Patents Infringement Actions in the Printing Industry

Hundreds of print executives opened letters this year to discover their companies were being accused of infringing patents. Owners of patents covering QR codes, scanning, computer-to-plate workflow, and on-line ordering all approached printers demanding licensing fees.

Most but not all of these owners are “patent trolls,” entities that purchase unused patents for the purpose of intimidating companies into paying fees. Patent trolls now account for the majority of infringement lawsuits in the United States. Companies are often shown no evidence of infringement (i.e., “Given the scope of our patents and what we read on your website, we believe there is a high likelihood that you are infringing”). Companies are threatened with litigation if they don’t pay the fee (more than 40 printers have been sued this year). Trolls choose to approach printers using technologies allegedly infringing their patents, rather than do battle with equipment and software providers.

Here is the patent infringement activity that Printing Industries of America is aware of. In two of these cases—SkipPrint and CTP Innovations—printers have been sued. In all but one of the other cases, we know of only a few printers that have received accusatory letters. By far, the greatest number of printers were accused by MPHJ Technology Investments (and its related shell companies).

Printing Industries of America will provide industry firms, especially our members, with current information on infringement accusations. If you have been similarly accused, or know of other actions not listed here, please alert Jim Workman by clicking here. You can also participate in our Patent Listserv and seek advice and share information with other printers that have been targeted by trolls.

Patent Owner (Lawfirm) U.S. Patent Technology Description
Standard Register, Markzware, Lykes Brothers (SkipPrint*/Maschoff Brennan) 5,666,493 5,963,641 6,076,080 7,050,995 7,058,596 Web-to-print, fulfillment, preflighting The combined patents describe the use of an on-line system for creating an electronic catalog, pricing and accepting orders, accepting payment, checking inventory, examing and correcting files, sending files to a print station, and preparing shipments.
MPHJ Technology Investments (Farney Daniels) 6,185,590
6,771,381
7,477,410
7,986,426

Scanned Images to Email Use of scanning equipment that sends scanned images directly to email on an internal network or an FTP/SFTP site. Petition to invalidate patents filed with USPTO by Xerox and Ricoh. Letters sent to printers by MPHJ since then references agreement with Canon and withdraws claims.
CreateAds (Bayard, P.A.) 5,535,320 Web-to-print Template-based visual design generation for creation of web to print materials.
NeoMedia Technologies (Global IP Law Group) 6,199,048 8,131,597 QR Code Use of an “indirect link”—using a short URL such as goo.gl, TinyURL, bitly or any other shortener in a QR Code.
RAH Color Technologies (Global IP Law Group) 19 patents Color management Techniques for the preservation, automated measurement, control, manipulation, and reproduction of color in digital systems. All invented by Dr. Richard Holub.
CTP Innovations (Baker Donelson) 6,611,349 6,738,155 Prepress, computer-to-plate Prepress workflows utilizing internal and external networks to generate "plate-ready files" and "plate-ready PDF files." Petitions to invalidate the patents filed with USPTO by Printing Industries of America.
SMS (O'Melveny & Myers) 8,260,629 8,429,093 QR Code Generating a personalized QR code, affixing the personalized QR code onto a mail object, storing related electronic data in a storage device, and providing the electronic data to a reception device (e.g., smart phone, etc.) in response to the reception device scanning the personalized QR code on a mail object.
ADgiants (Locke Lord) 8,271,507 Marketing management Web-based marketing and management system that connects printer with customers and agencies via Internet.

* SkipPrint is the exclusive licensee of the patents.

Download chart as a PDF file

Click here to view information on our Patent Listserv.

Published on Monday, August 19, 2013 (updated 06/03/2016)

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