DCT

2:18-cv-01696

Canon Inc v. Linkyo Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01696, C.D. Cal., 02/28/2018
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant is incorporated in California, resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in various Canon and HP laser printers, infringe seven U.S. patents related to the mechanical design of process cartridges, particularly the coupling mechanism for the photosensitive drum.
  • Technical Context: The case concerns the multi-billion dollar market for laser printer consumables, where the mechanical interface between a replaceable toner cartridge and the main printer body is a critical area of technical design and competition.
  • Key Procedural History: The complaint notes that a parallel action was being concurrently filed in the U.S. International Trade Commission (ITC). Such parallel proceedings are often used by patent holders to seek an exclusion order (an import ban) against accused products from the ITC, which typically operates on an expedited schedule, while seeking monetary damages in district court.

Case Timeline

Date Event
2006-12-22 Earliest Priority Date for 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
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"

The Invention Explained

  • Problem Addressed: The patent addresses the mechanical challenge of smoothly and reliably connecting a user-replaceable process cartridge (toner cartridge) to the drive motor inside a printer's main assembly. Misalignment during insertion can prevent the drive shaft from properly engaging the cartridge's photosensitive drum, leading to installation failure or poor print quality (U.S. Patent No. 9,746,826, col. 1:15-42).
  • The Patented Solution: The invention describes a specially designed coupling member at the end of the photosensitive drum. This coupling member is designed to be movable or pivotable relative to the drum's rotational axis. This movability allows the coupling to engage with the printer's drive shaft even if the cartridge is inserted at a slight angle. Specific geometric features on the coupling, such as precisely distanced projections, then guide the components into a co-axial alignment to ensure stable and smooth transmission of rotational force once engaged (’826 Patent, col. 2:35-50; col. 27:1-32).
  • Technical Importance: This approach aims to improve the user experience and operational reliability of printers by making the process of replacing consumable cartridges more forgiving and less prone to mechanical failure ('826 Patent, col. 2:51-57).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6 (Compl. ¶¶24-25).
  • Independent Claim 1 of the '826 Patent includes these essential elements:
    • A process cartridge with a casing and a photosensitive drum rotatable about a first axis (axis L1).
    • A coupling member having a second axis (axis L2), operatively connected to the drum.
    • The coupling member includes a first end portion with at least one projection and a second end portion.
    • The coupling member is "movable" between a first position and a second position relative to the drum.
    • In the first position, a tip of the projection is a first distance from the drum, while in the second position, the tip is a second distance from the drum, with the first distance being greater than the second distance.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶24).

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 from the same family, this patent addresses the need for a process cartridge that can be easily mounted and dismounted by a user while ensuring a reliable connection for transmitting rotational force to internal components like the photosensitive drum (U.S. Patent No. 9,836,021, col. 1:15-42).
  • The Patented Solution: The patent discloses a process cartridge with a coupling member that is movable between a first position where it is inclined relative to the photosensitive drum's axis and a second position where it is coaxial with the drum's axis. This movement facilitates the engagement and disengagement with the printer's main drive shaft. The claims define the structure through specific dimensional relationships between parts of the coupling member and the drum (’021 Patent, Abstract; col. 2:35-50).
  • Technical Importance: By providing a specific mechanical arrangement for the coupling, the invention seeks to achieve both ease of use for the consumer and the precise alignment necessary for high-quality electrophotographic printing ('021 Patent, col. 2:51-57).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶¶33-34).
  • Independent Claim 1 of the '021 Patent includes these essential elements:
    • A process cartridge with a casing, a photosensitive drum rotatable about a first axis (axis L1), and a developing roller.
    • A coupling member having a second axis (axis L2) connected to the drum and developing roller.
    • The coupling member has a first end portion with a projection, a second end portion, and a connecting portion.
    • The coupling member is movable between a first position and a second position.
    • The claim recites specific geometric relationships: a maximum distance from the axis L2 to an outermost surface of the connecting portion is shorter than a distance between a facing portion and the axis L2, and the distance from the axis L2 to the surface of the second end portion increases as the distance along the axis L1 from the photosensitive drum increases.
  • The complaint reserves the right to assert additional claims (Compl. ¶33).

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

Technology Synopsis

This patent, part of the same family, also describes a process cartridge with a coupling member and a guide member. The invention focuses on the relative positioning between these components, allowing the coupling member to move between different positions to facilitate engagement with the printer's drive shaft and ensure stable torque transmission (U.S. Patent No. 9,841,727, Abstract).

Asserted Claims

Independent claims 1 and 16 (Compl. ¶¶42-43).

Accused Features

The accused LY-HP-CF226A and LY-CE255A toner cartridges are alleged to incorporate the claimed coupling and guide member structures (Compl. ¶40).

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

Technology Synopsis

This patent is a divisional of the application that led to the ’727 patent and covers similar subject matter. It details a process cartridge with a movable coupling member and a guide member, where specific distances and relative positions change as the coupling member moves, ensuring proper alignment and engagement with the printer's drive mechanism (U.S. Patent No. 9,841,728, Abstract).

Asserted Claims

Independent claims 1 and 16 (Compl. ¶¶51-52).

Accused Features

The accused LY-HP-CF226A and LY-CE255A toner cartridges are alleged to embody the claimed movable coupling technology (Compl. ¶49).

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

Technology Synopsis

Also from the same family, this patent discloses a process cartridge with a coupling member having multiple portions, including a connecting portion and an end portion with projections. The claims focus on the geometric relationship and relative movement of these portions to facilitate engagement with a drive shaft, ensuring that the distance to an outer surface of the coupling changes as it moves (’765 Patent, Abstract).

Asserted Claims

Independent claims 1 and 13 (Compl. ¶¶60-61).

Accused Features

The complaint alleges that the design of the accused Linkyo toner cartridges incorporates the claimed coupling member features (Compl. ¶58).

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

Technology Synopsis

This patent describes a process cartridge with a drum flange and a movable coupling member. The claims are directed to the specific geometry of the coupling member, including inner and outer portions, and its movement between different positions relative to the photosensitive drum to ensure proper mechanical engagement with the printer (’960 Patent, Abstract).

Asserted Claims

Independent claim 1 (Compl. ¶¶69-70).

Accused Features

The accused Linkyo toner cartridges are alleged to contain the patented drum flange and movable coupling member assembly (Compl. ¶67).

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

Technology Synopsis

This patent claims a drum unit for a process cartridge, focusing on the drum flange and the movable coupling member. The invention is defined by the relative positions of a projection on the coupling member with respect to the photosensitive drum as the coupling member moves between a first and second position, facilitating engagement (’846 Patent, Abstract).

Asserted Claims

Independent claim 1 (Compl. ¶¶78-79).

Accused Features

The drum units contained within the accused Linkyo toner cartridges are alleged to infringe (Compl. ¶¶76, 78).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are replacement toner cartridges sold and/or imported by Defendant Linkyo Corp, which does business as "SuperMediaStore.com" (Compl. ¶¶5, 18). The complaint specifically identifies models LY-HP-CF226A (referred to as "Type F") and LY-CE255A (referred to as "Type H") as non-limiting examples (Compl. ¶¶19-20).

Functionality and Market Context

The accused products are third-party consumable cartridges intended for use in a wide range of Canon and HP laser beam printers (Compl. ¶18). They contain the necessary components for the electrophotographic printing process, including a photosensitive drum and toner. The complaint provides photographs of the packaging and the product for the accused LY-HP-CF226A toner cartridge (Compl. ¶19) and the LY-CE255A toner cartridge (Compl. ¶20). These products compete directly with the original equipment manufacturer (OEM) cartridges sold by Canon.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not publicly filed with the complaint. The following is a prose summary of the infringement allegations for the lead patents based on the complaint's narrative.

  • U.S. Patent No. 9,746,826 Infringement Allegations:
    The complaint alleges that Defendant’s accused cartridges, including the LY-HP-CF226A and LY-CE255A models, directly infringe at least claims 1 and 6 of the ’826 patent (Compl. ¶¶24, 25). The infringement theory is based on the physical structure of the accused cartridges. The complaint contends that these cartridges contain a process cartridge assembly with a photosensitive drum and a coupling member that has the specific movable characteristics and geometric relationships required by the asserted claims to engage with a printer's drive shaft (Compl. ¶22).

  • U.S. Patent No. 9,836,021 Infringement Allegations:
    The complaint alleges that the accused cartridges directly infringe at least claim 1 of the ’021 patent (Compl. ¶¶33, 34). The theory of infringement again centers on the mechanical construction of the cartridge's coupling mechanism. It is alleged that the accused cartridges possess a coupling member that is movable relative to the photosensitive drum and has the specific surface geometries and dimensional relationships recited in claim 1, which are designed to facilitate proper mounting and torque transmission from the printer (Compl. ¶31).

  • Identified Points of Contention:

    • Scope Questions: A central issue may be the interpretation of the numerous geometric and positional limitations in the claims. For example, the dispute could turn on whether the term "movable between... a first position... and a second position" requires a specific path or degree of movement, and whether the accused products' components exhibit such movement.
    • Technical Questions: Evidentiary questions will likely focus on whether the physical structures of the accused Linkyo cartridges meet the precise dimensional and relational requirements of the claims. For instance, questions may arise as to whether a "maximum distance" measured on an accused coupling member is "shorter than" another specified distance, as required by claim 1 of the '021 patent.

V. Key Claim Terms for Construction

  • For the ’826 Patent:
    • The Term: "a coupling member being movable"
    • Context and Importance: This term is fundamental to the patent's purported solution for simplifying cartridge installation. The scope of "movable" will be critical to determining infringement. Practitioners may focus on this term because the Defendant could argue its coupling is substantially fixed or moves in a manner distinct from that disclosed in the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the coupling as being "pivotable in all directions substantially" and "capable of whirling," suggesting that "movable" could encompass a wide range of tilting or pivoting motions ('826 Patent, col. 19:8-9, col. 19:50-53).
      • Evidence for a Narrower Interpretation: Specific embodiments describe movement within defined angular ranges, such as "about 20 degrees to about 60 degrees" ('826 Patent, claim 5). A defendant may argue that "movable" should be limited to the specific types of pivotal movement and ranges disclosed in connection with the preferred embodiments.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The factual basis alleged is that Defendant knowingly induces its customers to infringe by "promoting its cartridges for use in specific printers and/or providing customers with instructions for using its cartridges in those printers" (Compl. ¶23, ¶32, ¶41, ¶50, ¶59, ¶68, ¶77).
  • Willful Infringement: While the complaint does not contain a separate count for "willful infringement," it includes language intended to establish knowledge for potential enhanced damages. For each patent, it states, "At the very latest, Defendant will be given notice of its infringement ... upon being served with this Complaint" (e.g., Compl. ¶23). This allegation may support a claim for post-filing willfulness if infringement continues after service of the complaint.

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

This case appears to be a focused dispute over the specific mechanical design of a key component in consumable printer cartridges. The central questions for the court will likely be:

  • A core issue will be one of claim construction: How will the court define the precise geometric, positional, and relational terms that characterize the structure and movement of the "coupling member" in the asserted claims? The outcome of the case may depend heavily on whether these terms are construed broadly enough to read on the specific designs of the accused third-party cartridges.
  • A key evidentiary question will be one of technical infringement: Based on a physical inspection and expert analysis of the accused Linkyo cartridges, do their coupling mechanisms actually perform the specific type of "movement" between distinct positions as required by the claims, or is there a fundamental mismatch in mechanical operation?
  • A procedural question will be the interplay with the parallel ITC action: How will the faster-paced ITC investigation, with its potential for an import ban, affect discovery, claim construction timing, and settlement dynamics in this district court litigation, where monetary damages are at stake?