DCT

2:18-cv-01664

Canon Inc v. Aster Graphics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01664, C.D. Cal., 02/28/2018
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Aster Graphics, Inc. is a California corporation that resides and has a regular and established place of business in the district. Venue over the two foreign defendants, Jiangxi Yibo E-tech Co., Ltd. and Aster Graphics Co., Ltd., is asserted on the basis that they may be sued in any judicial district where they are subject to personal jurisdiction.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges for Canon and HP laser printers infringe nine patents related to a mechanical coupling mechanism for connecting a process cartridge to an image forming apparatus.
  • Technical Context: The technology concerns the mechanical interface between a consumable printer cartridge and the main printer body, a critical component for ensuring reliable operation in the high-volume printer and consumables market.
  • Key Procedural History: The complaint states that this district court action is related to and was filed concurrently with a proceeding at the U.S. International Trade Commission (ITC), involving the same parties, patents, and accused products. An ITC investigation can lead to an exclusion order barring importation of infringing products, a remedy distinct from the monetary damages sought in district court.

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 Nos. 9,841,727, 9,841,728, and 9,841,729 Issue
2018-01-02 U.S. Patent Nos. 9,857,764 and 9,857,765 Issue
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"

The Invention Explained

  • Problem Addressed: The patent describes a problem in conventional printer designs where a removable process cartridge (e.g., a toner cartridge) must be precisely aligned with a drive shaft in the main printer body to receive rotational force. If misaligned, the connection can fail, preventing the photosensitive drum from rotating smoothly and leading to poor image quality or device malfunction (Compl. ¶1; ’826 Patent, col. 1:15-43).
  • The Patented Solution: The invention is a specific type of coupling mechanism on the end of the photosensitive drum within the cartridge. This "coupling member" is designed to be movable and pivotable relative to the drum's axis. This mobility allows the coupling to engage with the printer's drive shaft even if the cartridge is not perfectly aligned during insertion, ensuring a reliable transfer of rotational force for smooth operation ('826 Patent, Abstract; col. 2:40-52). The geometry of the coupling, including specific projections and surfaces, facilitates this self-aligning engagement ('826 Patent, Fig. 8).
  • Technical Importance: This approach aims to improve the user experience and reliability of printers with replaceable cartridges by making the mechanical connection between the consumable and the main device more robust and less sensitive to user insertion error.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6 ('826 Patent, col. 83:67-86:20; Compl. ¶29).
  • Independent Claim 1 includes these essential elements:
    • A process cartridge comprising a casing, a photosensitive drum, a developing roller, and a coupling member.
    • The photosensitive drum is rotatably supported about a first axis (L1).
    • The coupling member has a second axis (L2) and is connected to the drum.
    • The coupling member includes a first end portion with at least one projection, a second end portion, and a connecting portion between them.
    • The coupling member is movable between a first position and a second position, where in the second position, the tip of the projection is a greater distance away from the drum than in the first position.
  • Independent Claim 6 includes these essential elements:
    • A process cartridge comprising a casing, a photosensitive drum, a developing roller, and a coupling member.
    • The coupling member has a second axis (L2) and is operatively connected to the drum and roller.
    • The coupling member is movable between a first position where it is coaxial with the drum's axis (L1) and a second "inclined position."
    • The maximum angle of inclination is between about 20 to 60 degrees.

U.S. Patent No. 9,836,021 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

The Invention Explained

  • Problem Addressed: Similar to the '826 Patent, this patent addresses the challenge of ensuring a stable and reliable transmission of rotational force from a printer's main body to a detachably mounted process cartridge, particularly when the cartridge may not be perfectly aligned upon insertion (’021 Patent, col. 1:15-43).
  • The Patented Solution: The patent also discloses a movable coupling member on the process cartridge that can engage with a drive shaft from the main apparatus. This coupling is designed to be movable between different positions and angles relative to the drum's axis to accommodate misalignment. The claims of the ’021 patent focus on different specific geometric and positional relationships of the coupling member and its projections compared to the '826 patent (’021 Patent, Abstract; col. 2:40-52).
  • Technical Importance: This technology represents an alternative configuration for a self-aligning coupling, aiming to achieve the same goal of enhanced reliability and ease of use in printers with consumable cartridges.

Key Claims at a Glance

  • The complaint asserts independent claims 1, 8, and 14 (’021 Patent, col. 84:1-87:14; Compl. ¶¶38-39).
  • Independent Claim 1 includes these essential elements:
    • A process cartridge with a casing, drum, roller, and a guide member.
    • A coupling member movable between a first configuration and a second configuration.
    • In the first configuration, a projection tip is a first distance from the drum; in the second, it is a second distance from the drum.
    • The first distance is greater than the second distance.
  • Independent Claim 8 includes these essential elements:
    • A process cartridge with a casing, drum, roller, and a coupling member with wing portions.
    • The coupling member is movable between a first position and a second position relative to the drum axis (L1).
    • A specific geometric relationship where the distance to one projection is greater in the second position than the first, while the distance to another projection is equal or greater.
  • Independent Claim 14 includes these essential elements:
    • A process cartridge with a casing, drum, roller, and a coupling member.
    • The coupling is movable between a first position and a second "inclined position" relative to the drum's axis (L1).
    • A specific geometric relationship where the distance from the drum axis to the outer surface of the coupling portion increases as the distance along the line perpendicular to the axis increases.

U.S. Patent No. 9,841,727 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,841,727, issued Dec. 12, 2017, with a similar title.
  • Technology Synopsis: This patent relates to the same family of inventions, describing a process cartridge with a coupling member designed to move and pivot. The claims focus on the relative positioning of the coupling member and a guide member on the cartridge.
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶47).
  • Accused Features: The coupling mechanism of the accused replacement toner cartridges (Compl. ¶47).

U.S. Patent No. 9,841,728 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,841,728, issued Dec. 12, 2017, with a similar title.
  • Technology Synopsis: This patent relates to the same family of inventions, describing a process cartridge with a movable coupling member. The claims focus on the change in distance between a projection on the coupling member and the photosensitive drum as the coupling moves between different configurations.
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶56).
  • Accused Features: The coupling mechanism of the accused replacement toner cartridges (Compl. ¶56).

U.S. Patent No. 9,841,729 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,841,729, issued Dec. 12, 2017, with a similar title.
  • Technology Synopsis: This patent relates to the same family of inventions, describing a process cartridge with a movable coupling member. The claims focus on specific geometries of the coupling member, including an outer portion, an inner portion, and a connecting portion.
  • Asserted Claims: Independent claims 1, 9, and 18 (Compl. ¶65).
  • Accused Features: The coupling mechanism of the accused replacement toner cartridges (Compl. ¶65).

U.S. Patent No. 9,857,764 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,857,764, issued Jan. 2, 2018, with a similar title.
  • Technology Synopsis: This patent, also from the same family, describes a drum unit for a process cartridge with a movable coupling member. The claims focus on the geometric relationship between the coupling member's position and an "urging member," such as a spring, that positions the coupling.
  • Asserted Claims: Independent claim 7 (Compl. ¶73).
  • Accused Features: The coupling mechanism and drum units within the accused replacement toner cartridges (Compl. ¶73).

U.S. Patent No. 9,857,765 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,857,765, issued Jan. 2, 2018, with a similar title.
  • Technology Synopsis: This patent relates to the same family of inventions, describing a process cartridge with a movable coupling member. The claims focus on the presence of a "protrusion" on the casing that is positioned adjacent to the coupling member.
  • Asserted Claims: Independent claims 1, 4, and 13 (Compl. ¶81).
  • Accused Features: The coupling mechanism of the accused replacement toner cartridges (Compl. ¶81).

U.S. Patent No. 9,869,960 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,869,960, issued Jan. 16, 2018, with a similar title.
  • Technology Synopsis: This patent relates to the same family of inventions, describing a process cartridge with a movable coupling member. The claims focus on the geometry of a drum flange at the end of the photosensitive drum and its relationship to the coupling member.
  • Asserted Claims: Independent claims 1 and 9 (Compl. ¶90).
  • Accused Features: The coupling mechanism of the accused replacement toner cartridges (Compl. ¶90).

U.S. Patent No. 9,874,846 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,874,846, issued Jan. 23, 2018, with a similar title.
  • Technology Synopsis: This patent, also from the same family, describes a drum unit for a process cartridge with a movable coupling member. The claims are directed to the specific geometry of the coupling member itself, including an inner portion, an outer portion, and a middle portion.
  • Asserted Claims: Independent claim 1 (Compl. ¶99).
  • Accused Features: The coupling mechanism and drum units within the accused replacement toner cartridges (Compl. ¶99).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are replacement toner cartridges and their components (e.g., photosensitive drum units) sold and/or imported by the Defendants for use in various Canon and HP laser printers (Compl. ¶23). The complaint identifies two representative product categories: "Type A" cartridges, exemplified by model ZY-CE505A, and "Type B" cartridges, exemplified by model AP-HF226A (Compl. ¶¶24, 25).
  • Functionality and Market Context: The accused products are consumables designed to be user-installable replacements for original manufacturer cartridges in a wide range of popular office and enterprise printers (Compl. ¶23, pp. 5-6). Functionally, they contain toner and a photosensitive drum, and must mechanically couple with the printer's internal drive motor to rotate the drum and perform the printing process. The complaint provides a photograph of a representative "Type A" accused product, model ZY-CE505A, showing the cartridge and its retail packaging (Compl. p. 6). It also includes a photograph of the "Type B" cartridge, model AP-HF226A (Compl. p. 7).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused "Type A" and "Type B" toner cartridges infringe the asserted patents, and incorporates by reference external exhibits containing detailed claim charts (e.g., Compl. ¶¶29, 30, 38, 39). As these exhibits were not filed with the complaint, the infringement theory is summarized below based on the complaint's narrative allegations.

  • Narrative Infringement Theory (U.S. Patent No. 9,746,826): Canon alleges that the Defendants' accused toner cartridges, including both "Type A" and "Type B" models, contain all the elements of at least independent claims 1 and 6 of the '826 patent (Compl. ¶¶29, 30). The allegation centers on the cartridges' coupling mechanism, which is purported to be movable between different positions relative to the photosensitive drum's axis in a manner that satisfies the specific positional and angular limitations of the claims.
  • Narrative Infringement Theory (U.S. Patent No. 9,836,021): Canon alleges that the "Type A" and "Type B" accused cartridges contain all the elements of at least independent claim 1 of the '021 patent, as well as other claims (Compl. ¶¶38, 39). The theory is that the physical structure and operation of the coupling member on the accused cartridges meet the specific geometric and distance-based limitations recited in the claims of the ’021 patent.
  • Identified Points of Contention:
    • Scope Questions: A central issue may be the interpretation of the claims' specific positional and geometric requirements. For example, for the '826 patent, a dispute may arise over what constitutes the claimed "first position" and "second position" of the coupling member and whether the accused devices are in fact "movable" between such positions as defined by the patent.
    • Technical Questions: The infringement analysis will likely require detailed factual evidence, such as measurements and expert testimony, to determine if the physical structures of the accused cartridges meet the precise dimensional and angular limitations of the claims. For example, a key question for claim 6 of the ’826 patent will be whether the accused coupling member has a "maximum angle of inclination... of about 20 degrees to about 60 degrees."

V. Key Claim Terms for Construction

  • The Term: "coupling member" ('826 Patent, Claim 1)

  • Context and Importance: This term defines the core component of the invention. Its construction will determine the scope of structures that can be found to infringe. Practitioners may focus on this term because the patents-in-suit appear to describe a very specific type of coupling, and the breadth of this term will be central to the infringement analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims describe the member functionally as something that is "operatively connected" to the drum and capable of being moved, suggesting the term could cover any structure that performs this role ('826 Patent, col. 84:1-10).
    • Evidence for a Narrower Interpretation: The specification provides detailed descriptions and figures of specific embodiments of the coupling member (e.g., "coupling 150"), showing distinct "projections," "recesses," and surfaces ('826 Patent, col. 14:24-65; Fig. 8). A defendant may argue these embodiments limit the term to structures with these specific features.

  • The Term: "movable between (i) a first position ... and (ii) a second position" ('826 Patent, Claim 1)

  • Context and Importance: This language defines the required motion of the coupling member. The existence and definition of these two distinct positions will be a critical element of proof for infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself does not specify what causes the movement or the exact nature of the positions, only that the member is "movable" between them. This could support an interpretation that covers any cartridge where the coupling can occupy these two states, regardless of the mechanism.
    • Evidence for a Narrower Interpretation: The specification describes these positions in the context of mounting and demounting the cartridge, where the coupling engages and disengages with the printer's drive shaft ('826 Patent, col. 25:10-26:56). A defendant may argue that the "first" and "second" positions must correspond to these specific engaged and pre-engagement states as shown in figures like Fig. 21 and Fig. 22.

VI. Other Allegations

  • Indirect Infringement: For each of the nine asserted patents, Canon alleges inducement of infringement. The complaint asserts that Defendants knowingly induce infringement by their customers, for example, by "promoting their cartridges for use in specific printers and/or providing customers with instructions for using their cartridges in those printers" (Compl. ¶28, ¶37, ¶46, ¶55, ¶64, ¶72, ¶80, ¶89, ¶98).
  • Willful Infringement: The complaint does not use the term "willful infringement." However, for each asserted patent, it includes a statement that "At the very latest, Defendants will be given notice of their infringement of the ['XXX] patent upon being served with this Complaint" (Compl. ¶28, ¶37, ¶46, ¶55, ¶64, ¶72, ¶80, ¶89, ¶98). This allegation may form the basis for a claim of post-filing willfulness, which can lead to enhanced damages if infringement is found.

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

This dispute appears to center on the highly specific mechanical design of a printer cartridge coupling. The outcome will likely depend on the answers to two primary questions:

  • A core issue will be one of definitional scope: How will the court construe the detailed geometric and positional limitations recited in the claims, such as the definitions of the "first position" and "second position" of the coupling member and the precise angular and distance relationships between its various parts? The patent specification's detailed embodiments may support a narrow construction, while the functional language in the claims may support a broader one.
  • A key evidentiary question will be one of structural correspondence: Assuming a claim construction is adopted, can Canon prove, through technical evidence and expert testimony, that the physical structures of Aster Graphics' accused cartridges meet every limitation of the asserted claims? The case may devolve into a meticulous, element-by-element comparison of the patented designs and the accused products.