Canon Inc v. CLT Computers Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Canon Inc. (Japan)
  • Defendant: CLT Computers, Inc. (California)
  • Plaintiff’s Counsel: George B. Piggott, A Professional Corporation; Fitzpatrick, Cella, Harper & Scinto
• Case Identification: 2:18-cv-01702, C.D. Cal., 02/28/2018
• Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant is incorporated in California, resides within the district, and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in various Canon and HP laser printers, infringe nine U.S. patents related to the mechanical design and function of toner cartridge coupling members and drum units.
• Technical Context: The technology concerns the electrophotographic printing process, focusing on the mechanical interface that allows a user-replaceable process cartridge (toner cartridge) to reliably engage with the printer's drive mechanism.
• Key Procedural History: The complaint notes that this action is related to a concurrently filed proceeding in the U.S. International Trade Commission (ITC) involving the same parties, patents, and accused products. Such parallel ITC investigations can influence district court litigation, often leading to stays and potentially resulting in rapid exclusion orders barring importation of infringing products.

Case Timeline

Date	Event
2006-12-22	Earliest Priority Date for all nine 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, & 9,841,729 Issue
2018-01-02	U.S. Patent Nos. 9,857,764 & 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"

Issued August 29, 2017.

The Invention Explained

• Problem Addressed: The patent describes the technical challenge of designing a user-replaceable process cartridge that can be easily mounted into and removed from a printer, while still ensuring a precise and stable mechanical connection to the printer's drive motor for rotating the photosensitive drum. ( ’971 Patent, col. 1:15-38).
• The Patented Solution: The invention is a specific design for a "coupling member" located at the end of the photosensitive drum. This coupling is movable, allowing it to be inclined or pivoted relative to the drum's axis during installation. Once installed, it engages with the printer's drive shaft to become co-axial and transmit rotational force smoothly. The claims define this movability through specific geometric constraints related to projections on the coupling member. (’971 Patent, Abstract; col. 2:34-56).
• Technical Importance: This design seeks to balance the competing demands of user-friendliness (easy installation) and mechanical precision (stable rotation for high-quality printing) in the mass-market laser printer industry. (’971 Patent, col. 2:34-42).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 6 (Compl. ¶25).
• Independent Claim 1 recites a process cartridge with: a casing and protrusion; a rotatable photosensitive drum; and a coupling member connected to the drum. The coupling member is defined as being movable between a first position and a second position, with specific geometric limitations on the distance of a projection from the drum's axis in each position.
• Independent Claim 6 recites a similar process cartridge that also includes a developing roller, where the coupling member is operatively connected to both the drum and the roller and is movable between two geometrically defined positions.
• The complaint also asserts dependent claims 4, 7, and 9 (Compl. ¶25).

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: Like the ’826 patent, this patent addresses the need for a simple and reliable mechanism to mount a process cartridge and transmit rotational force to its internal components. (’021 Patent, col. 1:15-38).
• The Patented Solution: The invention is a process cartridge that includes both a photosensitive drum and a developing roller, which are driven by a single coupling member. This coupling member features "wing portions" and is movable between an inclined position (for installation) and an operational position (for printing), with the claims reciting specific distance relationships between the wing portions and the drum's axis. (’021 Patent, Abstract; col. 2:34-56).
• Technical Importance: The design aims to provide a reliable method for transferring rotational force to multiple key components within the cartridge through a single, easily engageable coupling, simplifying the overall mechanical design. (’021 Patent, col. 2:34-42).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶33).
• Independent Claim 1 recites a process cartridge containing a photosensitive drum and a developing roller. It claims a coupling member operatively connected to both components, featuring "wing portions" and a connecting portion. The claim requires the coupling member to be movable between two positions, where the distance of the wing portions' tips from the drum's axis changes between the positions.
• The complaint also asserts dependent claims 2, 4, 5, and 7 (Compl. ¶33).

U.S. Patent No. 9,841,727 ("’727 Patent") - "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 separate guide member. The invention focuses on the ability of the coupling member to change its position relative to the guide member during the mounting process, facilitating engagement with the printer's drive shaft. (Compl. ¶¶38-41; ’727 Patent, Abstract).
• Asserted Claims: Independent claims 1 and 16, among others (Compl. ¶41).
• Accused Features: The accused cartridges' coupling and guide mechanisms are alleged to embody the claimed changeable positioning feature (Compl. ¶41).

U.S. Patent No. 9,841,728 ("’728 Patent") - "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 similar to the ’727 patent, describing a process cartridge where a coupling member is movable between a first and second configuration relative to a guide member. The claims focus on specific distance relationships between a projection on the coupling member and the guide member in these different configurations. (Compl. ¶¶46-49; ’728 Patent, Abstract).
• Asserted Claims: Independent claims 1 and 16, among others (Compl. ¶49).
• Accused Features: The complaint alleges the accused products' coupling and guide member structures infringe by having the claimed movable configurations and geometric relationships (Compl. ¶49).

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

Issued December 12, 2017.

• Technology Synopsis: This patent describes a process cartridge with a coupling member that has a "recessed surface." The invention relates to how this coupling member changes its configuration during mounting, with the recessed surface facing away from the connecting portion. (Compl. ¶¶54-57; ’729 Patent, Abstract).
• Asserted Claims: Independent claims 1, 9, and 18, among others (Compl. ¶57).
• Accused Features: The accused cartridges are alleged to contain coupling members with the claimed recessed surface and movable configuration (Compl. ¶57).

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

Issued January 2, 2018.

• Technology Synopsis: This patent focuses on the "drum unit" component of a process cartridge. It claims a drum unit comprising a photosensitive drum and a coupling member that is movable between two positions, defined by the distance of a projection from the drum's axis. (Compl. ¶¶62-65; ’764 Patent, Abstract).
• Asserted Claims: Independent claim 7, among others (Compl. ¶65).
• Accused Features: The drum units contained within the accused cartridges are alleged to infringe by having the claimed movable coupling member (Compl. ¶65).

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

Issued January 2, 2018.

• Technology Synopsis: This patent describes a drum unit that includes an "urging member," such as a spring. The urging member is configured to position the coupling member in its "first position" (the inclined, pre-engagement position) to facilitate proper installation. (Compl. ¶¶70-73; ’765 Patent, Abstract).
• Asserted Claims: Independent claims 1, 4, and 13, among others (Compl. ¶73).
• Accused Features: The drum units within the accused cartridges are alleged to include a coupling and an urging member that perform the claimed functions (Compl. ¶73).

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

Issued January 16, 2018.

• Technology Synopsis: This patent describes a process cartridge where the coupling member has distinct inner and outer portions. The claims focus on the geometric relationship and movement of these portions relative to the photosensitive drum during installation. (Compl. ¶¶78-81; ’960 Patent, Abstract).
• Asserted Claims: Independent claim 1, among others (Compl. ¶81).
• Accused Features: The coupling members of the accused cartridges are alleged to have the claimed inner/outer portion structure and movability (Compl. ¶81).

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

Issued January 23, 2018.

• Technology Synopsis: This patent claims a drum unit that includes a drum flange at the end of the photosensitive drum. The invention describes a coupling member connected to this flange, with the coupling being movable between two positions defined by the distance of a projection from the drum's axis. (Compl. ¶¶86-89; ’846 Patent, Abstract).
• Asserted Claims: Independent claim 1, among others (Compl. ¶89).
• Accused Features: The drum units within the accused cartridges are alleged to have the claimed drum flange and movable coupling structure (Compl. ¶89).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are replacement toner cartridges sold and/or imported by Defendant for use in various Canon and HP laser beam printers (Compl. ¶20). The complaint identifies model EP-CE505A (referred to as "Type C") as a non-limiting example (Compl. ¶21).

Functionality and Market Context

The accused products are third-party compatible cartridges intended to replace original equipment manufacturer (OEM) cartridges in a wide variety of commercially available laser printers (Compl. ¶20, p. 5). The complaint alleges these cartridges contain components, including photosensitive drum units and coupling mechanisms, that perform the functions necessary for electrophotographic printing and embody the patented technologies (Compl. ¶¶20, 25, 33). The complaint provides an image of a representative accused product, the EP-CE505A toner cartridge, and its retail packaging (Compl. ¶21).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that were not provided with the filed complaint document; therefore, the narrative infringement theories are summarized below in prose.

The complaint alleges that the accused toner cartridges, exemplified by the EP-CE505A model, literally infringe one or more claims of each of the nine Asserted Patents (e.g., Compl. ¶¶25, 27, 33, 35). For each asserted patent, the complaint incorporates by reference an external exhibit containing claim charts that purportedly detail, on an element-by-element basis, how the accused products meet the limitations of the asserted independent claims (e.g., Compl. ¶¶25, 33). The overarching infringement theory across all patents is that the mechanical coupling structures on the accused cartridges, which engage with the printer's drive shaft, have the same specific structures, movable geometries, and dimensional relationships relative to the photosensitive drum (and developing roller, where applicable) as recited in the patent claims. The complaint reserves the right to assert infringement under the doctrine of equivalents should any element be found not to be literally present (e.g., Compl. ¶¶27, 35).

Identified Points of Contention

• Scope Questions: The claims of the Asserted Patents appear to rely on precise geometric and dimensional limitations (e.g., "a maximum distance...is shorter than a distance..."). A central point of contention may be whether the accused cartridges, as a matter of fact, meet these specific numerical and relational constraints. The dispute could turn on measurements and expert testimony regarding the physical construction of the accused cartridges versus the language of the claims.
• Technical Questions: A key technical question may be whether the accused cartridge's coupling member performs the same "movement" as claimed. The patents describe a coupling that is "movable" or can be "inclined" between distinct positions to facilitate installation. The case may raise the question of whether the accused product's coupling actually performs this specific type of multi-position movement during installation, or whether it achieves mechanical engagement through a different, non-infringing action.

V. Key Claim Terms for Construction

"coupling member" (e.g., ’826 Patent, Claim 1)

• Context and Importance: This term appears in the independent claims of all Asserted Patents and refers to the core mechanical interface at issue. The construction of this term will be fundamental to the infringement analysis, as it will define the scope of the structure that is compared to the accused device's drive gear interface.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specifications disclose numerous alternative embodiments for the "coupling member" (e.g., couplings 150, 1150, 1250, etc.), suggesting the term is not intended to be limited to a single specific structure but rather to a class of structures that perform the coupling function. (’826 Patent, col. 14:24-15:4, col. 59:8-12).
  • Evidence for a Narrower Interpretation: The abstract and summary sections consistently frame the coupling member's purpose as enabling a pivoting or inclined movement during mounting. A defendant may argue that the term should be construed to require a structure capable of this specific function, potentially excluding alternative coupling designs that do not pivot or incline in the described manner. (’826 Patent, Abstract; col. 2:34-56).

"movable between (i) a first position... and (ii) a second position" (e.g., ’826 Patent, Claim 1)

• Context and Importance: This phrase is critical as it defines the dynamic functionality of the coupling member, which the patents present as a key inventive concept. Whether the accused device is "movable" between the two specifically defined positions will likely be a dispositive issue for infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify the path or manner of movement, only that the coupling can exist in two distinct states defined by geometric constraints. Plaintiff may argue this covers any form of movement (pivoting, sliding, etc.) that results in the claimed first and second positions.
  • Evidence for a Narrower Interpretation: The specification provides extensive detail and figures illustrating a specific "pivoting" or "inclining" motion of the coupling member's axis relative to the drum's axis. (e.g., ’826 Patent, Figs. 22-25; col. 27:1-28:66). A defendant may argue that this consistent description limits the term "movable" to this specific type of pivoting action, as it is the only mode of movement described as achieving the invention's objective.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all nine asserted patents. The factual basis alleged is that Defendant promotes its cartridges for use in specific printers and provides instructions to customers on how to use them, which allegedly causes the customers to directly infringe. (Compl. ¶¶24, 32, 40, 48, 56, 64, 72, 80, 88).

Willful Infringement

The complaint does not explicitly use the word "willful." However, for each count, it states that "At the very latest, Defendant will be given notice of its infringement ... upon being served with this Complaint." (e.g., Compl. ¶24). This language is typically used to establish post-suit knowledge as a basis for later seeking enhanced damages for willful infringement under 35 U.S.C. § 284, which is requested in the prayer for relief (Compl. p. 18, ¶C).

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

• A core issue will be one of definitional scope and measurement: Do the accused third-party cartridges, designed for compatibility with printers made by Canon and others, necessarily replicate the highly specific geometric and dimensional relationships of the "coupling member" recited in the claims, or do they achieve compatibility through a mechanically distinct design that avoids the literal metes and bounds of the patents?
• A second central issue will be a question of mechanical operation: Does the accused product's coupling mechanism actually perform the claimed "movement" between distinct, geometrically-defined first and second positions during the act of installation, or does it achieve drive engagement through an alternative mechanical action that does not meet this functional limitation?
• Finally, a key procedural question will be the impact of the parallel ITC proceeding. How will rulings on claim construction, infringement, and validity in that expedited forum influence the strategy and potential outcomes in this district court action, which may be stayed pending the ITC's final determination?