2:17-cv-00188
Freeny v. Xerox Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Charles C. Freeny III, Bryan E. Freeny, and James P. Freeny (Texas)
- Defendant: Xerox Corporation (New York)
- Plaintiff’s Counsel: Banys, P.C.
- Case Identification: 2:17-cv-00188, E.D. Tex., 06/09/2017
- Venue Allegations: Venue is based on Defendant's alleged regular and established place of business within the district, such as an office in Lewisville, Texas, and alleged acts of patent infringement occurring within the district.
- Core Dispute: Plaintiff alleges that Defendant’s multifunction printers and associated wireless adapters infringe four patents related to proximity-based authorization, multi-protocol wireless communication, and integrated, modular machine systems.
- Technical Context: The dispute centers on the integration of wireless connectivity, user authentication, and multi-function capabilities (e.g., printing, scanning, networking) within modern office equipment.
- Key Procedural History: This First Amended Complaint follows an original complaint. For U.S. Patent No. 6,806,977, the complaint alleges pre-suit knowledge dating to at least January 5, 2006, based on the patent's citation as prior art during the prosecution of a patent application allegedly owned by Fuji Xerox Co., Ltd., which is described as a joint venture with Defendant. This allegation may form a basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-31 | Priority Date for ’977 and ’664 Patents |
| 1999-09-02 | Priority Date for ’443 and ’744 Patents |
| 2002-12-03 | U.S. Patent No. 6,490,443 Issues |
| 2004-10-19 | U.S. Patent No. 6,806,977 Issues |
| 2006-01-05 | Alleged date of Xerox knowledge of the ’977 Patent via prosecution |
| 2006-09-19 | U.S. Patent No. 7,110,744 Issues |
| 2007-11-27 | U.S. Patent No. 7,301,664 Issues |
| 2017-06-09 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,490,443 - “Communication and Proximity Authorization Systems”
The Invention Explained
- Problem Addressed: The patent describes the need for a system to allow multiple different types of wireless devices (e.g., cell phones, pagers from different service providers) to access a single public communication unit, like a pay phone or kiosk, without incurring airtime charges for the local connection (Compl. ¶ 25; ’443 Patent, col. 1:16-25).
- The Patented Solution: The invention proposes a "proximity service unit" equipped with a "multiple channel wireless transceiver." This transceiver can receive signals of at least two different types (e.g., Infrared, 900 Mhz) from various wireless devices that are within a certain proximity. A wireless device sends a "request authorization code" to the unit, which validates the code and then provides a predetermined service, such as connecting a phone call via a landline. (’443 Patent, Abstract; col. 6:55-68).
- Technical Importance: The technology aimed to create a universal access point for a growing ecosystem of disparate wireless devices, simplifying user interaction with public services and reducing communication costs. (’443 Patent, col. 1:16-49).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶ 29).
- Essential Elements of Claim 1:
- A proximity service unit for providing a predetermined service for multiple types of wireless devices.
- A multiple channel wireless transceiver capable of receiving at least two signal types.
- The transceiver receives a "request authorization code" from each wireless device.
- A proximity unit validation assembly validates the authorization codes.
- A legacy activation unit provides the predetermined service in response to a validated code.
U.S. Patent No. 7,110,744 - “Communication and Proximity Authorization Systems”
The Invention Explained
- Problem Addressed: The patent addresses the same technical environment as the ’443 Patent, focusing on enabling communication between a diverse set of devices within a certain proximity of each other (Compl. ¶ 40).
- The Patented Solution: The invention describes a "communication unit" that serves as a "front end unit," or access point, connecting multiple end-user devices to a larger public network like the Internet. This unit includes a multi-channel wireless transceiver that can simultaneously communicate with at least two devices using different types of "low power" wireless signals. (Compl. ¶ 40; ’744 Patent, col. 6:49-65).
- Technical Importance: This system provides a centralized bridge between local, short-range wireless devices and wide-area public networks, facilitating network access for multiple users and device types through a single access point. (Compl. ¶ 40).
Key Claims at a Glance
- The complaint asserts at least independent claim 18 (Compl. ¶ 44).
- Essential Elements of Claim 18:
- A communication unit connected to a public communication system.
- The unit is capable of detecting and servicing a plurality of wireless devices within a predetermined proximity distance by providing them access to the public system.
- The unit includes a multiple channel wireless transceiver that simultaneously communicates with at least two wireless devices using different types of low power communication signals.
U.S. Patent No. 6,806,977 - “Multiple Integrated Machine System”
Technology Synopsis
The patent describes a single device capable of performing the functions of multiple different digital machines, such as a PC, fax machine, printer, and scanner. This is achieved through a modular design managed by a "digital machine element grouping control unit" and "subgroup function control units" that combine different hardware and software elements to perform functions selected by the user. (Compl. ¶ 55).
Asserted Claims
At least independent claim 1 (Compl. ¶ 59).
Accused Features
The accused printers are alleged to be integrated systems that can perform as a "small office home office digital machine" (e.g., printing, copying), a "networking machine" (e.g., sharing resources on a network), and a "personal digital assistant machine" (e.g., storing contacts). The software and LCD touchscreen are alleged to constitute the claimed control units for selecting these functions. (Compl. ¶¶ 61-63).
U.S. Patent No. 7,301,664 - “Multiple Integrated Machine System”
Technology Synopsis
Similar to the ’977 Patent, this invention describes a single "mobile" device that integrates the functions of multiple digital machines, such as a "communication machine" and a "personal digital assistant machine." It also recites a "grouping control unit" and "subgroup function control units" to manage the different functions. (Compl. ¶ 75, 80).
Asserted Claims
At least independent claim 1 (Compl. ¶ 79).
Accused Features
The accused printers are alleged to be "mobile" systems based on their advertised compact dimensions and weight (Compl. ¶ 22, 81). They are accused of performing as a "communication machine" through faxing and email capabilities and as a "personal digital assistant machine" by storing user contacts. The touchscreen interface is again identified as the claimed control unit. (Compl. ¶¶ 81-83).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are various models of Xerox WorkCentre and ColorQube multifunction printers, when used alone or in combination with an accused Xerox Wireless Print Solutions Adapter (collectively, "the accused Xerox products") (Compl. ¶¶ 9-10).
Functionality and Market Context
The complaint alleges the accused Xerox products are multifunction devices that provide document processing functions including copying, printing, scanning, and faxing (Compl. ¶ 9). When combined with the wireless adapter, they can communicate wirelessly using multiple protocols, including IEEE 802.11 b, g, n, and ac, as well as Near Field Communication (NFC) (Compl. ¶ 12). The adapter is marketed as a way to "Add wireless connectivity to any Ethernet-compatible printer" (Compl. p. 3). The products also feature security and authorization functions that require users or devices to transmit identifying information, such as a user name or password, to access features (Compl. ¶ 13). Operation is managed through an LCD touchscreen that displays a "Home" screen from which a user can select functions like "Copy" or "E-mail," leading to submenus for that task (Compl. ¶¶ 18-20). A representative photo of this touchscreen interface is provided in the complaint (Compl. p. 9). The products are also alleged to be capable of connecting to remote servers and cloud services like Google Docs and Dropbox (Compl. ¶ 17). A diagram from a product brochure illustrates this cloud connectivity (Compl. p. 7).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,490,443 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] proximity service unit for providing at least one predetermined service for use with multiple types of wireless devices | The accused Xerox printers provide services such as document copying, printing, scanning, and faxing for use with devices like smartphones, tablets, and laptops. | ¶31 | col. 6:55-57 |
| a multiple channel wireless transceiver capable of receiving at least two signal types | The accused Xerox wireless adapter can receive multiple wireless signal types, including various IEEE 802.11 standards and NFC signals. | ¶32 | col. 6:58-59 |
| ...the unit providing a service in response to receiving a “request authorization code” from the wireless devices. | The accused Xerox products include a security feature that requires a wireless device to transmit identifying information (e.g., user name, password) to activate a service. | ¶32 | col. 7:1-3 |
Identified Points of Contention
- Scope Question: A potential dispute may arise over the term "request authorization code." The complaint equates this term with security credentials like a user name and password (Compl. ¶ 32). The patent, however, discusses this code in the context of a "pico pay phone" system where a user might be given a code after paying with a coin, suggesting a transactional, service-initiation function rather than a user-authentication function (’443 Patent, col. 8:24-30). This raises the question of whether a standard security login constitutes a "request authorization code" as contemplated by the patent.
U.S. Patent No. 7,110,744 Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] communication unit connected to a public communication system... | The accused Xerox products, when combined with a wireless adapter, can connect to the Internet, which is alleged to be a public communication system. | ¶46 | col. 6:49-50 |
| ...detecting a plurality of wireless devices and servicing each...when the wireless devices are within a predetermined proximity distance... | The accused wireless adapter can detect and service multiple wireless devices such as smartphones and tablets when they are within the wireless range of the adapter. | ¶46 | col. 6:51-56 |
| ...a multiple channel wireless transceiver simultaneously communicating with at least two wireless devices with different types of low power communication signals. | The accused wireless adapter can communicate with devices using multiple signal types, such as IEEE 802.11 standards and NFC, which are alleged to be low power signals. | ¶47 | col. 6:60-65 |
Identified Points of Contention
- Technical Question: The complaint alleges that Wi-Fi (IEEE 802.11) and NFC signals are "low power communication signals" (Compl. ¶ 47). The definition of "low power" is not provided and is a technical limitation that may be a central point of contention, requiring claim construction to determine if it encompasses the energy levels and ranges of standard Wi-Fi protocols.
V. Key Claim Terms for Construction
The Term: "request authorization code" (’443 Patent, Claim 1)
- Context and Importance: The infringement theory for the ’443 Patent hinges on mapping this term to the security login credentials (user name/password) required by the accused printers. Practitioners may focus on this term because its definition will determine whether a standard authentication mechanism falls within the scope of a claim seemingly directed at transactional service requests.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not restrict the code's purpose, referring generally to a code that requests authorization.
- Evidence for a Narrower Interpretation: The specification describes an embodiment where a customer paying by coin is given a "request authorization code" (e.g., number 0026) to enter later, framing it as a transactional token rather than a persistent user credential (’443 Patent, col. 8:24-30).
The Term: "mobile" (’664 Patent, Claim 1)
- Context and Importance: The complaint alleges that an office printer weighing 56 lbs. is "mobile" (Compl. ¶ 22; p. 12). The construction of this term is likely dispositive for the infringement claim regarding the ’664 patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "mobile," which could allow for an interpretation based on the device being movable or not permanently fixed, rather than strictly hand-portable.
- Evidence for a Narrower Interpretation: The context of related technologies discussed in patents from this family often includes personal, portable devices like PDAs and laptops, which may suggest that "mobile" implies a high degree of portability not possessed by a large office machine.
VI. Other Allegations
- Indirect Infringement: For all four patents-in-suit, the complaint alleges induced infringement. The basis for inducement is Defendant’s alleged activities of "instructing, encouraging, and directing its customers on the use of the accused Xerox products in an infringing manner" through its website, product brochures, and user manuals (Compl. ¶¶ 33-34, 48-49, 68-69, 84-85).
- Willful Infringement: The complaint alleges willful infringement of the ’977 Patent. The basis for this allegation is pre-suit knowledge, asserting that Xerox has known of the ’977 patent "since at least around January 5, 2006," when it was cited as relevant prior art by the USPTO during the prosecution of a patent application owned by Fuji Xerox Co., Ltd., which the complaint identifies as a joint venture involving Xerox (Compl. ¶¶ 64, 66-67, 72). For the ’443, ’744, and ’664 patents, knowledge is alleged based on the date of service of the original complaint in the action (Compl. ¶¶ 33, 48, 84).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms rooted in the context of early 2000s technology, such as "request authorization code" from a public kiosk system and "mobile" integrated devices, be construed to encompass the functionally distinct features of a modern, networked office printer, such as its standard user authentication and its physical transportability?
- A key evidentiary question will be one of technical and functional correspondence: does the software and user interface of the accused printers—which allow a user to select from a menu of distinct, pre-programmed tasks like 'copy' or 'scan'—perform the specific function of a "grouping control unit" that combines "different digital machine elements to form different digital machines," as required by the '977 and '664 patents, or is there a fundamental mismatch in technical operation?
- A central question for damages will be one of willfulness and imputed knowledge: can knowledge of the ’977 patent be imputed to Xerox from a 2006 patent office action involving a joint venture entity, Fuji Xerox? The determination of this issue will be critical to the plaintiff's claim for willful infringement and potential enhanced damages.