DCT

2:18-cv-01671

Canon Inc v. Ourway US Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01671, C.D. Cal., 02/28/2018
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Ourway US Inc is a California corporation with a principal place of business in the district, and the other foreign-domiciled defendants are subject to personal jurisdiction in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ replacement toner cartridges, designed for use in certain Canon and HP laser printers, infringe seven U.S. patents related to the mechanical coupling mechanisms of process cartridges and photosensitive drum units.
  • Technical Context: The patents address the mechanical interface between a replaceable printer cartridge and the main printer body, focusing on designs that facilitate reliable installation and power transmission to the cartridge's internal components.
  • Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC) involving the same parties, patents, and accused products.

Case Timeline

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

  • Patent Identification: U.S. Patent No. 9,746,826, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued on August 29, 2017 (’826 Patent).

The Invention Explained

  • Problem Addressed: The patent describes the challenge of designing a user-replaceable process cartridge (e.g., a toner cartridge) that can be easily and reliably mounted into a printer. A key technical problem is ensuring that the cartridge’s photosensitive drum smoothly engages with the printer’s drive motor to receive rotational force without misalignment or instability, which could degrade image quality. (’826 Patent, col. 1:47-67).
  • The Patented Solution: The invention proposes a specific mechanical coupling member on the end of the photosensitive drum. This coupling is designed to be movable between a first, inclined position relative to the drum's axis during mounting and demounting, and a second, coaxial position when engaged with the printer's drive shaft. This movement facilitates easy installation while ensuring a stable, aligned connection for transmitting rotational force during operation. (’826 Patent, Abstract; col. 2:39-56).
  • Technical Importance: This design aims to provide a process cartridge that is both easy for a layperson to install and capable of maintaining the high precision required for smooth drum rotation in electrophotographic printing. (’826 Patent, col. 2:39-47).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6. (Compl. ¶29).
  • Independent Claim 1 includes the following essential elements:
    • A casing including an opening and a protrusion
    • A photosensitive drum rotatably supported in the casing
    • A developing roller
    • A coupling member connected to the drum, having a first end portion, a second end portion with at least one projection, and a connecting portion
    • The coupling member is movable between a first position where the projection is a first distance from the drum and a second position where it is a second, greater distance from the drum
  • Independent Claim 6 includes similar elements but defines the coupling member's movement relative to the protrusion on the casing. (’826 Patent, col. 84:30-61).
  • The complaint reserves the right to assert additional claims, including dependent claims. (Compl. ¶29).

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

  • Patent Identification: U.S. Patent No. 9,836,021, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued on December 5, 2017 (’021 Patent).

The Invention Explained

  • Problem Addressed: The technical problem is consistent with that of the ’826 Patent: enabling a process cartridge to be detachably mounted to a printer's main assembly while ensuring smooth and stable rotation of the photosensitive drum. (’021 Patent, col. 1:47-67).
  • The Patented Solution: The ’021 Patent also discloses a coupling mechanism to transfer rotational force from the printer to the cartridge's drum. The claims of this patent focus on specific structural features of the coupling member, such as a "wing portion" and an "end portion including wing portions," and define its movement through dimensional relationships between different parts of the coupling and the drum. (’021 Patent, Abstract; col. 84:22-42).
  • Technical Importance: This approach seeks to provide an alternative structural configuration for a coupling that achieves the same goals of user-friendly installation and reliable operational performance in a replaceable cartridge. (’021 Patent, col. 2:39-56).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶37).
  • Independent Claim 1 includes the following essential elements:
    • A developer
    • A photosensitive drum with a drum flange
    • A coupling member operatively connected to the drum and the developer, including:
      • A first end portion with a "wing portion"
      • A second end portion
      • A connecting portion
    • The coupling member is movable between a first and second position, defined by the distance of the wing portion's tip from the photosensitive drum
  • The complaint reserves the right to assert additional claims, including dependent claims. (Compl. ¶37).

U.S. Patent No. 9,841,727 - "Process Cartridge Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge"

  • Patent Identification: U.S. Patent No. 9,841,727, titled "Process Cartridge Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge," issued December 12, 2017. (Compl. ¶17).
  • Technology Synopsis: This patent relates to a process cartridge with a coupling member and a guide member. The invention focuses on the interaction between these two components to control the position and movement of the coupling member during installation and removal of the cartridge. (’727 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16. (Compl. ¶45).
  • Accused Features: The mechanical coupling and guiding structures of the accused replacement toner cartridges. (Compl. ¶¶43, 45).

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, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017. (Compl. ¶18).
  • Technology Synopsis: This patent describes a process cartridge where the coupling member is changeable between different configurations. The claims focus on the distance between a projection on the coupling member and the cartridge casing, which changes depending on the cartridge's position. (’728 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16. (Compl. ¶53).
  • Accused Features: The movable coupling mechanism of the accused replacement toner cartridges. (Compl. ¶¶51, 53).

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, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018. (Compl. ¶19).
  • Technology Synopsis: This patent discloses a process cartridge with a coupling member whose movement is defined by specific dimensional relationships. The claims recite maximum distances from the coupling member’s axis to various surfaces, ensuring proper clearance and movement during installation. (’765 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 13. (Compl. ¶61).
  • Accused Features: The coupling member of the accused toner cartridges, particularly its size and geometry relative to other components. (Compl. ¶¶59, 61).

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, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 16, 2018. (Compl. ¶20).
  • Technology Synopsis: This patent describes a process cartridge with a drum flange having inner and outer portions. The invention centers on a coupling member that connects to this drum flange and is movable between positions defined by the distances of its projections from the flange's surfaces. (’960 Patent, Abstract).
  • Asserted Claims: Independent claim 1. (Compl. ¶69).
  • Accused Features: The drum flange and coupling assembly within the accused replacement toner cartridges. (Compl. ¶¶67, 69).

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, titled "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 23, 2018. (Compl. ¶21).
  • Technology Synopsis: This patent relates to a drum unit for a process cartridge, including a photosensitive drum, a drum flange, and a movable coupling member. The claims focus on the specific geometry of the coupling member, including an outer portion, a middle portion, and an inner portion, and its movement relative to the drum. (’846 Patent, Abstract).
  • Asserted Claims: Independent claim 1. (Compl. ¶77).
  • Accused Features: The drum units, including the photosensitive drum and coupling mechanism, contained within the accused toner cartridges. (Compl. ¶¶75, 77).

III. The Accused Instrumentality

Product Identification

  • Defendants’ replacement toner cartridges, including the exemplary model CBT-CF226A. (Compl. ¶¶24-25).

Functionality and Market Context

  • The accused products are third-party consumable toner cartridges intended for use in a wide range of Canon and HP-branded laser beam printers. (Compl. ¶24). The complaint alleges these cartridges are sold, offered for sale, and/or imported into the United States by the Defendants. (Compl. ¶24). An image in the complaint depicts the packaging and appearance of the exemplary CBT-CF226A cartridge. (Compl. ¶25, p. 6).

IV. Analysis of Infringement Allegations

Although the complaint references claim chart exhibits that were not provided with the filing, the core infringement theory can be summarized. The complaint alleges that the physical components of the accused toner cartridges embody each element of the asserted claims.

’826 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A process cartridge comprising: a casing including an opening and at least one protrusion... The outer housing of the accused toner cartridge, which includes corresponding features. ¶29 col. 84:2-3
a photosensitive drum having an axis L1, the photosensitive drum being rotatably supported in the casing to permit rotation about the axis L1; The rotatable photosensitive drum contained within the accused cartridge. ¶29 col. 84:4-6
a developing roller... The developing roller contained within the accused cartridge. ¶29 col. 84:7-10
a coupling member having an axis L2 and including (i) a first end portion operatively connected to the photosensitive drum, (ii) a second end portion including at least one projection..., and (iii) a connecting portion connecting the first end portion and the second end portion... The mechanical coupling on the end of the drum in the accused cartridge used to engage the printer's drive mechanism. ¶29 col. 84:11-18
wherein the coupling member is movable between (i) a first position... and (ii) a second position... The alleged operational movement of the coupling member in the accused cartridge during installation and operation. ¶29 col. 84:19-28

’021 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A process cartridge comprising: a developer... a photosensitive drum... a drum flange provided at an end of the photosensitive drum... The internal components of the accused toner cartridge, including the developer, drum, and drum flange. ¶37 col. 84:2-8
a coupling member having an axis L2 and including (i) a first end portion at which a wing portion is provided, (ii) a second end portion, and (iii) a surface... The mechanical coupling of the accused cartridge, which allegedly includes a structure corresponding to the claimed "wing portion." ¶37 col. 84:22-30
wherein the coupling member is movable between (i) a first position... and (ii) a second position... The alleged range of motion of the coupling member in the accused cartridge. ¶37 col. 84:31-42

Identified Points of Contention

  • Technical Questions: The central dispute will likely involve a detailed mechanical analysis of the accused cartridges. A primary question is whether the coupling mechanisms in Defendants' products actually move between distinct "first" and "second" positions as defined by the specific geometric and positional language of the claims. The complaint makes conclusory allegations of infringement but does not provide evidence of how the accused couplings operate.
  • Scope Questions: The claims recite very specific structures (e.g., "protrusion," "wing portion") and relationships (e.g., "a first distance... is shorter than a distance..."). A likely point of contention will be whether the structures in the accused cartridges fall within the scope of these terms and meet the precise dimensional limitations required by the claims.

V. Key Claim Terms for Construction

For the ’826 Patent

  • The Term: "movable between (i) a first position... and (ii) a second position"
  • Context and Importance: This phrase defines the core functionality of the invention. The infringement analysis will turn on whether the accused coupling is "movable" in the specific manner claimed, which is tied to precise distance measurements relative to the drum axis. Practitioners may focus on whether this requires two discrete, stable positions or merely the capability of moving through a range that includes points meeting the definitions.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the general purpose is to allow the coupling to be "pivotable" to facilitate mounting, which may support a construction covering any coupling that tilts or inclines during installation. (’826 Patent, col. 2:44-56).
    • Evidence for a Narrower Interpretation: The claim language itself provides explicit, quantitative definitions for the "first position" and "second position" based on distances. Further, figures such as FIG. 22 and FIG. 23 illustrate distinct pre-engagement and engaged states, which may support a requirement for two well-defined operational states. (’826 Patent, col. 27:1-31).

For the ’021 Patent

  • The Term: "wing portion"
  • Context and Importance: This term is a primary structural element of the coupling member in independent claim 1. The existence and nature of a "wing portion" on the accused device will be a critical factual question.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit textual definition, which may support giving the term its plain and ordinary meaning as a side projection.
    • Evidence for a Narrower Interpretation: The specification consistently refers to structures "150a" and "150b" in figures like FIG. 8 as parts of the coupling member. A defendant may argue that the term "wing portion" is implicitly defined by and limited to the specific shape and configuration of these illustrated embodiments. (’021 Patent, FIG. 8; col. 15:1-10).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges inducement to infringe for all asserted patents. The factual basis for this allegation is that Defendants market and sell the accused cartridges for use in specific Canon and HP printers and provide instructions on how to use them, thereby allegedly encouraging and facilitating direct infringement by end-users. (Compl. ¶¶28, 36, 44, 52, 60, 68, 76).

Willful Infringement

  • The complaint does not contain an explicit allegation of willful infringement or pre-suit knowledge. However, for each asserted patent, it includes a statement that "At the very latest, Defendants will be given notice of their infringement of the [asserted] patent upon being served with this Complaint." (e.g., Compl. ¶28). This language serves to put Defendants on notice and may form the basis for a claim of post-filing willfulness if infringement continues.

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

This dispute appears to center on the highly specific mechanical design of the coupling in toner cartridges. The key questions for the court will likely be:

  • A core issue will be one of claim construction and scope: will the detailed geometric and positional limitations in the claims (e.g., "wing portion," specific distance relationships, movement between a "first" and "second" position) be interpreted narrowly to cover only the specific embodiments shown in the patents, or more broadly to encompass any functionally similar coupling in the accused aftermarket cartridges?
  • A key evidentiary question will be one of mechanical equivalence and operation: what evidence will be presented to demonstrate that the coupling mechanisms in the accused cartridges, as they are actually installed and used by consumers, perform the precise, multi-stage pivotal movements described and claimed in the patents-in-suit?