Canon Inc v. Reliable Imaging Computer Products Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Canon Inc. (Japan)
  • Defendant: Reliable Imaging Computer Products, Inc. (California)
  • Plaintiff’s Counsel: George B. Piggott, A Professional Corporation; Fitzpatrick, Cella, Harper & Scinto
• Case Identification: 2:18-cv-01709, C.D. Cal., 02/28/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated and resides in California, has committed infringing acts within the district, and maintains a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in various Canon and HP laser printers, infringe a portfolio of nine U.S. patents related to the mechanical coupling of a process cartridge to an image forming apparatus.
• Technical Context: The technology concerns the electrophotographic printing industry, specifically the design of user-replaceable toner cartridges and the mechanisms that transfer rotational force from the printer to the cartridge's internal components, such as the photosensitive drum.
• Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC), asserting the same patents against the same Defendant and accused products, which may influence case scheduling and discovery.

Case Timeline

Date	Event
2006-12-22	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 No. 9,841,727 Issues
2017-12-12	U.S. Patent No. 9,841,728 Issues
2017-12-12	U.S. Patent No. 9,841,729 Issues
2018-01-02	U.S. Patent No. 9,857,764 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"

Issued August 29, 2017

The Invention Explained

• Problem Addressed: The patent addresses the technical challenge of ensuring a smooth and reliable transfer of rotational force from a printer's main drive shaft to the photosensitive drum inside a detachable process cartridge. Misalignment during cartridge installation can lead to non-uniform rotation of the drum, which degrades image quality, or can prevent the drive from engaging at all. (’826 Patent, col. 1:59-2:42).
• The Patented Solution: The invention proposes a "coupling member" at the end of the photosensitive drum that is designed to be movable or pivotable. This mobility allows the coupling member to align with and engage the printer's drive shaft even if the cartridge is not perfectly seated, ensuring that rotational force is transmitted smoothly. The design uses specific projections and surfaces on the coupling member that can move between a disengaged position and an engaged position relative to the drum axis, effectively self-aligning to the drive shaft. (’826 Patent, Abstract; col. 27:1-28:67).
• Technical Importance: This approach improves the operational reliability of printers that use replaceable cartridges and makes the user experience more forgiving, as precise alignment is not required for proper function. (’826 Patent, col. 2:43-53).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 6. (Compl. ¶¶27-29).
• Independent Claim 1 includes these essential elements:
  • A process cartridge with a casing and a photosensitive drum rotatably supported about a first axis (L1).
  • A coupling member having a second axis (L2), operatively connected to the drum.
  • 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 (where a tip of the projection is a "first distance" from the drum) and a second position (where the tip is a "second distance" from the drum).
  • The first distance is greater than the second distance.
• Independent Claim 6 includes these essential elements:
  • A process cartridge with a casing, a photosensitive drum, a developing roller, and a coupling member.
  • The coupling member has a first end portion connected to the drum and a second end portion with a protrusion.
  • The coupling member is movable between a first position (where the protrusion is a "first distance" from the drum) and a second position (where the protrusion is a "second distance" from the drum).
  • The first distance is greater than the second distance.
• The complaint also alleges infringement of dependent claims 2-4, 7, and 9. (Compl. ¶¶27-29).

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: As a member of the same patent family, the ’021 Patent addresses the same technical problem of ensuring reliable mechanical coupling between a detachable printer cartridge and the main apparatus drive, particularly in cases of misalignment. (’021 Patent, col. 1:59-2:42).
• The Patented Solution: The solution is also centered on a movable coupling member that can pivot to engage the drive shaft. The claims of the ’021 Patent appear to focus on different geometric and relational aspects of this coupling mechanism, such as the relative positioning of different parts of the coupling member with respect to the photosensitive drum's axis. (’021 Patent, Abstract; col. 84:1-53).
• Technical Importance: This patent provides an alternative claiming strategy for the same core technology, aiming to protect different structural variations of the movable coupling concept to ensure broad coverage. (’021 Patent, col. 2:43-53).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶¶37-39).
• Independent Claim 1 includes these essential elements:
  • A process cartridge with developers, a casing, a photosensitive drum, a developing roller, and a coupling member.
  • The coupling member has a first end portion, a second end portion with projections, and a connecting portion.
  • A key distinction from the '826 patent is the dimensional limitation: "wherein, for at least a part of the connecting portion, a maximum distance from the axis L2 to an outer surface of the connecting portion... is shorter than a distance between the facing portion and the axis L2."
  • The coupling member is also "movable between (i) a first position... and (ii) a second position" with differing distances from the photosensitive drum.
• The complaint also alleges infringement of dependent claims 2, 4, 5, and 7. (Compl. ¶¶37-39).

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

Issued December 12, 2017

• Technology Synopsis: This patent, from the same family, also discloses a process cartridge with a movable coupling member designed to ensure smooth transmission of rotational force from a printer's drive shaft to the cartridge's photosensitive drum, even when the cartridge is not perfectly aligned upon installation. (’727 Patent, col. 1:11-2:53).
• Asserted Claims: The complaint asserts independent claims 1 and 16. (Compl. ¶¶47-49).
• Accused Features: The complaint alleges that the coupling mechanism within the accused cartridges infringes these claims. (Compl. ¶¶45, 47-49).

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

Issued December 12, 2017

• Technology Synopsis: This patent discloses a similar movable coupling member for a printer cartridge. Its claims focus on the interaction between the coupling member and a "guide member" that helps control the coupling member's position during cartridge installation and removal. (’728 Patent, Abstract).
• Asserted Claims: The complaint asserts independent claims 1 and 16. (Compl. ¶¶57-59).
• Accused Features: The complaint alleges that the coupling and guide features of the accused cartridges infringe these claims. (Compl. ¶¶55, 57-59).

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 also relates to the movable coupling member technology. The claims appear to focus on specific geometrical relationships, including a recess and projections, that define how the coupling member moves and engages with the drive shaft. (’729 Patent, Abstract).
• Asserted Claims: The complaint asserts independent claims 1, 9, and 18. (Compl. ¶67).
• Accused Features: The complaint alleges that the coupling mechanism and its geometric features in the accused cartridges infringe these claims. (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 discloses a drum unit for a process cartridge with a movable coupling member. The claims focus on the structure of the drum unit itself, integrating the movable coupling member as part of the unit. (’764 Patent, Abstract).
• Asserted Claims: The complaint asserts independent claim 7. (Compl. ¶75).
• Accused Features: The complaint alleges that the drum units contained within the accused cartridges, including their coupling mechanisms, infringe this claim. (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, also from the same family, relates to the movable coupling member. Its claims include limitations related to an "urging member" (e.g., a spring) that biases the coupling member toward a specific position, aiding in the alignment and engagement process. (’765 Patent, col. 86:8-12).
• Asserted Claims: The complaint asserts independent claims 1, 4, and 13. (Compl. ¶¶83-85).
• Accused Features: The complaint alleges that the coupling mechanisms and any associated biasing or urging members in the accused cartridges infringe these claims. (Compl. ¶¶81, 83-85).

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 discloses a process cartridge with a movable coupling member, with claims focusing on specific dimensional relationships between parts of the coupling member, such as the inner and outer portions of a drum flange to which it is connected. (’960 Patent, Abstract; Claim 9).
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶¶93-95).
• Accused Features: The complaint alleges that the coupling mechanism and its connection to the drum flange in the accused cartridges infringe this claim. (Compl. ¶¶91, 93-95).

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 discloses a drum unit with a movable coupling member. The claims are directed to the drum unit itself and recite specific distance-based relationships defining the movement of the coupling member's projections relative to the photosensitive drum. (’846 Patent, Abstract; Claim 1).
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶¶103-105).
• Accused Features: The complaint alleges that the drum units within the accused cartridges, specifically their coupling mechanisms, infringe this claim. (Compl. ¶¶101, 103-105).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are replacement toner cartridges sold and/or imported by Defendant, including at least models PTCE255XND ("Type A"), PTCF226X ("Type B"), and PTCE505AND ("Type G"). (Compl. ¶¶21-23).

Functionality and Market Context

• These products are third-party consumable cartridges intended for use in a wide range of popular Canon and HP laser beam printers. (Compl. ¶20, p. 5). The complaint provides photographic examples of the accused cartridges and their packaging, such as the image of the PTCE255XND cartridge. (Compl. p. 6). The technically relevant function is the cartridge's ability to be installed in a printer and mechanically couple with the printer's drive motor to receive the rotational force necessary for the printing process. (Compl. ¶20). The extensive list of compatible printers suggests these products target a substantial segment of the laser printer consumables market. (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided with the filing; therefore, a detailed element-by-element summary cannot be constructed. (Compl. ¶¶27, 37). The narrative infringement theory alleges that the accused toner cartridges, such as the PTCE255XND (Type A), contain a coupling mechanism for the photosensitive drum that practices all the elements of the asserted claims. (Compl. ¶¶27, 37). The allegation is that these cartridges incorporate a movable coupling member with the specific structures, geometries, and ranges of motion as claimed in the asserted patents, thereby directly infringing when sold, used, or imported in the United States.

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the components in the accused cartridges meet the specific structural definitions in the claims. For example, for claim 1 of the ’826 patent, a dispute may arise over whether the accused component constitutes a "coupling member" that is "movable" in the claimed manner, or whether the dimensional limitations recited in claim 1 of the ’021 patent are met.
  • Technical Questions: The analysis will likely focus on the precise mechanical operation of the accused devices. A key question for the court may be whether the accused cartridges actually achieve drive engagement through the claimed "movable" coupling that shifts between two distinct positions with different distances from the drum axis, or if they use an alternative mechanical design that falls outside the literal scope of the claims.

V. Key Claim Terms for Construction

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

  • Context and Importance: This term defines the central component of the claimed invention. The scope of this term will be critical in determining whether the corresponding part in the accused cartridges is covered by the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes numerous embodiments of the "coupling" (e.g., 150, 1150, 1250, etc.), suggesting the term is not limited to any single specific structure but encompasses a variety of mechanisms that perform the claimed function. (’826 Patent, col. 78:37-77).
    • Evidence for a Narrower Interpretation: The detailed description repeatedly discusses the coupling member in the context of specific geometries, such as having a "spherical surface" (e.g., ’826 Patent, col. 12:20-25) or particular types of projections. A defendant may argue that these features are essential to the term's meaning.

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

  • Context and Importance: This phrase defines the dynamic functionality of the coupling member, which is the core of how the invention purports to solve the misalignment problem. Whether the accused device performs this specific type of movement will be a key infringement question.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states the coupling member is "capable of whirling and substantially pivotable relative to the drum shaft." (’826 Patent, col. 19:50-53). Plaintiff may argue this supports a broad interpretation of "movable" to include any pivoting or shifting that results in the claimed change in distance.
    • Evidence for a Narrower Interpretation: The figures, such as FIG. 15 and FIG. 16, show a distinct pivoting or tilting motion. A defendant may argue that "movable" is limited to this disclosed type of multi-directional pivoting and does not cover other forms of movement, such as simple axial compression or material flexure.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement against the Defendant. This allegation is based on the Defendant allegedly promoting its cartridges for use in specific printers and providing instructions to customers on how to use the cartridges in an infringing manner. (Compl. ¶¶26, 36, 46, 56, 66, 74, 82, 92, 102).
• Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, for each asserted patent, it states that "Defendant will be given notice of its infringement... upon being served with this Complaint," which serves to establish post-suit knowledge as a potential basis for enhanced damages. (Compl. ¶¶26, 36, 46, 56, 66, 74, 82, 92, 102).

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

This dispute centers on the highly specific mechanical design of coupling members in replacement toner cartridges. Based on the complaint and the asserted patents, the case will likely turn on the following core questions:

• A primary issue will be one of structural and functional interpretation: How will the court construe the term "movable between... a first position... and a second position"? Does this require a distinct, multi-step mechanical action as depicted in the patent's figures, or can it be read more broadly to cover any mechanism, including simple spring-like compression, that results in a change in distance between the coupling and the drum?
• A second core issue will be one of technical evidence: What evidence will be presented to demonstrate that the coupling components in the accused cartridges actually perform the specific type of pivoting or shifting movement required by the claims, as opposed to achieving a mechanical connection through a different, non-infringing design?
• Given the large number of asserted patents from the same family, a significant procedural question will be one of case management: how will the parties and the court narrow the dispute from nine patents and numerous asserted claims to a manageable set for claim construction and trial?