Seiko Epson Corp v. Vintrick Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seiko Epson Corporation (Japan); Epson America, Inc. (California); Epson Portland Inc. (Oregon)
  • Defendant: Vintrick Inc. (California); Xiaodong Hu (California)
  • Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
• Case Identification: 2:19-cv-10697, C.D. Cal., 12/18/2019
• Venue Allegations: Venue is alleged to be proper as Defendants reside in the Central District of California and are alleged to have committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s aftermarket inkjet printer cartridges infringe three U.S. patents related to the mechanical and electrical interface between the cartridge and the printer.
• Technical Context: The technology concerns the design of removable ink cartridges, specifically the physical and electrical components that ensure a reliable connection to the printer for delivering ink and communicating data.
• Key Procedural History: The complaint heavily references Plaintiff's prior enforcement efforts, including two U.S. International Trade Commission (ITC) investigations that resulted in General Exclusion Orders (GEOs) prohibiting the importation of cartridges infringing the patents-in-suit. The ITC 565 Investigation adjudicated the ’422 Patent, and the ITC 946 Investigation adjudicated the ’749 and ’116 patents. The complaint also lists twenty-two prior related district court cases against other aftermarket ink cartridge suppliers. This history is presented to support allegations of willful infringement.

Case Timeline

Date	Event
2001-04-03	U.S. Patent No. 6,955,422 Priority Date
2005-10-18	U.S. Patent No. 6,955,422 Issue Date
2005-12-26	U.S. Patent Nos. 8,794,749 & 8,454,116 Priority Date
2009-09-29	U.S. Patent No. 6,955,422 Reexamination Certificate (C1) Issue Date
2013-06-04	U.S. Patent No. 8,454,116 Issue Date
2014-08-05	U.S. Patent No. 8,794,749 Issue Date
2019-03-19	Accused Product Listing Observed on newegg.com
2019-08-10	Accused Product Listing Observed on amazon.com
2019-08-15	Accused Product Listing Observed on ebay.com
2019-12-18	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,955,422 - "Ink Cartridge"

• Patent Identification: U.S. Patent No. 6,955,422, "Ink Cartridge," issued October 18, 2005 (as amended by Reexamination Certificate C1, issued September 29, 2009).

The Invention Explained

• Problem Addressed: The patent describes the technical challenge of ensuring that a removable ink cartridge, which may contain a memory device with small electrical contacts, can be reliably and precisely mounted into a printer carriage to ensure a secure physical and electrical connection, while also allowing for easy removal. (U.S. Patent No. 6,955,422, col. 1:11-35, 1:52-56).
• The Patented Solution: The invention is a specific three-dimensional geometric arrangement of the ink cartridge's components. It specifies the relative positions of the ink supply port, the memory device's electrodes, and a movable retaining member that latches the cartridge into the printer carriage. The claimed geometry ensures that these critical components are properly aligned upon insertion. ('422 Patent, Abstract; col. 2:1-11).
• Technical Importance: This design provides a robust mechanical and electrical interface for "smart" ink cartridges, facilitating reliable communication of data such as ink levels or cartridge authentication while ensuring proper ink flow. ('422 Patent, col. 1:52-56).

Key Claims at a Glance

• The complaint asserts infringement of Claim 1. (Compl. ¶23).
• The essential elements of independent Claim 1 (as reexamined) are:
  • An ink cartridge detachably mountable on a reciprocally movable carriage.
  • A container that stores ink, having an ink supply port and first and second surfaces substantially parallel to the insertion direction.
  • A memory device with a plurality of electrodes fixed relative to the container's first surface and disposed substantially in a first plane.
  • A retaining member on the first surface with a movable engagement portion for engaging the carriage.
  • A specific geometric relationship wherein a second plane, perpendicular to the first plane, intersects at least one electrode, the movable engagement portion, and the axis of the ink supply port.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,794,749 - "Printing Material Container, and Board Mounted on Printing Material Container"

• Patent Identification: U.S. Patent No. 8,794,749, "Printing Material Container, and Board Mounted on Printing Material Container," issued August 5, 2014.

The Invention Explained

• Problem Addressed: The patent addresses the risk of electrical shorting on ink cartridges that have multiple electronic devices operating at different voltages, such as a low-voltage memory chip and a high-voltage sensor (e.g., a piezoelectric remaining ink level sensor). An accidental bridge between terminals for these different devices, for example by a stray drop of ink, could damage the cartridge or the printer. ('749 Patent, col. 1:41-54).
• The Patented Solution: The invention specifies a particular arrangement of electrical terminals on the cartridge's circuit board. It arranges the terminals into two rows and places the contacts for the high-voltage device at the opposite ends of the first row. This physical separation is intended to reduce the likelihood of a short between the high-voltage contacts and the more centrally located low-voltage contacts. ('749 Patent, Abstract; col. 2:1-15).
• Technical Importance: This terminal layout provides a more robust electrical design for multi-function smart cartridges by mitigating the risk of damaging electrical shorts between high- and low-voltage systems. ('749 Patent, col. 2:20-25).

Key Claims at a Glance

• The complaint asserts infringement of Claim 1. (Compl. ¶36).
• The essential elements of independent Claim 1 are:
  • A printing material container (ink cartridge) with an ink supply opening.
  • A low voltage electronic device (e.g., memory) adapted to function with a low voltage.
  • A high voltage electronic device adapted to function with a voltage higher than the low voltage.
  • A plurality of container-side terminals with contact portions arranged in a first row and a second row, orthogonal to the insertion direction.
  • The first row is disposed further in the insertion direction than the second row.
  • The first row includes a first high voltage contact portion at its first end position and a second high voltage contact portion at its second end position.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,454,116 - "Printing Material Container, and Board Mounted on Printing Material Container"

• Patent Identification: U.S. Patent No. 8,454,116, "Printing Material Container, and Board Mounted on Printing Material Container," issued June 4, 2013.
• Technology Synopsis: This patent, part of the same family as the ’749 Patent, also addresses the problem of preventing electrical shorting on multi-function ink cartridges. The claimed solution is a specific spatial arrangement of different types of contact portions on the cartridge's circuit board, including those for a memory device, a higher-voltage electronic device, and a dedicated "short detection contact portion." ('116 Patent, Abstract; col. 1:5-18).
• Asserted Claims: The complaint asserts infringement of Claim 18. (Compl. ¶49).
• Accused Features: The complaint alleges that the circuit board on the accused cartridges infringes by having the specific claimed layout of memory contact portions, electronic device contact portions, and a short detection contact portion. (Compl. ¶¶48-49).

III. The Accused Instrumentality

Product Identification

• The accused products are aftermarket "remanufactured" or "compatible" ink cartridges sold for use in various Epson inkjet printers. (Compl. ¶¶2, 14-16). Specific model series identified include 200XL and T200XL120. (Compl. ¶¶14, 22).

Functionality and Market Context

• The complaint alleges Defendants market and sell these cartridges through online storefronts on amazon.com, ebay.com, and newegg.com under seller names such as "GC-Printing," "super_inker," and "printchainstore." (Compl. ¶14). The products are explicitly marketed as replacements for specific Epson-branded cartridges for use in designated Epson printer models. (Compl. ¶¶14-16). The complaint includes a screenshot from amazon.com showing a "Perfect-Office Remanufactured Ink Cartridge Replacement for Epson 200XL." (Compl. p. 8).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,955,422 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a container that stores ink therein and has an ink supply port... the container further having first and second surfaces opposite each other, the first surface being substantially parallel to the insertion direction...	The accused cartridge has a container that holds ink, an ink supply port at its leading end, and opposite surfaces, with the front surface being substantially parallel to the insertion direction. A photograph shows these features.	¶23 (p. 15)	col. 3:42-51
a memory device having a plurality of electrodes disposed substantially in a first plane for respective electrical connection to the electrodes of the carriage, the electrodes of the memory device being fixed relative to the first surface of the container	The accused cartridge has a circuit board with gold-colored electrodes that are fixed on the front surface of the container and lie in a single plane. A photograph shows the circuit board and its electrodes.	¶23 (p. 16)	col. 4:1-5
a retaining member disposed on the first surface of the container, and having a movable engagement portion that can shift position... and which is located at a trailing end side relative to the electrodes of the memory device...	The accused cartridge has a movable retaining clip on its front surface, located at the trailing end (top) of the cartridge relative to the electrodes, which is used to latch the cartridge into the printer.	¶23 (p. 17)	col. 4:53-60
wherein at least one said electrode, the movable engagement portion, and an axis of the ink supply port are intersected by a second plane that is perpendicular to the first plane.	The complaint presents an annotated photograph alleging that a single vertical plane (the "second plane") intersects one of the electrodes, the movable clip, and the axis of the ink port, and is perpendicular to the plane of the circuit board (the "first plane").	¶23 (p. 18)	col. 8:38-44

• Identified Points of Contention:
  • Geometric Questions: The infringement analysis for the ’422 Patent appears to be a highly factual and geometric inquiry. A central question will be whether the accused cartridge's physical structure meets the precise spatial relationship required by the final limitation of Claim 1. This may involve debates over measurement methodologies and whether the components are truly intersected by a single plane that is perfectly perpendicular to the plane of the electrodes.

U.S. Patent No. 8,794,749 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a low voltage electronic device adapted to receive and function with a low voltage, the low voltage electronic device comprising a memory device	The accused cartridge has an IC chip on its circuit board that functions as a memory device and operates at a low voltage (~4 volts) supplied by the printer, as demonstrated by the printer reading and displaying ink level data.	¶36 (pp. 25-26)	col. 27:30-34
a high voltage electronic device adapted to receive and function with a high voltage, which is a higher voltage than the low voltage of the low voltage electronic device	The accused cartridge has another electronic component (e.g., a resistor) on the circuit board that is capable of receiving and functioning with a higher voltage (~42 volts) supplied by the printer for a different function.	¶36 (p. 27)	col. 27:35-40
a plurality of container-side terminals having contact portions... arranged in a first row of contact portions and in a second row of contact portions... extending in a row direction which is generally orthogonal to the insertion direction	The circuit board on the accused cartridge has nine gold-colored terminals arranged in a top row of four and a bottom row of five. The complaint presents a photograph alleging these rows are orthogonal to the insertion direction of the cartridge.	¶36 (p. 31)	col. 28:1-5
the first row of contact portions is disposed at a location that is further in the insertion direction than the second row of contact portions	The complaint provides an annotated photograph showing that the first row of contacts (bottom row) is physically located deeper inside the printer when the cartridge is inserted than the second row of contacts (top row).	¶36 (p. 32)	col. 28:6-9
the first row of contact portions has a first end position and a second end position at opposite ends thereof, the first high voltage electronic device contact portion is disposed at the first end position... and the second high voltage... contact portion is disposed at the second end position	An annotated photograph alleges that the terminals at the far left and far right ends of the first (bottom) row of contacts are the ones electrically connected to the high-voltage electronic device.	¶36 (p. 33)	col. 28:10-15

• Identified Points of Contention:
  • Technical Questions: A key question will be whether the single circuit board on the accused cartridge in fact contains two distinct electronic devices as claimed: one "low voltage" and one "high voltage." The analysis may focus on whether the components identified by the plaintiff (e.g., an IC chip and a resistor) truly function as separate devices operating at different voltage potentials when used in the printer, or if they are part of a single integrated circuit.
  • Scope Questions: The dispute may involve the scope of "high voltage electronic device." Defendants could argue that a simple passive component like a resistor does not meet the definition of an "electronic device" that is "adapted to... function" in the manner contemplated by the patent.

V. Key Claim Terms for Construction

'422 Patent, Claim 1: "substantially parallel" / "substantially in a first plane"

• Context and Importance: These terms introduce a degree of geometric tolerance. The case may turn on how much deviation from perfect parallelism or planarity is permitted. Practitioners may focus on these terms because the infringement analysis is purely structural, and the precise meaning of "substantially" will define the claim's scope against the physical accused product.
• Intrinsic Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition that would broaden the terms beyond their ordinary meaning, which typically implies "largely but not wholly" that which is specified. The purpose of the alignment is to ensure a reliable connection, suggesting that any deviation that does not frustrate this purpose could be considered "substantial."
• Intrinsic Evidence for a Narrower Interpretation: The figures in the patent, such as FIG. 1A and FIG. 2B, depict the relevant surfaces and electrodes as being perfectly parallel and planar. ('422 Patent, Figs. 1A, 2B). An argument could be made that "substantially" is meant to account only for minor, unintentional manufacturing tolerances rather than intentional design deviations.

'749 Patent, Claim 1: "low voltage electronic device" and "high voltage electronic device"

• Context and Importance: The entire inventive concept of arranging terminals to prevent shorting rests on the existence of two distinct devices operating at different voltages. The construction of these terms will be critical to determining if the accused cartridge, which contains a single circuit board, meets this foundational element of the claim.
• Intrinsic Evidence for a Broader Interpretation: The claim itself provides a relative definition: the high voltage is simply "a higher voltage than the low voltage." ('749 Patent, col. 28:1-3). This could support a broad reading where any two components on the circuit board receiving different, non-trivial voltages from the printer qualify. The specification mentions a "remaining ink level sensor using a piezoelectric element" as an example of a high voltage circuit, but does not limit it to that embodiment. ('749 Patent, col. 1:33-35).
• Evidence for a Narrower Interpretation: The patent consistently discusses the two devices as being distinct (e.g., "a memory and a high voltage circuit"). ('749 Patent, col. 1:43-44). An argument could be made that the claim requires two functionally separate and independent devices, not merely different components or circuits on a single integrated chip that may have different voltage inputs.

VI. Other Allegations

Indirect Infringement

• The complaint alleges both induced and contributory infringement. Inducement is alleged based on Defendant Xiaodong Hu directing and controlling Vintrick's infringing activities, and Vintrick encouraging infringement through the sale of the cartridges. (Compl. ¶¶24, 37, 50). Contributory infringement is alleged on the basis that the accused cartridges are especially made for use in an infringing manner and are not staple articles of commerce with substantial non-infringing uses. (Compl. ¶¶27, 40, 53).

Willful Infringement

• The complaint alleges willful infringement based on Defendants' knowledge of the Epson patents prior to the lawsuit. This knowledge is alleged to stem from Plaintiff's widely publicized enforcement efforts, including the two ITC General Exclusion Orders that specifically adjudicated the patents-in-suit and prohibited the importation of infringing cartridges. (Compl. ¶¶2-6, 31, 39, 52, 57).

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

• A core issue will be one of technical operation: for the ’749 and ’116 patents, the case will likely require detailed evidence establishing whether the components on the accused cartridges’ circuit boards actually function as distinct "low voltage" and "high voltage" electronic devices that receive different voltages from the printer, as required by the claims.
• A second key question will be one of structural compliance: for the ’422 patent, the dispute is a factual inquiry into whether the physical accused cartridges meet the precise three-dimensional geometric limitations of Claim 1, particularly the requirement that a single plane intersects the specified cartridge components.
• A central question for damages will be willfulness and pre-suit knowledge: given the complaint’s significant emphasis on prior ITC litigation and General Exclusion Orders covering the asserted patents, a crucial issue will be whether Plaintiff can prove Defendants knew, or should have known, their specific products infringed these patents before the suit was filed.