DCT
1:23-cv-03367
K.Mizra LLC v. Konica Minolta, Inc.
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: K.Mizra LLC (Delaware)
- Defendant: Konica Minolta, Inc. (Japan) and Konica Minolta Business Solutions U.S.A., Inc. (New York)
- Plaintiff’s Counsel: NIRO MCANDREWS, LLP; SHERIDAN ROSS P.C.
- Case Identification: 1:23-cv-03367, N.D. Ill., 05/26/2023
- Venue Allegations: Venue is alleged to be proper as Defendant maintains a regular and established place of business in the Northern District of Illinois and has committed the alleged acts of infringement, including sales, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s multifunction printers (MFPs), along with associated toner cartridges and imaging units, infringe four U.S. patents concerning toner composition, document feeder mechanics, toner cartridge replacement mechanisms, and power-saving control logic.
- Technical Context: The dispute is set in the competitive market for office imaging equipment, where innovations affecting print quality, consumable replacement, mechanical reliability, and energy efficiency are significant.
- Key Procedural History: The asserted patents were originally assigned by Sharp Corporation to Plaintiff K.Mizra LLC v. Konica Minolta, Inc., which identifies itself as a patent licensing company. The complaint alleges pre-suit knowledge for two of the four asserted patents, citing specific dates in 2021, which may form the basis for its willfulness claims on those patents.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-01 | Earliest Priority Date (’274 Patent) |
| 2004-11-11 | Earliest Priority Date (’400 Patent) |
| 2007-11-09 | Earliest Priority Date (’165 Patent) |
| 2008-11-11 | Issue Date (’274 Patent) |
| 2009-08-04 | Issue Date (’400 Patent) |
| 2010-11-23 | Issue Date (’165 Patent) |
| 2012-04-20 | Earliest Priority Date (’342 Patent) |
| 2017-09-19 | Issue Date (’342 Patent) |
| 2021-07-21 | Alleged Knowledge Date for ’400 Patent |
| 2021-11-15 | Alleged Knowledge Date for ’165 Patent |
| 2023-05-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,449,274 - Toner for Electrostatic Image Development and Image Forming Method Using the Same (Issued Nov. 11, 2008)
The Invention Explained
- Problem Addressed: The patent describes a challenge in toner design: achieving high-resolution images, particularly for fine lines, without sacrificing long-term performance. Toners with wide particle size distributions lacked uniformity, while reducing particle size could lead to problems like poor flowability, background fogging, and reduced developer lifespan due to the accumulation of certain particle sizes over time (’274 Patent, col. 1:12-col. 2:43).
- The Patented Solution: The invention claims a specific toner formula defined by a controlled particle size distribution. It simultaneously limits the percentage of very small particles (under 4 µm) and very large particles (over 16 µm) while ensuring a substantial population of particles exists within a key range (4 µm to 6 µm). The patent asserts that particles in this specific intermediate range are most effective for development and sharp image reproduction, while the limitations on the smallest particles improve developer longevity (’274 Patent, Abstract; col. 4:61-col. 5:60). The composition also requires an external additive (’274 Patent, col. 4:68-5:3).
- Technical Importance: This approach sought to balance the competing demands of high image resolution and long-term operational stability in high-volume office printing devices (’274 Patent, col. 2:44-54).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and notes the patent contains a total of 7 claims, reserving the right to assert others (Compl. ¶¶17, 47).
- The essential elements of Claim 1 are:
- A toner for electrostatic image development comprising toner particles in which
- not more than 13 percent by number of the particles have a particle diameter smaller than 4 µm,
- not less than 20 percent by number of the particles have a particle diameter of 4 µm to 6 µm,
- not more than 2.0 percent by volume of the particles have a particle diameter of 16 µm or greater,
- wherein the particles have a volume average diameter of 4 µm to 9 µm, and
- at least an external additive is added to the particles.
U.S. Patent No. 7,570,400 - Document Reading Device (Issued Aug. 4, 2009)
The Invention Explained
- Problem Addressed: In automatic document feeders (ADFs), providing user access to clear paper jams is critical. However, mechanisms for opening the paper path, such as a pivoting bottom member, can cause problems. Specifically, if a flexible sheet (a "document holder" used to press originals against the scanner glass) is fixed in a way that causes it to repeatedly fold or crease at the pivot point, it can lead to light leaks and degraded scan quality over time (’400 Patent, col. 1:25-46; col. 1:60-col. 2:10).
- The Patented Solution: The patent describes a document reading device with a movable member that pivots open to expose the paper transport path. A flexible document holder is attached to both the movable member and the main body of the device, but the crucial feature is a negative limitation: the holder is not fixed in the area "immediately below the pivot axis." As described in the patent, this configuration allows the holder to hang down when the access member is opened, rather than being forced into a sharp fold, thus preserving its integrity and function (’400 Patent, Abstract; col. 6:36-52).
- Technical Importance: The invention aims to improve the long-term reliability and serviceability of ADFs by preventing a common mode of failure or degradation associated with clearing paper jams (’400 Patent, col. 2:11-24).
Key Claims at a Glance
- The complaint asserts independent Claim 1 and notes the patent contains a total of 4 claims, reserving the right to assert others (Compl. ¶¶25, 55).
- The essential elements of Claim 1 are:
- A document reading device configured to read an image of an original document on a platen, comprising:
- a document tray, an output tray, and a document transport path between them;
- a movable member serving as part of a bottom surface of the device, pivotable around an axis perpendicular to the document transport direction;
- a document holder with a flexible sheet extending over the platen;
- wherein the movable member pivots to expose a portion of the transport path; and
- wherein the document holder is fixed at portions other than a portion that is positioned immediately below the pivot axis.
U.S. Patent No. 7,840,165 - Toner Replenishing Apparatus, Image Forming Apparatus, and Color Image Forming Apparatus (Issued Nov. 23, 2010)
- Patent Identification: U.S. Patent No. 7,840,165, "Toner Replenishing Apparatus, Image Forming Apparatus, and Color Image Forming Apparatus," issued November 23, 2010 (Compl. ¶30).
- Technology Synopsis: The patent discloses a mechanism to simplify the removal of toner cartridges. It describes a displacement mechanism that works in conjunction with the release of a retaining member. When a user releases the container (e.g., via a lever), a hook on the retaining member engages the container and actively pushes it from its seated position, making it easier to grasp and remove (’165 Patent, Abstract; Compl. ¶¶31-32).
- Asserted Claims: At least Claim 1 (Compl. ¶63).
- Accused Features: The accused instrumentality is the Konica Minolta IUP37 imaging unit combined with a TNP-78 toner cartridge. The complaint alleges that the unit's lock lever functions as both the retaining member and the displacement mechanism, causing the toner cartridge to be displaced from its holder when the lever is pressed (Compl. ¶¶33-38).
U.S. Patent No. 9,769,342 - Electric Apparatus (Issued Sep. 19, 2017)
- Patent Identification: U.S. Patent No. 9,769,342, "Electric Apparatus," issued September 19, 2017 (Compl. ¶39).
- Technology Synopsis: The patent addresses power management in electronic devices like MFPs. It describes a system where a single user input (e.g., a touch on the control panel) can trigger different actions based on the device's power state. The system outputs different level signals depending on whether it is in a "normal state" or a "power conserving state." A control unit interprets these signals to either execute a function (if in the normal state) or issue a "return signal" to wake the device from the power-saving state (’342 Patent, Abstract; Compl. ¶¶40-41).
- Asserted Claims: At least Claim 1 (Compl. ¶71).
- Accused Features: The complaint accuses Konica Minolta MFPs, such as the bizhub C650i, that have distinct normal and power-saving modes (e.g., Low Power Mode, Sleep Mode). Touching the control panel in a power-saving mode allegedly generates a signal that wakes the device, while the same action in a normal state executes an operation like copying or scanning (Compl. ¶¶42-45).
III. The Accused Instrumentality
Product Identification
- The complaint identifies specific product lines and exemplary models, including the Konica Minolta TN321K toner cartridge and Konica Minolta MFPs such as the bizhub C250i and bizhub C650i (Compl. ¶¶17, 25, 42).
Functionality and Market Context
- TN321K Toner Cartridge: This is a consumable product containing black toner for use in Konica Minolta's electrostatic printers and copiers. The complaint alleges its infringement based on a specific chemical and physical composition, supported by what is described as "independent third-party analysis" (Compl. ¶18). A visual from the complaint shows the product packaging listing ingredients including "Amorphous silica" and "Titanium oxide," which are alleged to be the claimed external additives (Compl. p. 11).
- bizhub C250i / C650i MFPs: These are multifunction office devices that provide printing, scanning, and copying functions. The complaint focuses on several subsystems. The infringement allegations against the ’400 Patent target the mechanical design of the Reverse Automatic Document Feeder (RADF), specifically its pivoting bottom door for jam clearance and the attached flexible "Original Pad" (Compl. ¶¶28-29). Allegations against the ’165 Patent target the toner cartridge replacement assembly (Compl. ¶33). Allegations against the ’342 Patent target the control logic governing the device's response to user input on the touch panel in different power states (Compl. ¶¶43-44).
IV. Analysis of Infringement Allegations
'274 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| not more than 13 percent by number of the toner particles have a particle diameter of smaller than 4 µm | Third-party analysis of the TN321K toner allegedly revealed that at most 3.4% of particles by number have a diameter smaller than 4 µm. | ¶18 | col. 4:61-63 |
| not less than 20 percent by number of the toner particles have a particle diameter of 4 µm to 6 µm | The analysis allegedly confirmed that 46% of particles by number have a diameter in the 4 µm to 6 µm range. | ¶19 | col. 4:63-65 |
| not more than 2.0 percent by volume of the toner particles have a particle diameter of 16 µm or greater | The analysis allegedly confirmed that at most 0.23% by volume of particles have a diameter of 15 µm or greater. | ¶20 | col. 4:65-67 |
| wherein the toner particles have a volume average diameter of 4 µm to 9 µm | The analysis allegedly confirmed the toner particles have a volume mean diameter of 6.614 µm, as shown in a provided chart. | ¶21 | col. 4:68-5:2 |
| and at least an external additive is added to the toner particles | The toner allegedly comprises external additives SiO2 (silica) and TiO (titanium oxide), which are listed on the product's packaging and identified as additives in the patent's specification. | ¶22 | col. 7:18-23 |
- Identified Points of Contention:
- Evidentiary Questions: The core of this infringement claim rests on the "independent third-party analysis" cited in the complaint. A central question for the court will be whether this data is accurate and reproducible. The defense may challenge the methodology of the analysis or present conflicting data from its own manufacturing and quality control processes.
- Technical Questions: The complaint alleges data for particles "15 µm or greater" (Compl. ¶20) to meet a claim limitation of "16 µm or greater." While the reported value (0.23%) is well below the claimed maximum (2.0%), this mismatch in the measurement threshold raises the question of whether the provided evidence is directly probative of the claim limitation as written.
'400 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A document reading device configured to read an image of an original document placed on a document platen... | The bizhub C250i is an MFP with a flatbed scanner that serves as the document platen. A user manual screenshot illustrates placing a document on the glass (Compl. p. 13). | ¶25 | col. 8:44-46 |
| a document tray... an output tray... a document transport path... | The device's RADF includes a document tray for stacking originals and an output tray for receiving them after scanning, connected by a document transport path. A labeled diagram illustrates these components (Compl. p. 14). | ¶¶26-27 | col. 8:47-58 |
| a movable member... supported pivotably around a pivot axis that is perpendicular to a document transport direction... | The RADF has a movable bottom door that pivots on a hinge oriented perpendicularly to the direction of paper flow to provide access for jam clearance. A visual shows the door swinging open (Compl. p. 15). | ¶28 | col. 8:59-65 |
| a document holder that includes a flexible sheet... | The bottom of the RADF allegedly includes a flexible white sheet called an "Original Pad" that acts as a background and holds documents on the scanner glass. | ¶29 | col. 8:66-9:2 |
| wherein the movable member is pivotable... to expose the portion toward the document platen... | The bottom door of the RADF can swing open to expose the rollers and the document transport path. | ¶28 | col. 9:3-7 |
| wherein the document holder is fixed at portions other than a portion that is positioned immediately below the pivot axis... | The complaint alleges the "Original Pad" is attached at "a number of fixed points" that are "not immediately below the pivot axis of the ADF bottom door." | ¶29 | col. 9:8-12 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis will likely focus on the construction of the negative limitation "fixed at portions other than a portion that is positioned immediately below the pivot axis." The question is what constitutes being "fixed" and what is the scope of the region "immediately below the pivot axis."
- Technical Questions: The complaint's allegation regarding the attachment points of the "Original Pad" is conclusory (Compl. ¶29). A key evidentiary question will be what the actual engineering specifications and physical construction of the accused RADF reveal about how and where the flexible sheet is attached relative to the pivot.
V. Key Claim Terms for Construction
'400 Patent: "fixed at portions other than a portion that is positioned immediately below the pivot axis" (Claim 1)
- The Term: "fixed at portions other than a portion that is positioned immediately below the pivot axis"
- Context and Importance: This limitation is the inventive concept, designed to prevent the creasing of the flexible document holder. The entire infringement analysis for the ’400 Patent hinges on whether the attachment method of the accused "Original Pad" falls inside or outside the scope of this phrase. Practitioners may focus on this term because negative limitations often create complex boundary-definition issues during claim construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the term's purpose is to prevent a "fold" that creates "undesirable image noise" (’400 Patent, col. 2:1-10). Therefore, any attachment scheme that avoids creating a hard, permanent crease when the movable member is pivoted could be seen as meeting the "other than" requirement, even if there are some constraints near the pivot.
- Evidence for a Narrower Interpretation: A party could argue the claim requires true freedom of movement in the pivot region, pointing to the specification's description that the holder "hangs down without being folded" when the member is opened (’400 Patent, Abstract; col. 6:41-44). They may argue that "fixed" should be construed broadly to include any form of attachment (e.g., clips, adhesive, tension) and that "immediately below" covers the entire functional area affected by the pivot's rotation, thus requiring that zone to be completely unattached.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement for all four asserted patents. For the ’274 and ’342 Patents, the allegation is based on knowledge "as of the filing of this Complaint," supporting a claim for post-suit willfulness (Compl. ¶¶49, 73). For the ’400 and ’165 Patents, the complaint alleges Defendant had knowledge since "no later than July 21, 2021" and "no later than November 15, 2021," respectively, supporting claims for pre-suit willfulness (Compl. ¶¶57, 65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will concern the ’274 patent's toner composition claims: will discovery and expert testimony validate the plaintiff's "third-party analysis" of the accused toner's particle size distribution, or will the defendant's own data create a dispositive factual dispute?
- A core issue will be one of claim construction for the ’400 patent: can the negative limitation "fixed at portions other than a portion that is positioned immediately below the pivot axis" be interpreted to read on the specific mechanical assembly of the accused document feeders, or will the actual points of attachment fall outside the claim's scope?
- A central strategic question will be how this multi-faceted case proceeds. With patents spanning consumables (’274), mechanical design (’400, ’165), and software controls (’342), the dispute may either be resolved as a comprehensive portfolio license or fragment as certain claims are proven stronger or weaker through litigation.