Infinity Computer Products, Inc. v. Lexmark International, Inc.

MOTION to Dismiss for Lack of Prosecution and Comply with Court Orders and Memorandum in Support

E.D. Pa.June 15, 2017

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA INFINITY COMPUTER PRODUCTS, INC., Plaintiff, v. LEXMARK INTERNATIONAL, INC., Defendant. : : : : : : : : : : : : : Civil Action No. 2:12-cv-06799-LDD Judge: Hon. Legrome D. Davis DEFENDANT LEXMARK INTERNATIONAL, INC.’S MOTION TO DISMISS FOR FAILURE TO PROSECUTE AND COMPLY WITH COURT ORDERS Pursuant to Federal Rule of Civil Procedure 41(b), Defendant Lexmark International, Inc. (“Lexmark”) hereby moves for the case to be dismissed with prejudice because Plaintiff Infinity Computer Products, Inc. (“Infinity”) has failed to prosecute the case and has failed to comply with court orders. The grounds for Lexmark’s Motion are set forth in the accompanying Memorandum of Law filed with this Motion. It has been over three years since Infinity has been represented by counsel in the case and since Infinity has filed a proper status report with the court, despite court orders requiring Infinity to retain counsel and file regular status reports. Even though the last patent in reexamination exited reexamination over seven months ago, Infinity has taken no action to lift the stay and continues to ignore the court’s order, issued more than three-and-a-half years ago, to “promptly” retain new litigation counsel. It is apparent that Infinity has used the litigation simply to burden defendant with attorney fees while seeking to avoid such fees itself. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 1 of 21 2 DATED: June 15, 2017 Respectfully submitted, By: /s/ Timothy C. Meece Timothy C. Meece V. Bryan Medlock, Jr. Michael J. Harris BANNER AND WITCOFF, LTD. TEN SOUTH WACKER DRIVE SUITE 3000 CHICAGO, IL 60606 312-463-5000 Email: tmeece@bannerwitcoff.com; mharris@bannerwitcoff.com Bradley C. Wright BANNER & WITCOFF, LTD. 1100 - 13TH ST NW STE 1200 WASHINGTON, DC 20005-4051 202-824-3000 Email: bwright@bannerwitcoff.com Paul Keneddy PEPPER HAMILTON LLP 3000 TWO LOGAN SQUARE 18TH & ARCH STREETS PHILADELPHIA, PA 19103 215-981-4194 Email: kennedyp@pepperlaw.com Attorneys for Defendant LEXMARK INTERNATIONAL, INC. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 2 of 21 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA INFINITY COMPUTER PRODUCTS, INC., Plaintiff, v. LEXMARK INTERNATIONAL, INC., Defendant. : : : : : : : : : : : : : Civil Action No. 2:12-cv-06799-LDD Judge: Hon. Legrome D. Davis DEFENDANT LEXMARK INTERNATIONAL, INC.’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO DISMISS FOR FAILURE TO PROSECUTE AND COMPLY WITH COURT ORDERS Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 3 of 21 i TABLE OF CONTENTS Page I. BACKGROUND ............................................................................................................. 1 II. APPLICABLE LAW ....................................................................................................... 3 III. APPLICATION OF THE POULIS FACTORS FAVOR DISMISSAL ............................. 4 A. Poulis Factor No. 1: Infinity is Personally Responsible for Its Failure to Prosecute and Follow Court Orders ......................................................................5 B. Poulis Factor No. 2: Infinity Prejudiced Lexmark By Placing All Burdens of Litigation on Lexmark .....................................................................................5 C. Poulis Factor No. 3: Infinity’s Conduct Shows a Pattern of Dilatoriness..............7 D. Poulis Factor No. 4: Infinity Has Willfully Refused to Prosecute and Ignored Court Orders ...........................................................................................8 E. Poulis Factor No. 5: Other Sanctions Are Unlikely to Be Effective .....................9 F. Poulis Factor No. 6: Infinity’s Claims Are Without Merit ................................. 10 1. Infinity Cannot Prove Infringement ........................................................ 10 2. Infinity’s Patents Face Significant Invalidity Challenges ........................ 12 3. Intervening Rights Severely Limit Any Potential Damages ..................... 12 IV. THE CASE SHOULD BE DISMISSED BECAUSE INFINITY IS NOT REPRESENTED BY COUNSEL ................................................................................ 13 V. CONCLUSION ............................................................................................................. 14 Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 4 of 21 ii TABLE OF AUTHORITIES Page(s) Cases Adams v. Trs. of N.J. Brewery Emps.’ Pension Trust Fund, 29 F.3d 863 (3d Cir. 1994) ................................................................................................ 4, 9 Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247 (Fed. Cir. 1997) ............................................................................................ 13 Bowling v. Hasbro, Inc., 403 F.3d 1373 (Fed. Cir. 2005) .............................................................................................. 4 Briscoe v. Klaus, 538 F.3d 252 (3d Cir. 2008) .................................................................................................. 7 Guidotti v. Colvin, No. 15-186J, 2017 WL 354121 (W.D. Pa. Jan. 23, 2017)....................................................... 8 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) ............................................................................................ 12 Hoxworth v. Blinder, Robinson & Co., 980 F.2d 912 (3d Cir. 1992) ................................................................................................ 10 Infinity Computer Prod., Inc. v. Brother Int’l Corp., 909 F. Supp. 2d 415 (E.D. Pa. 2012)...................................................................................... 1 J & P Recovery, Inc. v. R.C. Dolner, Inc., No. 00-5761, 2002 WL 1774058 (E.D. Pa. Aug. 1, 2002) ............................................. passim Lyell Theatre Corp. v. Loews Corp., 682 F.2d 37 (2d Cir. 1982) .................................................................................................... 6 Mendelsohn, Drucker, & Assocs., P.C. v. Titan Atlas Mfg., Inc., No. 12-0453, 2013 WL 1842124 (E.D. Pa. May 2, 2013) ...................................................... 7 Mindek v. Rigatti, 964 F.2d 1369 (3d Cir. 1992)........................................................................................... 6, 10 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................................................................ 12 Poulis v. State Farm Fire & Cas. Co., 747 F.2d 863 (3d Cir. 1984) ......................................................................................... passim Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 5 of 21 iii Qadr v. Overmyer, 642 F. App’x 100 (3d Cir. 2016) ....................................................................................... 4, 9 Shipman v. Delaware, 381 F. App’x 162 (3d Cir. 2010) ..................................................................................... 5, 14 Shockley v. Arcan, Inc., 248 F.3d 1349 (Fed. Cir. 2001) ............................................................................................ 14 Tallard Techs., Inc. v. IProvide Grp., Inc., No. 2004-101, 2013 WL 2319418 (D.V.I. May 22, 2013) .................................................... 14 Wayne-Gossard Corp. v. Sondra, Inc., 434 F. Supp. 1340 (E.D. Pa. 1977), aff’d sub nom. Wayne-Gossard Corp. v. Sondra Mfg. Co., 579 F.2d 41 (3d Cir. 1978) ....................................................................... 13 Statutes 35 U.S.C. § 252 ......................................................................................................................... 13 35 U.S.C. § 307(b) .................................................................................................................... 13 Other Authorities 1 Pa. Code § 136 ......................................................................................................................... 7 Federal Rule of Civil Procedure 41(b) ................................................................................. 1, 4, 9 Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 6 of 21 1 Defendant Lexmark International, Inc. (“Lexmark”) hereby moves for the case to be dismissed with prejudice pursuant to Federal Rule of Civil Procedure 41(b), because Plaintiff Infinity Computer Products, Inc. (“Infinity”) has failed to prosecute the case and has failed to comply with court orders.1 Federal Rule of Civil Procedure 41(b) provides for involuntary dismissal: “If the plaintiff fails to prosecute or to comply with these rules or any order of court, a defendant may move to dismiss the action or any claim against it.” Dismissal is appropriate here both because Infinity has failed to prosecute the case and because Infinity has not complied with court orders. I. BACKGROUND On June 30, 2010, Infinity filed a patent infringement suit, alleging fifteen different entitiesinfringed one or more claims of two patents. Infinity Computer Prod., Inc. v. Brother Int’l Corp., 909 F. Supp. 2d 415, 417 (E.D. Pa. 2012). On April 13, 2011, the various entities moved to sever the Complaint into separate causes of action and further moved for a stay of the case because the two patents had been put into reexamination. Id. The court granted the stay and put the case into civil suspense. Id. On November 16, 2012, after Infinity substantially amended the patents to survive reexamination, the court severed the Complaint into separate actions against each defendant.2 Id. 1 On June 7, 2017, Xerox and Canon filed substantively similar motions to the one Lexmark presents here in their parallel cases, Infinity Computer Products, Inc. v. Xerox Corp., 2:12-cv- 06804-LDD and Infinity Computer Products, Inc. v. Canon USA, Inc., 2:12-cv-06800-LDD. 2 The following is a list of the parallel Infinity cases: Infinity Computer Products, Inc. v. Toshiba America Business Solutions, Inc., 2:12-cv-06796-LDD; Infinity Computer Products, Inc. v. Oki Data Americas, Inc., 2:12-cv-06797-LDD; Infinity Computer Products, Inc. v. Samsung Electronics America, Inc., 2:12-cv-06798-LDD; Infinity Computer Products, Inc. v. Epson America, Inc., 2:12-cv-06806-LDD; Infinity Computer Products, Inc. v. Canon USA, Inc., 2:12- cv-06800-LDD; Infinity Computer Products, Inc. v. Konica Minolta Business Solutions, U.S.A., Inc., 2:12-cv-06802-LDD; Infinity Computer Products, Inc. v. Panasonic Corp. of North America, 2:12-cv-06803-LDD; Infinity Computer Products, Inc. v. Xerox Corp., 2:12-cv-06804- Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 7 of 21 2 Infinity filed this action against Lexmark on December 5, 2012 asserting the same patents from the original case and adding two additional patents that had issued since the original case was first filed. (Declaration of Timothy C. Meece (“Meece Decl.”), Ex. A; Dkt 1.) On March 22, 2013, a defendant in one of the related actions, Ricoh Americas Corporation, filed successful requests with the USPTO to put all four patents into reexamination. On April 15, 2013, Lexmark filed a motion to stay pending these reexaminations. (Dkt. No. 25.) On April 30, 2013, the court granted the motion to stay, put the case into civil suspense, and ordered the parties to file regular status reports during the reexamination and at the end of the reexaminations. (Dkt. No. 29.) On July 12, 2013, shortly after the case was stayed, Infinity’s Counsel made a Motion to Withdraw as Attorney for Plaintiff, which the court denied. (Dkt. Nos. 31, 32.) On November 18, Infinity’s Counsel made a second Motion to Withdraw as Attorney for Plaintiff, which the court granted. (Dkt. Nos. 37, 38.) In granting the motion on November 22, 2013, the court ordered Infinity to “promptly retain new counsel.” (Dkt. No. 38, emphasis added.) The court also explained that a corporate party cannot represent itself “pro se,” but must be represented in court by counsel. That was more than three-and-a-half years ago. Infinity has flouted this court’s orders and ignores them to this day. Infinity has never retained new litigation counsel and stopped filing status reports more than three years ago in an apparent attempt to obscure from the court its failure to obtain new litigation counsel. In the ensuing three years, despite its obvious ability to hire attorneys for other purposes, Infinity has ignored the court’s orders and has refused to retain new litigation counsel or file any status reports with the court. Even after the last of the patents in reexamination exited reexamination LDD; Infinity Computer Products, Inc. v. Hewlett-Packard Co., Inc., 2:12-cv-06805-LDD; Infinity Computer Products, Inc. v. Ricoh Americas Corp., 2:12-cv-06807-LDD; and Infinity Computer Products, Inc. v. Dell, Inc., 2:12-cv-06808-LDD. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 8 of 21 3 on October 25, 2016, Infinity did nothing to activate the litigation or inform the court of the changed status of reexamination. Infinity has not only failed to retain counsel, but also has not shown any indication that it plans to do so. Prior to filing this motion, litigation counsel for Lexmark attempted to ascertain if Infinity is now represented by any litigation counsel, but none could be found. (Meece Decl., Exs. C, D.) Just prior to this filing, Infinity filed a “pro se” ex- parte status update with the court. (Meece Decl. Ex. E.) Infinity continues its failure to appear in this case through counsel. (Meece Decl., ¶¶ 6-7.) Accordingly, as a result of Infinity’s long- standing failure to comply with this Court’s Orders and willful failure to prosecute this action, Lexmark now files this motion. II. APPLICABLE LAW Because this is a patent case, the law of the Court of Appeals for the Federal Circuit normally applies. However, because a rule 41(b) Motion to Dismiss involves procedural matters unrelated to patent law, the law of the regional Court of Appeals applies, here the United States Court of Appeals for the Third Circuit. Bowling v. Hasbro, Inc., 403 F.3d 1373, 1375 (Fed. Cir. 2005) (applying the regional Ninth Circuit law in reviewing an appeal of a Rule 41(b) Motion to Dismiss from the District of Arizona). A district court in the Third Circuit must weigh six factors when considering a Rule 41(b) motion: “(1) the extent of the party’s personal responsibility; (2) the prejudice to the adversary caused by the failure to meet scheduling orders and respond to discovery; (3) a history of dilatoriness; (4) whether the conduct of the party or the attorney was willful or in bad faith; (5) the effectiveness of sanctions other than dismissal, which entails an analysis of alternative sanctions; and (6) the meritoriousness of the claim or defense.” Poulis v. State Farm Fire & Cas. Co., 747 F.2d 863, 868 (3d Cir. 1984) (emphasis in original). “There is no magic formula or mechanical calculation for balancing the Poulis factors, and a District Court need not find all Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 9 of 21 4 of the factors satisfied in order to dismiss a complaint.” Qadr v. Overmyer, 642 F. App’x 100, 102-03 (3d Cir. 2016) (internal citation and quotations omitted). Failure to prosecute does not require that the plaintiff “have taken any positive steps to delay the trial or prevent it from being reached by operation of the regular machinery of the court. It is quite sufficient if [plaintiff] does nothing, knowing that until something is done there will be no trial.” Adams v. Trs. of N.J. Brewery Emps.’ Pension Trust Fund, 29 F.3d 863, 875 (3d Cir. 1994). The six Poulis factors support dismissal of Infinity’s case. And “when a litigant’s conduct makes adjudication of the case impossible, such balancing under Poulis is unnecessary” to dismiss the case. Shipman v. Delaware, 381 F. App’x 162, 164 (3d Cir. 2010). Adjudication of the case is impossible because Infinity lacks counsel. In addition, the six Poulis factors also support dismissal of Infinity’s case. III. APPLICATION OF THE POULIS FACTORS FAVOR DISMISSAL The Poulis factors favor dismissal of Infinity’s case. In particular, Infinity has shown a history of dilatoriness, engaged in willful conduct in failing to prosecute the case or comply with court orders, and has had personal responsibility for these failures. Given Infinity’s current failure to follow court orders, and refusal to retain counsel in violation of the court’s orders, dismissal is the only effective sanction. Finally, Infinity’s case lacks merit, which also explains why Infinity has chosen to remain passively on the sidelines. This case draws strong parallels with J & P Recovery, Inc. v. R.C. Dolner, Inc., No. CIV.A. 00-5761, 2002 WL 1774058 (E.D. Pa. Aug. 1, 2002). In J & P, after the corporate plaintiff filed its complaint and the defendants answered, plaintiff’s counsel attempted to withdraw because plaintiff failed to pay his legal fees, but the court denied the initial withdrawal request. Id. at *1. The court later granted a renewed motion to withdraw by plaintiff’s counsel because the plaintiff continued to not pay his counsel’s fees or provide assurances that counsel would be paid. Id. In granting the withdrawal, the court ordered plaintiff to retain new counsel: Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 10 of 21 5 “Plaintiff was advised by the court of the obligation of a corporation to appear in federal court through counsel and cautioned that the failure to do so would subject its claims to dismissal and subject it to a default judgment on defendants' counterclaim.” Id. After several months, plaintiff had still not retained counsel, so the defendants filed a motion to dismiss for failure to prosecute, which the court granted. Id. at *2. In J & P, the court applied the Poulis factors and found dismissal appropriate where plaintiff failed to retain counsel for nearly six months, in violation of the court’s order. Id. Here, Infinity has failed to comply with a court order to retain counsel for well over three-and-a-half years, and has not even retained counsel in over seven months since the patents exited reexaminations. As with J & P, dismissal of Infinity’s case is appropriate. A. Poulis Factor No. 1: Infinity is Personally Responsible for Its Failure to Prosecute and Follow Court Orders Infinity has complete control over its ability to retain counsel over the past three-plus years, yet refused to do so. See J & P, 2002 WL 1774058, at *1 (“Plaintiff bears sole responsibility for the failure to appear through counsel as ordered.”). This is not a case where Infinity was not able to prosecute the case due to matters beyond its control. Dismissal may be the only choice when “confronted with litigants who flagrantly violate or ignore court orders….” Mindek v. Rigatti, 964 F.2d 1369, 1375 (3d Cir. 1992). Infinity has offered no excuse or explanation for its failure to comply with the court’s orders and for abandoning this case. Infinity has effectively maintained a cloud of litigation over Lexmark without fulfilling its obligations to the court or bearing any of the costs associated with litigation. As a consequence, the first Poulis factor favors dismissal of this case. B. Poulis Factor No. 2: Infinity Prejudiced Lexmark By Placing All Burdens of Litigation on Lexmark Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 11 of 21 6 Infinity’s failure to prosecute this case and its blatant disregard of court orders prejudiced Lexmark. “Plaintiff’s duty to due diligence is imposed because of the strong policy favoring prompt disposition of cases. Prejudice to defendants resulting from unreasonable delay may be presumed.” Lyell Theatre Corp. v. Loews Corp., 682 F.2d 37, 43 (2d Cir. 1982). In addition to the presumptive prejudice to Lexmark by Infinity’s unreasonable delay, Infinity has also advantageously used the court system to require Lexmark to pay the ongoing costs of litigation: retaining counsel to monitor the reexaminations, and monitor the appeals to the Patent Trial and Appeal Board (PTAB). Prejudice includes “excessive and possibly irremediable burdens or costs imposed on the opposing party.” Briscoe v. Klaus, 538 F.3d 252, 259 (3d Cir. 2008). Lexmark is further prejudiced by not being able to obtain a resolution to its counterclaims due to Infinity’s avoidance. See J & P, 2002 WL 1774058. As Lexmark continues to accumulate irremediable maintenance costs associated with defending an unresolved and open case, Infinity does nothing. Thus, Infinity has consumed court resources and forced Lexmark to incur defense costs. At the same time, Infinity has unfairly benefited by avoiding the costs of retaining litigation counsel.3 Finally, as revealed by Infinity’s most recent “pro se” filing, Infinity has attempted to engage the court in ex-parte communications. (Meece Decl. Ex E.) Infinity never served its June 3, 2017 “pro se” status update on Lexmark, despite sending it to the court. Further, Lexmark has never even seen Infinity’s “letter of December 1, 2016” to the court referenced in that update. (See Meece Decl. Ex. E.) Such attempts at ex parte communication in violation of Pennsylvania Code further illustrate the prejudice to Lexmark of Infinity proceeding without counsel. See 1 Pa. Code § 136. 3 A corporate representative of Infinity, without litigation counsel, has recently contacted a corporate representative of Lexmark. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 12 of 21 7 Dismissal of Infinity’s case is also appropriate here for public benefit. Infinity’s failure “to be represented by counsel creates a burden on the judicial system that impedes the efficient flow of litigation.” See Mendelsohn, Drucker, & Assocs., P.C. v. Titan Atlas Mfg., Inc., No. 12- 0453, 2013 WL 1842124, at *6 (E.D. Pa. May 2, 2013). “Even if there was no prejudice, however, default judgments can be warranted ‘for reasons of deterrence and punishment’ alone.” Id. (citing and quoting Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1179 n.15 (3d Cir. 1993)). Entering a judgment against Infinity serves a valuable deterrent function to prevent corporations from retaining counsel to initiate a case with no intent to pay them. Id. Further, dismissal would deter corporate plaintiffs from abusing the court system for negotiating leverage; permitting Infinity to get away with no counsel for nearly three-and-a-half years in violation of a court order would signal to corporate plaintiffs that they can avoid the costs of retaining counsel while burdening defendants with those costs, achieving unfair settlement leverage in negotiations. For these reasons, the second Poulis factor favors dismissal of this case. C. Poulis Factor No. 3: Infinity’s Conduct Shows a Pattern of Dilatoriness Infinity has shown a pattern of dilatoriness by failing to retain counsel for over three years and by failing to file court-ordered status reports regarding the reexamination of Infinity’s patents. Patterns of delay and refusal to follow court orders are appropriate grounds for dismissal. Guidotti v. Colvin, No. 15-186J, 2017 WL 354121, at *1 (W.D. Pa. Jan. 23, 2017) (dismissing case after nearly six months of delay and failure to follow court orders); J & P, 2002 WL 1774058. For over three years, Infinity has flouted this court’s orders by continuously refusing to retain counsel in violation of the court order. In doing so, Infinity has also repeatedly failed to file status reports with the court, further showing a pattern of dilatoriness. Infinity has shown a repeated pattern of avoiding required costs by refusing to pay prior counsel, refusing to Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 13 of 21 8 retain new counsel, refusing to file status reports, and by abandoning the case for over three years. Infinity claims as an excuse that “no law firm was willing to make a commitment” until after completion of the reexams.” (Meece Decl. Ex. E.) Yet Infinity did not ask the court for relief or extended time to retain counsel, but instead unilaterally claimed this relief for itself. Further, Infinity does not explain why it did not have counsel lined up and ready to go when the patents exited reexamination, and instead has dallied for over seven months since then in finding litigation counsel. Infinity claims it has been challenging to find a firm that did not have conflicts with one of the defendants, yet this “challenge” could have been easily resolved during the years of reexaminations and is no excuse for Infinity’s egregious delays in moving the case forward. To have its case dismissed, Infinity need not “have taken any positive steps to delay the trial or prevent it from being reached by operation of the regular machinery of the court. It is quite sufficient if [plaintiff] does nothing, knowing that until something is done there will be no trial.” Adams v. Trs. of N.J. Brewery Emps.’ Pension Trust Fund, 29 F.3d 863, 875 (3d Cir. 1994). Therefore, the third Poulis factor also favors dismissal of this case. D. Poulis Factor No. 4: Infinity Has Willfully Refused to Prosecute and Ignored Court Orders Infinity has willfully ignored court orders by failing to promptly retain new counsel and by failing to file status reports. Refusal to follow court orders provides grounds for dismissal. Qadr v. Overmyer, 642 F. App’x 100, 102 (3d Cir. 2016) (affirming Rule 41(b) dismissal where plaintiff failed to comply with court orders). The court unambiguously ordered Infinity to “promptly retain new counsel,” and yet it has not done so for over three years. (Dkt. No. 32 Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 14 of 21 9 (emphasis added).) In giving that order, the court also explained that a corporate party cannot represent itself “pro se,” but must be represented in court by counsel. Id. Infinity cannot claim that it thought it was absolved of the need to retain counsel when the court put the case into civil suspense on May 15, 2013, because the court ordered Infinity to “promptly retain new counsel” on November 21, 2013. (Dkt. No. 38.) In addition, the court denied the first attempt by Infinity’s counsel to withdraw on July 16, 2013 despite his diminished role in the proceedings and Infinity failing to pay its counsel. (Dkt. No. 32.) This should have further impressed upon Infinity the requirement of having corporate representation when engaged in litigation. Infinity has now violated this order for over three-and-a-half years. In failing to retain counsel, Infinity has further willfully failed to file status reports, despite the court’s order that it do so. (Dkt. No. 38.) And now, with the patents out of reexamination for over seven months, Infinity continues to have no counsel to advance the case, content to let it linger as a cloud over Lexmark. Such circumstances warrant dismissal with prejudice. See J & P, 2002 WL 1774058; see also Hoxworth v. Blinder, Robinson & Co., 980 F.2d 912, 918 (3d Cir. 1992) (finding default judgment against party proper where party failed to comply with unambiguous orders to obtain new counsel). As a consequence, the fourth Poulis factor favors dismissal of this case. E. Poulis Factor No. 5: Other Sanctions Are Unlikely to Be Effective Dismissal is the only sanction likely to be effective against Infinity because Infinity has shown it is willing to ignore the court’s orders. “The district courts cannot, and should not, tolerate unjustifiable delays and expenditure of irreplaceable judicial resources caused by litigants, pro-se or represented, who will not obey court orders.” Mindek, 964 F.2d. at 1375. This case should be no exception. Infinity has glibly ignored the court’s order to “promptly retain Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 15 of 21 10 new counsel” prepared to carry a patent infringement suit forward.4 For over seven months now since the reexaminations ended, Infinity has not engaged the court system to resolve this dispute. The only sanction left to the court to resolve the matter is to dismiss the case. Therefore, the fifth Poulis factor favors dismissal of this case. F. Poulis Factor No. 6: Infinity’s Claims Are Without Merit Although the above Poulis factors on their own are sufficient to warrant dismissal, the merits of Infinity’s case are so weak that this Poulis factor also weighs heavily in favor of dismissal. First, Infinity’s patent infringement case is meritless because Infinity’s patents only cover modifications to a conventional facsimile machine to allow the conventional facsimile machine to also be used as a printer or scanner for a PC. Infinity accuses Lexmark’s “Pro 715 product and similar multi-function products” of infringing the Asserted Patents.5 (Meece Decl., Ex. A ¶ 25.) Yet Lexmark’s Pro 715 product and similar multifunction printers do not fit the claimed scope of the Asserted Patents. (Meece Decl., Ex. F.) Second, there is prior art, not raised in any of the examinations which will invalidate Infinity’s patents. Finally, because Infinity substantively amended all of its claims in reexamination in order to avoid prior art, intervening rights apply such that Infinity cannot obtain damages for any products defendant sold prior to issuance of the reexamination certificates, even if those products were found to infringe. The potential damages Infinity could recover no longer justify the time and cost of prosecuting this case. It is apparent that Infinity has elected not to prosecute this case because it lacks merit. 1. Infinity Cannot Prove Infringement 4 In allowing plaintiff’s prior counsel to withdraw, the court noted that Infinity’s prior counsel was “not well-versed in patent matters and [was] serving a perfunctory role in the litigation.” (Dkt. No. 38). 5 U.S. Patent Nos. 6,894,811, 7,489,423, 8,040,574, and 8,294,915 (collectively the “Asserted Patents”). Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 16 of 21 11 Lexmark’s multifunction printers do not infringe any of Infinity’s patents because Lexmark’s multifunction printers are not conventional facsimile machines which have been modified or manipulated to behave as a printer or scanner. Yet that is exactly what is claimed in Infinity’s patents. The claims of the patents are read “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). When the specification describes some aspect of the patent as “this invention” or “the present invention,” that is binding on all of the claims. See Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006). U.S. Patent No. 6,894,811 (the “’811 Patent”) states “FIG. 1 is a circuit diagram of the interface circuitry of the present invention which enables a PC to utilize a conventional facsimile as a sophisticated scanner or printer.”6 (Meece Decl., Ex. G, col. 2 l. 30- 33 (emphasis added).) Lexmark’s multifunction printers are not conventional facsimile machines. Lexmark’s multifunction printers do not require some specialized circuitry to enable a PC to print, copy, scan, and send facsimiles using a machine that could otherwise only be used to send facsimiles. In describing the background technology, the Asserted Patents admit that “[i]t has been recognized that conventional facsimile machines may be utilized as scanners or printers for PCs.” (Meece Decl., Ex. G, col. 1 l. 31-32 (emphasis added).) In describing its solution at a high level, the Asserted Patents state “[i]t is, therefore, a principal object of the present invention to provide a circuit for interfacing a PC and a facsimile to enable the facsimile to be utilized as a scanner or a printer for a PC and to accomplish all of the objectives of a scanner or a printer in a 6 The other Asserted Patents largely have the same specification including all the portions cited in this brief. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 17 of 21 12 simple straightforward manner through the use of a circuit of highly simplified design and low cost.” (Meece Decl., Ex. G, col. 1 l. 39-44.) Once more, the accused Lexmark multifunction printers are not conventional facsimile machines with circuitry enabling a PC to use the facsimile functionality to print or scan. This exemplifies just one of the serious problems with Infinity’s infringement case. It also demonstrates how Infinity’s case lacks merit. 2. Infinity’s Patents Face Significant Invalidity Challenges In addition to lack of infringement, Infinity’s case is also meritless because the Asserted Patents may still be invalidated by prior art. Additional prior art not argued before the U.S. Patent Office in either the original examination or any reexamination can invalidate all of the claims of Infinity’s patents, either on its own, or when combined with other references. Prior art references include patents on both conventional fax machines with additions enabling printing and scanning, and patents on multifunctional devices more similar to Lexmark’s multifunction printers. 3. Intervening Rights Severely Limit Any Potential Damages This case is also meritless because any potential damages have been substantially limited by intervening rights. Intervening rights apply to reissued patents and protect against claims of infringement from before the patent reissued unless “the claims of the original and reissued patents are substantially identical.” 35 U.S.C. § 252. Intervening rights apply to reexamined patents with the same effect as for reissued patents. 35 U.S.C. § 307(b). A claim is considered substantially identical only if its scope did not change during reexamination. Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1250 (Fed. Cir. 1997). “The doctrine of intervening rights applies to narrowing reissue patents as well as broadening reissue patents.” Wayne-Gossard Corp. v. Sondra, Inc., 434 F. Supp. 1340, 1352 (E.D. Pa. 1977), aff’d sub nom. Wayne-Gossard Corp. v. Sondra Mfg. Co., 579 F.2d 41 (3d Cir. 1978). Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 18 of 21 13 All of the claims in the Asserted Patents were amended in reexamination to avoid prior art, substantively changing the scope of the claims such that absolute intervening rights apply, eliminating any potential damages prior to issuance of the reexamination certificates. (See, e.g., Meece Decl., Ex. H (showing all independent claims amended by reexamination).) Further, because defendant had made substantial preparation to make and sell its products prior to issuance of the reexamination certificates, potential damages may be eliminated completely, because “[e]quitable intervening rights also explicitly extend protections for continued manufacture, thus extending protection to articles not yet in existence at the time of the reissue.” Shockley v. Arcan, Inc., 248 F.3d 1349, 1360 (Fed. Cir. 2001). Finally, all the patents have expired at this point, cutting off any potential ongoing damages. The diminished potential damages further explains Infinity’s willful avoidance in prosecuting the case forward. Because of the multiple weaknesses on the merits, the sixth Poulis factor also favors dismissal of this case. IV. THE CASE SHOULD BE DISMISSED BECAUSE INFINITY IS NOT REPRESENTED BY COUNSEL Finally, this case should also be dismissed even without applying the Poulis factors. It is impossible for the court to adjudicate the case when Infinity is not represented by counsel. See Shipman, 381 F. App’x at 164; Tallard Techs., Inc. v. IProvide Grp., Inc., No. 2004-101, 2013 WL 2319418, at *3 (D.V.I. May 22, 2013) (dismissing the case because of litigant’s failure to comply with court orders to secure substitute counsel, which provides an independent ground for dismissal under Rule 41(b) in addition to weighing of the Poulis factors). It further is unfair and unduly burdensome on Lexmark to force it to remain a defendant in an action that plaintiff effectively has abandoned. Despite efforts to identify Infinity’s litigation counsel, Infinity remains unrepresented, against court orders. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 19 of 21 14 V. CONCLUSION Lexmark respectfully requests that the court dismiss this case with prejudice because Infinity has abandoned this meritless case and ignored the court’s orders for nearly four years. DATED: June 15, 2017 Respectfully submitted, By: /s/ Timothy C. Meece Timothy C. Meece V. Bryan Medlock, Jr. Michael J. Harris BANNER AND WITCOFF, LTD. TEN SOUTH WACKER DRIVE SUITE 3000 CHICAGO, IL 60606 312-463-5000 Email: tmeece@bannerwitcoff.com; mharris@bannerwitcoff.com Bradley C. Wright BANNER & WITCOFF, LTD. 1100 - 13TH ST NW STE 1200 WASHINGTON, DC 20005-4051 202-824-3000 Email: bwright@bannerwitcoff.com Paul Keneddy PEPPER HAMILTON LLP 3000 TWO LOGAN SQUARE 18TH & ARCH STREETS PHILADELPHIA, PA 19103 215-981-4194 Email: kennedyp@pepperlaw.com Attorneys for Defendant LEXMARK INTERNATIONAL, INC Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 20 of 21 15 CERTIFICATE OF SERVICE I, Timothy C. Meece, hereby certify that the foregoing Defendant Lexmark International, Inc.’s Motion to Dismiss was on this date filed pursuant to the Court’s CM/ECF system, and that the document is available for downloading and viewing from the CM/ECF System, to all interested counsel. As Plaintiff is not currently represented by counsel, this filing has also been served by mail on Plaintiff at its last known business address in accordance with Federal Rule of Civil Procedure 5(b)(2)(C). DATED: June 15, 2017 Respectfully submitted, By: /s/ Timothy C. Meece Timothy C. Meece V. Bryan Medlock, Jr. Michael J. Harris BANNER AND WITCOFF, LTD. TEN SOUTH WACKER DRIVE SUITE 3000 CHICAGO, IL 60606 312-463-5000 Email: tmeece@bannerwitcoff.com; mharris@bannerwitcoff.com Bradley C. Wright BANNER & WITCOFF, LTD. 1100 - 13TH ST NW STE 1200 WASHINGTON, DC 20005-4051 202-824-3000 Email: bwright@bannerwitcoff.com Paul Keneddy PEPPER HAMILTON LLP 3000 TWO LOGAN SQUARE 18TH & ARCH STREETS PHILADELPHIA, PA 19103 215-981-4194 Email: kennedyp@pepperlaw.com Attorneys for Defendant LEXMARK INTERNATIONAL, INC. Case 2:12-cv-06799-LDD Document 43 Filed 06/15/17 Page 21 of 21 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA INFINITY COMPUTER PRODUCTS, INC, Plaintiff, v. LEXMARK INTERNATIONAL, INC., Defendant. : : : : : : : : : : : : : Civil Action No. 2:12-cv-06799-LDD Judge: Hon. Legrome D. Davis DECLARATION OF TIMOTHY C. MEECE IN SUPPORT OF DEFENDANT LEXMARK INTERNATIONAL, INC.’S MOTION TO DISMISS FOR FAILURE TO PROSECUTE AND COMPLY WITH COURT ORDERS I, Timothy C. Meece, hereby declare and state: 1. I am an attorney practicing with the law firm Banner & Witcoff, LTD, counsel of record for Defendant Lexmark International, Inc. (“Lexmark”). I am a member in good standing of the State Bar of Illinois and have been admitted pro hac vice in this case. I make this declaration on my own personal knowledge. 2. I make this declaration in support of Lexmark’s Motion to Dismiss for Failure to Prosecute and Comply with Court Orders. 3. Attached hereto as Exhibit A is a true and correct copy of the Complaint filed by Plaintiff Infinity Computer Products, Inc. with this Court on December 5, 2012. 4. Attached hereto as Exhibit B is a true and correct copy of a USPTO Examiner Interview Summary, discussing an interview with Infinity on April 15, 2014 regarding the new reexamination of U.S. Patent No. 7,489,423 initiated on April 10, 2014. 5. Attached hereto as Exhibit C is a true and correct copy of an email message requesting a Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 1 of 78 2 meet and confer regarding this motion, sent on June 9, 2017 on behalf of Lexmark to Mr. Thomas Bowden, who Infinity previously identified as “Corporate Counsel.” During the meet and confer, Mr. Bowden indicated that he was not litigation counsel for Infinity. 6. Attached hereto as Exhibit D is a true and correct copy of an email thread ending with a response received by other defendants from Mr. Larry Aaronson, who Infinity previously identified as “Patent Counsel.” 7. Attached hereto as Exhibit E is a true and correct copy of a “pro se” status update filed in the case on June 8, 2017. 8. Attached hereto as Exhibit F is a true and correct copy of the brochure for the accused Lexmark “Pro 715 Printer” as of June 14, 2017. 9. Attached hereto as Exhibit G is a true and correct copy of reissued U.S. Patent No. 6,894,811, complete with its multiple reexamination certificates. 10. Attached hereto as Exhibit H is a true and correct copy of reexamination certificates for U.S. Patent Nos. 6,894,811, 7,489,423, 8,040,574, and 8,294,915, showing all independent claims amended in reexamination. I declare under penalty of perjury under the laws of the State of Pennsylvania that the foregoing is true and correct to the best of my knowledge. Executed on June 14, 2017 in Burr Ridge, Illinois. _______________________________ TIMOTHY C. MEECE Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 2 of 78 Exhibit A Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 3 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 1 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 4 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 2 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 5 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 3 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 6 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 4 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 7 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 5 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 8 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 6 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 9 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 7 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 10 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 8 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 11 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 9 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 12 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 10 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 13 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 11 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 14 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 12 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 15 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 13 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 16 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 14 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 17 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 15 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 18 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 16 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 19 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 17 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 20 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 18 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 21 of 78 Case 2:12-cv-06799-LDD Document 1 Filed 12/05/12 Page 19 of 91 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 22 of 78 Exhibit B Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 23 of 78 Page 1 Case 2:12-cv-06806-LDD Document 41-5 Filed 06/08/17 Page 2 of 4 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 24 of 78 Page 2 Case 2:12-cv-06806-LDD Document 41-5 Filed 06/08/17 Page 3 of 4 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 25 of 78 Page 3 Case 2:12-cv-06806-LDD Document 41-5 Filed 06/08/17 Page 4 of 4 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 26 of 78 Exhibit C Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 27 of 78 1 Jason Shull From: Jason Shull Sent: Friday, June 9, 2017 8:35 AM To: 'Thomas Bowden' Cc: Timothy Meece (TMeece@bannerwitcoff.com); '004878_00046 _Infinity v_ Lexmark_ A_Final Correspondence _004878_00046_' Subject: FW: Infinity Computer Products v. Konica Minolta, Toshiba, Epson, Canon, Panasonic, Samsung, E.D. Pa. 2-12-CV-6796, -6798, -6800, -6802, -6803, -6806 [IWOV- Client.FID545967] Dear Mr. Bowden, As you know, several of the defendants listed below have filed motions to dismiss in their respective cases filed by Infinity. Lexmark will be filing a similar motion to dismiss next Wednesday, June 14, 2017. Please let us know your availability on June 12 and June 13 to meet and confer on Infinity’s behalf concerning Lexmark’s anticipated motion. Regards, Jason Jason S. Shull | Attorney tel: 312.463.5423 | fax: 312.463.5001 Banner & Witcoff, Ltd. | jshull@bannerwitcoff.com IMPORTANT/CONFIDENTIAL: This message may be privileged, confidential, or exempt from disclosure under applicable law. If you have received this communication in error, please notify us immediately by return e-mail. From: Pearce Jr., T. Vann [mailto:vpearce@orrick.com] Sent: Friday, May 26, 2017 5:41 AM To: tlblawplc@gmail.com Cc: Routh, Steven J. ; Jensen, Sten ; Rothenberg, Erica ; Jones, Jordan ; Isbester, James ; Boothe, Norris ; MICHAEL FINK ; Paul Meiklejohn ; kolter.erin@dorsey.com; BKlock@fchs.com; Dorsky, Jason (jdorsky@fchs.com) ; ryagura@omm.com; vzhou@omm.com Subject: Infinity Computer Products v. Konica Minolta, Toshiba, Epson, Canon, Panasonic, Samsung, E.D. Pa. 2‐12‐CV‐ 6796, ‐6798, ‐6800, ‐6802, ‐6803, ‐6806 Dear Mr. Bowden, I am contacting you on behalf of counsel listed in the cc line of this email because you are the attorney who most recently communicated on behalf of Infinity Computer Products in connection with the above-referenced lawsuits. Please advise whether you are in a position to meet and confer on Infinity’s behalf concerning the litigation, and if so, whether you are available to talk by phone on Thursday, June 1. If you are not available on June 1, please let us know if you are available before the 1st. The meet and confer is to discuss a motion to dismiss for failure to prosecute. Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 28 of 78 2 Best regards, Vann Pearce T. Vann Pearce, Jr. Partner, Intellectual Property Orrick Washington, DC T +1-202-339-8696 vpearce@orrick.com NOTICE TO RECIPIENT | This e-mail is meant for only the intended recipient of the transmission, and may be a communication privileged by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of this e-mail is strictly prohibited. Please notify us immediately of the error by return e-mail and please delete this message from your system. Thank you in advance for your cooperation. For more information about Orrick, please visit http://www.orrick.com. Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 29 of 78 Exhibit D Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 30 of 78 From: Larry Aaronson, PoQthe, Norris RE: Infinity Computer Products v. Konica Minolta, Toshiba, Epson, Canon, Panasonic, Samsung, E.D. Pa. 2-12- CV-6796, -6798, -6800, -6802, -6803, -6806 Friday, May 26, 2017 2:37:30 PM ImaaeOOS.Dna To: Subject: Date: Attachments: Dear Norris: I am not representing infinity Computer Products in the EDPa litigations. Tom Bowden, who was copied on your email, would be the appropriate person to contact. Best regards, Larry Lawrence Aaronson | Principal ^ ^ -' Meunier Carlin & Curfman LLC 999 Peachtree Street NE, Suite 1300| Atlanta, GA 30309 O: 404-645-7700 | F: 404-645-7707 | D: 404-645-7713 E: laaronson@mcclplaw.com | www,mcciplaw.CO.m NOTICE: This e -mail message and all attadiinents transmitted with it may contain legally privileged and confidential information that the sender intends, for the addressee solely to receive and use. If you are not the addressee, you may not read, disseminate, distribute, copy, or otherwise use this message or its attachments, Ifyou have received this message in error, please (1) notify the sender immediately by telephone 404-645■■ 7700 or by reply e-maii and (2) destroy all paper, electronic, and other forms of this iTiessage. Thankyou From: Boothe, Norris [mailto:NBoothe@i Cc: Jones, Jordan ; isbester, James ; tlblawplc@gmail.com Subject: FW: Infinity Computer Products v. Konica Minolta, Toshiba, Epson, Canon, Panasonic, Samsung, E.D. Pa. 2-12-CV-6796, -6798, -6800, -6802, -6803, -6806 Mr. Aaronson, I am contacting you on behalf of Epson America, Inc. with the understanding that you represent Infinity Computer Products, Inc. as patent counsel. Please see the email below. If you are not patent counsel for Infinity, please disregard and delete this message. Regards, Norris Boothe Norris P. Boothe Kilpatrick Townsend & Stockton LLP 1080 Marsh Road | Menlo Park, CA 94025 office 650 462 5305 i fax 650 618 1933 nboothe@kilpatricktownsend.com | My Profile I VCard Page 1 Case 2:12-cv-06806-LDD Document 41-7 Filed 06/08/17 Page 2 of 3 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 31 of 78 From: Pearce Jr., T. Vann rmailtoivpearceOorrick.comI Sent: Friday, May 26, 2017 5:41 AM To: tlblawplc@qmail.com Cc: Routh, Steven J.; Jensen, Sten; Rothenberg, Erica; Jones, Jordan; Isbester, James; Boothe, Norris; MICHAEL FINK; Paul Meiklejohn; kolter.erin@dorsey.com: BKIock@fchs.com: Dorsky, Jason fidorsky@fchs.comJ: rvaaura@omm.com: vzhou@omm.com Subject: Infinity Computer Products v. Konica Minolta, Toshiba, Epson, Canon, Panasonic, Samsung, E.D. Pa. 2-12-CV-6796, -6798, -6800, -6802, -6803, -6806 Dear Mr. Bowden, 1 am contacting you on behalf of counsel listed in the cc line of this email because you are the attorney who most recently communicated on behalf of Infinity Computer Products in connection with the above-referenced lawsuits. Please advise whether you are in a position to meet and confer on Infinity’s behalf concerning the litigation, and if so, whether you are available to talk by phone on Thursday, June 1. If you are not available on June 1, please let us know if you are available before the 1 st. The meet and confer is to discuss a motion to dismiss for failure to prosecute. Best regards, Vann Pearce T. Vann Pearce, Jr,. Partner, Intellectual Property Ofripk Washington, DC, ® T +1-202-339-8696 vpearce@orrick.com NOTICE TO RECIPIENT | This e-mail is meant for only the intended recipient of the transmission, and may be a communication privileged by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of this e-mail is strictly prohibited. Please notify us immediately of the error by return e-mail and please delete this message from your system. Thank you in advance for your cooperation. For more information about Orrick, please visit htto://www.orrick. com. Confidentiality Notice; This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. DISCLAIMER Page 2 Case 2:12-cv-06806-LDD Document 41-7 Filed 06/08/17 Page 3 of 3 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 32 of 78 Exhibit E Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 33 of 78 Infinity Computer Products Inc. 315 - Saybrook Road, Villanova., PA 19085 .June 3, 2017 Ms. Mia Harvey Chambers and Civil Deputy for The Honorable Judge Davis 6614 U.S. Court House 601 Market Stireet Philadelphia, PA 19106 RE: Status Update to Se~~re Legal ~ep_resen~ation fo~ ICPI Stay in Related Docket Numben: Case 2:12 - CV - 06796 -filed- 04/30/13, Case 2:12 - CV - 06797- filed 05122/13, Case 2:1l - CV - 06798- filed 04130/13, Case 2:12 - CV - 06800 - filed 04/30/13, Case 2:12 - CV - 00s02 - filed 04/30/13, CV - 06803 - filed 04130/13, Case 2:12 - CV- 06804 - filed 04/30/13, Case 2;12 - CV- 06805 - r.Jed 4/30/13, Case 2:12 - CV - 06806 - filed 05/15/13, Case 2:12 - CV - 06807 - filed 0.4/30/13. Case 2:12 • Case 2:12- CV - 06808-filed 4/30/13. Case No.: 2:12-cv-06799, Ca~e No.: 2:12-cv-06801 Dear Ms. Harvey, We have been J"ecentl;y contacted by several of the defendants in the abolte-referenced ligations who have indicated they inten4 t~ f"tle motions to dismiss fo.- failure to prosecute. We a.-e presently in the final phase ofnegotjation with legal counsel for ICPl's representation, and expect said counsel will contact the court on ICPl's behalf in the near tenn. As previously noted. iii our letter of December 1, 2016, the litigations have been stayed fol" three and one-half years due to multiple PTO reexams, which culminated in findings of validity of all of the patents in-suit by the United States Patent and Trademark Office. Although, we have been diligent in our search for counsc.1 during this extended period of case suspension, no Jaw finn was willing to make a committmmt until after completion of the reexams. Bee.a use of the large numbe.- of defendants, it bu been a ~ide ranging .sea.-ch to secure legal representation from a firm that did not have conructs. We are now looking forward to commencement of the case shortly. Telephone: (610) 525-9953, F~x: (610) Sl5- 9953 ~ALL FIRST, Email: scanbyfax@nol.com Case 2:12-cv-06806-LDD Document 40 Filed 06/08/17 Page 1 of 2 Page 1 Case 2:12-cv-06806-LDD Document 41-8 Filed 06/08/17 Page 2 of 3 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 34 of 78 Infinity Computer Products Inc. 315 - Saybrook Road. Vfllattova. PA 19085 The Court's indulgence is appreciated as we fmalize negotiations for ..-epresentation. Sincerely9 ~-···~~--- Marvin Nachman CEO Infmity Computer Prosact3 Inc. 315 Saybrook Road Villanova, PA 19085 -~- ... Telephone: (610) 525-9953, Fa:r: (610) 525- 9953 CALL FIRST, Email: scanbyfa~@aol.com Case 2:12-cv-06806-LDD Document 40 Filed 06/08/17 Page 2 of 2 Page 2 Case 2:12-cv-06806-LDD Document 41-8 Filed 06/08/17 Page 3 of 3 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 35 of 78 Exhibit F Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 36 of 78 Lexmark Pro715 Color All-In-One Print. Copy. Scan. Fax. Superior flexibility and uSability. Overview: High-Yield Cartridges Available Standard Pages Vizix 2.0 Print Technology Wireless-N Time-Saving Shortcuts Low Black Ink Cost with 155XL Cartridge Automatic 2-Sided Color LCD Optional Second Tray 50-Page Auto Document Feeder Ethernet Time-Saving Shortcuts Enhance efficiency and productivity with time-saving shortcuts, including Scan to Network, Scan to Email and Scan to PDF. Tablet and Mobile Printing Print from almost anywhere via a wireless-N network.¹ You can also print via your Android or Apple device using your wireless network.³ Affordable Printing Save on what you print most with high-yield supplies that deliver three times the number of pages as standard yield cartridges.² Rapid Scanning Quickly scan documents using the 50-sheet automatic document feeder. Eco-Friendly Printing Reduce paper consumption by up to 50% with automatic two-sided printing. Multiple Media Support Easily load different types of paper with the optional 550-sheet tray that boosts plain paper input capacity to 700 sheets. TABLET + MOBILE PRINTING Tablet + obile Printing Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 37 of 78 Lexmark 1-Touch Shortcuts Simplify everyday tasks with time-saving Lexmark 1-touch shortcuts. Eliminate unnecessary steps and save time by customizing shortcuts to run commonly performed workflows. Scan to Email Sometimes faxing isn’t convenient or available. Easily scan a document and send it directly to an email account. Scan to Network Reduce clutter and easily share documents: scan a document and send the image to a personal or shared network folder. Customizable Copy Save time and make custom copies more easily by automating commonly selected copy settings. Lexmark Pro715 Color All-In-One Print. Copy. Scan. Fax. ¹ When used with a wireless-N enabled router. Also subject to the range of the router. Compatible with Wi-Fi CERTIFIED IEEE 802.11 b/g/n routers. ² XL cartridges not included. Available for aftermarket purchase. ³Compatible with Android 2.1 and higher and Apple iOS 4.2 and higher. The device must be on the same Wi-Fi network as the printer. Performance is dependent upon network connec- tion quality and speeds. 4 “Recommended Monthly Page Volume” is a range of pages that helps customers evaluate Lexmark’s product offerings based on the average number of pages customers plan to print on the device each month. Lexmark recommends that the number of pages per month be within the stated range for optimum device performance, based on factors including: supplies replacement intervals, paper loading intervals, speed, and typical customer usage. Lexmark and Lexmark with the diamond design are trademarks of Lexmark International, Inc., registered in the United States and/or other countries. All other trademarks are the property of their respective owners. The USB-IF logos are trademarks of Universal Serial Bus Implementers Forum, Inc. Mac and Macintosh are trademarks of Apple Computer, Inc., registered in the United States and other countries. ENERGY STAR® is a U.S. registered mark. Microsoft, Windows, the Windows logo, Windows Vista, and the Windows Vista logo are trademarks or registered trademarks of Microsoft Corporation in the United States and/or other countries. Information in this document is subject to change without notice. AirPrint and the AirPrint logo are trandemarks of Apple Inc. Product specifications Lexmark Pro715 Function Color Copying, Color Faxing, Color Printing, Color Scanning Printing Print Technology Thermal Inkjet Color Technology 4 Color Inkjet - Cyan, Magenta, Yellow, Black Laser Quality Print Speed: Up to Black: 10 ppm in accordance with ISO/IEC 24734 / CMY: 6 ppm in accordance with ISO/IEC 24734 Maximum Print Speed: Up to Black, Draft: 35 ppm / Color, Draft: 30 ppm Paper Input Capacity: Up to Standard: 150 pages 20 lb or 75 gsm bond / Maximum: 700 pages 20 lb or 75 gsm bond Paper Output Capacity, Standard: Up to 50 pages 20 lb or 75 gsm bond Memory, Standard 256 MB Print Resolution, Color Up to 4800 x 1200 dpi Duplex (2-sided) Printing Integrated Duplex Printer Languages (Standard) PCL 5c Emulation, PCL 6 Emulation, PostScript 3 Emulation, PDF 1.6, Direct Image Recommended Monthly Page Volume4 400 - 700 pages Scanning Scan Technology CIS with 48 bit depth Scanner Type Flatbed scanner with ADF ADF Paper Input Capacity: Up to 50 pages 20 lb or 75 gsm bond Optical Scan Resolution 1200 x 1200 dpi Scan Area, Maximum 8.5 x 14 inches Copying Reduce / Enlarge Range 25 - 400% Maximum Copy Speed: Up to Black, Draft: 25 cpm / Color, Draft: 21 cpm Faxing Modem Speed 33.6 Kbps Compatibility Media Sizes Supported 10 Envelope, 7 3/4 Envelope, 9 Envelope, A4, A5, B5 Envelope, C5 Envelope, DL Envelope, B5, Custom, Hagaki Card, Index Card, Executive, Folio, Legal, Letter, 4 x 6 in., Statement, L, 2L, 5 x 7 in., 13 x 18 cm, 10 x 15 cm, 10 x 20 cm, 4 x 8 in., Oficio, A6 Media Types Supported Card Stock, Envelopes, Labels, Plain Paper, Transparencies, Banner (A4 or Letter), Hagaki Card, Iron-On Transfers, Photo Paper, Heavy Weight Matte Paper Apple Macintosh Operating Systems Supported Mac OS X (10.4, 10.5, 10.6, 10.7) Microsoft Windows Operating Systems Supported XP, Server 2003, XP x64, Server 2003 x64, Vista, Vista x64, Server 2008, Server 2008 x64, Windows 7, Windows 7, Server 2008 R2 Ink Cartridge Compatibility 150* - Black, Cyan, Magenta, Yellow 150XL* - Black, Cyan, Magenta, Yellow High Yield 150XLA - Black, Cyan, Magenta, Yellow High Yield 155XL* - Black High Yield Standard Ports Ethernet 10/100BaseTX (RJ-45), USB 2.0 Specification Hi-Speed Certified (Type B), 802.11b/g/n Wireless, Front USB 2.0 Specification Hi-Speed Certified Port (Type A) General Size (in. - H x W x D) 9.88 x 18.31 x 15.87 in. Packaged Size (in. - H x W x D) 19.17 x 22.01 x 12.83 in. Weight (lb.) 20.0 lb. Packaged Weight (lb.) 26.37 lb. Product Warranty 1-Year Exchange, Next Business Day Display 2.4 inch (60 mm) Color LCD display Standard box contents Lexmark Pro715 All-In-One printer, Printhead, One each: black, cyan, magenta and yellow cartridges*, Quick setup sheet, Quick Reference Guide / User’s Guide on CD-ROM, Installation software on CD-ROM, Power supply and cord, Wireless setup cable for USB connection, RJ-11 Phone cable or adapter, Fax Guide, Service information and statement of limited warranty *Licensed Return Program Cartridges Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 38 of 78 Exhibit G Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 39 of 78 USOO6894811B1 (12) United States Patent (1614161116168 US 6,894,811 B1 Nachman et al. (45) Date of Patent: May 17, 2005 (54) INTERFACE CIRCUIT FOR UTILIZINGA 5,823,689 A * 10/1998 Nehowig er al. ........... .. 400/83 FACSIMILE COUPLED TO A PC AS A 6,134,017 A * 10/2000 Schlank et a1. .......... .. 358/115 SCANNER OR PRINTER * Cited by examiner Inventors: Bruce Nachman, deceased, late Of Primary Examiner-Cheukfan Lee Wayne, PA (US); by Marvin Nachman, legal representative, 315 Saybrook Rd., (57) ABSTRACT Vluanova’ PA (Us) 19085 Apparatus for interfacing a conventional facsimile machine ( * ) Notice: Subject to any disclaimer, the term of this With a PC enabling the use Of the faCSim?e maChine.as a patent is extended or adjusted under 35 scanner or printer. A ?rst SWlIC'h ~assembly selectively US'C' 154(b) by 0 day5~ couples the PC modem and facsimile machine either to independent telephone lines in a normal mode or to one another in a scan/print mode. A manually operated switch (21) Appl' N05 08/669,056 assembly is depressed for a brief interval suf?cient to (22) Filed; Jun_ 24, 1996 activate a ringing circuit which converts DC power from a small battery source to a 20 HZ sine wave of 90 volt Related US, Application Data amplitude and applies the sine wave signal to the PC to cause the PC or facsimile to enter into a scan or print mode, (63) Continuation-in-part of application No. 08/226,278, ?led on respectively. The manually operable switch is then released API- 11, 1994, HOW Pat- N0~ 5,530,558 to apply a constant current to the facsimile machine to (51) Int. Ci.7 ........................... .. H04N 1/32- H04N 1/04 Simulate an Off-hook condition A facsimile machine Start (52) U S C] 358 / 4 42_ 358/4’68 358/474 button is then operated to start the facsimile machine which scans documents provided therein and transmits the scanned data in a conventional facsimile transmission format or activate the PC to transmit a far in conventional facsimile transmission format to utilize the facsimile machine as a printer. The PC may be equipped with a suitable software program for converting non-graphic, i.e. such as word-type 379/10001 (58) Field of Search ............................... .. 358/442, 468, 358/443, 400, 401, 434437, 474, 1.13, 1.15, 440, 1.6; 379/100, 251, 252, 375, 93, 100.15, 100.01, 100.02, 100.06, 100.05, 100'13 information into a binary format suitable for use in word (56) References Cited processing applications and may store the data in a memory for subsequent use. An automatic circuit may be provided to U.S. PATENT DOCUMENTS initiate a scanning or printing mode responsive to receipt of 4 821 312 A * 4 1989 H 1 358 442 a unique number received from either the facsimile machine 5’4 52’106 A * 9’1995 13313515“ a ' """""" " 355442 or the PC, thus eliminating the need for switches. 5,530,558 A * 6/1996 Nachman .................. .. 358/442 5,608,546 A * 3/1997 Nakamura et a1. ........ .. 358/442 20 Claims, 11 Drawing Sheets 3 0 40' ) Standard ' Rsm “mm, PC Type Computer Fax Machine Connector Wlth Generic Fax Machines Send/Receive ngsimi 052151;; Communication Software 773 +- 1 L75 I ‘ Printer ; ' Circuitry l I L Control Circuitry '1) & Line Driver L Internal to fax my“ - inc-on W T co Tel 2 76A modern With Auto tone detection functions 3"" ,2 _ _ CO Tel 1 VulCahle 50/ Page 1 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 2 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 40 of 78 US 6,894,811 B1 Sheet 1 0f 11 May 17, 2005 U.S. Patent slim 8E5; :85 I ghga v Page 2 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 3 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 41 of 78 U.S. Patent May 17, 2005 Sheet 2 0f 11 US 6,894,811 B1 NUMBER RCVD ? Y OPERATE 26 DEPRESS BUTTON (OPERATE 27) SET TIMER 2 SEC ELAPQSED RELEASE BUTTON (DEEN ERGIZE 27) THIS GENERATES OFF-HOOK COND. Page 3 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 4 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 42 of 78 Page 4 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 5 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 43 of 78 US 6,894,811 B1 Sheet 4 0f 11 May 17, 2005 U.S. Patent 0w .5 N 6.?00P V Pm om IN d 038$ E526 OJUs :é 25.x Emnoz xuumEuotBE £5E :1?2200.2. xo :é PoncBm Eco cozcm>c_ EmmEm \nozx0.._BEBEon», 359:00 war.01 /o¢ Page 5 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 6 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 44 of 78 US 6,894,811 B1 Sheet 5 0f 11 May 17, 2005 U.S. Patent Emuoz x2BEBE gm .5 N _o._.00P:3 E v V 5 05°28on :é @553 iv :12 a ’ Ill Czsuzo or .56. £8qu x0.._BWWLB 9631.32 m @5500: x0;cm 2855 Page 6 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 7 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 45 of 78 Page 7 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 8 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 46 of 78 Page 8 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 9 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 47 of 78 US 6,894,811 B1 Sheet 8 0f 11 May 17, 2005 U.S. Patent K .EAm 2% 165an0 on:um I 2an www.mza. 2 .326$ 38.8.: £3325“ 05:02: .8“.22.55 5:525 corcm>£ Em. eEuro-z xmchEum.8“. Page 9 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 10 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 48 of 78 US 6,894,811 B1 Sheet 9 0f 11 May 17, 2005 U.S. Patent 3 .mm \8 vino-u _ E00r H @0222 5.3 % 0:2 o§<( £8...» 5:5 EQUOEN E.00{1 ii :2.1IJx295: 5 825 0:3w A\_ I 2.58.063:00 5:26 “Esta Mb) \ 00300 QECCme Eugen cosmomczEEoo EBB .825 2631655 8:28:5“. utocmw 5:53.8530 @ 522 5K 53an0 2.3.on. .3852~ 2.85% 5 a m Page 10 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 11 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 49 of 78 US 6,894,811 B1 Sheet 10 0f 11 May 17, 2005 U.S. Patent 33an0 an:o 5 .2“. “Eh O0l.. _ :8.O N 2228 ‘ G i cmi! .383 :15: I. \8 ii] 8 =3582%. QUNtQE- 15.0.1 ..._w.O.< 289 =0: Ewoxu [ 9.332 v8... ninc?m A? New Page 11 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 12 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 50 of 78 Page 12 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 13 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 51 of 78 US 6,894,811 B1 1 INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER This application is a continuation-in-part of application Ser. No. 08/226,278, ?led Apr. 11, 1994, now US. Pat. No. 5,530,558. FIELD OF THE INVENTION The present invention relates to interfacing a facsimile with a PC and more particularly to an interface circuit of highly simpli?ed design and including a novel ringing circuit capable of generating a sine wave of a given ampli tude and frequency from a small, portable DC battery or 9V DC power supply. BACKGROUND OF THE INVENTION As is well known in the art, a conventional facsimile scans documents and transmits the scanned information through a modem in a standard facsimile format to a remote facsimile which receives the transmitted data by a modem and con verts the transmitted data into a form for printing a document which is a replica of the document scanned by the trans mitting facsimile. Scanning and printing devices especially adapted for use with PCs (i.e. personal computers) are relatively expensive devices typically costing many hundreds of dollars to as much as several thousands of dollars for applications requir ing character recognition capabilities. It has been recognized that conventional facsimile machines may be utilized as scanners or printers for PCs. However, the interface devices presently available are both complicated and expensive and typically require a micro processor which further tends to increase both cost and circuit complexity. OBJECT OF THE INVENTION It is, therefore, a principal object of the present invention to provide a circuit for interfacing a PC and a facsimile to enable the facsimile to be utilized as a scanner or a printer for a PC and to accomplish all of the objectives of a scanner or a printer in a simple straightforward manner through the use of a circuit of highly simpli?ed design and low cost. BRIEF DESCRIPTION OF THE INVENTION The present invention achieves all of the above as well as other objectives through apparatus which is characterized by comprising ?rst switch means capable of selectively cou pling a PC modem and a facsimile modem to independent telephone lines when in a non-scanning/printing mode and for decoupling the PC and facsimile modems from the telephone lines and coupling these modems to one another when placed in a scanning/printing mode. Second manually operable switch means activates a novel ringing circuit which generates a sine wave of appropriate amplitude and frequency and applies this ringing circuit to the PC modem, when used as a scanner or to the facsimile when being used as a printer, causing the PC or facsimile machine to respond to the simulated transmit request. Release of the circuitry operating button causes the inter face circuitry to apply an off-hook condition to the facsimile. Document scanning or printing is initiated by pressing the facsimile start button or the start button provided as part of the PC or by a program step integrated into the PC as part of a print mode (selecting the facsimile as the output device 10 15 25 35 40 45 50 55 65 2 for printing). Transmitted data may be directly stored in a PC memory. Documents incorporating alphanumeric data may be converted by a software program incorporated into the PC. The ring generating circuit responsive to pressing of the operating button generates a transmit request signal by converting the low voltage from a DC source into a 20 cycle sine wave of 90 volt amplitude through the employment of a pulse generating circuit coupled to phase delay means and applying phase delayed and undelayed pulses to a transis torized switching circuit for selectively applying positive DC voltage to opposing inputs of a step-up transformer which applies a boosted sinusoidal ring signal to the PC modem, the ring generating circuit generating a ringing signal of the appropriate amplitude and frequency in a highly simpli?ed and inexpensive manner. Since operation of the ringing circuit is completed in less than two seconds, a battery, if used, will have an extremely long operating life. Alternatively, if a 9V DC power source is used the battery is not required at all. The simple, straightforward operation of only three switches eliminates the need for complicated, expensive and typically microprocessor-based circuitry. BRIEF DESCRIPTION OF THE FIGURES The above, as well as other objects of the present invention, will become apparent upon reading the accom panying description and drawings in which: FIG. 1 is a circuit diagram of the interface circuitry of the present invention which enables a PC to utilize a conven tional facsimile as a sophisticated scanner or printer. FIG. 1a is a ?ow diagram of the circuitry of FIG. 1 employing the microprocessor-based tone detecting circuit of FIG. 1. FIGS. 2a-2i show simpli?ed block diagrams of various system arrangements employing the circuitry of the present invention. DETAILED DESCRIPTION OF THE INVENTION AND PREFERRED EMBODIMENTS THEREOF FIG. 1 shows an interface circuit 10 embodying the principles of the present invention and being comprised of a switch assembly SW2 which is a four-pole double-throw switch having four movable switch arms SW2-2, SW2-5, SW2-8, and SW2-11, each cooperating with a pair of stationary contacts, as shown. For example, and for simplicity, note that switch arms SW2-2 is switchable between stationary contacts SW2-1 and SW2-3. Movable switch arms SW2-2, SW2-5, SW2-8 and SW2 11 are all ganged to operate in unison as shown by common operating button B2 coupled to the switch arms through a linkage arm LA2 shown in schematic fashion as a dotted line. The switch is designed so that the switch arms are retained in the positions to which they are moved. The switch arms are arranged in pairs, switch arms SW2-2 and SW2-5 selectively coupling a modem of a PC (not shown for purposes of simplicity) to either a ?rst telephone line #1 through jumper JP3 or directly to a local facsimile machine (not shown for purposes of simplicity) through a jumper terminal JP2. In a similar fashion, a pair of switch arms SW2-8 and SW2-11 selectively couple the local facsimile machine through jumper JP2 to either a separate telephone line #2 (through jumper JP4) or to the modem of the PC. Page 13 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 14 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 52 of 78 US 6,894,811 B1 3 A double-pole single-throw switch SW3 is provided to couple either the local facsimile machine or the PC modem to a single telephone line or alternatively, disconnects the PC modem and facsimile machine from the common telephone line. For example, in applications where both the local facsimile and the PC each have an independent, dedicated telephone line, switch SW3 remains open. In applications where only a single telephone line is provided, both PC and the local facsimile may share the single telephone line by gaining access thereto in a staggered manner. Switch SW1 which is a three-pole, double-throw switch, comprises three movable switch arms SW1-1, SW1-4 and SW1-7, each movable switch arm cooperating with a pair of stationary switch arms. Movable switch arm SW1-1 selectively couples the out put terminal of the pair of secondary windings W2 of a step-up transformer TR1 either to stationary terminal SW1 2, which isolates the output of the transformer TR1 from the operating circuitry, or stationary contact SW1-3 which couples the secondary winding W2 of transformer TR1 through movable switch arm SW1-7 and stationary contact SW1-9 simultaneously to stationary contacts SW2-6 and SW2-12 of four-pole double-throw switch SW2 for simul taneous connection to the PC modem and the local facsimile, when switch arms SW2-5 and SW2-11 respectively engage stationary contacts SW2-6 and SW2-12. Movable switch arm SW1-4 selectively couples a small nine volt (9V) DC source (through jumper J5) to either stationary switch arm SW1-5 for coupling nine volt (9V) DC to a current generator circuit 12 or alternatively coupling nine volt (9V) DC to stationary terminal SW1-6 which in turn provides DC power to the nine volt (9V) ring generator circuit arranged within the dotted region as shown. Current generator circuit 12 is comprised of resistors R1, R2 and R5, transistors Q1 and Q6, diode D2 and LED-type diode D3 which are connected in the manner shown to provide a constant current which simulates an off-hook signal, utilized in the manner to be more fully described hereinbelow. Resistor R2 serves as a current limiting resis tor. LED D3 lights to denote operation of the constant current generator. Ring generator circuit 14, which is utilized to generate a 20 HZ sine wave of a 90 volt amplitude, comprises a 555-type timing circuit 16 which, when activated by a nine volt DC input, applied to timer 16 through terminal VCC and resistor R13, provides a pulse train of equal width, positive going pulses at a pulse rate of approximately 20 HZ at its output 16a. The pulse train generated by the 555 timer 16 is simul taneously applied to the input of inverter U1A whose output is simultaneously coupled to the base electrodes of transis tors Q2 and Q4, through resistor R6 and through inverter U1B and resistor R9. The pulse train, as was set forth hereinabove, is simulta neously coupled to the -T input of a one-shot multivibrator operating as a phase delay circuit and whose Q output is coupled to the input of inverter UlE. The Q output of one-shot multivibrator U2A provides a phase delayed pulse which is coupled through the output of inverter UlE simul taneously to the base of transistor Q5 through resistor R8 and to the base of transistor Q3 through inverter UlF and resistor R7. Transistors Q2-Q5 and resistors R6-R9, together with resistor RIO, form a full bridge switching circuit which is powered by the nine volt (9V) DC source applied to the terminal VCC to provide drive current suf? cient to drive transformer TRl, comprised of a pair of 10 15 20 25 35 40 45 55 65 4 primary windings W1 and a pair of secondary windings W2, to generate a sine wave output. The pair of primary windings W1 and secondary windings W2 are coupled in parallel and the windings are arranged to provide a step-up transformer to magnify the input voltage preferably by ten to one (10:1), generating the desired output voltage which, in the present application, is a 20 HZ output of 90 volt amplitude with 15 mils of current from a nine volt (9V) DC, 150 mils current source. If desired, the frequency, amplitude and current of the circuit can be changed by selecting different component values for the passive elements. The component values chosen in the present invention have been selected to generate a signal which reproduces a standard bell ring signal employed in a conventional transmission between remote facsimile machines. The branch circuits BC1 and BC2 of the bridge circuit are alternately rendered conductive to alternately apply a positive voltage to opposing inputs of the input windings W1 for generating a sine wave from the positive-going pulses produced by timer circuit 16. The two input windings W1 are coupled in parallel as are the output windings W2. The bell ring signal is selectively supplied through mov able switch arm SW1-1 of the three-pole, double-throw switch SW1 described hereinabove. The operation of the interface circuit of the present invention is as follows: Assuming that the local facsimile is desired to be operated in combination with the PC and to function as a scanner, the switch SW2 is moved from the normal position, in which the movable switch arms are shown in solid line fashion, to the dotted line position simultaneously disconnecting the PC modem and the local facsimile from the telephone lines and directly connecting the PC receive line, PCR1 to ground and the PC transmit line PCTl directly to stationary contact SW1-9. The local facsimile transmit line FXT2 is directly connected to ground and the facsimile receive line FXR2 is connected in common with line PCTl to stationary contact SW1-9 of switch SW1. Switch SW3 may be either in the open or the closed position when switch SW2 is moved to the scan mode. Switch SW1 is operated by pressing button B1 which is ganged to the movable switch arms SW1-1, SW1-4 and SW1-7 by a common linkage arm represented schematically by dotted line LA1. A biasing member or spring SWP1 normally biases the movable switch arms to the solid line position shown in Figure. By depressing switch button B1, the switch arms SW1-1, SW1-4 and SW1-7 are simulta neously moved to the dotted line positions shown in FIG. 1. Button B1 is maintained in the depressed position for a period preferably between one and two seconds. In the dotted line position, the nine volt (9V) DC source is coupled through switch arm SW1-4 and stationary terminal SW1-6 to the VCC terminals of ring generator circuit 14, producing a 20 HZ sine wave of 90 volt amplitude and a current of 15 mils at the secondary windings W2, which is applied to the PC line PCTl through SW1-1, SW1-3, SW1-7, SW1-9, 126, SW2-6 and SW2-5, simulating what the PC believes is a request by a “remote” facsimile to transmit data thereto. The PC, which may be any type of computer (including but not limited to an Apple Macintosh, IBM PC, PCAT or PCXT) is provided with either an internal or external group III fac simile interface board, and shifts to a receive mode for receiving what appears to the PC to be a facsimile trans mission from a “remote” facsimile machine. After holding the button B1 depressed for a time which need not exceed approximately two seconds, button B1 is Page 14 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 15 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 53 of 78 US 6,894,811 B1 5 released causing the nine volt (9V) DC source to be coupled to input 12a of current generator circuit 12, which circuit applies the constant current to the facsimile receive line FXR2 to create what appears to the facsimile machine to be an off-hook condition. Simultaneously therewith, LED D3 lights indicating that the current generator circuit is pres ently in operation. The local facsimile machine recognizes the constant cur rent as representative of an off-hook condition preparing the local facsimile machine for transmission. Thereafter, the conventional start button of the facsimile machine (not shown for purposes of simplicity) is pressed to start communication of the data scanned by the local fac simile machine from a document (or documents) placed within the facsimile machine document input (also not shown for purposes of simplicity). The facsimile machine may be either a group I, group II, or group III machine, although optimum document resolu tion can be obtained through the use of a group III facsimile machine. The conventional PC can store the transmitted data in its memory as a “picture” the resolution of the picture being 200 by 100 pixels for old facsimile machines, 200 by 200 pixels for standard facsimile machines and 400 by 400 pixels for new facsimile machines. Alternatively, a conven tional OCR software package such as, for example, a CAERE OCR program available from Bitsoftware may be employed. Many alternative OCR software packages may be utilized to convert the “picture” transmitted by the facsimile machine to binary character form for word processing use or the like. Operation of the facsimile machine in combination with the PC wherein the facsimile machine operates as a printer is as follows: The ring generating circuit is not required to be operated in this mode and in applications where a facsimile machine is interfaced with a PC for use only as a printer, the ring generating circuit and the cooperating spring bias switch may be eliminated. Switch SW2 shown in FIG. 1 is moved from the solid line to the dotted line position decoupling the PC and facsimile machine from the telephone lines and coupling the PC and facsimile machine together. Switch SW1 is operated to power the current generator circuit 12 causing both the PC and the facsimile machine to see an off-hook condition. The computer (PC) is operated either by providing a switch such as a push button switch (not shown for purposes of simplicity) to enter into a standard protocol with the facsimile machine and thereafter to transmit information in standard facsimile machine format. The facsimile machine senses that it is communicating with a remote facsimile machine and creates a document in accordance with the data received from the PC in “pixel” form. The PC may be provided with a standard program having a print mode in which the facsimile machine is identi?ed in the printing routine as the speci?c output device being utilized during such a print mode. Upon completion of printing mode, switch SW2 may be returned to the solid line position decoupling the PC from the facsimile machine and recou pling the PC and facsimile modems to their associated telephone lines. FIGS. 2a-2h show various arrangements in which the present invention may be utilized. Noting, for example, FIG. 2a, the circuitry 10 of the present invention is coupled between a standard facsimile 10 20 25 35 40 45 50 55 65 6 machine 30, a PC-type computer 40 having a facsimile modem circuitry 41 and central of?ce telephone lines 50 and 51. In the arrangement shown in FIG. 2a, the facsimile modem circuitry may be either internal or external to the PC-type computer 40. FIG. 2b shows another alternative embodiment in which the circuitry of the present invention is incorporated into the PC-type computer and may be arranged on its own printed wiring board or on a printed wiring board which is common to the circuitry 10 of the present invention and the facsimile modem circuitry 41. The arrangement of FIG. 2b is other wise the same as that shown in FIG. 2a. The circuit 10 shown in FIG. 2b is provided with three RJ-11 telephone cable connections for respective connection with the fac simile machine 30 and telephone lines 50 and 51. If only one additional telephone cable is provided, the standard fac simile machine 40 and the internal facsimile modem 41 may share that cable. FIG. 2c shows another alternative arrangement in which the circuitry 10 of the present invention is integrated into the standard facsimile machine 30. The operation of the arrange ment of FIG. 2c is otherwise similar to those shown in FIGS. 2a and 2b. FIG. 2d shows an arrangement in which the circuitry 10 of the present invention is mounted upon its own printed wiring board and is arranged within the PC-type computer 40 and is electrically connected to the internal facsimile modem 41 by an external RJ-11 cable as shown. The operation is otherwise the same as the embodiments of FIGS. 2a-2c described hereinabove. The circuitry 10 of the present invention may alternatively be placed upon a printed circuit card of approximately a credit card size for insertion in a bus slot provided in present-day PCs enabling the circuit on the printed circuit card, inserted into a slot provided along the exterior of the PC, to be coupled to a PCMCIA bus which is an additional bus that may be addressed by the PC. FIG. 26‘ shows still another arrangement in which the PC-type computer 40 is coupled to external facsimile modem circuitry 41, for example, through an RS-232 cable. The facsimile machine interfaces to the external facsimile modem 41 through circuitry 10 by way of an RJ-11 tele phone cable. When in the normal mode of operation, cir cuitry 10 interfaces central of?ce telephone lines 50 and 51 through the RJ-11 telephone cables, as shown. Cable 50 may be employed for standard facsimile machine telephone com munications while telephone line 51 is used for the external facsimile modem circuitry. If only one central of?ce tele phone line is available, line 50 may be shared in the manner previously described. FIG. 2f shows an arrangement in which interface circuit 10 is internal to the facsimile machine. PC-type computer 40 is coupled to the facsimile modem circuitry 41 and interface circuit 10 through an RS-232 cable. When in the normal mode of operation, circuitry 10 interfaces the central office telephone lines 50 and 51 through RJ-11 telephone cables, as shown. Cable 50 may be employed for standard facsimile machine telephone communications while telephone line 51 is used for the external facsimile modem circuitry. If only one central of?ce telephone line is available, line 50, for example, may be shared in the manner previously described. The arrangement of FIG. 2f is used with PC’s which do not have a fax modem installed. When interface 10 is installed internal to the facsimile, the fax modem of the fax machine incorporates many of the functions of circuit 10, through integration of the already existing circuitry components of the fax modem. Page 15 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 16 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 54 of 78 US 6,894,811 B1 7 The present invention may be employed with telephone systems having digital signal processing. FIG. 2h, which is similar to FIG. 2f, and which shows like circuits designated with like numerals, further includes an interface 60 for digital signal processing. The send and receive options required for scanning and printing are provided by interface 60, which may, for example, be a chip set such as PEB 2091 N-V4.4 and EPB 2186 N-V4.4, manufactured by Siemens. Any other chip set having similar operating characteristics may be employed. As other digital signal formats come into use, such as ADSL (Asymmetric Digital Subscriber Line) HDSL (High Bit Rate Digital Subscriber Line), or the like, a chip set for handling such formats may be substituted for interface 60. As shown in FIG. 2i, a RAM and/or Fixed Disk 70 may be incorporated into the interface 10, integrated with a fax modem 30 to allow for the capture of images or documents for later transfer into the PC 40 or the facsimile machine 30, or for image enhancement within the interface con?guration 10. The addition of the data storage feature is particularly desirable for the fax machine or fax modem when they are in normal fax send or receive modes. Optionally, the data storage feature is desirable for ?eld application usage where information may be downloaded from a PC and stored in interface 10 for later transfer to a facsimile machine or a PC. Storage would be retained in this instance by battery backup incorporated in the RAM memory 70. Battery backup is not necessary for ?xed disk storage. FIG. 2j shows an arrangement for automated scanning and printing functions between a fax modem and a fax machine. As represented in FIGS. 2a-2f, in order to activate an automated process for scanning or printing, the ring circuit 4 (FIG. 1) interfaces with the Tip and Ring features of the fax modem or fax machine. This is dependent on keying in a code on the fax keypad, such as ## or #* or any other predetermined code in order to respectively identify the scanning and printing functions. Interface 10 detects the tones generated by the inserted code (at the tone receiver 25 and generates a ring signal. The ring signal is detected and interpreted by the ring detect circuit of the fax modem or the fax machine. The fax modem or fax machine then generates receive signals or tones which indicate a connection. The fax modem or fax machine commences the scanning of the fax image or print cycle. By depressing a predetermined code such as ## on the fax machine key pad, the tone detector circuit 25 interprets this code, enabling a control circuit to activate ?rst (26) and second (27) relay means. Relay 26 disconnects the fax machine and the fax modem (connected to the PC) from the Central Of?ce terminal lines. Relay 27, then connects 9V to the ring generator circuit 14 causing a sinusoidal ring signal of a predetermined frequency and amplitude to be generated to the PC fax modem. The PC fax modem answers and starts the scanning process from the fax machine to the PC. A communication program stored in the PC allows the code #* (for example) to be entered, generating the tone signal from the fax modem. The tone detector circuit in the interface 10 interprets this code, enabling a control circuit to activate ?rst (26) and second (27) relay means. Relay 26 disconnects the fax machine and the fax modem (connected to the PC) from the Central Of?ce terminal lines. Relay 27, then connects 9V to the ring generator circuit 14 causing a sinusoidal ring signal of a predetermined frequency and amplitude to be generated to the fax machine. The fax machine answers and starts the printing process form the PC fax modem. 10 15 25 35 40 45 55 65 8 The switch version does not require the ## or #* or any other code, but activates the automated scanning/printing by pressing the ringer button B2. The provision of the scan and print functions internal to the facsimile machine may also be accomplished by utiliZing the analog output of the optical scanning circuit 75 of the facsimile machine (FIG. 2g). The analog signals are pro cessed by the control/modem circuitry 76 where they are converted into a digital serial signal and then transmitted through the RS 232 sending interconnect port, the signal is then received by an RS232 connector at the PC. The aforementioned procedure utilizes unused signal lines which are available on most modem chips such as the Rockwell chip series. A send and receive driver software package then imple ments the following action. The receive driver software accepts the digital image for storage or processing as appro priate. This send/receive driver communications software package also has the ability to send a digital image to the facsimile machine for printing purposes. The facsimile machine’s control/modem circuitry then processed by the print driver 77 for printing. This linkage method for scan ning and printing utiliZing a fax machine is particularly useful for a computer without a fax modem. Any available send/receive communications software package is accept able. The commands of ## or #* for sending and receiving are still appropriate for this application although any other desired commands may be selected. For the automated operation, the circuitry 10 of FIG. 1 is provided with device 25 which includes an automatic tone detector circuit for receiving a unique number dialed by either the facsimile machine or the PC modem. Upon recognition of the unique number, as set forth above or by generation using other techniques, the tone receiver operates a driver circuit 26 for operating switch SW2 to decouple the PC and the facsimile machine from their associated tele phone lines and for connecting the PC to the facsimile machine. Driver circuit 26 may be a relay or its equivalent for operating an armature (not shown) to move the switch arms between their two operating states. Driver unit 27 which likewise may be a relay or its equivalent, operates the switch SW1 to the position energiZing the ringing circuit 14. A timer is set and when two seconds elapses, unit 27 is deenergized causing the off-hook signal to be generated by current generator circuit 12 through the release of the operating button. When printing or scanning is complete, the tone receiver unit is reset. A simpli?ed ?ow diagram of the aforementioned operation is shown in FIG. 1a. The circuitry of the present invention is highly simpli?ed in design and provides effective communication between the PC and local facsimile machine enabling the local facsimile machine to provide the dual functions of operating indepen dently for transmission or reception to remote facsimile machines as well as functioning as a scanner or printer with a local PC. The circuitry of the present invention provides all the necessary signal conditions which lead the PC and local facsimile machine to believe that they are communicating with one another over a telephone line. The facsimile machine, although operating in its normal fashion, functions very effectively as a scanner or printer as and when needed and provides a scanning or printing capability at a mere fraction of the cost of conventional scanners or printers. Simple switching of SW2 returns the PC and facsimile machine to normal use. The novel ring circuit provides the required ring signal which is conventional in present-day facsimile transmission Page 16 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 17 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 55 of 78 US 6,894,811 B1 9 application through the employment of an inexpensive, low voltage, DC battery or 9V power source and, through the operation of two switches incorporated in the novel interface circuitry of the present invention, followed by operation of the facsimile start switch, provides an interface circuit which is extremely easy to use and which eliminates the need for more complicated and expensive microprocessor-based devices. A latitude of modi?cation, change and substitution is intended in the foregoing disclosure, and in some instances, some features of the invention will be employed without a corresponding use of other features. Accordingly, it is appro priate that the appended claims be construed broadly and in a manner consistent with the spirit and scope of the inven tion herein described. What is claimed is: 1. A method of creating a scanning capability from a facsimile machine to a computer, with scanned image digital data signals transmitted through a bi-directional connection via a passive link between the facsimile machine and the computer, comprising the steps of: by-passing or isolating the facsimile machine and the computer from the public network telephone line; coupling the facsimile machine to the computer; conditioning the computer to receive digital facsimile signals representing data on a scanned document; and conditioning the facsimile machine to transmit digital signals representing data on a scanned document to the computer, said computer being equipped with send/ receive driver communications software enabling the reception of scanned image signals from the facsimile machine, said transmitted digital facsimile signals being received directly into the computer through the bi-directional direct connection via the passive link, thereafter, said computer processing the received digi tal facsimile signals of the scanned document as needed. 2. The method of claim 1 to create a scanning capability through a bi-directional direct connection via a passive link between a facsimile machine and a computer by transfer of scanned image data signals from the facsimile machine through said connection, said facsimile machine by-passing or isolated from the public network telephone line, and connected to an appropriate receiving port of a computer or other of?ce product capable of receiving and processing said signals. 3. The method of claim 1, including transferring a parallel data source signal of a scanned image from said facsimile machine to said computer. 4. The method of claim 1, including transferring a digital serial data source signal of a scanned image from said facsimile machine to said computer. 5. The method of claim 1 further comprising optically recogniZing the scanned data within the computer and converting the scanned data into character codes within the computer, said computer being equipped with Optical Char acter Recognition Software. 6. A method of creating a scanning capability from a facsimile machine to a computer equipped with a modem, with scanned image data signals transferred through a bi-directional direct connection via a passive link between the facsimile machine and the computer, comprising the steps of: by-passing or isolating the facsimile machine and the computer from the public network telephone line; coupling the facsimile to the computer; 10 15 20 25 35 40 45 50 55 65 10 conditioning the computer to receive facsimile signals representing data on a scanned document; and conditioning the facsimile machine to transmit signals representing data on a scanned document to the computer, said computer being equipped with send/ receive driver communications software enabling the reception of scanned image signals from the facsimile machine, said transmitted facsimile signals being received through the bi-directional direct connection via the passive link to the computer modem, thereafter, said computer processing the received facsimile signals of the scanned document as needed. 7. A method of making a facsimile machine operable as a scanner and printer for a personal computer, by transferring digital data through a bi-directional direct connection via a passive link between the facsimile machine and the computer, each of the facsimile machine and personal com puter for communicating normally using at least one public network telephone line, comprising the steps of: con?guring the facsimile machine to communicate with the personal computer using a digital connector port of the facsimile machine and personal computer, with both the facsimile machine and personal computer isolated from said at least one public network telephone line; arranging the facsimile machine to be in a digital con nection mode; and shifting the personal computer to a connected mode for sending or receiving digital signals through the bi-directional direct connection via the passive link for scanning and printing between the computer and the facsimile machine, in a facsimile format, using the digital connector port of the personal computer, said computer being equipped with send/receive driver communications software enabling the transfer of the scanning and printing signals between the computer and the facsimile machine. 8. The method of claim 7 including using RS 232 con nector ports to interface between the facsimile machine and the personal computer. 9. The method of claim 7 including using parallel con nector ports to interface between the facsimile machine and the personal computer. 10. The method of claim 7, using RS 232, parallel or other suitable digital port type connectors to interface between said facsimile machine and said computer. 11. The method of claim 7 further comprising optically recogniZing the scanned data within the computer and converting the scanned data into character codes within the computer, said computer being equipped with Optical Char acter Recognition Software. 12. A method of using a facsimile machine as a scanner and printer by transferring data signals through a bi-directional direct connection via a passive link between the facsimile machine and the personal computer, each of the facsimile machine and personal computer for communicat ing using telephone types of circuits, said facsimile machine and computer being isolated from the public telephone network, comprising the steps of: (a) con?guring the facsimile machine to communicate with the personal computer using the facsimile machine, and by-passing or isolating the facsimile machine and computer from the public telephone net work; (b) arranging the facsimile machine to be in a simulated off-hook condition, or connection mode; and Page 17 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 18 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 56 of 78 US 6,894,811 B1 11 (c) shifting the personal computer to an off-hook condition, or connection mode for sending or receiving signals in facsimile formats through the bi-directional direct connection via the passive link between the personal computer and the facsimile machine; said computer being equipped with send/receive driver communications software enabling the transfer of the scanning and printing signals between the computer and the facsimile machine. 13. The method of claim 12 including using serial data transmissions for both scanning and printing through the bi-directional direct connection via the passive link between the facsimile machine and the personal computer. 14. The method of claim 12 including using parallel data transmissions for both scanning and printing through the bi-directional direct connection via the passive link between the facsimile machine and the personal computer. 15. The method of claim 12 including using analog data transmissions for both scanning and printing through the bi-directional direct connection via the passive link between the facsimile machine and the personal computer. 16. The method of claim 12 using analog or digital serial, parallel data transmissions, for both scanning and printing through the bi-directional direct connection via the passive link, between the facsimile machine and the personal com puter. 17. The method of claim 12 further comprising optically recogniZing the scanned data within the computer and converting the scanned data into character codes within the computer, said computer being equipped with Optical Char acter Recognition Software. 18. A method of using a facsimile machine with a computer, one or both of which being connected to a telephone line such that said facsimile machine operates as a scanning and printing device for the computer when isolated from the telephone line comprising the steps of: (a) coupling the facsimile machine to the computer through a bi-directional direct connection via a passive link; (b) generating a signal to simulate an off-hook condition or connection mode providing a direct path whereby the facsimile machine is conditioned to transmit or receive signals through the bi-directional direction via the passive link to the computer; (c) generating a facsimile machine signal whereby the computer is conditioned to receive signals representing data on a scanned document; and (d) generating a computer signal whereby the facsimile machine is conditioned to receive signals representing data on a document to be printed; 10 15 20 25 35 45 50 12 said computer being equipped with send/receive driver communications software enabling the reception of scanned image signals from the facsimile machine or the sending of computer data to the facsimile machine for printing. 19. A method of using a facsimile machine with a computer, one or both of which being connected to a telephone line such that said facsimile machine operates as a printing device for the computer when isolated from the telephone line, comprising the steps of: (a) coupling the facsimile machine to the computer through a bi-directional direct connection via a passive link, which enables transfer of digital image signals in both directions; (b) generating a signal representative of a facsimile machine communications signals, whereby the com puter is conditioned to transmit signals representing data on a document to be printed; and (c) generating a signal to simulate an off-hook condition or connection mode providing a direct path whereby the facsimile machine is conditioned to receive signals through the bi-directional direct connection via the passive link representing data from the computer of a document to be printed. 20. Amethod of making a facsimile machine operable as a scanner and printer for a computer, each of the facsimile machine and computer for communicating normally using at least one public network telephone line, comprising the steps of: (a) con?guring the facsimile machine to communicate with the personal computer through a bi-directional direct connection via a passive link between a digital connector port on the facsimile machine and a digital connector port on the computer, with both the facsimile machine and computer by-passing or isolated from said at least one public network telephone line; (b) arranging the facsimile machine to send or receive digital data signals; and (c) coupling the digital data signals through the bi-directional direct connection via the passive link between the personal computer and the facsimile machine; said computer being equipped with send/receive driver communications software enabling the reception of scanned image signals from the facsimile machine or the sending of computer data to the facsimile machine for printing. Page 18 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 19 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 57 of 78 UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE OF CORRECTION PATENT NO. : 6,894,811 B1 Page 1 of 2 APPLICATION NO. : 08/669056 DATED : May 17, 2005 INVENTOR(S) : Bruce Nachman It is certified that error appears in the above-identi?ed patent and that said Letters Patent is hereby corrected as shown below: Drawings Figure 2j was resubmitted by hand to the examiner at the Interview of 4/14/04, however, it was not incorporated into the issued patent. An additional copy is attached herewith as 4 of 4. The Specification correction now requires: Column 8, line 21, after “circuitry” insert --76 receives the digital image and it is- Claim 1, Column 9, line 19, change “a bi-directional connection” to --a bi-directional --direct-- connection- Claim 18, Column 11, line 43, change “direction” to --direct connection- Signed and Sealed this Tenth Day of June, 2008 m Watt” JON W. DUDAS Director 0fthe United States Patent and Trademark O?ice Page 19 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 20 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 58 of 78 UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE OF CORRECTION PATENT NO. : 6,894,811 B1 Page 2 of 2 APPLICATION NO. : 08/669056 DATED : May 17, 2005 INVENTOR(S) : Bruce Nachrnan It is certified that error appears in the above-identi?ed patent and that said Letters Patent is hereby corrected as shown below: In Drawings insert as Page 12 of 12 PC Type Computer Interface Circuit 10 Standard 54.11 RJ-11 - Automatiatons ' F“ mm” TaleCahle detac?OMSwttchm Tale cab“ Control Internal or External Fax Modem 1 Tim 00 TeH ‘30 "'2 Fig. 2} Page 20 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 21 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 59 of 78 Page 21 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 22 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 60 of 78 Page 22 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 23 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 61 of 78 Page 23 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 24 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 62 of 78 Page 24 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 25 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 63 of 78 Page 25 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 26 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 64 of 78 Page 26 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 27 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 65 of 78 Page 27 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 28 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 66 of 78 Page 28 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 29 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 67 of 78 Page 29 Case 2:12-cv-06806-LDD Document 41-10 Filed 06/08/17 Page 30 of 30 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 68 of 78 Exhibit H Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 69 of 78 Page 1 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 2 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 70 of 78 Page 2 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 3 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 71 of 78 Page 3 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 4 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 72 of 78 Page 4 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 5 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 73 of 78 Page 5 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 6 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 74 of 78 Page 6 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 7 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 75 of 78 Page 7 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 8 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 76 of 78 Page 8 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 9 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 77 of 78 Page 9 Case 2:12-cv-06806-LDD Document 41-11 Filed 06/08/17 Page 10 of 10 Case 2:12-cv-06799-LDD Document 43-1 Filed 06/15/17 Page 78 of 78 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA INFINITY COMPUTER PRODUCTS, INC, Plaintiff, v. LEXMARK INTERNATIONAL, INC., Defendant. : : : : : : : : : : : : : Civil Action No. 2:12-cv-06799-LDD Judge: Hon. Legrome D. Davis PROPOSED ORDER Upon consideration of Defendant Lexmark International, Inc.’s Motion to Dismiss for Failure to Prosecute and Comply with Court Orders, it is HEREBY ORDERED that Defendant’s Motion is GRANTED and the claims of Infinity Computer Products, Inc. in the above-captioned lawsuit are DISMISSED WITH PREJUDICE with each party to bear its own attorney fees, costs, and expenses. DATED:______________ BY THE COURT: _________________________________ THE HONORABLE LEGROME D. DAVIS U.S.D.C., EASTERN DISTRICT OF PENNSLYVANIA Case 2:12-cv-06799-LDD Document 43-2 Filed 06/15/17 Page 1 of 1