DCT

2:18-cv-01691

Canon Inc v. LD Products Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: LD Products, Inc. (California)
- Plaintiff’s Counsel: George B. Piggott, A Professional Corporation; Fitzpatrick, Cella, Harper & Scinto
Case Identification: 2:18-cv-01691, C.D. Cal., 02/28/2018
Venue Allegations: Venue is based on Defendant's incorporation in California, residence within the judicial district, commission of alleged infringing acts in the district, and maintenance of a regular and established place of business in the district.
Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, for use in certain Canon and HP laser printers, infringe nine U.S. patents related to the mechanical design of process cartridges, particularly their photosensitive drum units and coupling mechanisms.
Technical Context: The patents concern the mechanical coupling that transfers rotational force from a printer's main drive motor to the photosensitive drum within a replaceable toner cartridge, a critical component in electrophotographic printing.
Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed at the U.S. International Trade Commission (ITC), asserting the same patents against the same accused products. This dual-forum strategy is often employed by patent holders to seek both monetary damages in district court and an exclusion order from the ITC to block importation of infringing goods.

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

Issued: August 29, 2017

The Invention Explained

Problem Addressed: The patent describes the technical challenge of reliably transmitting rotational force from a printer's main body to the photosensitive drum inside a user-replaceable process cartridge. Misalignment between the printer's drive shaft and the cartridge's coupling can lead to rotational instability ("whirling motion") and non-uniform rotation of the drum, which can degrade image quality (’826 Patent, col. 2:1-33).
The Patented Solution: The invention is a specific design for a coupling member on the end of the photosensitive drum. This coupling has a unique geometry, including at least one "projection," that allows it to move between a first position and an inclined second position relative to the drum's axis (’826 Patent, Abstract; col. 2:34-56). This movability, or "pivoting," accommodates misalignment with the printer's drive shaft, ensuring a smooth and stable transfer of rotational force to the drum (’826 Patent, col. 29:39-49).
Technical Importance: This type of coupling mechanism is designed to improve the reliability and print quality of systems using replaceable cartridges by making the mechanical interface between the disposable cartridge and the permanent printer body more robust to manufacturing and installation tolerances (’826 Patent, col. 2:43-56).

Key Claims at a Glance

The complaint asserts independent claims 1 and 6 (’826 Patent, col. 84:1-86:20; Compl. ¶27).
Independent Claim 1 requires, in part:
- A process cartridge with a casing and a photosensitive drum rotatable on a first axis (axis L1).
- A coupling member on the drum with a second axis (axis L2).
- The coupling member includes 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 and a second, inclined position where the tip of the projection is a second distance away from the drum, with the second distance being greater than the first.
Independent Claim 6 requires, in part:
- A process cartridge with a casing, a photosensitive drum, and a developer-containing developing roller.
- A coupling member operatively connected to the photosensitive drum and the developing roller.
- The coupling member is movable between a first position and a second, inclined position relative to the drum axis.
The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶27).

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

Issued: December 5, 2017

The Invention Explained

Problem Addressed: Similar to the '826 patent, this patent addresses the problem of ensuring smooth rotation of a photosensitive drum within a detachable process cartridge when rotational force is applied from the main apparatus (’021 Patent, col. 2:1-33).
The Patented Solution: The invention also describes a movable coupling member at the end of the photosensitive drum designed to engage with a drive shaft from the printer. The claims focus on a specific geometric relationship of the coupling member, which has a "wing portion" and is movable between a first position and an inclined second position, where the distance of the wing's tip from the drum changes (’021 Patent, Abstract; col. 2:34-56). This configuration is intended to ensure stable torque transmission even with slight axial misalignment.
Technical Importance: This technology represents an alternative geometric configuration for a coupling mechanism aimed at achieving the same goal of reliable and stable operation in printers with user-replaceable cartridges (’021 Patent, col. 2:50-56).

Key Claims at a Glance

The complaint asserts independent claim 1 (’021 Patent, col. 84:1-42; Compl. ¶37).
Independent Claim 1 requires, in part:
- A process cartridge with a casing, a photosensitive drum (axis L1), and a developing roller.
- A coupling member (axis L2) operatively connected to the drum and roller.
- The coupling member has a first end portion, a second end portion with a "wing portion," and a connecting portion.
- The coupling member is movable between a first position and a second, inclined position where the distance from the drum's surface to the wing portion's tip increases.
The complaint reserves the right to assert additional claims (Compl. ¶37).

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

Issued: December 12, 2017
Technology Synopsis: This patent relates to a process cartridge with a coupling member and a "guide member." The invention focuses on the relative positioning and interaction between the guide member and the coupling member to control its movement and ensure proper engagement with the printer's drive shaft (’727 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶47).
Accused Features: The coupling and guide mechanisms of the accused toner cartridges (Compl. ¶¶45, 47).

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

Issued: December 12, 2017
Technology Synopsis: This patent is a family member to the '727 patent and also describes a process cartridge with a specific guide member and a movable coupling member. The claims describe a configuration where the distance between the tip of a projection on the coupling member and the end of the guide member changes as the coupling member moves between its positions (’728 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶57).
Accused Features: The coupling and guide mechanisms of the accused toner cartridges (Compl. ¶¶55, 57).

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

Issued: December 12, 2017
Technology Synopsis: This patent describes a process cartridge where the coupling member has an outer surface, and the distance from the coupling's axis to this outer surface changes along its length. This specific shaping is intended to facilitate the coupling's movement and proper engagement with the printer's drive mechanism (’729 Patent, Abstract).
Asserted Claims: Independent claims 1, 9, and 18 (Compl. ¶67).
Accused Features: The coupling mechanism of the accused toner cartridges (Compl. ¶¶65, 67).

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

Issued: January 2, 2018
Technology Synopsis: This patent focuses on an electrophotographic drum unit within a process cartridge. The claims describe a movable coupling member with a specific projection, where the distance from the coupling's axis to the outer surface of a connecting portion increases as it extends away from the drum (’764 Patent, Abstract).
Asserted Claims: Independent claim 7 (Compl. ¶75).
Accused Features: The drum units and coupling mechanisms within the accused toner cartridges (Compl. ¶¶73, 75).

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

Issued: January 2, 2018
Technology Synopsis: This patent is directed to a drum unit for a process cartridge with a movable coupling member. The claims focus on the relationship between the coupling member and an "urging member" (such as a spring) that is configured to urge the coupling member toward its first, uninclined position (’765 Patent, Abstract).
Asserted Claims: Independent claims 1 and 13 (Compl. ¶83).
Accused Features: The drum units, coupling mechanisms, and any associated urging members in the accused cartridges (Compl. ¶¶81, 83).

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

Issued: January 16, 2018
Technology Synopsis: This patent describes a process cartridge with a movable coupling member connected to a drum flange. The claims focus on the geometry of inner and outer portions of the coupling member and their relative distances from the drum's axis as the coupling moves (’960 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶93).
Accused Features: The coupling mechanism and drum flange of the accused toner cartridges (Compl. ¶¶91, 93).

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

Issued: January 23, 2018
Technology Synopsis: This patent describes a drum unit with a movable coupling member connected to a drum flange. The claims focus on the dimensional relationship between an outer surface of a connecting portion of the coupling and an outer surface of the drum flange (’846 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶103).
Accused Features: The drum units, including the drum flange and coupling mechanism, of the accused cartridges (Compl. ¶¶101, 103).

III. The Accused Instrumentality

Product Identification

The accused products are replacement toner cartridges sold by LD Products, Inc. for use in various Canon and HP laser beam printers (Compl. ¶20). The complaint specifically identifies models CF226X, CE255A, and CE505A as non-limiting examples (Compl. ¶¶21-23).

Functionality and Market Context

These products are third-party, compatible cartridges designed to function as direct replacements for original equipment manufacturer (OEM) cartridges in a wide range of popular laser printers (Compl. ¶20, p. 5). The complaint alleges that these cartridges contain components, such as photosensitive drum units and their associated coupling mechanisms, that perform the same function as the patented technology: receiving rotational force from the printer to operate the internal components of the cartridge (Compl. ¶¶25, 35). The complaint includes photographs of the accused CF226X cartridge, showing its external packaging and the cartridge itself (Compl. ¶21, p. 6). Similarly, it provides images of the accused CE255A and CE505A cartridges (Compl. ¶¶22-23, p. 6).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant's toner cartridges directly infringe the asserted patents and that Defendant induces its customers to infringe (e.g., Compl. ¶¶25-26). The complaint states that it incorporates by reference detailed claim charts as exhibits; however, these exhibits were not filed with the complaint document provided for this analysis. The narrative allegations for the lead patents are summarized below.

'826 Patent Infringement Allegations

The complaint alleges that the accused toner cartridges, including models CF226X, CE255A, and CE505A, infringe one or more claims of the ’826 Patent, including at least independent claims 1 and 6 (Compl. ¶¶27-29). The infringement theory is that the accused cartridges are "process cartridges" containing a photosensitive drum and a coupling member with the specific movable and geometric properties recited in the claims.

'021 Patent Infringement Allegations

The complaint alleges that the same accused toner cartridges also infringe one or more claims of the ’021 Patent, including at least independent claim 1 (Compl. ¶¶37-39). The infringement theory is that the accused cartridges contain a coupling member with the claimed "wing portion" that is movable to an inclined position relative to the drum's axis, meeting the structural limitations of the claim.

Identified Points of Contention

Structural Equivalence: A central question will be whether the specific mechanical structures of the coupling members in the accused cartridges meet the precise geometric and relational limitations of the asserted claims. For example, for the '826 patent, a dispute may arise over whether the accused coupling has a "projection" that moves between two positions where its distance from the drum changes in the manner claimed.
Functional Operation: The analysis will likely focus on whether the accused coupling members actually move or pivot to an "inclined position" during operation as described in the patents. The defense may argue for a different principle of operation or that any movement is incidental and does not meet the functional requirements of the claims.
Claim Scope: The scope of terms like "coupling member," "projection," and "wing portion" will be critical. The patentee may argue for a broad interpretation covering any structure that performs the coupling function, while the defendant may argue that these terms are limited to the specific shapes and configurations shown in the patent's figures and embodiments.

V. Key Claim Terms for Construction

The Term

"a coupling member movable between (i) a first position... and (ii) a second position in which the tip of the at least one projection is a second distance away from the photosensitive drum... the second distance being greater than the first distance" (’826 Patent, Claim 1)

Context and Importance

This limitation defines the core functional and structural aspect of the invention. The infringement analysis will turn on whether the accused device's coupling is "movable" in the specific manner recited and exhibits the claimed change in distance. Practitioners may focus on this term because it links a structural element ("projection") to a functional change ("movable" between positions with different distances), creating a specific test for infringement.

Intrinsic Evidence for Interpretation

Evidence for a Broader Interpretation: The specification describes numerous embodiments of the coupling member with varying shapes and features (e.g., ’826 Patent, FIGs. 8, 26, 82-85), which may support an argument that the term "projection" is not limited to a single form but covers various protrusions that engage a drive shaft. The patent also states that the coupling is "capable of whirling in any direction" (’826 Patent, col. 19:51-53), suggesting broad freedom of movement.
Evidence for a Narrower Interpretation: The detailed description repeatedly links the movement to specific figures showing a distinct "inclined" or pivoted state (e.g., ’826 Patent, FIG. 15(a4), FIG. 22). A defendant might argue that "movable" requires this specific type of pivoting action and that the claimed distance change must be a direct result of this intended inclination, not incidental manufacturing tolerances or wobble.

VI. Other Allegations

Indirect Infringement

For each asserted patent, the complaint alleges induced infringement. The basis for these allegations is that the Defendant promotes its cartridges for use in specific printers and provides customers with instructions for using them, thereby knowingly inducing the customers (the direct infringers) to operate the cartridges in an infringing manner (e.g., Compl. ¶¶26, 36).

Willful Infringement

The complaint does not use the term "willful." However, it alleges that "at the very latest, Defendant will be given notice of its infringement... upon being served with this Complaint" (e.g., Compl. ¶26). This language serves to put the Defendant on notice, which may support a claim for enhanced damages for any infringement that continues after the complaint was served.

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

A core issue will be one of structural correspondence: Do the mechanical coupling components in Defendant's third-party toner cartridges possess the precise geometric features and multi-positional capabilities (e.g., a "projection" that moves to an "inclined position" creating a specific change in distance) as defined by the asserted claims, or do they achieve the function of torque transfer through a distinct, non-infringing design?
A key evidentiary question will be one of operational function: What evidence can be presented to demonstrate how the accused coupling mechanisms actually move and behave when installed and operated inside a printer? The case may require detailed expert analysis, potentially including high-speed imaging or physical testing, to determine if the accused couplings are merely inserted or if they dynamically pivot and change orientation in the manner claimed by the patents.
A significant legal question will relate to claim differentiation and scope: With nine patents from the same family asserted, the court will need to determine the distinct scope of protection afforded by each patent's claims. The dispute may focus on whether the subtle differences in claim language across the patents are meaningful and whether Defendant's single product design can simultaneously infringe multiple, slightly varied claim sets.