DCT

2:18-cv-00659

Canon Inc v. Print After Print Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00659, D. Ariz., 02/28/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Arizona because the Defendant is incorporated in, resides in, and has committed infringing acts in the district, where it also has a regular and established place of business.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges infringe nine patents related to the mechanical coupling between a process cartridge and an image forming apparatus like a laser printer.
  • Technical Context: The patents relate to the design of user-replaceable toner cartridges, a high-volume consumable product central to the multi-billion-dollar laser printer market.
  • Key Procedural History: The complaint notes that this action is related to a concurrently filed proceeding at the U.S. International Trade Commission (ITC), asserting the same patents against the same accused products. Such dual-track litigation is a common strategy to seek both monetary damages in district court and an exclusion order (an import ban) from the ITC.

Case Timeline

Date Event
2006-12-22 Earliest Priority Date for all Asserted Patents
2017-08-29 U.S. Patent No. 9,746,826 Issues
2017-12-05 U.S. Patent No. 9,836,021 Issues
2017-12-12 U.S. Patent No. 9,841,727 Issues
2017-12-12 U.S. Patent No. 9,841,728 Issues
2017-12-12 U.S. Patent No. 9,841,729 Issues
2018-01-02 U.S. Patent No. 9,857,764 Issues
2018-01-02 U.S. Patent No. 9,857,765 Issues
2018-01-16 U.S. Patent No. 9,869,960 Issues
2018-01-23 U.S. Patent No. 9,874,846 Issues
2018-02-28 Complaint Filed

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

U.S. Patent No. 9,746,826 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’826 Patent)

The Invention Explained

  • Problem Addressed: The patent describes the need for a user-replaceable process cartridge in an electrophotographic printer that can be easily mounted and dismounted while ensuring that the rotational force from the printer's drive shaft is transmitted smoothly and reliably to the cartridge's photosensitive drum. (’826 Patent, col. 2:1-35). Conventional designs could suffer from non-uniform rotation, affecting image quality. (Compl. ¶9; ’826 Patent, col. 2:32-35).
  • The Patented Solution: The invention proposes a specific mechanical coupling member on the end of the photosensitive drum. This coupling member is designed to be movable between at least two positions relative to the drum's axis. This movement allows the coupling to align with and engage the printer's drive shaft during insertion, and then transmit rotational force smoothly once engaged, accommodating for slight misalignments. (Compl. ¶9; ’826 Patent, Abstract; col. 2:36-50).
  • Technical Importance: This design aims to improve the user experience and reliability of consumable printer cartridges by simplifying the mechanical interface needed to transfer power to internal rotating components. (Compl. ¶9; ’826 Patent, col. 2:51-56).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6. (Compl. ¶25).
  • Independent Claim 1 includes the following essential elements:
    • A process cartridge comprising a casing with an opening and a protrusion.
    • A photosensitive drum rotatably supported in the casing, having a first axis (L1).
    • A coupling member having a second axis (L2).
    • The coupling member is connected to the drum and has a first end portion, a second end portion with a projection, and a connecting portion.
    • The coupling member is movable between a first position and a second position relative to the drum's axis.
  • Independent Claim 6 includes similar elements but is directed to a process cartridge with a developing roller in addition to the photosensitive drum. (Compl. ¶25; ’826 Patent, col. 84:57-86:20).
  • The complaint notes that dependent claims 4, 7, and 9 are also infringed. (Compl. ¶25).

U.S. Patent No. 9,836,021 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’021 Patent)

The Invention Explained

  • Problem Addressed: Similar to the ’826 Patent, this patent addresses the challenge of creating a detachable process cartridge that can be easily mounted and smoothly receive rotational force from the main printer assembly. (Compl. ¶10; ’021 Patent, col. 2:1-35).
  • The Patented Solution: The invention describes a process cartridge with a photosensitive drum and a coupling member. The coupling member is configured to move between an "inclined position" relative to the drum's axis (for easier mounting) and a "coaxial" position (for stable rotation during operation). The claims focus on the geometric relationship and relative movement between the drum, its axis, and the coupling member's axis. (Compl. ¶10; ’021 Patent, Abstract; col. 2:36-56).
  • Technical Importance: This approach seeks to provide a robust and user-friendly method for connecting a replaceable component to a power source inside a complex machine, which is critical for the function and maintenance of laser printers. (Compl. ¶10; ’021 Patent, col. 3:1-4).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶33).
  • Independent Claim 1 includes the following essential elements:
    • A process cartridge comprising a casing.
    • Developers contained within the casing.
    • A photosensitive drum rotatably supported in the casing, having a first axis (L1).
    • A developing roller to develop a latent image on the drum, having an axis parallel to the drum's axis.
    • A coupling member having a second axis (L2) and connected to the drum and the developing roller.
    • The coupling member is movable between a first position and a second position, where in the second position the coupling member's axis (L2) is coaxial with the drum's axis (L1).
  • The complaint also alleges infringement of dependent claims 2, 4, 5, and 7. (Compl. ¶33).

U.S. Patent No. 9,841,727 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’727 Patent)

  • Technology Synopsis: This patent relates to a process cartridge with a movable coupling member and a "guide member" that helps position the coupling member as the cartridge is mounted into the printer. The invention focuses on the relative positioning of the coupling member's projection and the guide member in different configurations. (Compl. ¶11; ’727 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16. (Compl. ¶41).
  • Accused Features: The accused cartridges are alleged to have the claimed combination of a movable coupling member and a guide member for positioning. (Compl. ¶41).

U.S. Patent No. 9,841,728 - “Process Cartridge, Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge” (’728 Patent)

  • Technology Synopsis: This patent also describes a process cartridge with a movable coupling member and a guide member. The claims focus on specific distances and geometric relationships between a projection on the coupling member and the guide member, which change as the cartridge is inserted and removed. (Compl. ¶12; ’728 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16. (Compl. ¶49).
  • Accused Features: The accused cartridges are alleged to embody the specific geometric and positional relationships between the coupling and guide members as claimed. (Compl. ¶49).

U.S. Patent No. 9,841,729 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’729 Patent)

  • Technology Synopsis: This patent describes a process cartridge where the coupling member is movable between different positions. The claims are directed to the distances between a projection on the coupling member and an outer surface of the cartridge casing, which change as the coupling member moves. (Compl. ¶13; ’729 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 9, and 18. (Compl. ¶57).
  • Accused Features: The accused cartridges are alleged to feature a movable coupling member with projections that satisfy the claimed distance relationships relative to the cartridge casing. (Compl. ¶57).

U.S. Patent No. 9,857,764 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’764 Patent)

  • Technology Synopsis: This patent is directed to a drum unit for a process cartridge, including the photosensitive drum and the movable coupling member. The claims focus on the relationship where the distance from the coupling member's axis to the drum's outer surface increases as the coupling moves from a first position to a second. (Compl. ¶14; ’764 Patent, Abstract).
  • Asserted Claims: Independent claim 7. (Compl. ¶65).
  • Accused Features: The drum units within the accused cartridges are alleged to have the claimed movable coupling member with its specified geometric movement. (Compl. ¶65).

U.S. Patent No. 9,857,765 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’765 Patent)

  • Technology Synopsis: This patent describes a process cartridge where the coupling member's movement is facilitated by a connection to a drum flange. The claims specify various geometric relationships of the coupling member, including how its distance from the drum's axis changes as it moves. (Compl. ¶15; ’765 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 4, and 13. (Compl. ¶73).
  • Accused Features: The accused cartridges are alleged to possess the claimed movable coupling member and drum flange combination. (Compl. ¶73).

U.S. Patent No. 9,869,960 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’960 Patent)

  • Technology Synopsis: This patent describes a process cartridge where the coupling member is movable between positions defined by the distance of its projection from the photosensitive drum. The claims also require a specific relationship between the coupling member and a protrusion on the cartridge casing. (Compl. ¶16; ’960 Patent, Abstract).
  • Asserted Claims: Independent claim 1. (Compl. ¶81).
  • Accused Features: The accused cartridges are alleged to have the claimed combination of a movable coupling member and casing protrusion that satisfies the specified geometric constraints. (Compl. ¶81).

U.S. Patent No. 9,874,846 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit” (’846 Patent)

  • Technology Synopsis: This patent is directed to a drum unit within a cartridge. It claims a movable coupling member connected to a drum flange, where the coupling member has specific inner and outer portions and is movable between positions defined by the distances of its projection from the drum. (Compl. ¶17; ’846 Patent, Abstract).
  • Asserted Claims: Independent claim 1. (Compl. ¶89).
  • Accused Features: The drum units within the accused cartridges are alleged to infringe by having the claimed flange, movable coupling member, and specific geometric features. (Compl. ¶89).

III. The Accused Instrumentality

Product Identification

Defendant's replacement toner cartridges, including specific models HE-CE505A-N(II) and HE-CF280A-N(II), which are designed for use in various Canon and HP laser printers. (Compl. ¶¶20-21).

Functionality and Market Context

The accused products are third-party consumable cartridges sold to replace original equipment manufacturer (OEM) cartridges in a wide range of popular office laser printers. (Compl. ¶20). The complaint includes a photograph of one of the accused cartridges, model HE-CE505A-N(II), showing its external housing and coupling end. (Compl. ¶21). The functionality at issue is the mechanical interface that allows the cartridge to be inserted into a printer and receive rotational force from the printer's drive motor to operate its internal components, such as the photosensitive drum. (Compl. ¶¶23, 25). The complaint alleges these products are part of a business of selling and/or importing replacement toner cartridges into the United States. (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint alleges that claim charts detailing infringement are attached as Exhibits J through R, but these exhibits were not filed with the complaint. (Compl. ¶¶25, 33, 41, 49, 57, 65, 73, 81, 89). Therefore, the analysis is based on the narrative allegations.

Canon alleges that the accused toner cartridges, such as the representative "Type C" model HE-CE505A-N(II), contain all the elements of the asserted claims. (Compl. ¶¶25, 33). The core of the infringement theory is that the accused cartridges contain a photosensitive drum and a coupling member at one end that is movable, as required by the claims, to engage with the printer's drive mechanism. The photographs provided show the external structure of the accused cartridge, including the end that would house the coupling mechanism. (Compl. ¶21). The infringement allegations for all nine patents center on the specific mechanical structure, geometry, and movement capabilities of this coupling member and its interaction with other parts of the cartridge. (Compl. ¶¶25, 33, 41, 49, 57, 65, 73, 81, 89).

Identified Points of Contention

  • Scope Questions: A central issue will be the construction of terms defining the movement of the coupling. For example, what is the scope of being "movable between (i) a first position... and (ii) a second position," and do the accused devices exhibit this claimed range and type of movement? (Compl. ¶25; ’826 Patent, col. 84:10-14). The dispute may also involve the precise meaning of geometric limitations, such as when a projection is a certain "distance away from the photosensitive drum." (Compl. ¶25; ’826 Patent, col. 84:11-16).
  • Technical Questions: Evidentiary questions will focus on the actual physical operation of the accused cartridges. Does the coupling member in the accused cartridges in fact move between distinct "inclined" and "coaxial" positions as described in the ’021 Patent? (Compl. ¶33; ’021 Patent, Abstract). A key technical question will be whether the accused products meet the numerous, specific distance and angular limitations recited across the various asserted claims.

V. Key Claim Terms for Construction

  • The Term: "coupling member"

    • Context and Importance: This term appears in the independent claims of all asserted patents and is the central component of the invention. Its construction will define the universe of structures that can infringe. Practitioners may focus on this term because the dispute hinges on whether the specific mechanical component on the end of the accused cartridge's drum is properly characterized as the claimed "coupling member."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims define the term functionally as a member that is "operatively connected to the photosensitive drum" and has certain portions for engagement. (’826 Patent, col. 84:3-9). The specification describes numerous embodiments of the coupling (e.g., 150, 1150, 1250, etc.), suggesting the term is not limited to any single structure. (e.g., ’826 Patent, col. 78:3-7).
      • Evidence for a Narrower Interpretation: The detailed description and figures consistently show a specific type of component with projections and a central opening designed to engage a drive shaft pin. (e.g., ’826 Patent, Fig. 8, Abstract). A defendant may argue that the term should be limited to structures with these shared characteristics, potentially excluding accused devices with different engagement mechanisms.

  • The Term: "movable between (i) a first position... and (ii) a second position"

    • Context and Importance: This functional language, present in various forms across the asserted claims, is critical to defining the inventive concept. Infringement will depend on whether the accused coupling is "movable" in the specific manner claimed.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the movement as allowing the coupling to "pivot," "swing," or "incline" relative to the drum's axis, suggesting that any of these motions could satisfy the "movable" limitation. (e.g., ’826 Patent, col. 16:34-36; col. 19:43-46).
      • Evidence for a Narrower Interpretation: The claims themselves impose specific geometric consequences of the movement, such as the axis L2 becoming "coaxial with the axis L1" or the distance of a projection changing in a specific way. (e.g., ’021 Patent, col. 84:50-52). A defendant may argue that "movable" must be construed in light of these functional outcomes, limiting the term to movement that achieves these precise results, not just any incidental wobble or play in the component.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The factual basis alleged is that the Defendant promotes its cartridges for use in specific printers and provides customers with instructions for using them, thereby encouraging customers (the direct infringers) to put the cartridges into an infringing use. (Compl. ¶¶24, 32, 40, 48, 56, 64, 72, 80, 88).
  • Willful Infringement: The complaint does not use the word "willful." However, for each patent, it alleges that "at the very latest, Defendant will be given notice of its infringement... upon being served with this Complaint," and that on information and belief, Defendant "knowingly induces" infringement. (Compl. ¶¶24, 32, 40, 48, 56, 64, 72, 80, 88). This language lays the foundation for a claim of post-filing willful infringement by putting the Defendant on notice.

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

  • A core issue will be one of claim construction and scope: can the numerous, specific geometric and positional limitations recited across the nine patents (e.g., "movable" between positions, specific distances, coaxial alignment) be construed to read on the mechanical structure of the accused third-party cartridges? The high degree of similarity between the patents suggests they cover different facets of the same core coupling mechanism, and the case may depend on which, if any, of these specific descriptions applies to the accused products.
  • A key evidentiary question will be one of technical operation: what is the precise nature and extent of movement, if any, of the coupling member on the accused cartridges during insertion and operation? The dispute will likely require expert testimony and technical analysis to compare the real-world function of the accused devices against the detailed mechanics described and claimed in the patents-in-suit.
  • The case also presents a strategic question regarding the parallel ITC proceeding. Developments in that forum, which typically moves faster than district court, could significantly influence this case, particularly if the ITC issues an early determination on infringement or validity.