DCT

2:12-cv-06800

Infinity Computer Products Inc v. Canon USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:12-cv-06800, E.D. Pa., 12/05/2012
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendant conducting regular business, selling products, and operating an interactive website accessible to customers within the Eastern District of Pennsylvania.
  • Core Dispute: Plaintiff alleges that Defendant’s multi-function products, including the PIXMA MX320, infringe four patents related to interface circuits and methods that enable a facsimile machine to be used as a scanner or printer for a personal computer.
  • Technical Context: The technology at issue addresses leveraging the scanning and printing hardware of conventional facsimile machines to serve as peripherals for personal computers, a significant cost-saving measure at the time of the invention.
  • Key Procedural History: The complaint notes that this action follows Defendant Canon being severed from a prior multi-defendant lawsuit (the "Related Action," 2:10-cv-03175) involving the ’811 and ’423 patents. It also states that both the ’811 and ’423 patents survived Ex Parte Reexamination proceedings at the USPTO, during which their claims were confirmed as amended, a fact that may be raised by the Plaintiff to suggest the patents' validity has been reinforced.

Case Timeline

Date Event
1994-04-11 Priority Date for ’811, ’423, ’574, and ’915 Patents
2005-05-17 U.S. Patent No. 6,894,811 Issues
2009-02-10 U.S. Patent No. 7,489,423 Issues
2011-10-18 U.S. Patent No. 8,040,574 Issues
2012-05-01 ’423 Patent Reexamination Certificate Issued
2012-07-31 ’811 Patent Reexamination Certificate Issued
2012-10-23 U.S. Patent No. 8,294,915 Issues
2012-12-05 Complaint Filed

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

U.S. Patent No. 6,894,811

  • Patent Identification: U.S. Patent No. 6,894,811, Interface Circuit for Utilizing a Facsimile Coupled to a PC as a Scanner or Printer, issued May 17, 2005. (Compl. ¶10).
  • The Invention Explained:
    • Problem Addressed: The patent addresses the high cost and complexity of dedicated computer scanners and printers, as well as prior art interface devices designed to connect facsimile machines to PCs, which were often expensive and required microprocessors. (Compl. Ex. A, ’811 Patent, col. 1:26-40).
    • The Patented Solution: The invention provides a simplified interface circuit that physically disconnects a standard fax machine and a PC from the public telephone network and connects them directly to each other. A key feature is a novel "ringing circuit" that uses a low-voltage DC source (e.g., a battery) to generate a signal that simulates an incoming telephone call, which "tricks" the PC's fax modem or the fax machine into a receive mode to accept scanned data or print jobs, respectively. This approach, illustrated in block diagrams like Figure 2g, eliminates the need for complex, microprocessor-based control. (Compl. Ex. A, ’811 Patent, col. 2:5-24; Fig. 2g).
    • Technical Importance: The patented solution offered a low-cost method for consumers and businesses to gain PC scanning and printing functionality by repurposing an existing, common piece of office equipment. (Compl. Ex. A, ’811 Patent, col. 1:38-43).
  • Key Claims at a Glance:
    The complaint alleges infringement of "one or more claims" but does not specify which ones are asserted. (Compl. ¶17). Independent Claim 1 is representative of the invention's scanning functionality.
    • Independent Claim 1 (Method):
      • by-passing or isolating the facsimile machine and the computer from the public network telephone line;
      • coupling the facsimile machine to the computer;
      • conditioning the computer to receive digital facsimile signals representing data on a scanned document; and
      • conditioning the facsimile machine to transmit digital signals representing data on a scanned document to the computer, said computer being equipped with send/receive driver communications software enabling the reception of scanned image signals from the facsimile machine, said transmitted digital facsimile signals being received directly into the computer through the bi-directional direct connection via the passive link, thereafter, said computer processing the received digital facsimile signals of the scanned document as needed.

U.S. Patent No. 7,489,423

  • Patent Identification: U.S. Patent No. 7,489,423, Interface Circuit for Utilizing a Facsimile Machine Coupled to a PC as a Scanner or Printer, issued February 10, 2009. (Compl. ¶11).
  • The Invention Explained:
    • Problem Addressed: Similar to its parent, the ’423 Patent addresses the expense and complexity associated with dedicated PC peripherals and the interfaces needed to use a fax machine for scanning or printing. (Compl. Ex. B, ’423 Patent, col. 1:35-44).
    • The Patented Solution: The patent describes a method for transferring digital image data between a computer and a fax machine over a direct, bi-directional "passive link." The method involves conditioning the devices to send or receive data and using send/receive driver software on the computer to manage the transfer without interruption. The system architecture, depicted in figures such as Figure 2a, shows the interface circuit mediating the connection between the fax machine, the PC, and the telephone lines. (Compl. Ex. B, ’423 Patent, col. 9:9-29; Fig. 2a).
    • Technical Importance: The invention provides a defined software- and hardware-based method for repurposing fax machines, making scanning and printing more accessible and affordable. (Compl. Ex. B, ’423 Patent, col. 1:48-54).
  • Key Claims at a Glance:
    The complaint alleges infringement of "one or more claims" without specification. (Compl. ¶25). Independent Claim 1 is representative of the invention's printing functionality.
    • Independent Claim 1 (Method):
      • coupling the facsimile machine to the computer through a bi-directional direct connection via a passive link;
      • conditioning the facsimile machine to receive print image data from the computer;
      • conditioning the computer for initiating transmission of print image digital data to said facsimile machine of a document to be printed by said facsimile machine;
      • upon activating the send driver communications software of the computer the print image digital data from the computer is transferred without interruption through a receiving port of the facsimile machine, whereby the print image digital signals of the computer are processed by the facsimile machine into signals for printing.

Multi-Patent Capsule: U.S. Patent No. 8,040,574

  • Patent Identification: U.S. Patent No. 8,040,574, Interface Circuit for Utilizing a Facsimile Machine to a PC as a Scanner or Printer, issued October 18, 2011. (Compl. ¶12).
  • Technology Synopsis: This patent, from the same family as the ’811 and ’423 patents, also describes an interface circuit and methods for using a fax machine as a PC peripheral. The claims focus on methods that include activating a switch to enable a direct transfer of image data via a passive, bi-directional link between the fax machine and the computer. (Compl. Ex. C, ’574 Patent, Abstract; col. 10:11-28).
  • Asserted Claims: The complaint does not specify which claims are asserted. (Compl. ¶33).
  • Accused Features: The complaint accuses Defendant’s multi-function products, like the PIXMA MX320, which allegedly contain an "interface circuit that allows it to be coupled to a computer as a printer or scanner." (Compl. ¶33).

Multi-Patent Capsule: U.S. Patent No. 8,294,915

  • Patent Identification: U.S. Patent No. 8,294,915, Interface Circuit for Utilizing a Facsimile Machine Coupled to a PC as a Scanner or Printer, issued October 23, 2012. (Compl. ¶13).
  • Technology Synopsis: This patent continues the same theme, with claims directed to printing and scanning methods using a facsimile machine connected to a computer over a bi-directional direct passive link. The methods rely on receiving instructions at a digital serial communications port and transmitting data using standard facsimile machine protocols, effectively emulating a traditional fax transmission over a direct connection. (Compl. Ex. D, ’915 Patent, Abstract; col. 9:11-31).
  • Asserted Claims: The complaint does not specify which claims are asserted. (Compl. ¶41).
  • Accused Features: The complaint accuses Defendant’s "facsimile machine with an interface circuit that allows it to be coupled to a computer as a printer or scanner," such as the PIXMA MX320. (Compl. ¶41).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the "PIXMA MX320 product and similar multi-function products" as the accused instrumentalities. (Compl. ¶17, 25, 33, 41).

Functionality and Market Context

  • The complaint alleges that the accused products are "multi-function products" that include a "facsimile machine with an interface circuit that allows it to be coupled to a computer as a printer or scanner." (Compl. ¶17). The complaint does not provide specific technical details about how the accused products' scanning and printing functions operate. It states that Defendant operates a website, www.usa.canon.com, through which it advertises, sells, and "instructs customers how to use its multi-function products." (Compl. ¶20, 28, 36, 44). The diagram in the ’811 patent, Figure 2g, shows a system with a standard fax machine, a PC with communication software, and an RS-232 connection, illustrating the type of architecture contemplated by the invention. (Compl. Ex. A, '811 Patent, Fig. 2g). The complaint does not contain allegations regarding the accused products' specific market share or commercial importance.

IV. Analysis of Infringement Allegations

The complaint provides a conclusory allegation of infringement for each patent without mapping specific product features to claim elements. The following charts summarize the infringement theory for the representative independent claims identified in Section II, based on the general allegations in the complaint.

U.S. Patent No. 6,894,811 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
by-passing or isolating the facsimile machine and the computer from the public network telephone line; The accused PIXMA MX320 multi-function products are coupled to a computer for scanning, thereby operating independently of the public telephone network. ¶17 col. 9:21-23
coupling the facsimile machine to the computer; The accused products include an interface circuit that allows them to be coupled to a computer. ¶17 col. 9:24-25
conditioning the computer to receive digital facsimile signals representing data on a scanned document; and When used for scanning, the accused products cause the connected computer to be conditioned to receive the scanned image data. ¶17 col. 9:26-28
conditioning the facsimile machine to transmit digital signals... said computer being equipped with send/receive driver communications software... The accused products transmit scanned data to a computer, which uses driver software to receive the image signals. ¶17 col. 9:29-38

U.S. Patent No. 7,489,423 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
coupling the facsimile machine to the computer through a bi-directional direct connection via a passive link; The accused PIXMA MX320 products are coupled to a computer via a direct, bi-directional connection that enables printing functionality. ¶25 col. 9:15-17
conditioning the facsimile machine to receive print image data from the computer; The accused products are conditioned to receive print data from the connected computer. ¶25 col. 9:18-19
conditioning the computer for initiating transmission of print image digital data...; The connected computer is conditioned to initiate the sending of print data to the accused products. ¶25 col. 9:20-23
upon activating the send driver communications software... the print image digital data from the computer is transferred without interruption... Activating the print driver on the computer causes an uninterrupted transfer of print data to the accused products for printing. ¶25 col. 9:24-29

Identified Points of Contention:

  • Scope Questions: A central question may be whether the term "facsimile machine," as described in the context of a standalone 1990s-era device being adapted for a new purpose, can be construed to read on a modern, integrated "multi-function product" where the scanner, printer, and fax are native, co-designed components.
  • Technical Questions: The patents describe an "interface circuit" that in some embodiments simulates telephone network signals (e.g., ringing, off-hook) to initiate communication. A point of contention may be whether the accused products' standard computer interfaces (e.g., USB) and communication protocols operate in a manner consistent with the methods claimed in the patents, or if their operation is technically distinct. The complaint lacks factual allegations to resolve this question.

V. Key Claim Terms for Construction

  • The Term: "facsimile machine"
    • Context and Importance: The definition of this term is critical because the patents were filed in an era of standalone fax machines. The accused products are integrated multi-function devices. Defendant may argue that an integrated device is not a "facsimile machine" in the context of the patent's problem-solution framework, which focuses on adapting a separate, pre-existing device.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the components of a "conventional facsimile" as including scanning and printing apparatuses, which are also core components of the accused products. (Compl. Ex. A, ’811 Patent, col. 1:19-25).
      • Evidence for a Narrower Interpretation: The patent figures consistently depict a "Standard Fax Machine" as a distinct block (30) connected via an external "Interfacing CKT" (10) to a "PC Type Computer" (40). (Compl. Ex. A, ’811 Patent, Fig. 2a). This repeated depiction of separate components may support a narrower construction limited to non-integrated, standalone devices.
  • The Term: "bi-directional direct connection via a passive link" (’423 Patent, Claim 1)
    • Context and Importance: This term defines the nature of the connection between the computer and the device. The infringement analysis will depend on whether a modern, protocol-driven interface like USB qualifies as a "passive link."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term could be interpreted functionally to mean any direct physical path between the two devices that bypasses the public telephone network, as opposed to a connection through the network.
      • Evidence for a Narrower Interpretation: The specification describes embodiments using telephone-style RJ-11 cables and circuitry that simulates telephone line signals. (Compl. Ex. A, ’811 Patent, Fig. 2a; col. 6:40-43). This context may suggest that a "passive link" refers to a simple electrical connection that mimics a phone line, rather than a complex, actively managed data bus like USB.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement of infringement for all four patents. The stated basis is that Defendant provides instructions to its customers (e.g., via its website and user manuals) that encourage and enable them to use the accused multi-function products in an infringing manner. (Compl. ¶21, 29, 37, 45).
  • Willful Infringement: Willfulness is alleged for all four patents. The complaint asserts that Defendant had "prior knowledge" of the patents-in-suit. (Compl. ¶22, 30, 38, 46). For the ’811 and ’423 patents specifically, the complaint alleges that Infinity disclosed these patents to Defendant sometime prior to the filing of the "Related Action" in 2010. (Compl. ¶15).

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

  • A core issue will be one of definitional scope: can the term "facsimile machine," rooted in the patent's context of adapting standalone 1990s-era office equipment, be construed to cover modern, integrated multi-function products where scanning and printing are native, co-designed capabilities?
  • A key evidentiary question will be one of technical operation: does the communication protocol used by the accused products over a standard computer interface (such as USB) function in a manner consistent with the patented methods, some of which involve simulating telephone network signals, or is there a fundamental mismatch in how the technologies connect and communicate?
  • A third question, relating to damages and willfulness, will be the impact of prior notice: what effect will Plaintiff's allegation of having disclosed the ’811 and ’423 patents to Defendant before prior litigation have on potential claims for enhanced damages, and does that alleged knowledge extend to the later-issued ’574 and ’915 patents from the same family?