No. 9,835,981 - "Method and system for converting a toner cartridge printer to a metallic, clear fluorescent, or light toner printer"

The Invention Explained

  • Problem Addressed: Standard CMYK printers are generally unable to print with specialty toners such as metallic, fluorescent, or light colors, limiting their application for decorative or security purposes (’981 Patent, col. 1:40-47).
  • The Patented Solution: The patent discloses a method to convert a standard printer to use these specialty toners. For example, to enable printing with a clear fluorescent toner, the black and cyan cartridges are removed, the cyan cartridge is re-installed in the black cartridge's original position, and a new clear fluorescent toner cartridge is installed in the cyan cartridge's original position. As with the ’968 Patent, RIP software is required to remap the printer's functions to recognize and utilize the new toner configuration (’981 Patent, Abstract; Compl. ¶29).
  • Technical Importance: The invention provides a method for retrofitting existing printer hardware to produce prints with security features (e.g., toner visible only under UV light) or high-value decorative effects (Compl. ¶2).

Key Claims at a Glance

  • The complaint asserts Independent Claim 17 and notes that the patent also includes independent claims 1 and 9, and dependent claims (Compl. ¶24, ¶81).
  • Essential elements of asserted independent method claim 17 include:
    • Providing a toner printer with four cartridges (black, cyan, magenta, yellow), with the black cartridge in a first position and cyan in a fourth position.
    • Removing the black and cyan cartridges.
    • Providing a clear fluorescent toner printing cartridge.
    • Installing the cyan cartridge into the first position and the clear fluorescent cartridge into the fourth position.
    • Providing RIP software for printing cartridge remapping (Compl. ¶29).

U.S. Patent No. 9,835,982 - "Method and system for converting a toner cartridge printer to a white, clear, metallic, fluorescent, or light toner printer"

  • Patent Identification: U.S. Patent No. 9,835,982, "Method and system for converting a toner cartridge printer to a white, clear, metallic, fluorescent, or light toner printer", Issued December 5, 2017 (Compl. ¶16).
  • Technology Synopsis: This patent describes a method for converting a CMYK printer to use a "non-standard" toner, specifically from the group of metallic and fluorescent toners. The method involves removing one or more of the original color cartridges to create empty slots and installing the non-standard toner cartridge(s) into those empty slots (Compl. ¶30).
  • Asserted Claims: Independent Claims 1 and 11 (Compl. ¶25, ¶88).
  • Accused Features: The complaint alleges the Accused Product embodies this conversion method to print with non-standard toners (Compl. ¶50, ¶88).

U.S. Patent No. 10,310,446 - "Method for converting a toner cartridge printer to a sublimation toner printer"

  • Patent Identification: U.S. Patent No. 10,310,446, "Method for converting a toner cartridge printer to a sublimation toner printer", Issued June 4, 2019 (Compl. ¶17).
  • Technology Synopsis: This patent discloses a method for converting a standard CMYK printer into a sublimation printer. The process involves removing all four standard CMYK toner cartridges and installing a set of four sublimation toner cartridges (cyan, magenta, yellow, and black) into the now-empty slots (’446 Patent, Abstract; Compl. ¶31).
  • Asserted Claims: Independent Claims 1, 4, 12, 18, 23, and 28 (Compl. ¶26, ¶95).
  • Accused Features: The complaint accuses Defendant’s product of infringing by being converted to or used as a sublimation printer (Compl. ¶50, ¶95).

U.S. Patent No. 10,649,372 - "Method and system for converting a toner cartridge printer"

  • Patent Identification: U.S. Patent No. 10,649,372, "Method and system for converting a toner cartridge printer", Issued May 12, 2020 (Compl. ¶18).
  • Technology Synopsis: The patent covers a method of converting a CMYK printer to use a non-standard toner by removing the black toner cartridge, installing a non-standard cartridge in its place, and using RIP software to remap the printer's cartridge configuration. The RIP software enables the converted printer to incorporate the non-standard toner into printed images (’372 Patent, Abstract; Compl. ¶32).
  • Asserted Claims: Independent Claims 1 and 7 (Compl. ¶27, ¶102).
  • Accused Features: The Accused Product is alleged to infringe by using a similar conversion method involving a non-standard toner and remapping software (Compl. ¶50, ¶102).

U.S. Patent No. 10,459,670 - "Methods, systems, apparatuses and devices for facilitating printing of a digital image based on image splitting"

  • Patent Identification: U.S. Patent No. 10,459,670, "Methods, systems, apparatuses and devices for facilitating printing of a digital image based on image splitting", Issued October 29, 2019 (Compl. ¶19).
  • Technology Synopsis: This patent relates to software-based image processing rather than hardware conversion. It describes a method for printing images larger than a printer's standard media size by using algorithms to analyze and "split" a digital image along its natural edges or non-printing color paths. The resulting segments can then be printed separately and reassembled to create a larger, visually seamless final image (’670 Patent, Abstract; Compl. ¶33).
  • Asserted Claims: Independent Claim 1 (Compl. ¶33, ¶109).
  • Accused Features: The complaint alleges the Accused Product infringes this patent, suggesting it is sold with or used with software that performs this image-splitting functionality (Compl. ¶50, ¶109).

III. The Accused Instrumentality

Product Identification

The "Accused Product" includes the Ricoma RP-200 printer and Ricoma R550 Genuine Cartridges (Compl. ¶49; pp. 9-10).

Functionality and Market Context

The complaint alleges the Accused Product is "substantially similar" to Plaintiff's own product and that it practices the asserted patents, enabling the printing of specialty graphics by using non-standard toners (Compl. ¶46-47, ¶50). A photograph in the complaint depicts the exterior of the "Ricoma RP-200" printer (Compl. p. 9). A second photograph shows the interior of the printer, revealing four installed "Ricoma R550 Genuine Cartridge" units, consistent with the four-cartridge systems described in the patents-in-suit (Compl. p. 10). Plaintiff alleges that Defendant, its former reseller, was able to design and manufacture the Accused Product quickly by misappropriating confidential information (Compl. ¶45).

IV. Analysis of Infringement Allegations

The complaint references "Claim Infringement Charts" in Exhibit H, which was not attached to the publicly filed document (Compl. ¶52). In the absence of the charts, the infringement theory is based on the narrative allegations in the complaint.

Summary of Allegations for U.S. Patent No. 9,835,968

The complaint alleges that Defendants have made, used, sold, or imported the Accused Product, which infringes at least independent claim 1 of the ’968 Patent (Compl. ¶73-74). The asserted theory is that the Accused Product, when operated, performs the patented method of converting a CMYK printer for over-printing. This allegedly involves reconfiguring the toner cartridges and utilizing RIP software to remap the printer's functionality to lay a non-standard toner over a color image in a single pass, as recited in the claim (Compl. ¶28, ¶50).

Summary of Allegations for U.S. Patent No. 9,835,981

Similarly, the complaint alleges that the Accused Product infringes at least independent claim 17 of the ’981 Patent (Compl. ¶80-81). The infringement theory is that the Accused Product practices the patented method of converting a printer to use specialty toners, such as the clear fluorescent toner specified in claim 17. This allegedly involves the claimed steps of removing and reinstalling specific cartridges in new positions and using RIP software for cartridge remapping (Compl. ¶29, ¶50).

Identified Points of Contention

  • Scope Questions: The asserted claims describe a method of "converting" a standard printer. A potential issue is whether this language can be construed to cover the sale of a pre-configured system like the Ricoma RP-200. The analysis may turn on whether the accused device is an off-the-shelf printer that Defendant modifies, or a purpose-built system that is never sold in a "standard" configuration.
  • Technical Questions: The functionality of the "RIP software" is central to multiple asserted claims. A key technical question will be whether the software accompanying the Accused Product performs the specific function of "remapping" the cartridge positions as the claims require. The complaint alleges this functionality but does not provide technical evidence of how the accused software operates (Compl. ¶28, ¶29, ¶32).

V. Key Claim Terms for Construction

  • The Term: "converting a... printer" (appearing in the titles and claims of multiple patents, e.g., ’968 Patent, claim 1 preamble).

  • Context and Importance: This term appears foundational to the scope of the patents. Its construction is critical because the infringement case may depend on whether selling a pre-configured specialty printer constitutes "converting" a standard one. Practitioners may focus on this term to determine if the claims are limited to a post-sale modification process performed by an end-user or third party, versus a factory-configured product.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims focus on the resulting structure and functionality (e.g., a printer with cartridges in non-standard positions and remapping software). An argument could be made that any printer arriving at this end-state, regardless of when the "conversion" happened, falls within the claim scope.
    • Evidence for a Narrower Interpretation: The use of the verb "converting" and steps like "removing" and "installing" (e.g., ’968 Patent, col. 15:40-57) may suggest an active process of changing a pre-existing standard printer from one state to another, potentially limiting the scope to exclude devices manufactured from the outset in the specialty configuration.

  • The Term: "raster image processor ('RIP') software... configured to remap said four toner printing cartridges" (’968 Patent, claim 1).

  • Context and Importance: This software element is the recited mechanism that enables the physically altered printer to function correctly. The dispute will likely center on whether the accused software's method of operation meets the "remap" limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification may describe the "remapping" in functional terms—i.e., causing the printer to send image data intended for one color (e.g., black) to a different physical cartridge slot (e.g., the first position, now containing cyan). This could cover a wide range of software implementations that achieve this result (’968 Patent, col. 9:32-43).
    • Evidence for a Narrower Interpretation: The specification or prosecution history may disclose specific details about how the remapping is achieved (e.g., through a particular user interface or driver modification). Such disclosures could be used to argue for a narrower construction that excludes accused software operating on a different principle.

VI. Other Allegations

Indirect Infringement

The complaint's prayer for relief seeks judgment for infringement under 35 U.S.C. § 271(b) (induced infringement), but the body of the complaint does not contain specific factual allegations detailing how Defendants may have encouraged or instructed others to infringe (Prayer for Relief ¶(a)).

Willful Infringement

The complaint alleges that Defendants' infringement was and continues to be "intentional and willful" (Compl. ¶68). This allegation is based on claims that Defendant was aware of the patents before beginning its infringing conduct, due to the prior reseller relationship, and that it continued to infringe after receiving a demand letter from Plaintiff on August 13, 2021 (Compl. ¶60, ¶65-66).

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

This dispute appears to be driven by allegations of a business partner leveraging proprietary knowledge to become a direct competitor. The resolution of the patent claims will likely depend on the court's determination of three central questions:

  • A core issue will be one of factual correlation: to what extent does the accused Ricoma product, developed by a former business partner, technically mirror the specific conversion and software remapping methods claimed in UI’s patents? This will be heavily influenced by evidence related to the alleged misappropriation of confidential information.
  • A key legal question will be one of definitional scope: can the term "converting a... printer," which suggests a process of modification, be construed to cover a new, integrated product sold by the defendant, or is its scope limited to the act of retrofitting an existing standard printer?
  • An essential evidentiary question will be one of functional operation: what evidence will demonstrate that the accused system’s software performs the specific "cartridge remapping" function required by the claims, rather than using an alternative, unpatented method to control toner placement and achieve a similar outcome?