DCT
2:10-cv-00209
Demeter Technolog LLC v. Fujitsu Computer Products Of Americ Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Demeter Technology, LLC (Texas)
- Defendant: Fujitsu Computer Products of America, Inc.; Godaddy.com, Inc.; Hewlett-Packard Co.; and 17 other entities
- Plaintiff’s Counsel: Spangler Law, PC
- Case Identification: 2:10-cv-00209, E.D. Tex., 06/24/2010
- Venue Allegations: Venue is alleged to be proper based on each defendant having transacted business in the district and having committed or induced acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ fax-to-email systems, services, and multi-function devices infringe a patent related to enabling a facsimile machine to function as an email client.
- Technical Context: The technology bridges legacy telecommunications (facsimile transmission) with modern data networks (internet email), allowing users of fax machines to send and receive messages from email users.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or specific licensing history concerning the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1997-05-19 | U.S. Patent No. 6,157,706 Priority Date |
| 2000-12-05 | U.S. Patent No. 6,157,706 Issue Date |
| 2010-06-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,157,706, "Method and Apparatus for Enabling a Facsimile Machine to be an E-mail Client," issued December 5, 2000.
The Invention Explained
- Problem Addressed: The patent describes a problem from the late 1990s: individuals who travel frequently or do not have constant access to a personal computer are cut off from the benefits of email, even though they may have ready access to a facsimile (fax) machine. (’706 Patent, col. 1:30-38). Furthermore, the procedures for sending a fax from a computer are different and less convenient than sending an email, creating a barrier for communication between the two platforms. (’706 Patent, col. 1:47-54).
- The Patented Solution: The invention is a system that allows a fax machine to act like an email client. To send an "email," a user faxes a document to a special "internet fax number," which the system has associated with a recipient's actual email address. The system receives the fax, converts its contents into an email, and sends it to the recipient. (’706 Patent, Abstract). Conversely, incoming emails for the user can be automatically converted into faxes and printed on the user's designated fax machine. (’706 Patent, col. 2:20-25). This process is designed to be transparent to a computer user sending or receiving the email. (’706 Patent, col. 2:1-4).
- Technical Importance: The technology aimed to integrate the ubiquitous, established network of fax machines with the rapidly expanding internet email system, providing email-like functionality to users without direct computer access.
Key Claims at a Glance
- The complaint does not specify which claims it asserts, but the infringement allegations track the language of independent system claim 1.
- Independent Claim 1 (System Claim) Elements:
- A portion that accepts input from a first user specifying an e-mail address of a second user;
- A portion that automatically stores the e-mail address of the second user in an address book data structure assigned to only the first user in a memory;
- A portion that associates an internet fax number with the stored e-mail address of the second user in memory;
- A receiving portion that receives a fax from the facsimile machine of the first user that has been sent to the internet fax number associated with the e-mail address of the second user;
- A selection portion for selecting the address book data structure assigned to the first user that includes the associated internet fax number and stored e-mail address; and
- A sending portion for sending the contents of the fax to the e-mail address of the second user stored in the selected address book data structure.
III. The Accused Instrumentality
Product Identification
- The complaint accuses a wide range of products and services from twenty different defendants. These include, for example, Fujitsu’s "ScanSnap fi-6010N iScanner," Godaddy’s "fax thru email" systems," HP’s "HP Fax Series, and HP Officejet Pro 8500" multi-function printers, and J2’s "eFax and Send2Fax systems." (Compl. ¶¶46, 47, 48, 51).
Functionality and Market Context
- The complaint alleges that the accused instrumentalities are "systems that enables a facsimile machine to function like an e-mail client." (Compl. ¶46). The alleged functionality involves accepting user input to associate a recipient's email address with an entry in an address book, receiving a document (fax), and sending the contents of that document to the associated email address. (Compl. ¶¶46-65). The complaint broadly groups scanners, multi-function printers, and internet fax services under this single theory of operation.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint presents a single, repeated infringement theory against all twenty defendants. The following chart summarizes this theory against the elements of independent claim 1.
’706 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a portion that accepts input from a first user specifying an e-mail address of a second user; and a portion that automatically stores the e-mail address of the second user in an address book data structure assigned to only the first user... | The systems comprise portions that accept input from a first user specifying an e-mail address of a second user and automatically store the e-mail address of the second user in an address book data structure assigned to the first user. | ¶46 | col. 8:36-49 |
| a portion that associates an internet fax number with the stored e-mail address of the second user in memory; | A portion associates an internet fax number with the stored e-mail address of the second user in memory. | ¶46 | col. 2:37-42 |
| a receiving portion that receives a fax from the facsimile machine of the first user that has been sent to the internet fax number associated with the e-mail address of the second user; | A receiving portion receives a fax – from the facsimile machine of the first user – that has been sent to the internet fax number associated with the e-mail address of the second user. | ¶46 | col. 7:1-6 |
| a selection portion for selecting from an address book data structure the address book structure assigned to the first user, that includes the internet fax number associated with the stored e-mail address of the second user; | A selection portion selects from an address book data structure the address book structure assigned to the first user, that includes the internet fax number associated with the stored e-mail address of the second user. | ¶46 | col. 8:26-29 |
| a sending portion sends the contents of the fax to the e-mail address of the second user stored in the selected address book data structure. | A sending portion sends the contents of the fax to the e-mail address of the second user stored in the selected address book data structure. | ¶46 | col. 7:4-6 |
- Identified Points of Contention:
- Scope Questions: The complaint's theory applies the term "facsimile machine" to modern network scanners, multi-function devices, and internet-based services. A central dispute may be whether the term "facsimile machine," as defined and used in a patent with a 1997 priority date, can be construed to read on these diverse modern instrumentalities, which may not use traditional telephone lines for transmission.
- Technical Questions: The complaint does not specify how the accused products implement an "internet fax number." This raises the question of whether the accused systems use a literal telephone number that is mapped to an email address, as described in the patent, or if they use a different mechanism (e.g., a software alias in a digital address book) that Plaintiff will argue is equivalent.
V. Key Claim Terms for Construction
The Term: "facsimile machine"
Context and Importance: This term's construction is critical because the patent was filed when "facsimile machine" commonly referred to a standalone device connected to a telephone line for sending and receiving faxes. The accused products include modern scanners and multi-function printers that may operate primarily over IP networks. The viability of the infringement claims against many of the defendants will depend on whether these modern devices fall within the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s title, "Method and Apparatus for Enabling a Facsimile Machine to be an E-mail Client," and its overall purpose suggest the invention is about bridging a specific functionality gap—sending a scanned document image to an email user. A party could argue any device performing that core function serves as a "facsimile machine" in the context of the invention.
- Evidence for a Narrower Interpretation: The specification consistently discusses the user's device in the context of telephone systems. For example, it refers to sending faxes "over the telephone lines" and interacting with "a predetermined telephone number of an EPO." (’706 Patent, col. 1:39; col. 7:29-30). This language may support an argument that the term is limited to devices that operate over a public switched telephone network.
The Term: "internet fax number"
Context and Importance: This term appears to be a neologism created by the inventor. Its meaning is central to the claimed method of routing a "fax" to an "email." The infringement analysis depends on whether the accused systems use a structure that can be considered an "internet fax number."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes this as a number "associated with a particular recipient in the user's address book," which the system uses to send an email. (’706 Patent, Abstract). This could be interpreted broadly to mean any identifier in an address book (e.g., a speed-dial entry) that the system maps to an email address.
- Evidence for a Narrower Interpretation: The term itself contains "number" and is used in the context of a "fax telephone number." (’706 Patent, Abstract). The specification describes the user "dialing" this number. (’706 Patent, col. 3:55-60). This could support a narrower construction requiring an actual, dialable telephone number that the system intercepts, rather than a purely software-based identifier.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that all defendants are "indirectly infringing by way of inducing infringement and/or contributing to the infringement" of the ’706 Patent. (Compl. ¶46). The factual basis alleged is that the defendants are "marketing, distributing, using, selling, and offering to sell" the accused systems. (Compl. ¶46). The complaint does not plead specific facts to support the requisite knowledge and intent for these claims, such as referencing specific user manuals or marketing materials that instruct users on the allegedly infringing methods.
- Willful Infringement: The prayer for relief seeks enhanced damages for "knowing, deliberate, and willful" infringement. (Compl., Prayer for Relief ¶7). The complaint asserts that notice is effective "at least as early as the date of the filing of this Complaint," which provides a basis for alleging post-filing willfulness but does not allege pre-suit knowledge. (Compl., Prayer for Relief ¶7).
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 1990s context of telephone-based devices, be construed to cover the diverse array of modern IP-based scanners, multi-function peripherals, and pure software services accused in the complaint?
- A second key question will be technical and functional interpretation: what precisely is an "internet fax number" as claimed in the patent? The case may turn on whether this term requires a literal, dialable telephone number or if it can encompass a purely digital address book entry that maps to an email address.
- An overarching evidentiary question will be whether the plaintiff's uniform, boilerplate allegations can withstand scrutiny against twenty different defendants with varied product architectures. A central challenge for the plaintiff will be to demonstrate, with specific evidence for each accused system, that the distinct technologies all meet every limitation of the asserted claim in the same way.