1:22-cv-24264
Ui Tech Inc v. Ricoma Intl Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UI Technologies, Inc. (Nevada) and UI Digital, Inc. (Delaware)
- Defendant: Ricoma International Corp. (Florida), et al.
- Plaintiff’s Counsel: Nelles Law Group; Hankin Patent Law, APC
- Case Identification: 1:22-cv-24264, S.D. Fla., 12/30/2022
- Venue Allegations: Venue is based on Defendants residing and conducting business in the Southern District of Florida, where a substantial part of the events giving rise to the claims allegedly occurred.
- Core Dispute: Plaintiff alleges that Defendant’s Luminaris 200 printer and associated software infringe four patents related to methods and systems for converting standard color printers into specialized white toner transfer printers.
- Technical Context: The technology enables standard CMYK (cyan, magenta, yellow, black) laser printers to use non-standard toners, such as white, for specialized applications like printing vibrant graphics on dark apparel via heat transfer.
- Key Procedural History: Plaintiff notes a separate, currently pending lawsuit in the same district against most of the same defendants (Case No. 1:22-cv-21631-DPG) concerning infringement of six other patents. A preliminary injunction hearing was reportedly held in that earlier case.
Case Timeline
| Date | Event |
|---|---|
| 2015-06-05 | Earliest Priority Date for all Asserted Patents |
| 2019-02-26 | U.S. Patent No. 10,216,117 Issues |
| 2019-06-18 | U.S. Patent No. 10,324,395 Issues |
| 2020-04-01 | Defendants allegedly approach Plaintiff to be a reseller |
| 2020-05-11 | Parties execute reseller agreement |
| 2020-11-01 | Defendants allegedly plan to compete directly with Plaintiff |
| 2021-04-01 | Defendants terminate reseller agreement |
| 2021-05-01 | Defendants’ Luminaris 200 printer allegedly enters market |
| 2022-09-06 | Preliminary Injunction hearing in related litigation |
| 2022-09-13 | U.S. Patent No. 11,442,402 Issues |
| 2022-12-13 | U.S. Patent No. 11,526,122 Issues |
| 2022-12-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,442,402 - "Method and system for converting a toner cartridge printer"
Patent Identification
U.S. Patent No. 11,442,402, "Method and system for converting a toner cartridge printer," issued September 13, 2022 (Compl. ¶20).
The Invention Explained
- Problem Addressed: The patent describes the difficulty of using standard CMYK laser printers for applications requiring white toner, such as creating a base layer on dark media ("underprinting") or a top layer for heat transfers onto apparel ("overprinting") (’402 Patent, col. 2:51-65).
- The Patented Solution: The invention is a method for converting a standard CMYK printer to print with a non-standard toner, like white. This is achieved by physically removing a standard cartridge (e.g., black) and installing a non-standard one, then using Raster Image Processor (RIP) software to remap the printer's functions to properly incorporate the new toner into the printing process ('402 Patent, Abstract; col. 10:11-14).
- Technical Importance: This innovation allows a single, conventional printer to perform specialized printing tasks that previously required dedicated, more expensive equipment, thereby increasing accessibility for the apparel and custom graphics industries (Compl. ¶13, ¶15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 7 (Compl. ¶64).
- Independent Claim 1 (Method) essential elements:
- Providing a CMYK toner printer with four printing cartridges.
- Removing a new or used toner printing cartridge from a first printing cartridge position.
- Providing a white toner printing cartridge with an appropriate chip.
- Installing the white toner cartridge into the first position.
- Providing RIP software for cartridge remapping and layered printing.
- Wherein the combination allows a user to print a layer of white first, then print in full color over the white layer.
- Independent Claim 7 (Method) essential elements:
- Providing a standard CMYK color toner printer with four toner printing cartridges.
- Removing the black toner printing cartridge.
- Providing a white toner printing cartridge.
- Installing the white toner printing cartridge into the empty slot.
- Providing RIP software configured to incorporate the white toner into one or more images printed in a single pass.
U.S. Patent No. 11,526,122 - "Method and system for converting a toner cartridge printer"
Patent Identification
U.S. Patent No. 11,526,122, "Method and system for converting a toner cartridge printer," issued December 13, 2022 (Compl. ¶21).
The Invention Explained
- Problem Addressed: Printers that are originally manufactured to print with white toner (CMYW printers) are typically unable to be converted to print with standard black toner, limiting their versatility for general-purpose printing tasks (’122 Patent, col. 2:34-40).
- The Patented Solution: The patent discloses a method to convert a CMYW printer to a CMYK printer. The process involves removing one or more of the starting toner cartridges (e.g., the white cartridge) and installing a black toner cartridge in its place. The method may also use RIP software to remap the printer's cartridge configuration to ensure proper functionality ('122 Patent, Abstract; col. 3:1-10).
- Technical Importance: This method provides dual-use capability to a single machine, allowing it to function both as a specialized white-toner printer and as a standard black-toner printer, thereby increasing its overall utility and value (Compl. ¶17, fn. 4).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶79).
- Independent Claim 1 (Method) essential elements:
- Providing a CMYW toner printer with four starting toner cartridges (cyan, magenta, yellow, and white).
- Removing at least one of the four starting cartridges.
- Providing a black toner printing cartridge.
- Installing the black toner printing cartridge into the at least one empty slot.
- Providing RIP software, such that the converted printer prints using black toner in a single pass.
U.S. Patent No. 10,324,395 - "Toner Cartridge Printer Devices, Systems, and Methods for Under Printing"
Technology Synopsis
The patent addresses the problem of colors appearing "washed out" when printed on dark media (’395 Patent, col. 2:37-40). Its solution is a method to convert a standard CMYK printer to perform "under printing" by swapping a standard cartridge for a non-standard one (e.g., white) and using RIP software to print a layer of the non-standard toner underneath the color image, all within a single pass ('395 Patent, Abstract).
Asserted Claims
Independent Claim 3 (Compl. ¶94).
Accused Features
The complaint alleges that the Luminaris 200 printer, when operated with its LuminRIP software in "underprint" mode, infringes the '395 Patent (Compl. ¶46, ¶93).
U.S. Patent No. 10,216,117 - "Toner Cartridge Printer System and Device That Over Prints and Under Prints"
Technology Synopsis
The patent describes the limitation of prior art printers being unable to perform both overprinting and underprinting in a single machine (’117 Patent, col. 2:8-24). The invention is a system, including a printer and RIP software, that can be physically and digitally reconfigured to switch between an overprinting mode (non-standard toner in a rear slot) and an underprinting mode (non-standard toner in a front slot) ('117 Patent, Abstract).
Asserted Claims
Independent Claim 1 (Compl. ¶109).
Accused Features
The Luminaris 200 and its LuminRIP software are accused of embodying the claimed system, which allegedly provides the capability to switch between overprint and underprint modes (Compl. ¶46, ¶108).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the "Luminaris 200" printer and its associated "LuminRIP" software (Compl. ¶42, ¶46).
Functionality and Market Context
The complaint alleges the Luminaris 200 is a standard Ricoh-made CMYK printer that Defendants convert into a CMYW white toner transfer printer, making it "virtually identical in appearance, both exterior and interior" to Plaintiff's iColor printers (Compl. ¶43, ¶44). A side-by-side photograph provided in the complaint shows the exterior of the Ricoma printer appearing identical to the UNINET printer (Compl. ¶47). The accompanying LuminRIP software is alleged to have print queues—"overprint," "underprint," and "CMYK"—that are identical to those of Plaintiff's ProRIP software (Compl. ¶46). The complaint alleges the product is a "clone" developed with "zero R&D" that was brought to market in "head-to-head competition" with Plaintiff's products (Compl. ¶42, ¶49, ¶50).
IV. Analysis of Infringement Allegations
11,442,402 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of converting a standard CMYK color toner printer... comprising four toner printing cartridges... | Defendants allegedly procure standard Ricoh CMYK printers as the basis for the Luminaris 200. A photograph shows the accused printer's interior containing four toner cartridges (Compl. ¶47). | ¶43, ¶44 | col. 9:36-40 |
| removing said black toner printing cartridge from said standard CMYK color toner printer, such that there is an empty toner cartridge slot; | The Luminaris 200 is alleged to be a CMYK printer converted to a CMYW printer, a process that requires removing the original black cartridge to create an empty slot for the white cartridge. | ¶43 | col. 9:41-43 |
| providing a white toner printing cartridge that is filled with a white toner; installing said white toner printing cartridge... | The accused Luminaris 200 is sold as a CMYW printer, which by definition includes an installed white toner cartridge. | ¶43 | col. 9:46-51 |
| providing raster image processor (RIP) software, such that said CMYK toner printer is configured to incorporate said white toner... | Defendants sell the Luminaris 200 with LuminRIP software, which allegedly enables the printer to use white toner in "overprint" and "underprint" modes, as shown in a screenshot of the software's print queue (Compl. ¶47). | ¶46 | col. 9:55-65 |
11,526,122 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of converting a CMYW toner printer to print with black toner, comprising the steps: providing a CMYW toner printer... | The complaint alleges that the accused Luminaris 200 is a CMYW toner printer. | ¶43 | col. 3:1-3 |
| removing at least one of said four starting toner printing cartridges from said CMYW toner printer... | To use the "standard 'CMYK'" mode allegedly offered by the LuminRIP software, a user would be required to remove the white toner cartridge. | ¶46 | col. 3:4-5 |
| providing a black toner printing cartridge... installing said black toner printing cartridge into said at least one empty toner cartridge slot; | The complaint alleges the LuminRIP software has a "standard 'CMYK'" queue, which implies the functionality of installing a black toner cartridge in place of the white one, allegedly per instructions in copied user manuals. | ¶45, ¶46 | col. 3:6-10 |
| providing raster image processor (RIP) software, such that the converted toner printer prints using said black toner... | The LuminRIP software is alleged to provide a "standard 'CMYK'" print queue, which would remap the printer to function with an installed black toner cartridge. | ¶46 | col. 4:1-5 |
Identified Points of Contention
Factual/Evidentiary Questions
The core of the dispute for the '402 patent appears to be factual. The central question will be whether discovery confirms the allegation that the Luminaris 200 is a converted Ricoh printer and that the LuminRIP software performs the specific remapping and layering functions as claimed. The side-by-side visual evidence presented in the complaint suggests a high degree of similarity that may support Plaintiff's allegations (Compl. ¶47).
Legal Theory Questions
For the '122 patent, the infringement theory raises a legal question. The complaint alleges direct infringement of a method claim by Defendants, but the accused infringing acts (removing a white cartridge and installing a black one) appear to be performed by the end-user. The court may need to determine if Defendants' acts of selling a CMYW printer with a "CMYK mode" in its software constitute direct infringement, or if the allegations are more suited to a theory of indirect infringement.
V. Key Claim Terms for Construction
"raster image processor (RIP) software" ('402 Patent, Claim 7)
Context and Importance
This term defines the software element central to the patented method. The scope of this term is critical because the dispute hinges on whether the accused LuminRIP software is the same as the claimed RIP software. Practitioners may focus on this term because its construction will determine whether any software that rasterizes an image meets the limitation, or if it must also perform the specific, novel remapping functions described in the patent.
Intrinsic Evidence for a Broader Interpretation
The complaint itself refers to RIP software's conventional function as being "used to convert, or 'rasterize,' images" (Compl. ¶18). This could support an argument for a plain and ordinary meaning not limited by the specification.
Intrinsic Evidence for a Narrower Interpretation
The patent specifications repeatedly tie the "RIP software" to specific inventive functions, such as being "configured to (1) remap the color toner printer to reflect an actual placement of the four toner printing cartridges and (2) allows said color toner printer to under print... or over print" ('117 Patent, Abstract). A defendant may argue the term is limited to software performing these specific functions.
"converting" ('402 Patent and '122 Patent Titles)
Context and Importance
The patents claim methods of "converting" a printer from one configuration to another (e.g., CMYK to CMYW). Whether the accused acts constitute "converting" is fundamental to infringement. The question is whether "converting" requires a permanent alteration or includes a temporary, reversible change.
Intrinsic Evidence for a Broader Interpretation
The '117 patent, which is part of the same family, describes a system that is "configured to switch between over and under printing," which implies a reversible process ('117 Patent, col. 14:64-65). This supports an interpretation where "converting" includes temporary reconfiguration.
Intrinsic Evidence for a Narrower Interpretation
A defendant could argue that "converting" in the context of the claims implies a more definite transformation of the printer's essential character, rather than a simple, user-reversible swap of consumable cartridges.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement is alleged based on Defendants encouraging consumers to perform the patented methods, supported by allegations of providing copied user manuals and directing a software developer to "mimic" Plaintiff's software (Compl. ¶61, ¶68, ¶98). Contributory infringement is alleged on the basis that Defendants "especially adapted a Ricoh standard color printer" for infringement by installing custom software and that the resulting product is not a staple article of commerce suitable for substantial noninfringing uses (Compl. ¶73-74).
Willful Infringement
Willfulness is alleged based on purported pre-suit knowledge of the patents. The complaint states that in April 2020, one of the inventors sent an email to Defendants containing "a direct link to all of his then-issued patents" (Compl. ¶34). It further alleges that Defendants were furnished with "specific knowledge of the contents of UI's Patent Portfolio" during training as a reseller (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof of copying: To what extent can Plaintiff demonstrate that Defendants' Luminaris 200 printer and LuminRIP software are, as alleged, direct copies of Plaintiff's iColor products, particularly given the allegations that both parties use the same underlying Ricoh hardware? The visual evidence provided in the complaint suggests a high degree of similarity that will be a key focus of discovery.
- A key legal issue will concern the theory of infringement for the '122 patent: Does the act of selling a CMYW printer that includes a software mode enabling conversion to CMYK constitute direct infringement of a method claim that requires physical steps of removing and installing cartridges, or is this conduct more properly analyzed under a theory of indirect infringement?
- A pivotal question will be one of willfulness and damages: Given the specific allegations of pre-suit notice, including an inventor's email providing a link to the patents, the court will likely need to determine if any infringement was willful, which could expose Defendants to a risk of enhanced damages under 35 U.S.C. § 284.