DCT
1:22-cv-08248
KT Imaging USA LLC v. Fujifilm Holdings Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: KT Imaging USA, LLC (Texas)
- Defendant: Fujifilm Holdings Corporation (Japan); Fujifilm Holdings America Corporation (New York)
- Plaintiff’s Counsel: Kheyfits Belenky LLP
- Case Identification: 1:22-cv-08248, S.D.N.Y., 09/27/2022
- Venue Allegations: Venue is alleged to be proper for Fujifilm Holdings Corporation as a foreign corporation and for Fujifilm Holdings America Corporation based on its regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Instax line of instant cameras infringes two patents related to the physical packaging and manufacturing methods of image sensor modules.
- Technical Context: The technology concerns the mechanical and electrical assembly of components—such as the photosensitive chip, substrate, and lens housing—within a compact digital camera image sensor.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2003-07-16 | U.S. Patent No. 6,876,544 Priority Date |
| 2004-10-08 | U.S. Patent No. 7,196,322 Priority Date |
| 2005-04-05 | U.S. Patent No. 6876544 Issued |
| 2007-03-27 | U.S. Patent No. 7196322 Issued |
| 2022-09-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,876,544 - "Image Sensor Module and Method for Manufacturing the Same"
- Patent Identification: U.S. Patent No. 6,876,544, "Image Sensor Module and Method for Manufacturing the Same," issued April 5, 2005 (Compl. ¶11).
The Invention Explained
- Problem Addressed: The patent describes prior art image sensor modules as having several manufacturing drawbacks, including difficulties in wire bonding due to tight spacing, potential for particle contamination on protective layers, and high component counts and costs associated with using a separate lens holder. (’544 Patent, col. 1:43-67).
- The Patented Solution: The invention proposes an image sensor module where a single "frame layer" serves multiple functions. This frame layer, mounted on the substrate to surround the photosensitive chip, is formed with an internal thread. This integrated thread allows a lens barrel to be screwed directly into the frame layer, thereby eliminating the need for a separate conventional lens holder and simplifying the assembly. (’544 Patent, Abstract; col. 2:59-67).
- Technical Importance: This design sought to reduce the number of discrete components, simplify manufacturing, and lower costs by integrating the lens mounting feature into the protective frame of the sensor package. (’544 Patent, col. 3:55-60).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶17).
- The essential elements of independent claim 1 include:
- A substrate with first and second connection points.
- A photosensitive chip mounted on the substrate.
- Wires connecting the chip to the substrate's first connection points.
- A "frame layer" mounted on the substrate to surround the chip, where the frame layer has an "internal thread" and fixes a "transparent layer".
- A "lens barrel" with an "external thread" that is "screwed to the internal thread of the frame layer".
U.S. Patent No. 7,196,322 - "Image Sensor Package"
- Patent Identification: U.S. Patent No. 7,196,322, "Image Sensor Package," issued March 27, 2007 (Compl. ¶12).
The Invention Explained
- Problem Addressed: The patent notes that in conventional designs, as photosensitive chips grew larger, the underlying substrate also had to be enlarged to provide enough space for wire bonding, making the manufacturing process "inconvenient, or even impossible." (’322 Patent, col. 1:30-36).
- The Patented Solution: The invention proposes moving the electrical connection points ("first electrodes") off the substrate and onto a separate "frame layer". This frame layer is placed on the substrate, forming a cavity for the photosensitive chip. The chip is then wire-bonded to the electrodes on the frame layer. A lens holder is then placed over this entire assembly. (’322 Patent, Abstract; col. 2:20-30).
- Technical Importance: By locating the bonding pads on a separate frame layer, this architecture allows for the packaging of different-sized image sensor chips without needing to change the dimensions of the substrate or the overall package. (’322 Patent, col. 2:44-48).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶22).
- The essential elements of independent claim 1 include:
- A substrate.
- A "frame layer" on the substrate, where the frame layer itself has "first electrodes" formed on it.
- A photosensitive chip in a cavity, electrically connected to the "first electrodes of the frame layer".
- A "lens holder" adhered to the substrate, where the "frame layer is located within the breach of the lens holder".
- A lens barrel screwed into the lens holder.
III. The Accused Instrumentality
- Product Identification: The accused products are the Fujifilm "Instax mini LiPlay, Instax mini Evo, and Instax SQUARE SQ20" cameras (Compl. ¶14).
- Functionality and Market Context: The complaint identifies the accused products as "cameras with image sensors" (Compl. ¶14). The infringement allegations focus on the specific physical construction of the image sensor modules within these cameras, particularly the Fujifilm Instax Mini LiPlay (Compl. ¶¶17, 22). The allegations describe a multi-component assembly including a substrate, a photosensitive chip, electrical connection points, and a lens mounting structure. The complaint does not provide further detail on the products' market positioning.
IV. Analysis of Infringement Allegations
’544 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate having an upper surface formed with a plurality of first connection points, and a lower surface formed with a plurality of second connection points, which is electrically connect to the printed circuit board | The Accused Products contain a substrate with an upper surface having first connection points and a lower surface with second connection points connected to a printed circuit board. The complaint references a cross-sectional image of the sensor. | ¶17 | col. 2:48-51 |
| a photosensitive chip mounted to the upper surface of the substrate | The module includes a photosensitive chip mounted on the substrate's upper surface. | ¶17 | col. 2:52-54 |
| a plurality of wires for electrically connecting the photosensitive chip to the first connection points on the upper surface of the substrate | Wires electrically connect the photosensitive chip to the first connection points. The complaint references an image showing the sensor's internal components. | ¶17 | col. 2:55-59 |
| a frame layer mounted to the upper surface of the substrate to surround the photosensitive chip, an inner edge of the frame layer being formed with an internal thread from top to bottom, and a transparent layer being fixed by the frame layer... | A frame layer is mounted on the substrate to surround the chip. This layer allegedly has an internal thread and fixes a transparent layer to allow optical signals to pass to the chip. | ¶17 | col. 2:59-67 |
| a lens barrel formed with a chamber...and an external thread...the external thread being screwed to the internal thread of the frame layer... | A lens barrel with an external thread is allegedly screwed into the internal thread of the aforementioned frame layer. The complaint cites a cross-sectional image as evidence. | ¶17 | col. 3:3-10 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused component identified as a "frame layer" meets all limitations of the claimed term. Specifically, does a single component in the accused device simultaneously surround the chip, fix a transparent layer, and possess an "internal thread" for receiving the lens barrel, as the claim requires?
- Technical Questions: The allegation that the lens barrel's external thread is "screwed to the internal thread of the frame layer" (Compl. ¶17) suggests a direct mechanical connection that will be a key factual issue. The complaint relies on "Ex. 1 (cross-sectional image of the Fujifilm Instax Mini LiPlay image sensor)" to support this structural allegation (Compl. ¶17).
’322 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substrate having an upper surface, and a lower surface on which second electrodes are formed | The accused module has a substrate with an upper surface and a lower surface on which second electrodes are formed. The complaint references images of the sensor with components exposed. | ¶22 | col. 2:16-19 |
| a frame layer arranged on the upper surface of the substrate...and a plurality of first electrodes are formed on the frame layer | A frame layer is allegedly arranged on the substrate, and this frame layer has a plurality of first electrodes formed on it. The complaint cites an image of the sensor with internal components exposed. | ¶22 | col. 2:20-24 |
| a photosensitive chip mounted on the upper surface of the substrate and located within the cavity, and electrically connected to the first electrodes of the frame layer | A photosensitive chip is mounted on the substrate within a cavity and is electrically connected to the first electrodes located on the frame layer. | ¶22 | col. 2:25-30 |
| a lens holder having an upper end face, a lower end face, and an opening...wherein, the frame layer is located within the breach of the lens holder | The accused module includes a lens holder adhered to the substrate. This lens holder is alleged to have a "breach" (a recess or cutout) where the frame layer is located. The complaint references "Exs. 1 and 5 (cross-sectional image... and image... with the internal components exposed)" to support this. | ¶22 | col. 2:31-40 |
| a lens barrel having an upper end face, a lower end face, and an external thread screwed to the internal thread of the lens holder | A lens barrel with an external thread is screwed into an internal thread of the lens holder. | ¶22 | col. 2:41-44 |
- Identified Points of Contention:
- Scope Questions: The claim requires that "first electrodes are formed on the frame layer." The infringement analysis will depend on whether the electrical connection pads in the accused device are located on a structure that can be properly construed as the claimed "frame layer," distinct from the "substrate."
- Technical Questions: A key factual dispute will be the specific physical arrangement of the components. The allegation that the "frame layer is located within the breach of the lens holder" (Compl. ¶22) describes a specific nested structure. The evidence presented to prove this precise spatial relationship will be critical.
V. Key Claim Terms for Construction
’544 Patent: "frame layer"
- The Term: "frame layer"
- Context and Importance: This term is central to claim 1, as infringement hinges on a single accused structure meeting the claim's multiple functional and structural requirements: surrounding the chip, possessing an internal thread, and fixing a transparent layer. Practitioners may focus on this term to determine if the accused component performs the integrated functions described in the patent, which distinguish it from prior art that used a separate frame and lens holder.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself describes it as "mounted to the upper surface of the substrate to surround the photosensitive chip." (’544 Patent, col. 4:13-14).
- Evidence for a Narrower Interpretation: The specification emphasizes that a key advantage is replacing the "conventional lens holder" and that the frame layer can be formed via "injection molding to simultaneously form the internal thread and fix the transparent layer," suggesting a specific, integrated manufacturing process and structure. (’544 Patent, col. 3:55-60; col. 4:26-29).
’322 Patent: "first electrodes are formed on the frame layer"
- The Term: "first electrodes are formed on the frame layer"
- Context and Importance: This limitation defines the core novelty asserted by the patent—moving the wire bonding pads from the substrate to a separate frame. The infringement case rests on whether the accused device's electrical architecture matches this specific configuration.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language could be argued to cover any configuration where electrodes are physically situated upon a structure that is separate from the main substrate.
- Evidence for a Narrower Interpretation: The specification and Figure 2 show the "first electrodes" (62) as part of the "frame layer" (59), which itself sits on the "substrate" (50) to form a "cavity" (61). This context suggests the electrodes are integral to a distinct structural element that re-routes the electrical connections away from the substrate surface. (’322 Patent, col. 2:20-30).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents, asserting that Fujifilm provides "instructions, manuals, advertisements, marketing materials, and technical assistance" that direct and encourage partners, resellers, and end users to make, use, or sell the accused products in an infringing manner (Compl. ¶¶18, 23).
- Willful Infringement: The complaint does not contain specific allegations of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for both patents will be one of structural identity: Does the physical assembly within the accused Instax cameras map directly onto the specific, multi-part component arrangements required by the claims? For the ’544 patent, this turns on whether a single "frame layer" performs the dual functions of surrounding the chip and providing a threaded mount for the lens. For the ’322 patent, the key is whether the wire-bonding "electrodes" are located on a distinct "frame layer" that is itself physically nested within a "breach" of the lens holder.
- The case also presents a fundamental evidentiary question: The complaint's infringement theory relies heavily on its interpretation of five referenced visual exhibits that are not attached to the pleading. A determinative issue will be whether these images, once produced, unambiguously depict the specific mechanical connections (e.g., threads engaged) and component locations (e.g., electrodes on the frame layer) required to satisfy the claim limitations.