E ImageData Corp v. Digital Check Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: e-ImageData Corp. (Wisconsin)
  • Defendant: Digital Check Corp. d/b/a ST Imaging (Delaware)
  • Plaintiff’s Counsel: Quarles & Brady LLP
• Case Identification: 2:16-cv-00576, E.D. Wis., 05/12/2016
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Wisconsin because Defendant promotes, distributes, sells, and offers to sell the accused products within the district.
• Core Dispute: Plaintiff alleges that Defendant’s ViewScan line of digital microfilm scanners infringes three U.S. patents related to the mechanical and optical design of digital microform imaging apparatus.
• Technical Context: The technology concerns integrated desktop microfilm readers, primarily used in libraries and archives, which convert physical microfilm images into editable digital formats.
• Key Procedural History: This complaint was filed after the court in a prior case (15-cv-00658) severed these patent infringement counts. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against U.S. Patent Nos. 8,537,279 and 9,179,019. These proceedings resulted in the cancellation of numerous asserted claims, including claim 44 of the '279 patent, which was the only claim specifically identified in the infringement count for that patent, and several independent claims of the '019 patent. The validity of the remaining asserted claims is therefore a central issue.

Case Timeline

Date	Event
2007-05-15	Priority Date for ’279, ’019, and ’766 Patents
2012-11-22	U.S. Patent Application 2012/0293845 (’279 Patent) published
2013-09-17	U.S. Patent No. 8,537,279 Issued
2014-01-16	U.S. Patent Application 2014/0015958 (’019 Patent) published
2015-01-08	U.S. Patent Application 2015/0009317 (’766 Patent) published
2015-11-03	U.S. Patent No. 9,179,019 Issued
2015-11-24	U.S. Patent No. 9,197,766 Issued
2016-05-12	Complaint Filed
2016-11-03	IPRs filed against the ’279 and ’019 Patents
2019-06-21	Inter Partes Review Certificate Issued for ’019 Patent
2019-06-25	Inter Partes Review Certificate Issued for ’279 Patent

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

U.S. Patent No. 8,537,279 - Digital Microform Imaging Apparatus

Issued Sep. 17, 2013

The Invention Explained

• Problem Addressed: The patent describes prior art microfilm readers as struggling to accommodate a wide range of image reduction ratios without requiring users to manually swap lenses. It also notes that existing systems with variable focus can be bulky, slow, and imprecise due to mechanical issues like backlash in lead screws (’279 Patent, col. 2:1-41).
• The Patented Solution: The invention proposes a more compact design using a fold mirror to bend the optical path by approximately 90 degrees, shortening the apparatus's overall length (’279 Patent, col. 5:25-34). To achieve a wide magnification range and precise focus, it employs two separate carriages—one for the lens and one for the area sensor—that move independently along parallel lead screws. This dual-carriage system, controlled by a processor, allows the device to adjust both magnification and focus simultaneously without iterative, time-consuming mechanical steps (’279 Patent, col. 6:41-51; Fig. 8).
• Technical Importance: This design sought to provide a versatile, user-friendly desktop scanner that could handle various microfilm formats and reduction ratios automatically, a key feature for public-use environments like libraries (’279 Patent, col. 2:50-55).

Key Claims at a Glance

• The complaint asserts "numerous claims... including at least claim 44" (Compl. ¶15). Post-filing IPR proceedings resulted in the cancellation of claim 44.
• Independent claim 1, which was not cancelled, requires:
  • A chassis with a fold mirror.
  • A first elongated and substantially straight lead member.
  • A second elongated and substantially straight lead member, parallel to the first.
  • A first carriage for an area sensor, slidingly coupled to the lead members.
  • A second carriage for a lens, also slidingly coupled to the lead members.
  • A first motor linked to the first carriage for moving it.
  • A second motor linked to the second carriage for moving it.
• The complaint reserves the right to assert other claims (Compl. ¶25).

U.S. Patent No. 9,179,019 - Digital Microform Imaging Apparatus

Issued Nov. 3, 2015

The Invention Explained

• Problem Addressed: Similar to the '279 Patent, this patent addresses the need for a compact and versatile digital microfilm reader that can handle different media types, including roll film, and a broad range of reduction ratios without expensive or complex lens systems (’019 Patent, col. 2:8-21).
• The Patented Solution: This patent builds on the same core architecture but describes specific embodiments for handling different media types, such as roll film attachments. It discloses a complex mechanical assembly where a microform media support structure (e.g., for holding roll film) is mounted via a bracket and coupler system, allowing for movement in both longitudinal and transverse directions relative to the main optical axis, while the roll film spools remain in a fixed plane (’019 Patent, col. 17:7-53; Fig. 13). The invention claims a specific housing and cavity structure that contains these moving optical and mechanical components.
• Technical Importance: This approach aimed to create an all-in-one desktop unit capable of digitizing not just microfiche cards but also roll film, a common archival format, increasing the device's utility in research settings (’019 Patent, col. 18:56-62).

Key Claims at a Glance

• The complaint asserts a wide range of claims, including independent claims 1, 41, 63, and 91 (Compl. ¶19). Post-filing IPR proceedings resulted in the cancellation of independent claims 1, 41, and 63.
• Independent claim 91, which was not cancelled, requires:
  • A housing cover forming a cavity over a chassis, with a gap between them.
  • A fold mirror, lens, and area sensor within the cavity.
  • A bracket for sliding motion along a longitudinal direction.
  • A coupler supported by the bracket for sliding motion along a transverse direction.
  • A microform media support structure mounted on the coupler.
  • A supply side roll film attachment and a take up side roll film attachment, both supported by the bracket.
• The complaint reserves the right to assert other claims (Compl. ¶33).

U.S. Patent No. 9,197,766 - Digital Microform Imaging Apparatus

Issued Nov. 24, 2015

• Technology Synopsis: This patent also describes a digital microform imaging apparatus with a folded optical path. It focuses on the ability to rotate the area sensor to capture images in both portrait and landscape orientations, and on the specific arrangement of the media support structure relative to the optical components and motors (’766 Patent, Abstract). The invention aims to provide a single device that can efficiently handle microform images with different aspect ratios.
• Asserted Claims: Claims 41–43, 46, 49, 53, and 54 are asserted (Compl. ¶23). This includes independent claim 49.
• Accused Features: The complaint alleges that the ViewScan Products embody the claimed apparatus (Compl. ¶23).

III. The Accused Instrumentality

• Product Identification: The ST ViewScan, ST ViewScan II, ST ViewScan III, and ST ViewScan III-B, collectively referred to as the “ViewScan Products” (Compl. ¶9).
• Functionality and Market Context: The complaint describes the ViewScan Products as integrated, desktop microfilm scanners (Compl. ¶9). Their function is to allow users, primarily in libraries, universities, and research facilities, to convert microfilm images into electronic formats that can be digitally edited, printed, emailed, or saved (Compl. ¶8). The complaint alleges that these products are direct competitors to the Plaintiff’s own ScanPro product line and that together, the two companies’ sales constitute the majority of the market for such scanners (Compl. ¶10-11).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references exemplary claim chart exhibits (D, E, and F) that were not included with the filed complaint; therefore, a detailed element-by-element analysis is not possible from the provided documents (Compl. ¶27, 35, 42). The infringement allegations are pleaded generally, stating that by making, using, and selling the ViewScan Products, the Defendant infringes the asserted claims either literally or under the doctrine of equivalents (Compl. ¶25, 33, 40).

• Identified Points of Contention:
  • '279 Patent: The central dispute for the surviving claims, such as independent claim 1, will likely concern the mechanical structure of the accused devices. A key question is whether the ViewScan Products employ two distinct, parallel "elongated and substantially strait lead member[s]" that independently guide separate carriages for the lens and the area sensor, as required by the claim.
  • '019 Patent: For the surviving claims, such as independent claim 91, the dispute will likely focus on a highly specific multi-part assembly. A technical question for the court will be whether the ViewScan Products contain the claimed combination of a "bracket" for longitudinal motion, a "coupler" on that bracket for transverse motion, and roll film attachments that are also supported by that same moving bracket.

V. Key Claim Terms for Construction

• '279 Patent, Claim 1

  • The Term: "lead member"
  • Context and Importance: Claim 1 requires a first and a second "lead member" to support and guide the two carriages. The construction of this term will be critical to determining if the guiding mechanism in the accused ViewScan Products meets this limitation. Practitioners may focus on this term because the defense could argue that the accused product uses a single integrated guide, a different type of rail system, or a structure that does not constitute two distinct "lead members."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Narrower Interpretation: The specification consistently describes the lead members as "first lead screw 86" and "second lead screw 88" (’279 Patent, col. 5:35-37). This may support an interpretation limiting the term to threaded screws.
    • Evidence for a Broader Interpretation: The claim itself uses the more general term "lead member," not "lead screw." Plaintiff may argue this was a deliberate choice to cover other linear guides, such as rods or rails, that perform the same function of guiding the carriages.

• '019 Patent, Claim 91

  • The Term: "coupler"
  • Context and Importance: Claim 91 requires a "coupler supported by the bracket... for sliding motion... along a transverse direction," with the media support structure mounted to this coupler. The relationship between the "bracket" and the "coupler" is the lynchpin of the claim's structure. Practitioners may focus on this term because its definition will determine whether the accused product's mechanism for achieving X-Y movement of the film holder infringes.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Narrower Interpretation: The figures and detailed description show the coupler as a distinct set of components (e.g., rods 62) that are mounted on another distinct component, the bracket (e.g., brackets 64), creating a specific two-part system for X-Y motion (’019 Patent, col. 5:16-24; Fig. 3A). This could support a narrow definition requiring two separate, identifiable mechanical sub-assemblies.
    • Evidence for a Broader Interpretation: A party might argue that "coupler" should be interpreted functionally to mean any mechanism that connects the media support to the primary sliding bracket and enables transverse movement, potentially encompassing a wider range of integrated X-Y table designs.

VI. Other Allegations

• Indirect Infringement: The complaint includes boilerplate allegations of indirect infringement (Compl. ¶25, 33, 40). However, it does not plead any specific facts to support a claim for either induced or contributory infringement, such as identifying specific instructions in user manuals or components that lack substantial non-infringing uses.
• Willful Infringement: The complaint alleges that Defendant’s infringement has been "intentional, willful, and in reckless disregard" of Plaintiff’s rights (Compl. ¶28). The basis for this allegation is Defendant’s alleged awareness of the published U.S. patent applications that ultimately issued as the patents-in-suit, with the complaint providing the specific publication numbers and dates (Compl. ¶29, 36, 43).

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

1. Claim Viability: A threshold issue for the entire case is the legal status of the patent claims. Given that post-filing IPRs cancelled the sole highlighted claim of the '279 patent and several independent claims of the '019 patent, a primary question is whether the remaining asserted-but-un-cancelled claims are sufficient to sustain the lawsuit. The litigation will necessarily refocus on these surviving, and potentially less central, claims.

2. Structural Mapping: For any surviving claims, a key evidentiary question will be one of structural equivalence: does the specific mechanical architecture of the accused ViewScan products read on the detailed, multi-component assemblies required by the claims? The case may turn on whether the accused products use, for example, the dual "lead member" system of the '279 patent or the particular "bracket" and "coupler" arrangement for roll film attachments recited in the '019 patent, or a technically distinct design.