Seiko Epson Corp A Japan Corp v. Prinko Image Co USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seiko Epson Corporation (Japan); Epson America, Inc. (California); and Epson Portland Inc. (Oregon)
  • Defendant: Prinko Image Co. (USA), Inc. (California)
  • Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
• Case Identification: 2:17-cv-04501, C.D. Cal., 06/16/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the judicial district and has committed acts of direct and indirect patent infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s aftermarket ink cartridges, sold under brands including "O'Image" and "Prinko Image Co," infringe two U.S. patents covering the design and electronic functionality of ink cartridges.
• Technical Context: The technology concerns the electronic interface and mechanical design of "smart" ink cartridges for inkjet printers, a market characterized by intense competition between original equipment manufacturers (OEMs) and third-party compatible cartridge suppliers.
• Key Procedural History: The complaint details an extensive history of prior litigation. Notably, the ’917 patent was previously litigated in the U.S. International Trade Commission (ITC) Investigation No. 337-TA-565, which resulted in a General Exclusion Order. The complaint alleges that Defendant Prinko was the subject of a specific Seizure and Forfeiture Order issued in that investigation on June 9, 2016. The ’749 patent was litigated in ITC Investigation No. 337-TA-946, which also resulted in a General Exclusion Order. This history is central to the complaint's allegations of willful infringement.

Case Timeline

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

U.S. Patent No. 6,502,917 - "Ink-Jet Printing Apparatus and Ink Cartridge Therefor," Issued January 7, 2003

The Invention Explained

• Problem Addressed: The patent describes a problem in "smart" ink cartridges where rough handling or improper insertion by a user could cause the electrical contacts for the on-board memory chip to connect improperly or in the wrong sequence, leading to data corruption or loss (’917 Patent, col. 2:1-11).
• The Patented Solution: The invention proposes a specific physical arrangement of the cartridge's electrical contacts on a circuit board. By locating the circuit board near the ink supply port and defining the geometry of the contacts, the design ensures that electrical connections are made in a reliable and predetermined order as the cartridge is seated, protecting the data on the semiconductor storage device (’917 Patent, Abstract; col. 6:40-65).
• Technical Importance: This design aimed to increase the reliability of smart cartridges, which enabled printers to accurately track ink levels and verify cartridge authenticity, a key feature in the competitive printer supply market (’917 Patent, col. 1:49-65).

Key Claims at a Glance

• The complaint asserts infringement of "numerous claims" and provides an exemplary analysis of independent claim 9, as amended by a reexamination certificate (Compl. ¶¶ 18, 21).
• Essential Elements of Claim 9:
  • An ink cartridge for mounting on a printer carriage and supplying ink through a needle.
  • A plurality of external walls defining a chamber.
  • An ink supply port with an exit opening for receiving the needle.
  • A semiconductor storage device for storing information about the ink.
  • A plurality of contacts for connecting the storage device to the printer, with the contacts arranged in a plurality of rows.
  • One row of contacts is closer to the ink supply port's exit opening than the other.
  • The row of contacts closest to the exit opening is "longer than" the row that is furthest.
• The complaint does not explicitly reserve the right to assert dependent claims but references "numerous claims" of the patent (Compl. ¶18).

U.S. Patent No. 8,794,749 - "Printing Material Container, and Board Mounted on Printing Material Container," Issued August 5, 2014

The Invention Explained

• Problem Addressed: The patent identifies the risk of electrical short-circuits on an ink cartridge that contains both low-voltage components (like a memory chip) and high-voltage components (like a piezoelectric sensor for detecting ink levels). An accidental bridge between terminals, such as from an ink drop, could damage the low-voltage circuitry in the cartridge or the printer (’749 Patent, col. 1:30-55).
• The Patented Solution: The invention discloses a specific terminal arrangement on the cartridge's circuit board. It strategically places "high voltage electronic device contact portions" at the ends of a row of terminals. This arrangement creates a greater physical separation from the low-voltage terminals, reducing the likelihood of a damaging short circuit and enabling the printer to detect such a short if it occurs (’749 Patent, col. 2:1-24; FIG. 3A).
• Technical Importance: This technology addresses a critical reliability challenge in advanced ink cartridges that integrate multiple electronic systems operating at different voltages, allowing for more sophisticated features without compromising the safety of the printer or cartridge electronics (’749 Patent, col. 1:44-55).

Key Claims at a Glance

• The complaint asserts infringement of "numerous claims" and provides an exemplary analysis of independent claim 1 (Compl. ¶¶ 31-32).
• Essential Elements of Claim 1:
  • A printing material container (ink cartridge) adapted to be inserted into a printing apparatus.
  • An ink supply opening.
  • A low voltage electronic device (e.g., a memory device).
  • A high voltage electronic device operating at a higher voltage.
  • A plurality of container-side terminals with contact portions.
  • The contact portions are arranged in a first and second row, oriented generally orthogonal to the insertion direction.
  • The first row is disposed further in the insertion direction than the second row.
  • The first row of contacts has first and second end positions, with a "first high voltage electronic device contact portion" at the first end and a "second high voltage electronic device contact portion" at the second end.
• The complaint does not explicitly reserve the right to assert dependent claims but references "numerous claims" of the patent (Compl. ¶31).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are aftermarket ink cartridges sold by Defendant Prinko under various names including "O'Image," "Prinko Image Co," and as generic or unbranded products (Compl. ¶¶ 12-13). The complaint identifies specific model numbers, such as 200XL, 127XL, T0782, and T676XL1, that are compatible with Epson inkjet printers (Compl. ¶¶ 20, 31).

Functionality and Market Context

• The accused products are designed to function as direct replacements for genuine Epson ink cartridges (Compl. ¶¶ 12-13). The complaint alleges they are sold online through platforms like Amazon and Walmart and incorporate the structural and electronic features of the asserted patents, including a circuit board with a memory chip and a specific arrangement of electrical contacts (Compl. ¶¶ 21, 32). A screenshot of an Amazon.com product listing describes the accused product as "Compatible Ink Cartridges XL Replacement for Epson 676" (Compl. ¶12, p. 6). The products are positioned in the market as lower-cost alternatives to the Plaintiffs' OEM cartridges.

IV. Analysis of Infringement Allegations

6,502,917 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The infringement theory relies on a direct, physical correspondence between the accused cartridge and the patented design. A potential point of contention, though not apparent from the complaint, could be the interpretation of "longer than." The complaint relies on physical length (Compl. p. 18-19), but a defendant could argue it relates to the number of contacts or another metric if the specification provides support.
  • Technical Questions: A key question is whether the "semiconductor storage device" on the accused cartridge in fact "stor[es] information about the ink," as claimed, or if it performs a different function (e.g., merely identifying the cartridge as compatible). The complaint provides screenshots of ink level depletion as evidence that it does store such information (Compl. pp. 13-15).

8,794,749 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The dispute may center on the definitions of "high voltage electronic device" and "low voltage electronic device." While the claim provides a relative definition ("which is a higher voltage"), a defendant might argue the terms are limited to the specific embodiments disclosed (piezoelectric sensor and memory chip).
  • Technical Questions: The core technical question is whether the accused cartridge's circuit operates as alleged. Does it actually have separate high-voltage and low-voltage systems connected to the specific terminals as claimed? The complaint's evidence is based on physical inspection and observation of printer behavior (Compl. pp. 25-28), which raises the question of what evidence demonstrates the actual electronic function within the accused device.

V. Key Claim Terms for Construction

For the ’917 Patent

• The Term: "longer than" (from claim 9)
• Context and Importance: This term defines a specific geometric relationship between the two rows of contacts. Infringement requires that the row of contacts closer to the ink port is physically "longer than" the other row. Its construction is critical because a defendant could attempt to design a cartridge where this precise dimensional constraint is not met.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of this element. A party could argue the term relates to the number of contacts in the row, not just physical length, if supported by the specification.
  • Evidence for a Narrower Interpretation: The plain meaning of the word suggests a physical dimension. The patent's figures, such as FIG. 7(c), depict the electrode 60-2 in the lower row as having a greater width (W2) than the electrodes 60-1 in the upper row (W1), supporting a physical length interpretation (’917 Patent, FIG. 7(c)). The complaint's infringement theory rests on this direct physical measurement (Compl. p. 18).

For the ’749 Patent

• The Term: "high voltage electronic device contact portion" (from claim 1)
• Context and Importance: The invention's purpose is to segregate high- and low-voltage systems. The definition of the contacts associated with the "high voltage" system is therefore central to the infringement analysis. The claim requires these specific contacts to be placed at the "ends" of the contact row.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language broadly defines the device itself as one that functions with a "higher voltage" than the low voltage device (’749 Patent, col. 29:8-11). The contact portion would therefore be any contact electrically coupled to such a device.
  • Evidence for a Narrower Interpretation: The specification consistently describes the high-voltage system in the context of a piezoelectric element used as an ink level sensor, which is driven by a significantly higher voltage (e.g., 36V) than the memory chip (e.g., 3.3V) (’749 Patent, col. 9:49-65). A party might argue the term is implicitly limited to contacts for such a sensor, not just any component with a marginally higher voltage.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The allegations state that Defendant offers to sell and sells components (the accused cartridges) that are especially made for infringing use with Epson printers, are not staple articles of commerce, and that Defendant knows they are so adapted (Compl. ¶¶ 22-23, 33-34). Inducement is alleged based on Defendant selling the cartridges for use by end-users in a manner that directly infringes.
• Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful for both patents (Compl. ¶¶ 27, 38). The claim is supported by allegations of extensive pre-suit knowledge. Specifically for the ’917 patent, the complaint cites a Seizure and Forfeiture Order issued by the ITC against Prinko in a prior investigation (337-TA-565) involving the same patent and similar products, as well as notice from U.S. Customs (Compl. ¶¶ 15, 22). This alleges direct, official notice of infringement.

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

• A central issue will be the strength and consequence of the willfulness allegations. Given that the complaint pleads that Defendant was the subject of a specific ITC Seizure and Forfeiture Order related to the ’917 patent, the key question for the court may not be whether there was pre-suit knowledge, but how to assess the objective baselessness of any defense and the appropriate scope of enhanced damages.
• A key evidentiary question will be one of technical identity: while the accused cartridges physically resemble the patented designs, the case may turn on evidence proving that they also function identically. Does the accused "semiconductor storage device" actually store and update ink level data as required by the ’917 patent, and does the accused circuit board in fact manage separate "high" and "low" voltage systems as described in the ’749 patent?
• A final question concerns design-around viability: can the specific geometric and positional limitations of the claims—such as the "longer than" requirement of the ’917 patent or the placement of high-voltage contacts at the "ends" of a row in the ’749 patent—be avoided with minor modifications that preserve functionality, or are they fundamental to compatibility, making infringement nearly unavoidable for a functional replacement cartridge?