DCT

8:18-cv-00010

Midwest Athletics Sports Alliance LLC v. Ricoh USA Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [8:18-cv-00010](https://ai-lab.exparte.com/case/dct/ned/8:18-cv-00010/midwest- athletics-sports-alliance-llc-v-ricoh-usa-inc), D. Neb., 04/16/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Nebraska because Defendant Ricoh has committed acts of patent infringement within the district and maintains a regular and established place of business there, including corporate offices and service dealers in Omaha, Lincoln, and other locations.
  • Core Dispute: Plaintiff alleges that Defendant’s office equipment, including various models of printers, scanners, multifunction systems, and associated software, infringes nineteen of its U.S. patents related to document feeding, printing workflow management, and printing apparatus mechanics.
  • Technical Context: The patents relate to the mechanics of high-volume document handling and printing, technologies critical for ensuring the speed, reliability, and functionality of modern office and production printing equipment.
  • Key Procedural History: This filing is a First Amended Complaint for Patent Infringement. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings concerning the patents-in-suit.

Case Timeline

Date Event
1999-03-04 Priority Date for ’3005 Patent
1999-03-04 Priority Date for ’684 Patent
2000-05-17 Priority Date for ’314 Patent
2000-05-17 Priority Date for ’756 Patent
2000-05-17 Priority Date for ’974 Patent
2001-03-20 Issue Date for U.S. Patent No. 6,203,005
2001-10-23 Issue Date for U.S. Patent No. 6,305,684
2001-11-20 Priority Date for ’269 Patent
2002-06-25 Issue Date for U.S. Patent No. 6,411,314
2002-10-08 Issue Date for U.S. Patent No. 6,462,756
2002-11-05 Priority Date for ’285 Patent
2003-01-21 Issue Date for U.S. Patent No. 6,509,974
2003-04-29 Issue Date for U.S. Patent No. 6,554,269
2004-03-17 Priority Date for ’9005 Patent
2004-04-06 Issue Date for U.S. Patent No. 6,718,285
2004-04-20 Issue Date for U.S. Patent No. 6,724,998
2004-09-28 Issue Date for U.S. Patent No. 6,799,005
2004-12-14 Priority Date for ’278 Patent
2006-01-31 Issue Date for U.S. Patent No. 6,993,278
2006-03-17 Priority Date for ’582 Patent
2006-03-17 Priority Date for ’425 Patent
2006-03-17 Priority Date for ’415 Patent
2008-01-04 Priority Date for ’375 Patent
2008-01-04 Priority Date for ’795 Patent
2008-12-12 Priority Date for ’239 Patent
2009-03-10 Issue Date for U.S. Patent No. 7,502,582
2009-03-17 Priority Date for ’255 Patent
2009-11-13 Priority Date for ’089 Patent
2010-02-09 Issue Date for U.S. Patent No. 7,658,375
2010-05-18 Issue Date for U.S. Patent No. 7,720,425
2011-08-23 Issue Date for U.S. Patent No. 8,005,415
2011-09-13 Issue Date for U.S. Patent No. 8,019,255
2012-07-17 Issue Date for U.S. Patent No. 8,220,795
2013-03-29 Priority Date for ’022 Patent
2013-10-08 Issue Date for U.S. Patent No. 8,554,089
2013-11-26 Issue Date for U.S. Patent No. 8,591,022
2014-08-12 Issue Date for U.S. Patent No. 8,805,239
2018-04-16 Complaint Filing Date

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

U.S. Patent No. 6,203,005 - “FEEDER APPARATUS FOR DOCUMENTS AND THE LIKE”

  • Patent Identification: U.S. Patent No. 6,203,005, “FEEDER APPARATUS FOR DOCUMENTS AND THE LIKE,” issued March 20, 2001.

The Invention Explained

  • Problem Addressed: The patent’s background section identifies common problems in high-speed document scanners, including the feeding of multiple sheets at once (“multi-feeds”), paper jams, and potential damage to original documents, particularly when handling stacks of paper with varying thicknesses (’005 Patent, col. 1:40–2:4).
  • The Patented Solution: The invention is a sheet feeder apparatus that uses a combination of a "skimmer" to pick the top sheet, a "separator" to prevent subsequent sheets from feeding, and a "guide plate" positioned between them. This guide plate is designed to extend along the feed path to confine the single engaged sheet, thereby preventing it from buckling as it travels from the skimmer to the separator (’005 Patent, Abstract; col. 4:55–67).
  • Technical Importance: This design aims to enhance the reliability of automated document feeders by actively controlling the sheet along its path between the initial pickup and separation stages, reducing a common point of failure in high-throughput scanning systems (’005 Patent, col. 3:36–43).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶84).
  • The essential elements of Claim 1 are:
    • A skimmer for engaging and removing a sheet from a stack, comprising a first friction element on a rotating shaft.
    • A separator spaced downstream from the skimmer for advancing the engaged sheet while retarding adjacent sheets.
    • A first guide plate extending between the skimmer and separator, substantially parallel to the feed path, to guide the sheet and prevent buckling.
    • The first guide plate is supported by and mounted to be pivotable independent of the rotation of the rotating shaft.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 6,305,684 - “FEED ROLLERS WITH REVERSING CLUTCH”

  • Patent Identification: U.S. Patent No. 6,305,684, “FEED ROLLERS WITH REVERSING CLUTCH,” issued October 23, 2001.

The Invention Explained

  • Problem Addressed: The patent addresses the persistent technical challenge of "multi-feeds" in automated sheet feeders, where multiple sheets are picked from a stack simultaneously. It notes that prior art mechanisms could often handle two-sheet misfeeds but struggled with stacks of three or more sheets (’684 Patent, col. 2:45–47).
  • The Patented Solution: The invention is a sheet separator mechanism featuring an advancing roller and a retarding roller coupled to its drive by a friction clutch. When one or no sheets are engaged, the clutch slips, allowing the retarding roller to be driven forward by the advancing roller. However, when a multi-feed of two or more sheets occurs, the clutch engages and actively drives the retarding roller backward, which stops the advance of the extra sheets while the top sheet continues forward (’684 Patent, Abstract; col. 4:5–19).
  • Technical Importance: This clutch-based system provides an active, mechanical solution to multi-feeds that can adapt to the number of sheets engaged, offering a more robust method for ensuring single-sheet feeding in high-speed applications (’684 Patent, col. 4:45–53).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶107).
  • The essential elements of Claim 1 are:
    • A sheet path, an advancing roller, and a retarding roller.
    • A drive for driving the retarding roller backward.
    • A roller shaft on which the retarding roller is mounted.
    • A friction clutch connecting the drive with the roller shaft.
    • The clutch permits the retarding roller to be driven forward when fewer than two sheets are engaged.
    • The clutch permits the retarding roller to be driven backward when two or more sheets are engaged.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

(The full analysis is limited to the first two patents-in-suit per the prompt instructions. The remaining 17 patents are summarized below.)

Multi-Patent Capsule: U.S. Patent No. 6,411,314

  • Patent Identification: U.S. Patent No. 6,411,314, “SYSTEM AND METHOD FOR REPRESENTING AND CONTROLLING A PRODUCTION PRINTING WORKFLOW,” issued June 25, 2002 (Compl. ¶18).
  • Technology Synopsis: The patent describes a computer interface for managing a production printing workflow. It involves associating different "objects"—a document object, a document ticket object for global attributes, and a page object for page-specific attributes—with visual representations on a display to control the printing process (Compl. ¶139).
  • Asserted Claims: At least independent claim 1 (Compl. ¶135).
  • Accused Features: The complaint accuses the Ricoh TotalFlow software suite of infringement (Compl. ¶138).

Multi-Patent Capsule: U.S. Patent No. 6,462,756

  • Patent Identification: U.S. Patent No. 6,462,756, “SYSTEM AND METHOD FOR VISUAL REPRESENTATION OF PAGES IN A PRODUCTION PRINTING WORKFLOW,” issued October 8, 2002 (Compl. ¶21).
  • Technology Synopsis: Similar to the ’314 patent, this invention relates to a computer interface for managing printing workflows. It adds a "second user input device" for creating page objects and applying page attributes to selected pages in a document, with the applied attributes being visually represented on the display (Compl. ¶169).
  • Asserted Claims: At least independent claim 1 (Compl. ¶165).
  • Accused Features: The complaint accuses the Ricoh TotalFlow software suite (Compl. ¶168).

Multi-Patent Capsule: U.S. Patent No. 6,509,974

  • Patent Identification: U.S. Patent No. 6,509,974, “AUTOMATED JOB CREATION FOR JOB PREPARATION,” issued January 21, 2003 (Compl. ¶24).
  • Technology Synopsis: The patent discloses a method for providing printing instructions by receiving multiple documents, arranging them in a predefined order, merging them into a single document with a main portion and "exception pages," and then printing the exception pages on an alternate device while delaying the printing of the main portion (Compl. ¶203).
  • Asserted Claims: At least independent claim 1 (Compl. ¶199).
  • Accused Features: The complaint accuses the Ricoh ProcessDirector system (Compl. ¶202).

(Summaries for the 14 additional patents asserted in Counts VI-XIX are omitted for brevity but follow the same technological themes of document feeding, workflow management, and printing apparatus mechanics.)

III. The Accused Instrumentality

Product Identification

  • The complaint identifies several categories of accused products and services made, used, or sold by Ricoh:
    • Ricoh Office Equipment: This includes printers, scanners, and multifunction systems, with specific model families named as Aficio MP, Aficio SP, and Pro (the “Ricoh Printer Models”) (Compl. ¶69–70).
    • Ricoh Software: This includes the Ricoh TotalFlow software suite (e.g., TotalFlow Prep, Production Manager, Print Server) and Ricoh ProcessDirector (Compl. ¶77).
    • Ricoh Services/Units: This includes Ricoh Preventative Maintenance (PM) and Trained Customer Replacement Units (TCRU) (Compl. ¶80).

Functionality and Market Context

  • The accused hardware products provide standard office functionalities like printing, scanning, and copying (Compl. ¶69). The complaint details specific mechanical sub-assemblies relevant to the asserted patents, such as sheet feeders, separation rollers, and friction pads, by referencing Ricoh’s own service manuals (Compl. ¶91, 115). An image provided in the complaint depicts an Aficio MP printer, a multifunction device with multiple paper trays and a document feeder (Compl. ¶71).
  • The accused software products, Ricoh TotalFlow and ProcessDirector, are alleged to be compatible with a wide variety of Ricoh hardware and are used to manage and control production printing workflows (Compl. ¶78–79).
  • The complaint provides no specific allegations regarding the products’ market share or commercial positioning beyond identifying them as part of Ricoh's portfolio of "office equipment" and "document solutions and services" (Compl. ¶3, 69).

IV. Analysis of Infringement Allegations

’3005 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a skimmer for engaging and removing a sheet from one end of a stack of sheets and feeding the engaged sheet edgewise along a feed path, said skimmer comprising a first friction element including a generally cylindrical endless rotating peripheral surface carried on a support defined at least in part by a rotating shaft The Aficio MP 2555 includes a skimmer, identified as a pick-up roller, feed roller, or separation roller, that engages and removes paper from a stack and feeds it along a path. The skimmer includes a cylindrical friction element on a support defined by a rotating shaft (Compl. ¶92). ¶92 col. 6:21–31
a separator spaced downstream along the feed path from the skimmer for advancing the engaged sheet while retarding any adjacent sheets The Aficio MP 2555 sheet feeder includes a separation roller located downstream from the skimmer that advances the fed sheet while retarding others (Compl. ¶94–95). ¶94-95 col. 6:50–53
a first guide plate extending between said skimmer and said separator substantially parallel to said feed path to guide the engaged single sheet substantially along the feed path, preventing buckling of the engaged single sheet perpendicular to the feed path The Aficio MP 2555 includes a guide plate that extends between the skimmer and separator. It is alleged to be parallel to the feed path and prevents the sheet from buckling (Compl. ¶96, 98–99). ¶96, 98-99 col. 6:54–61
wherein said first guide plate is supported at least in part by and mounted to be pivotable independent of the rotation of said rotating shaft with respect to said support The Aficio MP 2555 is alleged to include a paper guide plate mounted on hooks or a "feed-in guide plate" that is pivotable independent of the rotation of the rotating shaft (Compl. ¶100–101). A service manual diagram shows this pivotable motion (Compl. ¶101). ¶100-101 col. 4:62–67
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused product's combination of components, such as a "pick-up roller, feed roller, or separation roller," collectively constitutes the single claimed element of a "skimmer" (Compl. ¶92). The parties may dispute whether these are distinct components or a single functional unit as claimed.
    • Technical Questions: The infringement analysis for claim 1[d] will likely focus on the mechanical operation of the accused guide plate. The complaint alleges that a guide plate "mounted on hooks" or a "feed-in guide plate" is "pivotable independent of the rotation of said rotating shaft" (Compl. ¶100-101). The key technical question is whether this mounting provides the specific type of independent pivotal movement described and claimed in the patent, which will require a detailed comparison of the accused device's mechanics with the claim language.

’684 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a sheet path along which a sheet having a first and second surfaces is passed The Aficio MP C2030 is alleged to include a sheet path through which an original document travels for printing (Compl. ¶117). ¶117 col. 4:26–28
an advancing roller positioned to drive forward the first surface of a sheet in said sheet path The accused product includes an advancing roller, identified as a pick-up roller or feed belt, positioned to drive a sheet forward (Compl. ¶118–120). ¶118-120 col. 4:29–31
a retarding roller positioned to drive the second surface of a sheet in said sheet path The accused product includes a retarding roller, identified as a separation roller, that acts on the second surface of a sheet to separate it from the stack (Compl. ¶121). ¶121 col. 4:32–34
a drive for driving said retarding roller backward The product is alleged to include a "Feed motor" that drives the feed belt, separation, and pick-up rollers, and is responsible for driving the retarding roller backward (Compl. ¶124). ¶124 col. 4:35–36
a roller shaft on which said retarding roller is mounted in fixed relation... The accused product includes a roller shaft on which the retarding roller is mounted (Compl. ¶125). ¶125 col. 4:37–40
a friction clutch spaced from said retarding roller and connecting said drive with said roller shaft The product includes a friction clutch, identified as a "feed clutch," which is spaced from the retarding roller and connects the drive motor with the roller shaft (Compl. ¶126–127). ¶126-127 col. 4:41–43
said clutch permitting said retarding roller to be driven forward when fewer than two sheets are engaged... The accused product's friction clutch allegedly permits the retarding roller to be driven forward when a single sheet is engaged (Compl. ¶129). ¶129 col. 4:44–47
said clutch permitting said retarding roller to be driven backward when two or more sheets are engaged... The accused product's friction clutch allegedly permits the retarding roller to be driven backward when multiple sheets are engaged. A service manual diagram is cited stating that the feed motor "rotates in reverse" when the paper's leading edge reaches a skew correction roller (Compl. ¶130, 44). ¶130 col. 4:48–51
  • Identified Points of Contention:
    • Scope Questions: The complaint equates the accused "separation roller" with the claimed "retarding roller" (Compl. ¶121). The functional equivalence of these components under the patent's specific definitions may become a point of contention.
    • Technical Questions: The core of the dispute will likely concern the operation of the "friction clutch" in elements 1[g] and 1[h]. The patent claims a clutch that permits forward or backward motion based on the number of sheets engaged. The complaint's evidence suggests the accused product's feed motor "rotates in reverse" (Compl. ¶130). This raises the technical question of whether the accused clutch itself performs the claimed function or if the reversal is directed by a different control mechanism, potentially creating a mismatch in the principles of operation.

V. Key Claim Terms for Construction

For the ’3005 Patent

  • The Term: "pivotable independent of the rotation of said rotating shaft" (Claim 1)
  • Context and Importance: This limitation defines the specific mechanical freedom of the guide plate relative to the skimmer's rotating shaft. The infringement case for the ’3005 patent may depend heavily on whether the accused mechanism, which is "mounted on hooks" (Compl. ¶100), meets this precise functional and structural requirement. Practitioners may focus on this term because it appears to be a key point of novelty distinguishing the invention from a guide plate that is fixed or rotates with the shaft.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim uses the general term "pivotable," which could be argued to encompass any non-fixed mounting that allows for angular movement relative to the support shaft, such as the alleged hook mounting.
    • Evidence for a Narrower Interpretation: The specification describes the support for the rotating shaft and the guide plate as distinct but related structures (’005 Patent, col. 4:62–67). A party might argue that "independent" requires a mounting that is not just non-fixed, but is mechanically decoupled in a way that prevents rotational forces from the shaft from being imparted to the guide plate, potentially narrowing the term's scope.

For the ’684 Patent

  • The Term: "a friction clutch ... permitting said retarding roller to be driven forward ... [and] permitting said retarding roller to be driven backward" (Claim 1)
  • Context and Importance: This term is central to the invention's method of preventing multi-feeds. The claim attributes the change in the retarding roller's direction to the clutch's state (slipping vs. engaged). The infringement allegation relies on mapping the accused "feed clutch" to this functionality (Compl. ¶129-130). Practitioners may focus on this term because the alleged infringing operation—a "feed motor [that] rotates in reverse"—suggests the reversal command may originate from the motor's controller rather than from a passive mechanical change in the clutch's state as described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's abstract describes the clutch's function: it "normally slips and permits" forward motion but "engages and drives" the roller backward during a multifeed (’684 Patent, Abstract). A broad interpretation would cover any clutch mechanism that achieves this functional outcome, regardless of the precise trigger.
    • Evidence for a Narrower Interpretation: The detailed description explains that the clutch's state change is a direct result of sheet-to-sheet friction (or lack thereof), which is a passive mechanical trigger (’684 Patent, col. 4:50–60). A party could argue that "permitting" implies this passive, friction-based operation, and would not read on a clutch that is actively controlled by an electronic signal from a motor or sensor.

VI. Other Allegations

No indirect or willful infringement is explicitly alleged in the complaint.

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

  • A core issue will be one of mechanical and operational equivalence: does the accused printers' sheet feeding hardware, as described in their service manuals, operate in the specific manner claimed by the patents? This will involve detailed factual inquiries into, for example, whether a guide plate "mounted on hooks" is "pivotable independent of" a rotating shaft as required by the ’3005 patent, and whether a reversing motor system achieves the same function in the same way as the specific friction-based clutch mechanism claimed in the ’684 patent.
  • A second central question will concern claim construction and scope: can the patent claims, which describe specific mechanical arrangements for solving problems like paper jams and multi-feeds, be construed broadly enough to cover the different, though functionally similar, implementations found in the accused Ricoh products? The resolution of terms like "pivotable independent of" and "friction clutch" will likely be dispositive for the lead patents.