DCT

2:18-cv-00165

OpenPrint LLC v. Xerox Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [OpenPrint LLC](https://ai-lab.exparte.com/party/openprint-llc) v. Xerox Corp, 2:18-cv-00165, E.D. Tex., 04/24/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in Lewisville, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s multifunction printers and related systems infringe ten patents related to fax-to-email communication, automated document transmission, and printing technologies.
  • Technical Context: The patents cover technologies for integrating traditional document handling, such as faxing and printing, with digital networks like email and the internet, a critical function for modern office equipment.

Case Timeline

Date Event
1996-10-15 Priority Date for U.S. Patent Nos. 6,023,345; 7,446,906; 8,547,601; 8,941,888
1997-04-10 Priority Date for U.S. Patent Nos. 6,381,313; 6,639,974
1998-07-22 Priority Date for U.S. Patent No. 6,442,595
1999-01-29 Priority Date for U.S. Patent No. 6,717,699
1999-04-30 Priority Date for U.S. Patent No. 6,618,820
1999-12-13 Priority Date for U.S. Patent No. 6,473,760
2000-02-08 Issue Date for U.S. Patent No. 6,023,345
2002-04-30 Issue Date for U.S. Patent No. 6,381,313
2002-08-27 Issue Date for U.S. Patent No. 6,442,595
2002-10-29 Issue Date for U.S. Patent No. 6,473,760
2003-09-09 Issue Date for U.S. Patent No. 6,618,820
2003-10-28 Issue Date for U.S. Patent No. 6,639,974
2004-04-06 Issue Date for U.S. Patent No. 6,717,699
2008-11-04 Issue Date for U.S. Patent No. 7,446,906
2013-10-01 Issue Date for U.S. Patent No. 8,547,601
2015-01-27 Issue Date for U.S. Patent No. 8,941,888
2018-04-24 Complaint Filing Date

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

U.S. Patent No. 6,023,345 - “Facsimile to E-Mail Communication System with Local Interface,” issued February 8, 2000

The Invention Explained

  • Problem Addressed: The patent describes the technical challenge of uniting "traditionally distinct message delivery systems such as facsimile delivery and electronic mail delivery" (’345 Patent, col. 1:19-22).
  • The Patented Solution: The invention provides a system where a "local interface" device works in concert with a remotely located server system ("FEM-GATEWAY") to convert a document scanned by a standard fax machine into a computer-readable image file, attach it to an email, and deliver it to a recipient over a data network like the Internet (’345 Patent, col. 2:9-29). The system architecture, depicted in Figure 1, bridges the public telephone network used by the fax machine with the email network used by the recipient (’345 Patent, Fig. 1).
  • Technical Importance: The technology provided a way to integrate the globally ubiquitous infrastructure of paper-based fax machines with the then-emerging ecosystem of internet-based electronic mail.

Key Claims at a Glance

  • The complaint asserts independent claim 13 (Compl. ¶12).
  • Claim 13 recites a communication system comprising:
    • a server in communication with a public communication network (PN) and a computer communications network;
    • a facsimile device for generating facsimile information; and
    • an interface device responsive to signals to facilitate communications between the facsimile device and the server, and to facilitate delivery of facsimile information from the facsimile device to an e-mail address.

U.S. Patent No. 6,381,313 - “Fax Routing System and Method Using Standard Fax Machine and Personal Computer,” issued April 30, 2002

The Invention Explained

  • Problem Addressed: The patent addresses the high cost of toll calls for sending faxes and the limitations of early internet faxing solutions that required special equipment (’313 Patent, col. 1:18-28).
  • The Patented Solution: The invention proposes a system where a "fax director" device intercepts the telephone number dialed by a standard fax machine (’313 Patent, col. 2:4-6). This number is looked up in a table on a connected personal computer; if a corresponding internet address is found, the fax is converted to a computer file and routed over the internet. If no match is found, the fax director connects the fax machine to the telephone line to complete a standard fax call (’313 Patent, col. 2:7-14).
  • Technical Importance: The invention offered a method for least-cost routing of faxes, automatically selecting between the traditional telephone network and the internet without requiring the user to change their workflow.

Key Claims at a Glance

  • The complaint asserts independent claim 13 (Compl. ¶15).
  • Claim 13 recites a system for directing a fax, comprising:
    • a storage system for storing records in a table, where each record contains (1) an identification code that is not the network address and (2) the network address; and
    • a processing system configured to receive the identification code, determine if a matching record exists, and direct the fax to the network address in the matching record.

U.S. Patent No. 6,442,595 - “Automated Electronic Document Transmission,” issued August 27, 2002

  • Technology Synopsis: The patent describes a method for transmitting an electronic document by detecting a user's selection of a file output (e.g., an "email" option), invoking a custom driver to generate and save the file in a conventional format, invoking an interface to prompt the user for an address and message, attaching the file, and transmitting the message (Compl. ¶19; ’595 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶18, ¶19).
  • Accused Features: The accused functionality involves users selecting an "email" option on the accused devices, which allegedly invokes a driver (e.g., "scan to pdf"), prompts for an address via an interface, and transmits the scanned document as an email attachment (Compl. ¶19).

U.S. Patent No. 6,473,760 - “Apparatus for Printing Information Automatically Combined From Two Different Sources,” issued October 29, 2002

  • Technology Synopsis: The patent discloses a computer-readable medium with instructions for automatically combining, without human intervention, a first portion of a print request (e.g., a master document) and a second portion (e.g., a variable document) into a printable format (Compl. ¶27; ’760 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶26, ¶27).
  • Accused Features: The accused functionality relates to Xerox digital presses that allegedly combine a "master document" with a "variable document" to generate a final print job (Compl. ¶27).

U.S. Patent No. 6,618,820 - “Method for Configuring an Application Server System,” issued September 9, 2003

  • Technology Synopsis: The patent describes a method for handling failures in a distributed application server system (a "farm system"). The method involves detecting that a job has failed on one system and, if the failure is not due to improper input, reassigning the job to another farm system under the control of a "master farmer system" (Compl. ¶33; ’820 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 are asserted (Compl. ¶32).
  • Accused Features: The accused devices (Xerox printers connected to a Nearstar Dataserver) allegedly detect when a print job fails on one printer and reassign the job to another printer in the system (Compl. ¶33, ¶34).

U.S. Patent No. 6,639,974 - “Fax Routing System and Method Using Standard Fax Machine and Personal Computer,” issued October 28, 2003

  • Technology Synopsis: This patent, related to the ’313 Patent, discloses a system co-located with a fax sender for directing a fax over the Internet. A storage and processing system receives an identification code that is not the Internet address, finds a matching record in a table, and directs the fax to the corresponding Internet address (Compl. ¶37; ’974 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 3, and 4 are asserted (Compl. ¶36).
  • Accused Features: The accused devices allegedly use an internal hard drive and processor to look up a recipient's Internet address based on an "identification code" (e.g., "Friendly Names") and route the fax accordingly (Compl. ¶37, ¶39, ¶40).

U.S. Patent No. 6,717,699 - “Method for Hybrid Printing,” issued April 6, 2004

  • Technology Synopsis: The patent discloses a "hybrid printing" method for digital printing. The method involves creating a "hybrid color set" comprising a selected spot color and a set of process colors, determining if the remaining design colors can be achieved with this hybrid set, and then printing the design using the spot color for the selected design color and the hybrid set for the remaining colors (Compl. ¶44; ’699 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 9 are asserted (Compl. ¶43).
  • Accused Features: The accused press devices allegedly use systems like PANTONE Commercial Color Matching to perform a hybrid printing method that combines spot and process colors (Compl. ¶44, ¶45).

U.S. Patent No. 7,446,906 - “Facsimile to E-Mail Communication System with Local Interface,” issued November 4, 2008

  • Technology Synopsis: This patent, related to the ’345 Patent, describes a method for a fax/email server system. The steps include receiving an email address from an interface, receiving fax information from a scanner, converting the fax information into an image file, composing an email with the file as an attachment, and transmitting the email (Compl. ¶48; ’906 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶47, ¶48).
  • Accused Features: The accused devices are alleged to perform the claimed method by allowing a user to enter an email address, scanning a document, converting it to a PDF/TIFF/JPEG file, attaching it to an email, and sending it (Compl. ¶48).

U.S. Patent No. 8,547,601 - “Facsimile to E-Mail Communication System,” issued October 1, 2013

  • Technology Synopsis: This patent, also related to the ’345 Patent family, claims an Internet-based server system. The system comprises a fax-to-email server that receives fax information and a destination email address (in alphanumeric form) from a fax device, converts the fax info into an image file, attaches it to an email, and sends it via a communication network (Compl. ¶55; ’601 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 17 are asserted (Compl. ¶54).
  • Accused Features: The accused devices are alleged to be an internet-based system where a user enters an email address at a control panel, and the device converts the scanned document, attaches it to an email, and sends it (Compl. ¶55, ¶57).

U.S. Patent No. 8,941,888 - “Facsimile to E-Mail Communication System with Local Interface,” issued January 27, 2015

  • Technology Synopsis: This patent claims a communications apparatus with a facsimile component for scanning, a user interface for receiving an email address, and a fax-to-email gateway. The gateway operates in a first mode to convert the scan to an image file and email it, and in a second mode to transmit a standard fax to a remote fax device (Compl. ¶60; ’888 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶59, ¶60).
  • Accused Features: The accused devices allegedly contain a fax portion for scanning, a user interface (touch pad or keypad), and a gateway that can either convert a scan to a file (PDF, TIFF, JPEG) and email it, or transmit a standard facsimile (Compl. ¶60).

III. The Accused Instrumentality

Product Identification

The complaint identifies three categories of accused products:

  1. Accused Fax-to-Email Devices: Xerox ITU-T T.37 Compliant Multifunction Printers, including the WorkCentre 5300, 5800, 5800i, 5900, 5900i, 7200, 7200i, 7800, 7900, and 7900i series (Compl. ¶12).
  2. Accused Press Devices: Various Xerox digital presses and printers, including the Xerox Color Engines, iGen, Color, Versant, AltaLink, and D-series models (Compl. ¶26).
  3. Accused Nearstar Devices: The Xerox WorkCentre 7800 series and other multifunction printers in combination with a Nearstar Dataserver (Compl. ¶32).

Functionality and Market Context

  • The complaint alleges these products provide integrated document management functionalities, including standard faxing, "Internet Fax" (fax-to-email), scanning, digital printing, and print job management (Compl. ¶13, ¶19, ¶27, ¶33).
  • The core accused functionality for the Fax-to-Email patents involves a user selecting an "Internet Fax" or "email" option on a multifunction printer, entering a recipient's email address, and having the device scan the document and transmit it as an email attachment over the internet (Compl. ¶13, ¶48, ¶55). No probative visual evidence provided in complaint.
  • For the printing patents, the accused functionality centers on combining static and variable data for print jobs and using hybrid color technologies (Compl. ¶27, ¶44).
  • For the server management patent, the accused functionality is the ability of a printer network to detect a failure in one device and re-route a job to another (Compl. ¶33).

IV. Analysis of Infringement Allegations

’345 Patent Infringement Allegations

Claim Element (from Independent Claim 13) Alleged Infringing Functionality Complaint Citation Patent Citation
A communication system for communicating... information found originally as an image on paper... The Accused Fax-to-Email Devices are a communication system for communicating information from a paper image, such as a fax. ¶13 col. 2:4-8
said system comprising: a server in communication with the PN and in communication with the computer network; The system comprises a server that communicates with the telephone network (PN) and the internet (computer network). ¶13 col. 2:10-14
a facsimile device for generating facsimile information from information found originally as an image on paper, said facsimile device communicating with PN; The accused devices have a facsimile component that generates fax information from a paper document and sends faxes over phone lines. ¶13 col. 4:25-27
an interface device responsive to signals received at said interface device to facilitate communications between said facsimile device and said server and to facilitate delivery of facsimile information from said facsimile device to an e-mail address associated with the computer network. When a user selects "Internet Fax" and provides an email address, the device facilitates the delivery of the facsimile information to that email address. ¶13 col. 2:29-38
  • Identified Points of Contention:
    • Scope Questions: A primary question may be one of structural mapping. Does the integrated hardware and software within a single Xerox multifunction printer satisfy the claim's requirements for three distinct components: a "server", a "facsimile device", and an "interface device"? The complaint's theory suggests an integrated system meets these limitations, which may be a point of dispute.
    • Technical Questions: The complaint alleges the devices "facilitate delivery" of facsimile information to an email address. What specific technical operations within the accused products correspond to the functions of the claimed "interface device", particularly its role in mediating communications between the "facsimile device" and the "server"?

’313 Patent Infringement Allegations

Claim Element (from Independent Claim 13) Alleged Infringing Functionality Complaint Citation Patent Citation
a storage system for storing a plurality of records in a table, each record containing: (1) an identification code identifying a recipient that can receive a fax at a network address that is not the identification code; and (2) the network address; The devices contain an internal hard drive (storage system) that stores records ("mailboxes") where an "identification code" (mailbox "Friendly Names") identifies a recipient at a "network address" (the mailbox itself). ¶16 col. 3:5-9
a processing system in communication with said storage system configured to: (1) receive the an identification code; (2) determine whether said storage system contains a matching record having the an identification code; and (3) direct the fax to the network address in the matching record if said storage system contains a matching record. The devices contain a processor configured for "Fax Forwarding to file destinations" which receives an identification code (e.g., email), determines if a matching record exists, and directs the fax to the network address in that record. ¶16 col. 4:38-51
  • Identified Points of Contention:
    • Scope Questions: The patent's specification consistently describes the "identification code" as a dialed telephone number that is intercepted and decoded (’313 Patent, col. 2:4-6). The complaint alleges the code is an "email" or "mailbox 'Friendly Names'" (Compl. ¶16). A central dispute will be whether the term "identification code" can be construed to encompass non-telephone-number identifiers as alleged.
    • Technical Questions: What is the specific technical operation of the accused "Fax Forwarding" feature? Does it perform the claimed three-step process of receiving one identifier, using it to look up a different network address in a stored table, and then directing the fax based on that lookup result?

V. Key Claim Terms for Construction

For the ’345 Patent

  • The Term: "interface device"
  • Context and Importance: The infringement analysis depends on whether the functionality within the accused multifunction printers can be characterized as a distinct "interface device" that facilitates communication between a "facsimile device" and a "server", as required by claim 13. Practitioners may focus on this term because the patent's primary embodiment depicts it as a separate physical unit, whereas the accused products are integrated systems.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the functions of the interface device could be integrated, stating that "In at least one alternate embodiment, the functions of the interface device are embedded into a conventional fax device" (’345 Patent, col. 2:44-46).
    • Evidence for a Narrower Interpretation: The preferred embodiment illustrated in Figure 1 and described in the specification shows the "interface device" (102) as a physically separate component from the "facsimile device" (106) (’345 Patent, Fig. 1; col. 4:5-7).

For the ’313 Patent

  • The Term: "identification code"
  • Context and Importance: The infringement theory for the '313 patent alleges that this term reads on email addresses or "Friendly Names" (Compl. ¶16). However, the patent specification describes the invention in the context of decoding a dialed telephone number. The construction of this term will be critical to determining if there is a literal match.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not explicitly restrict the "identification code" to a telephone number, stating only that it identifies a recipient at a network address "that is not the identification code" (’313 Patent, cl. 13).
    • Evidence for a Narrower Interpretation: The patent's Abstract and Detailed Description repeatedly frame the invention around intercepting and decoding a "dialed number" from a fax machine to determine the routing path (’313 Patent, Abstract; col. 5:29-33).

VI. Other Allegations

  • Indirect Infringement: The complaint includes a count for induced infringement of the ’595, ’906, ’699, and ’820 patents, alleging that Xerox induces its end-users and resellers to directly infringe (Compl. ¶65-66). This allegation is based on Xerox's affirmative acts of selling the accused devices and providing instruction manuals, advertisements, and support that allegedly instruct on the use of the infringing features (Compl. ¶69, ¶71). The complaint provides URLs to allegedly instructive user guides (Compl. ¶71).
  • Willful Infringement: The complaint alleges that Xerox has knowledge of the asserted patents "since the filing of the original complaint" and that its continued infringing conduct constitutes "knowledge or willful blindness to the fact that the induced acts would constitute infringement" (Compl. ¶70, ¶72). The prayer for relief requests a finding of an exceptional case and an award of attorneys' fees (Compl., Prayer for Relief ¶d).

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

  • A core issue will be one of component mapping: can the multi-part systems recited in several patents, which are often described as comprising physically or logically distinct components (e.g., "facsimile device", "interface device", "server"), be read onto the integrated architecture of a modern multifunction printer?
  • Another central issue will be one of definitional scope: can a claim term like "identification code", which the specification of the ’313 patent grounds in the context of a "dialed telephone number," be construed broadly enough to cover the "email addresses" and "Friendly Names" allegedly used by the accused systems?
  • A key evidentiary question will be one of functional correspondence: do the accused software features, such as "Fax Forwarding," perform the specific, multi-step logical processes required by the asserted claims, or is there a fundamental mismatch in their technical operation compared to what the patents disclose and claim?