DCT

2:18-cv-01719

Canon Inc v. Billiontree Technology USA Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01719, C.D. Cal., 02/28/2018
  • Venue Allegations: Venue is alleged as proper because the Defendant is incorporated in, resides in, and has a regular and established place of business within the Central District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges for laser printers infringe seven patents related to the mechanical coupling mechanism between the cartridge and the printer.
  • Technical Context: The technology concerns the mechanical interface that transfers rotational force from a printer’s main body to the photosensitive drum within a replaceable toner cartridge, a critical component in the multi-billion dollar printer consumables market.
  • Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC), which involves the same parties, patents, and accused products. The existence of a parallel ITC investigation suggests an effort by the Plaintiff to seek an exclusion order to block importation of the accused products in addition to monetary damages sought in district court.

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 No. 9,841,727 Issued
2017-12-12 U.S. Patent No. 9,841,728 Issued
2018-01-02 U.S. Patent No. 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 addresses the challenge of designing a user-replaceable process cartridge (e.g., a toner cartridge) that can be easily mounted and dismounted from a printer, while still ensuring a reliable and smooth transfer of rotational force from the printer's drive motor to the cartridge's internal photosensitive drum (Compl. ¶ 9; ’826 Patent, col. 1:15-42).
  • The Patented Solution: The invention is a process cartridge featuring a specialized coupling member designed to engage with the printer's drive shaft. This coupling member is movable relative to the photosensitive drum's axis. When the cartridge is installed, the coupling member moves from a disengaged position to an engaged position, allowing it to receive rotational force. This movement, involving a change in the coupling member's axial inclination, is intended to facilitate a smooth and secure connection. (’826 Patent, Abstract; col. 2:47-60).
  • Technical Importance: This approach to coupling allows for manufacturing tolerances and slight misalignments during user installation without compromising the precise rotational force needed for high-quality printing. (’826 Patent, col. 2:61-3:4).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6 (Compl. ¶ 23).
  • Independent Claim 1 recites a process cartridge comprising: a photosensitive drum on a first axis (L1); a developer-carrying developing roller; and a coupling member having a second axis (L2). The key limitations involve the coupling member being 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.
  • Independent Claim 6 recites a process cartridge with similar components, also requiring a coupling member movable between first and second positions with different distances between the coupling projection and a part of the casing.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶ 23).

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 aims to solve the problem of achieving a stable and reliable transmission of driving force to a photosensitive drum within a detachable process cartridge (’021 Patent, col. 1:15-42).
  • The Patented Solution: The solution is again centered on a movable coupling member at one end of the photosensitive drum. The claims define the member's movement between two distinct positions relative to the drum's axis, with specific geometric constraints on how far projections on the coupling extend. This design is intended to ensure proper engagement with the printer's drive shaft upon installation. (’021 Patent, Abstract; col. 2:47-60).
  • Technical Importance: The invention provides a robust mechanical interface that accommodates the user-replaceable nature of the cartridge while maintaining the precise mechanical operation required for electrophotographic printing. (’021 Patent, col. 2:61-3:4).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶ 31).
  • Independent Claim 1 recites a process cartridge with a casing, a photosensitive drum on a first axis (L1), and a coupling member on a second axis (L2). The claim requires the coupling member to be movable between first and second positions, with the distance from the drum to the tip of a projection on the coupling member increasing as it moves from the first to the second position.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶ 31).

Multi-Patent Capsule: U.S. Patent No. 9,841,727

  • Patent Identification: U.S. Patent No. 9,841,727, “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit,” issued December 12, 2017 (Compl. ¶ 11).
  • Technology Synopsis: This patent, part of the same family as the lead patents, discloses a process cartridge with a guide member and a movable coupling member. The interaction between the guide member and the coupling member controls the coupling's position relative to the photosensitive drum's axis during installation and removal. (’727 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶ 39).
  • Accused Features: The complaint alleges that the coupling mechanism and related structures of the accused toner cartridges infringe this patent (Compl. ¶ 39).

Multi-Patent Capsule: U.S. Patent No. 9,841,728

  • Patent Identification: 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 (Compl. ¶ 12).
  • Technology Synopsis: This patent describes a process cartridge where the relative position of a coupling member is changeable. It features a guide member that controls the movement of the coupling member between a first configuration and a second configuration, defined by the distance of a projection from the end of the guide member. (’728 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 16 (Compl. ¶ 47).
  • Accused Features: The complaint alleges infringement by the coupling mechanism and guide structures within the accused toner cartridges (Compl. ¶ 47).

Multi-Patent Capsule: U.S. Patent No. 9,857,765

  • Patent Identification: U.S. Patent No. 9,857,765, “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit,” issued January 2, 2018 (Compl. ¶ 13).
  • Technology Synopsis: This patent relates to a process cartridge with a movable coupling member. The claims focus on the maximum distance from the coupling member's axis to the outermost surface of its connecting portion, contrasting this with other dimensions to define the coupling's geometry and movement. (’765 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 13 (Compl. ¶ 55).
  • Accused Features: The complaint targets the geometric and functional characteristics of the coupling mechanism in the accused toner cartridges (Compl. ¶ 55).

Multi-Patent Capsule: U.S. Patent No. 9,869,960

  • Patent Identification: U.S. Patent No. 9,869,960, “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit,” issued January 16, 2018 (Compl. ¶ 14).
  • Technology Synopsis: This patent discloses a process cartridge with a drum flange and a movable coupling member. The invention is characterized by specific distance relationships between a projection on the coupling member, the drum's axis, and various surfaces of the coupling member, defining its operational movement. (’960 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶ 63).
  • Accused Features: The complaint alleges that the coupling member and drum flange assembly of the accused cartridges infringe this patent (Compl. ¶ 63).

Multi-Patent Capsule: U.S. Patent No. 9,874,846

  • Patent Identification: U.S. Patent No. 9,874,846, “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit,” issued January 23, 2018 (Compl. ¶ 15).
  • Technology Synopsis: This patent describes a drum unit for a process cartridge that includes a photosensitive drum and a movable coupling member. The claims define the coupling member's movement between two positions based on the changing distance between a projection on the member and the drum's axis. (’846 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶ 71).
  • Accused Features: The complaint alleges that the drum units contained within the accused toner cartridges infringe this patent (Compl. ¶ 71).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are replacement toner cartridges that Defendant imports, sells, or offers for sale for use in various Canon and HP laser printers (Compl. ¶ 18). A non-limiting example identified in the complaint is model AP-HF226A (Compl. ¶ 19).
  • Functionality and Market Context: The accused products are third-party consumables designed to function as replacements for original equipment manufacturer (OEM) toner cartridges in a wide range of popular laser printers (Compl. pp. 4-5). The complaint alleges that Defendant conducts business under the names "Toner Kingdom" and "Palmtree Store," including via an Amazon.com storefront (Compl. ¶ 5). The complaint provides a photograph of the accused cartridge and its packaging, identifying it as model AP-HF226A (Compl. p. 5). The core accused functionality is the mechanical coupling mechanism that engages with the printer's drive motor to rotate the cartridge's internal photosensitive drum.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 8-14) that are incorporated by reference but were not attached to the publicly filed document. Therefore, the following analysis is based on the narrative allegations in the complaint.

  • '826 Patent Infringement Allegations: The complaint alleges that the accused toner cartridges, such as the AP-HF226A model, infringe at least independent claims 1 and 6 (Compl. ¶ 23). The narrative theory is that the accused cartridges contain all elements of these claims, including a photosensitive drum, a developing roller, and a coupling member with a projection that is movable between at least two distinct positions relative to the drum's axis, as specified in the claims (Compl. ¶¶ 23, 25).
  • '021 Patent Infringement Allegations: The complaint alleges that the accused toner cartridges infringe at least independent claim 1 (Compl. ¶ 31). The infringement theory is that the accused products literally contain each element of the claim, including a coupling member that is movable between first and second positions where the distance from the drum to the tip of a projection on the coupling member changes in the manner required by the claim (Compl. ¶¶ 31, 33).
  • Identified Points of Contention:
    • Scope Questions: The asserted claims across the patent portfolio use similar terminology to define the coupling mechanism's structure and movement (e.g., "movable between...a first position...and a second position"). A likely point of dispute will be the precise scope of these terms. The analysis may raise questions such as: "Do the specific distance and angular relationships described in the patents' specifications limit the scope of the broader claim terms?"
    • Technical Questions: The core of the infringement allegation rests on the specific mechanical operation of the accused cartridge's coupling. This raises the evidentiary question: "What testing or analysis does the complaint rely on to allege that the accused cartridge's coupling member physically moves between two distinct positions with the specific axial and distance changes required by the claims when installed in a compatible printer?"

V. Key Claim Terms for Construction

  • The Term: "a coupling member...movable between (i) a first position...and (ii) a second position" (and variants thereof, appearing in the independent claims of multiple asserted patents, e.g., '826 Patent, Claim 1).
  • Context and Importance: This phrase is central to the asserted independent claims of the lead patents and appears to be a core inventive concept across the portfolio. The definition of what constitutes the "first position," the "second position," and the "movable" nature of the transition between them will be critical to the infringement analysis. Practitioners may focus on this term because the entire infringement case appears to depend on whether the accused product's coupling mechanism operates within the scope of this claimed movement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the general purpose of the movement as facilitating engagement with the printer's drive shaft upon installation and disengagement upon removal. Language such as providing a cartridge that is "capable of being smoothly mounted" could support a broader, functional interpretation of the required movement. (’826 Patent, col. 2:47-53).
    • Evidence for a Narrower Interpretation: The specification and figures provide highly detailed descriptions of specific embodiments, including precise angular relationships and geometric constraints for the coupling member in its different positions (e.g., '826 Patent, FIG. 23; col. 27:1-30). This detailed disclosure of specific structures and movements could be used to argue for a narrower construction limited to the disclosed embodiments or structures that are equivalent.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges inducement of infringement. The basis for this allegation is that Defendant "knowingly induces customers to use its toner cartridges, including, for example, by promoting its cartridges for use in specific printers and/or providing customers with instructions for using its cartridges in those printers" (e.g., Compl. ¶ 22, 30, 38).
  • Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, for each asserted patent, it includes a forward-looking statement that "Defendant will be given notice of its infringement...upon being served with this Complaint" (e.g., Compl. ¶ 22, 30, 38). This language serves to establish post-filing knowledge, which could form the basis for a subsequent claim of willful infringement and enhanced damages.

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

  • A core issue will be one of claim scope and construction: can the phrase "movable between...a first position...and a second position," which is central to all asserted patents, be construed broadly to cover the engagement mechanism of the accused cartridges, or will it be limited by the highly specific geometric and angular relationships described in the patents' specifications?
  • A key evidentiary question will be one of mechanical operation: what factual evidence will be presented to demonstrate that the accused cartridge's coupling mechanism physically performs the precise multi-step movement—including changes in axial inclination and projection distance—as required by the asserted claims during the process of being installed into a printer?
  • A third question relates to the parallel ITC proceeding: how will the concurrent ITC investigation, which seeks to bar importation of the accused products, affect the strategy, timing, and potential resolution of this district court action for monetary damages?