DCT

2:18-cv-01716

Canon Inc v. Apex Excel Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01716, C.D. Cal., 02/28/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant is incorporated and resides in the district, has a regular and established place of business in the district, and has committed the alleged acts of infringement there.
  • 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 of process cartridges and photosensitive drum units.
  • Technical Context: The patents relate to the mechanical coupling mechanisms that transfer rotational force from a printer's main drive shaft to the photosensitive drum within a removable toner cartridge, a critical component for image formation.
  • Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC), titled In the Matter of Certain Toner Cartridges and Components Thereof, which involves the same parties, patents, and accused products as this district court case.

Case Timeline

Date Event
2006-12-22 Earliest 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 Nos. 9,841,727, 9,841,728, and 9,841,729 Issue
2018-01-02 U.S. Patent Nos. 9,857,764 and 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"

  • Patent Identification: U.S. Patent No. 9,746,826, issued August 29, 2017 (Compl. ¶9; ’826 Patent).

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenge of ensuring that rotational force is transmitted smoothly and consistently from a printer's drive shaft to the photosensitive drum inside a user-replaceable toner cartridge. Misalignment between the drive shaft and the drum can cause non-uniform rotation, which in turn leads to image defects like banding or streaking in the final print. (’826 Patent, col. 2:27-38).
  • The Patented Solution: The invention proposes a specific mechanical coupling member located at the end of the photosensitive drum. This coupling member is designed to be movable between at least two positions relative to the drum's axis, allowing it to pivot or shift to properly engage the printer's drive shaft even if the cartridge is not perfectly aligned upon insertion. (’826 Patent, Abstract; col. 2:39-50). This "floating" or movable coupling is intended to self-align and thereby ensure smooth, uniform rotation of the drum.
  • Technical Importance: This approach allows for greater manufacturing and user-insertion tolerances for replaceable cartridges, a high-volume consumable, while maintaining high image quality.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6. (Compl. ¶25).
  • Independent Claim 1 elements include:
    • A process cartridge with a casing including an opening and a protrusion.
    • A photosensitive drum rotatably supported in the casing.
    • A coupling member with a first end portion, a second end portion connected to the drum, and a connecting portion between them.
    • A specific geometric relationship where the maximum distance from the drum's axis (axis L1) to the outer surface of the connecting portion is shorter than the distance from that same axis to the tip of the protrusion.
    • The coupling member is movable between a first position a certain distance from the drum and a second position a different distance from the drum.
  • Independent Claim 6 elements include:
    • A process cartridge with a casing, a photosensitive drum, and a developing roller.
    • A coupling member with a first end portion, a second end portion connected to the drum and the developing roller, and a connecting portion.
    • The coupling member is movable between a first position a certain distance from the drum and a second position a different distance from the drum.
  • The complaint also identifies dependent claims 2-4, 7, and 9 as infringed. (Compl. ¶27).

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, issued December 5, 2017 (Compl. ¶10; ’021 Patent).

The Invention Explained

  • Problem Addressed: This patent, from the same family as the '826 patent, addresses the same technical problem of preventing image quality degradation caused by non-uniform rotation of the photosensitive drum due to misalignment with the printer's drive mechanism. (’021 Patent, col. 2:27-38).
  • The Patented Solution: The solution is also a movable coupling member at the end of the drum, which engages with the printer’s drive shaft. The claims of this patent focus on a similar concept of a coupling member with distinct portions and a defined range of movement to accommodate misalignment and ensure smooth torque transmission from the printer to the cartridge. (’021 Patent, Abstract; col. 2:39-57).
  • Technical Importance: This design contributes to the reliability and interchangeability of consumable toner cartridges across a large installed base of printers.

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶33).
  • Independent Claim 1 elements include:
    • A process cartridge with a casing, a developer-containing portion, and a photosensitive drum.
    • A coupling member with an axis (L2) and including a first end portion, a second end portion operatively connected to the drum and developer, and a connecting portion.
    • The coupling member is movable between a first position and a second position, where the tip of a projection on the coupling member is at different distances from the drum in each position.
  • The complaint also identifies dependent claims 2, 4, 5, and 7 as infringed. (Compl. ¶33).

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

  • Patent Identification: U.S. Patent No. 9,841,727, issued December 12, 2017 (Compl. ¶11).
  • Technology Synopsis: This patent discloses a process cartridge with a coupling member and a guide member. The relative positioning of these members defines the movement of the coupling member between a first position and a second position, ensuring proper engagement with a printer's drive shaft to transmit rotational force smoothly. (’727 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶41).
  • Accused Features: The coupling mechanism of the "Type A" toner cartridge (Compl. ¶¶39-41).

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

  • Patent Identification: U.S. Patent No. 9,841,728, issued December 12, 2017 (Compl. ¶12).
  • Technology Synopsis: This patent describes a process cartridge where a guide member constrains the movement of a coupling member. The coupling member is movable between a first configuration and a second configuration relative to the guide member, facilitating proper alignment and force transmission from the printer's drive shaft. (’728 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶49).
  • Accused Features: The coupling mechanism of the "Type A" toner cartridge (Compl. ¶¶47-49).

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

  • Patent Identification: U.S. Patent No. 9,841,729, issued December 12, 2017 (Compl. ¶13).
  • Technology Synopsis: This patent focuses on a process cartridge with a coupling member that has at least one projection. The coupling member is movable between positions where the distance from the drum's axis to the projection's tip changes, allowing the coupling to adapt to the printer's drive shaft for smooth rotation. (’729 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 9, and 18 (Compl. ¶57).
  • Accused Features: The coupling mechanism of the "Type A" toner cartridge (Compl. ¶¶55-57).

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

  • Patent Identification: U.S. Patent No. 9,857,764, issued January 2, 2018 (Compl. ¶14).
  • Technology Synopsis: This patent describes a drum unit within a process cartridge that includes a photosensitive drum and a movable coupling member. The coupling member has a projection and is movable between a first position and a second position, where the distance from the drum's axis to the projection's tip differs, allowing for alignment with a drive source. (’764 Patent, Abstract).
  • Asserted Claims: Independent claim 7 (Compl. ¶65).
  • Accused Features: The coupling mechanism and drum unit of the "Type A" toner cartridge (Compl. ¶¶63-65).

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, issued January 2, 2018 (Compl. ¶15).
  • Technology Synopsis: This patent describes a process cartridge with a movable coupling member whose movement is constrained by a portion of the cartridge's casing. The design allows the coupling member to move between different positions relative to the photosensitive drum to facilitate proper engagement with the printer's drive shaft. (’765 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 4, and 13 (Compl. ¶73).
  • Accused Features: The coupling mechanism of the "Type A" toner cartridge (Compl. ¶¶71-73).

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, issued January 16, 2018 (Compl. ¶16).
  • Technology Synopsis: This patent discloses a process cartridge where a coupling member has inner and outer portions. The coupling member is movable between positions where the distance from the drum axis to the outer portion and the inner portion changes, a design intended to ensure stable and smooth transmission of rotational force. (’960 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶81).
  • Accused Features: The coupling mechanism of the "Type A" toner cartridge (Compl. ¶¶79-81).

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, issued January 23, 2018 (Compl. ¶17).
  • Technology Synopsis: This patent describes a drum unit with a movable coupling member that connects to a photosensitive drum. The member can move between at least two positions, defined by the distance of a projection from the drum, allowing the coupling to align with a drive shaft and thereby transmit rotational force smoothly. (’846 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶89).
  • Accused Features: The coupling mechanism and drum unit of the "Type A" toner cartridge (Compl. ¶¶87-89).

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 AM-H0280XU as a non-limiting example, which is referred to as "Type A" in the concurrent ITC proceeding (Compl. ¶21).
  • Functionality and Market Context: The accused products are consumables designed to replace original equipment manufacturer (OEM) toner cartridges in a wide range of popular office and consumer printers (Compl. ¶20, p.5 table). Defendant is alleged to conduct business under the name "ShopAt247" and sell the products through an Amazon.com storefront (Compl. ¶5). The complaint provides two photographs of the accused AM-H0280XU cartridge, showing its external housing and the coupling end (Compl. ¶21).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing the infringement allegations. The narrative infringement theory is summarized below.

  • ’826 Patent Infringement Allegations
    The complaint alleges that the AM-H0280XU cartridge directly infringes at least claims 1-4, 6, 7, and 9 of the ’826 patent (Compl. ¶¶23, 27). The infringement theory is based on the mechanical structure and operation of the accused cartridge. The allegations suggest that the accused cartridge contains a casing, a photosensitive drum, and a coupling mechanism that correspond to the elements of the asserted claims. The core of the allegation is that the accused coupling mechanism has the specific geometry and movability recited in the claims, which allows it to properly engage with a printer's drive shaft and smoothly transmit rotational force.

  • ’021 Patent Infringement Allegations
    The complaint alleges that the AM-H0280XU cartridge directly infringes at least claims 1, 2, 4, 5, and 7 of the ’021 patent (Compl. ¶¶31, 33). As with the ’826 patent, the infringement theory centers on the physical construction of the cartridge's coupling mechanism. The complaint alleges that the accused product embodies the claimed combination of a casing, a developer, a photosensitive drum, and a coupling member that is movable between at least two defined positions to accommodate for potential misalignment with the printer's drive shaft.

  • Identified Points of Contention:

    • Scope Questions: The asserted claims contain numerous precise geometric and relational limitations (e.g., "a maximum distance... is shorter than a distance," "movable between (i) a first position... and (ii) a second position"). A central dispute may arise over how these terms are construed. The question for the court will be whether the specific dimensions, tolerances, and range of motion of the accused cartridge's coupling mechanism fall within the scope of these claim limitations as defined in the patent specifications.
    • Technical Questions: As the complaint provides only external photographs of the accused cartridge, a key question will be one of evidence. What technical evidence, such as internal product teardowns, schematics, or expert testing, will be presented to prove that the internal structure and operational characteristics of the accused product's coupling mechanism actually meet the multi-part definitions required by the asserted independent claims?

V. Key Claim Terms for Construction

  • The Term: "coupling member"
  • Context and Importance: This term appears in the independent claims of all asserted patents and is the central component of the claimed invention. The definition of this term will be critical to the infringement analysis, as it is defined not just functionally but by a collection of specific structural sub-elements (e.g., first and second end portions, connecting portion, projections) and their spatial relationships and movement capabilities. Practitioners may focus on this term because its construction will likely determine the overall scope of the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification introduces the invention's objective as providing a process cartridge "capable of smoothly rotating a photosensitive drum" and being "detachable" from the main apparatus (’826 Patent, col. 2:45-53). This language, focused on function and capability, could be used to argue for a broader construction that covers various structures achieving that result.
    • Evidence for a Narrower Interpretation: The detailed description provides extensive structural details for specific embodiments of the "coupling member," identified as element 150 in numerous figures. The specification states, for example, that "The coupling 150 mainly comprises three portions," which are then described in detail with reference to Figure 8 (’826 Patent, col. 14:52-68). This detailed description of specific structures and their sub-components may be used to argue that the term "coupling member" should be limited to the specific structural configurations disclosed, rather than covering any component that performs a coupling function.

VI. Other Allegations

  • Indirect Infringement: For each of the nine asserted patents, the complaint alleges induced infringement (e.g., Compl. ¶¶24, 32, 40). The basis for these allegations is that the Defendant knowingly induces its customers to infringe by promoting the accused cartridges for use in specific Canon and HP printers and by "providing customers with instructions for using its cartridges in those printers."
  • Willful Infringement: The complaint does not explicitly use the term "willful infringement." However, for each asserted patent, it alleges that Defendant will have knowledge of its infringement "at the very latest, ... upon being served with this Complaint" (e.g., Compl. ¶24). This allegation establishes a basis for potential claims of post-filing willfulness, which could lead to enhanced damages if infringement is found.

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

This dispute will likely focus on the precise mechanical details of toner cartridge design. The central questions for the court appear to be:

  • A core issue will be one of claim construction: How will the court define the highly specific geometric and relational limitations recited in the claims for the "coupling member," such as its range of movement and the relative distances of its parts? The viability of the infringement case will depend on whether the accused products, upon technical inspection, fall within these narrowly defined boundaries.
  • A key procedural question will be the impact of the parallel ITC proceeding: Given that the ITC investigation involves the same parties, patents, and products and typically proceeds on a much faster timeline, its claim construction rulings, evidentiary record, and ultimate findings on infringement and validity may significantly influence the strategy and outcome of this district court litigation.
  • An evidentiary question will be one of technical proof: As the complaint relies on high-level allegations and external photos, the case will turn on whether discovery produces technical evidence (e.g., product teardowns, expert analysis) sufficient to prove that the accused cartridges practice each specific limitation of the asserted claims.