DCT

2:23-cv-02430

KMizra LLC v. Brother Industries USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-02430, W.D. Tenn., 10/02/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a "regular and established place of business" in the district and has committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s multifunction printers (MFPs) and associated consumable components infringe four patents related to duplex scanning, toner composition, cartridge replacement mechanisms, and power-saving control logic.
  • Technical Context: The patents cover distinct technologies central to the functionality and user experience of modern office MFPs, a mature and competitive market.
  • Key Procedural History: The complaint notes that the asserted patents were originally developed by and assigned to Sharp Corporation before being transferred to Plaintiff K.Mizra LLC.

Case Timeline

Date Event
2000-10-25 U.S. Patent 7,064,874 Priority Date
2004-11-01 U.S. Patent 7,449,274 Priority Date
2006-06-20 U.S. Patent 7,064,874 Issue Date
2007-11-09 U.S. Patent 7,840,165 Priority Date
2008-11-11 U.S. Patent 7,449,274 Issue Date
2010-11-23 U.S. Patent 7,840,165 Issue Date
2012-04-20 U.S. Patent 9,769,342 Priority Date
2017-09-19 U.S. Patent 9,769,342 Issue Date
2023-10-02 Complaint Filing Date

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

U.S. Patent No. 7,064,874 - “Both-Side Document Reading Apparatus and Both-Side Document Reading Method,” issued June 20, 2006

The Invention Explained

  • Problem Addressed: In compact duplex (both-sided) scanners, the light source for reading one side of a document can interfere with the sensor reading the other side. If the first light source is turned off while the second is still active, the change in ambient light can corrupt the scan data from the second sensor, creating errors or artifacts in the resulting image. (’874 Patent, col. 2:1-11).
  • The Patented Solution: The invention solves this problem by controlling the timing of the light sources. It maintains a constant lighting state for both light sources until the document reading operation is fully completed for both sides. Specifically, the upstream light source is kept on until after the document has passed the downstream reading region, preventing a change in light conditions from affecting the downstream sensor. (’874 Patent, col. 2:50-59, Abstract).
  • Technical Importance: This method allows for more compact duplex scanner designs without sacrificing image quality, a key consideration for multifunction office devices where space is at a premium. (Compl. ¶ 3).

Key Claims at a Glance

  • The complaint asserts independent Claim 18. (Compl. ¶ 15).
  • Essential elements of Claim 18:
    • An image forming apparatus comprising a both-side document reading apparatus.
    • A first reading portion with a first light source for reading one side of a document.
    • A second reading portion with a second light source for reading the other side.
    • The first and second reading portions are arranged so the first reading region is upstream of the second reading region in the document transport direction.
    • The first light source is turned off after the document has passed through the reading region of the second reading portion.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,449,274 - “Toner for Electrostatic Image Development and Image Forming Method Using the Same,” issued November 11, 2008

The Invention Explained

  • Problem Addressed: Achieving high-quality images in laser printers requires a toner that balances multiple competing properties. Toners with particles that are too large produce images with poor resolution and sharpness. Toners with an excess of very small particles can degrade quickly, cause fogging, and contaminate internal printer components over time. (’274 Patent, col. 1:33-46, col. 2:6-14).
  • The Patented Solution: The patent defines a specific toner composition with a carefully balanced distribution of particle sizes. It claims a toner with a high concentration of particles in the 4 µm to 6 µm range for sharpness, a strict limit on particles smaller than 4 µm to ensure durability, and a limit on particles larger than 16 µm to prevent poor thin-line reproduction. (’274 Patent, col. 4:45-60, Abstract).
  • Technical Importance: This formulation purports to enable high-resolution printing with improved longevity and reliability, addressing key performance metrics for commercial printers and copiers. (Compl. ¶ 22).

Key Claims at a Glance

  • The complaint asserts independent Claim 1. (Compl. ¶ 23).
  • Essential elements of Claim 1:
    • A toner for electrostatic image development, comprising toner particles.
    • Not more than 13% by number of particles have a diameter smaller than 4 µm.
    • Not less than 20% by number of particles have a diameter of 4 µm to 6 µm.
    • Not more than 2.0% by volume of particles have a diameter of 16 µm or greater.
    • The toner particles have a volume average diameter of 4 µm to 9 µm.
    • At least one external additive is added to the toner particles.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,840,165 - “Toner Replenishing Apparatus, Image Forming Apparatus, and Color Image Forming Apparatus,” issued November 23, 2010 (Multi-Patent Capsule)

  • Technology Synopsis: The patent describes a mechanical apparatus for toner cartridges that facilitates easy removal and replacement. The invention centers on a displacement mechanism, featuring a hook on a retaining member that engages the toner container, which works in conjunction with a release action to displace the container from its operational position for easy user access. (Compl. ¶¶ 31-32).
  • Asserted Claims: The complaint asserts independent Claim 1. (Compl. ¶ 64).
  • Accused Features: The complaint alleges that the lock lever on the Brother DR-730 imaging unit functions as the claimed displacement and retaining mechanism. When pressed, the lever allegedly releases the TN-760 toner cartridge and displaces it from its housing for removal, as depicted in a diagram showing the lever being pressed to eject the cartridge. (Compl. ¶¶ 35-38, p. 16).

U.S. Patent No. 9,769,342 - “Electric Apparatus,” issued September 19, 2017 (Multi-Patent Capsule)

  • Technology Synopsis: The patent discloses an electrical apparatus, such as an MFP, with distinct normal and power-saving operational states. The core of the invention is a control system that receives a user instruction (e.g., from a touch panel) and outputs different signals depending on the device's current power state. A control unit then interprets these different signals to either wake the device from its power-saving state or execute a function if already in a normal state. (Compl. ¶¶ 40-41).
  • Asserted Claims: The complaint asserts independent Claim 1. (Compl. ¶ 72).
  • Accused Features: The Brother MFC-L8900CDW is alleged to have a "Ready" (normal) state and a "Sleep Mode" (power-conserving state), which have different power consumption levels as shown in a provided table. The complaint alleges that its touchscreen outputs different signals upon being touched in these two states, causing the device to either wake up or execute a function, thereby infringing the patent. (Compl. ¶¶ 43-46, p. 19).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies several accused instrumentalities: Brother MFP models MFC-L3770CDW and MFC-L8900CDW; the Brother TN436 toner cartridge; and the Brother DR-730 imaging unit when used with compatible toner cartridges like the TN-760. (Compl. ¶¶ 16, 24, 33, 43).
  • Functionality and Market Context: The accused instrumentalities are commercially available multifunction printers and their required consumables. The complaint focuses on specific technical operations: the MFC-L3770CDW's single-pass duplex scanning mechanism (Compl. ¶ 19); the particle composition of the toner in the TN436 cartridge (Compl. ¶¶ 25-29); the mechanical cartridge release lever on the DR-730 imaging unit (Compl. ¶ 35); and the power-state management logic of the MFC-L8900CDW's touchscreen interface (Compl. ¶¶ 44-46). The complaint alleges these products are part of a product category established by the innovations of the original patent owner, Sharp. (Compl. ¶¶ 2-4).

IV. Analysis of Infringement Allegations

  • '874 Patent Infringement Allegations
Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
An image forming apparatus comprising a both-side document reading apparatus... The Brother MFC-L3770CDW is an image forming apparatus with duplex scanning capability. ¶16 col. 10:15-20
a first reading portion, provided with a first light source, for reading one side surface of a document... The accused printer's ADF flatbed scanner includes a first reading portion and light source (scanner lamp) that reads the upward-facing side of a document. ¶17 col. 10:37-40
a second reading portion, provided with a second light source, for reading another side surface of the document... A CIS unit in the flatbed scanner contains a second light source that reads the downward-facing side of the document. ¶18 col. 9:3-14
...the first and second reading portions are arranged so that a reading region of the one side surface...is arranged on an upstream side from a reading region of the other side surface... The ADF CIS unit (first reading portion) is positioned upstream of the flatbed scanner CIS unit (second reading portion) along the document's path, as shown in a provided diagram. ¶19, p. 9 col. 1:40-54
...the first light source is turned off after the document has passed through the reading region of the second reading portion. Both CIS units shut off simultaneously after the document passes the second (flatbed) reading region. An oscilloscope graph is provided to show this simultaneous deactivation. ¶20, p. 9 col. 3:61-64

  • Identified Points of Contention ('874 Patent):

    • Scope Question: The final and most critical element requires the first light source to be turned off "after" the document passes the second reading region. The complaint alleges the two sources are "shut off simultaneously." A central legal question will be whether "simultaneously" falls within the scope of "after." The patent's objective is to prevent a change in light levels during the second scan, a goal that simultaneous shut-off may achieve. However, the plain meaning of "after" suggests a temporal sequence, not a concurrent event.
    • Technical Question: What evidence demonstrates that the alleged "simultaneous" deactivation is what actually occurs? The complaint provides an oscilloscope graph as evidence, the interpretation of which may be a point of factual dispute. (Compl. ¶ 20, p. 9).

  • '274 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A toner...comprising toner particles in which not more than 13 percent by number of the toner particles have a particle diameter of smaller than 4 µm... An analysis of the Brother TN436 toner allegedly shows that 6.5% of particles by number are smaller than 4 µm. ¶25, p. 12 col. 4:60-64
...not less than 20 percent by number of the toner particles have a particle diameter of 4 µm to 6 µm... The analysis allegedly shows that 61.9% of particles by number are between 4 µm and 6 µm. ¶26, p. 12 col. 4:50-54
...not more than 2.0 percent by volume of the toner particles have a particle diameter of 16 µm or greater... The analysis allegedly shows that "at most 0.64 percent by volume" have a particle diameter of 15 µm or greater. ¶27, p. 13 col. 2:1-5
...the toner particles have a volume average diameter of 4 µm to 9 µm... An analysis graph allegedly confirms a volume average diameter of 6.200 µm. ¶28, p. 14 col. 3:1-3
...at least an external additive is added to the toner particles. The toner allegedly contains an external additive, SiO2 (silica). ¶29 col. 3:1-3
  • Identified Points of Contention ('274 Patent):
    • Technical/Evidentiary Question: The claim requires a measurement for particles "16 µm or greater," but the complaint provides data for particles "15 µm or greater." (Compl. ¶ 27). This raises an evidentiary question of whether the provided data is sufficient to support the infringement allegation for the specific limitation recited in the claim, or if it constitutes a factual gap in the plaintiff's pleading. The dispute will likely center on whether the infringement theory relies on an unsupported extrapolation from the available data.

V. Key Claim Terms for Construction

  • For the ’874 Patent:

    • The Term: "turned off after the document has passed through the reading region of the second reading portion" (Claim 18)
    • Context and Importance: This term is the central point of novelty for the asserted claim, defining the specific timing control that purports to solve the problem of scan corruption from changing light levels. The infringement analysis hinges on whether the accused product's "simultaneous" shut-off meets this "after" requirement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue the purpose of the limitation is to "avoid reading of density from being affected" ('874 Patent, col. 2:27-28) and to maintain "constant reading conditions" ('874 Patent, col. 2:13-15). Since simultaneous deactivation prevents the first light from turning off before the second read is complete, it achieves the stated goal of the invention, suggesting "after" could be construed to include "not before."
      • Evidence for a Narrower Interpretation: The term "after" in its plain and ordinary meaning implies a sequence of events, not concurrent ones. The patent specification states the invention "maintains a lighting state of the one light source... until the light illumination to the document by the other light source ends." (’874 Patent, col. 2:55-59). This language may support an interpretation that requires the first light to remain on for the entire duration of the second reading process and only be turned off subsequent to its completion.

  • For the ’274 Patent:

    • The Term: "not more than 2.0 percent by volume of the toner particles have a particle diameter of 16 µm or greater" (Claim 1)
    • Context and Importance: This is a precise numerical limitation in a composition claim. Infringement is a factual question of whether the accused toner meets this specific recipe. Practitioners may focus on this term because the complaint's supporting evidence appears to address a different, albeit similar, range (15 µm).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that for pleading purposes, providing data for a 15 µm threshold that is well below the 2.0% limit creates a plausible inference that the 16 µm threshold is also met. The specification's focus is on the general problem of coarse particles hindering thin-line reproduction. (’274 Patent, col. 5:21-24).
      • Evidence for a Narrower Interpretation: The claim language is unambiguous. The patent teaches that specific particle size distributions are critical to the invention's performance. (’274 Patent, col. 4:45-55). A party would argue that data for a 15 µm range is irrelevant to a claim that explicitly recites a 16 µm limitation, and that the absence of direct evidence for the claimed limitation is fatal to the infringement allegation.

VI. Other Allegations

  • Willful Infringement: The complaint alleges willful infringement for all four asserted patents. The basis for these allegations is knowledge of the patents and the alleged infringement "At least as of the filing of this Complaint." (Compl. ¶¶ 51, 59, 67, 75). The complaint does not allege any pre-suit knowledge on the part of the Defendant.

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

This case presents distinct infringement theories across four separate technologies. The outcome will likely depend on the court's resolution of several key questions:

  • A core issue will be one of temporal scope: For the ’874 patent, can the claim term "turned off after," which implies a sequence, be construed to cover the "simultaneous" deactivation of two light sources alleged in the complaint and depicted in its own evidence?
  • A key evidentiary question will be one of factual sufficiency: For the ’274 patent, does the complaint's particle-size data for toner of "15 µm or greater" provide a sufficient factual basis to plead infringement of a claim limitation requiring a specific percentage for toner of "16 µm or greater," or does this represent a failure to state a plausible claim?
  • Across the portfolio, a dispositive question will be one of technical specificity: Do the accused mechanical and logical features in the Brother products perform the specific functions required by the narrowly defined claims of the ’165 and ’342 patents, or do they represent alternative, non-infringing engineering solutions to common problems in the MFP industry?