DCT
2:20-cv-08498
Canon Inc v. Ninestar Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: Ninestar Technology Company, Ltd. (New Jersey); Ninestar Corporation (China); and Ninestar Image Tech Limited (Hong Kong)
- Plaintiff’s Counsel: Venable LLP
- Case Identification: 2:20-cv-08498, C.D. Cal., 09/16/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant Ninestar Technology Company, Ltd. has a regular and established place of business in the district and has committed infringing acts there. Venue over the foreign defendants, Ninestar Corporation and Ninestar Image Tech Limited, is asserted on the basis that they are not U.S. residents and are subject to personal jurisdiction in the district.
- Core Dispute: Plaintiff alleges that Defendants’ compatible toner cartridges for laser printers infringe five U.S. patents related to the mechanical coupling members that transmit rotational force from the printer to the cartridge’s internal developing roller.
- Technical Context: The technology concerns the precise mechanical interface between a replaceable printer cartridge and the main printer body, a critical component for ensuring reliable operation and image quality in the highly competitive printer consumables market.
- Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review (IPR) proceedings concerning the asserted patents, or any relevant licensing history.
Case Timeline
| Date | Event |
|---|---|
| 2007-03-23 | Earliest Priority Date for Asserted Patents |
| 2017-12-26 | U.S. Patent No. 9,851,688 Issues |
| 2018-01-02 | U.S. Patent No. 9,857,766 Issues |
| 2020-04-14 | U.S. Patent No. 10,620,582 Issues |
| 2020-07-14 | U.S. Patent No. 10,712,709 Issues |
| 2020-07-14 | U.S. Patent No. 10,712,710 Issues |
| 2020-09-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,851,688 - “Electrophotographic Image Forming Apparatus, Developing Apparatus, and Coupling Member,” issued December 26, 2017
The Invention Explained
- Problem Addressed: The patent describes the technical challenge of designing a reliable drive connection between a main printer assembly and a user-replaceable developing cartridge. Conventional designs can be complex or may fail to ensure smooth engagement and disengagement, potentially leading to component wear or degraded image quality (’688 Patent, col. 1:16-24, 2:20-30).
- The Patented Solution: The invention proposes a specific coupling member that transmits rotational force from the printer’s drive shaft to the cartridge’s developing roller. The key features include a movable design with at least one projection having a "slanted surface," which facilitates movement between an engaged and a disengaged position relative to the developing roller, ensuring a stable and precise connection when the cartridge is installed (’688 Patent, Abstract; col. 14:1-13).
- Technical Importance: This mechanical configuration is intended to enable the reliable and user-friendly replacement of consumable cartridges while maintaining the precise alignment needed to transfer torque for high-quality electrophotographic printing.
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, 19, and 24 (Compl. ¶38).
- The essential elements of independent claim 1 include:
- A casing containing developer.
- A developing roller rotatably supported in the casing.
- A coupling member with a first end portion connected to the roller, a second end portion with at least one projection having a slanted surface, and a connecting portion between the two ends.
- A specific dimensional relationship wherein the maximum radial distance of the connecting portion is shorter than the radial distance to the projection.
- The coupling member is movable between a first (disengaged) position and a second (engaged) position, where the projection is farther from the roller in the first position than in the second.
- The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶36).
U.S. Patent No. 9,857,766 - “Electrophotographic Image Forming Apparatus, Developing Apparatus, and Coupling Member,” issued January 2, 2018
The Invention Explained
- Problem Addressed: Like the ’688 patent, this patent addresses the need for a robust and reliable coupling mechanism for replaceable printer cartridges (’766 Patent, col. 1:16-24).
- The Patented Solution: This invention also describes a movable coupling member but defines its geometry differently. The solution focuses on a second end portion whose outermost surface has a maximum distance from its axis of rotation that increases as one moves away from the central axle portion. This tapered or flared shape helps guide the coupling into proper alignment with the printer's drive mechanism upon insertion of the cartridge (’766 Patent, Abstract; col. 17:51-18:23).
- Technical Importance: This tapered geometry offers a distinct mechanical approach to self-aligning the drive coupling, aiming to improve the ease of cartridge installation and the reliability of the torque-transmitting connection.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10 (Compl. ¶91).
- The essential elements of independent claim 1 include:
- A casing containing developer.
- A developing roller rotatably supported in the casing.
- A coupling member with a first end portion, a second end portion with an outermost surface, an axle portion connecting them, and at least one projection extending from the second end portion.
- A geometric constraint wherein, for at least part of the second end portion, the maximum radial distance to its outermost surface increases as the axial distance from the axle portion increases.
- The coupling member is movable between a first (disengaged) and second (engaged) position relative to the developing roller.
- The complaint reserves the right to assert additional claims (Compl. ¶89).
U.S. Patent No. 10,620,582 - “Electrophotographic Image Forming Apparatus, Developing Apparatus, and Coupling Member,” issued April 14, 2020
- Technology Synopsis: This patent describes a coupling member designed to move between three distinct positions to achieve engagement. The claimed movement includes a first position where the coupling member's axis is substantially parallel to the developer roller's axis, a second inclined position, and a third inclined position opposite to the second. This multi-stage movement is intended to provide a more sophisticated and reliable engagement/disengagement process (’582 Patent, Abstract).
- Asserted Claims: Independent claims 1, 11, 20, and 30 are asserted (Compl. ¶120).
- Accused Features: The complaint alleges the accused products’ coupling member is movable between a first, parallel and offset position and second and third inclined positions relative to the developer roller axis (Compl. ¶133).
U.S. Patent No. 10,712,709 - “Electrophotographic Image Forming Apparatus, Developing Apparatus, and Coupling Member,” issued July 14, 2020
- Technology Synopsis: This patent claims a coupling member with a "free end portion" that includes at least two projections, each having a slanted surface. A key feature of the claimed invention is that in its engaged, parallel position, the axis of the coupling member is offset from and does not pass through the developer roller. This specific spatial relationship is intended to ensure proper force transmission during operation (’709 Patent, Abstract).
- Asserted Claims: Independent claims 1, 13, 24, and 36 are asserted (Compl. ¶169).
- Accused Features: The complaint accuses the products of having a coupling member with at least two projections featuring slanted surfaces, and which is movable between a first position where its axis is parallel to and offset from the developer roller's axis, and second/third inclined positions (Compl. ¶¶180, 181).
U.S. Patent No. 10,712,710 - “Electrophotographic Image Forming Apparatus, Developing Apparatus, and Coupling Member,” issued July 14, 2020
- Technology Synopsis: This patent discloses a coupling mechanism that uses an intermediate gear train. A first gear is operatively connected to the developer roller, and a second gear in meshing engagement with the first gear is connected to the coupling member. This arrangement allows for greater design flexibility and potentially different gear ratios compared to a direct-drive coupling (’710 Patent, Abstract).
- Asserted Claims: Independent claims 1, 12, 22, and 33 are asserted (Compl. ¶214).
- Accused Features: The complaint alleges the accused cartridges contain a first gear connected to the developer roller, a second meshing gear, and a coupling member connected to the second gear, which is also movable between multiple positions (Compl. ¶223).
III. The Accused Instrumentality
Product Identification
- The accused products are aftermarket toner cartridges designed for use in certain Canon and HP color laser beam printers (Compl. ¶¶1, 3, 21). The complaint identifies an exemplary model, NHCE310A, as representative of the accused products (Compl. ¶38).
Functionality and Market Context
- The accused products are consumable toner cartridges sold by Defendants as third-party alternatives to those manufactured by the original printer makers (Compl. ¶¶21, 22). They are designed to be installed and replaced by end-users and contain toner, a developing roller, and a mechanical coupling member that engages with the printer's drive mechanism to rotate the roller during the printing process (Compl. ¶¶43-47). The complaint alleges that Defendants manufacture, import, and sell these products in the United States through various commercial websites (Compl. ¶23). Figure 1-1 of the complaint shows a photograph of the exemplary accused NHCE310A toner cartridge (Compl. ¶44).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,851,688 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (d) a coupling member having an axis L2 and including... (ii) a second end portion including at least one projection having a slanted surface with respect to a plane perpendicular to the axis L2... | The accused cartridge's coupling member allegedly has projections with slanted surfaces, as depicted in annotated photographs. | ¶50 | col. 14:4-8 |
| (e) wherein, as measured along a line perpendicular to the axis L2, a maximum distance from the axis L2 to an outermost surface of the connecting portion is shorter than a distance between the axis L2 and the at least one projection... | An annotated photograph purports to show that the radial distance to the connecting portion (Dmax) is less than the radial distance to the projection (Dprojection). | ¶51 | col. 14:14-19 |
| (f) wherein the coupling member is movable between (i) a first position in which a tip of the at least one projection is a first distance away from the developing roller... and (ii) a second position in which the tip... is a second distance away... wherein the first distance is greater than the second distance. | A pair of annotated photographs allegedly demonstrates the coupling member moving between two positions, with the annotated distance from the projection to the roller being greater in the first position (D1) than in the second (D2). This is illustrated in Figure 1-11 of the complaint. | ¶52 | col. 14:20-29 |
U.S. Patent No. 9,857,766 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (d) a coupling member having an axis L2 and including (i) a first end portion..., (ii) a second end portion having an outermost surface, (iii) an axle portion connecting the first end portion and the second end portion..., and (iv) at least one projection... | The accused cartridge's coupling member is alleged to have the claimed first end, second end, axle, and projection portions, as labeled in Figure 2-6 of the complaint. | ¶102 | col. 13:59-67 |
| (e) wherein, for at least part of the outermost surface of the second end portion, a maximum distance from the axis L2 to the outermost surface... increases as the distance along the axis L2 from the axle portion increases... | An annotated photograph of the coupling member, Figure 2-7, purports to show that the radial distance to the outermost surface is greater at a point farther from the axle portion (Max2) than at a point closer to it (Max1). | ¶103 | col. 14:1-6 |
| (f) wherein the coupling member is movable between a first position... and a second position... with the first distance being greater than the second distance. | Similar to the '688 allegations, a pair of annotated photographs is used to show the coupling member moving between two positions relative to the developing roller, with the distance being greater in the first position (D1) than the second (D2). | ¶104 | col. 14:7-17 |
Identified Points of Contention
- Scope Questions: The dispute may center on the construction of geometric and relational terms. For the ’688 patent, a question is whether the specific surface on the accused device qualifies as a "slanted surface" as the term is used in the patent. For the ’766 patent, a question is whether the accused coupling's surface profile satisfies the functional requirement that its "maximum distance... increases" along the axis, and over what portion of the surface this must occur to meet the claim limitation.
- Technical Questions: The complaint's infringement theory relies heavily on annotated photographs of a single exemplary cartridge. A key technical question will be whether this static evidence accurately reflects the dynamic operation of the coupling member when installed in a printer. The "movable between" limitation, for instance, raises the question of whether the accused device actually moves through the depicted range of motion during its intended function of engaging and disengaging with the printer's drive mechanism.
V. Key Claim Terms for Construction
The Term: "slanted surface" (’688 Patent, Claim 1)
- Context and Importance: This term defines a critical geometric feature of the projection on the coupling member. The outcome of the infringement analysis for the ’688 patent may depend on whether the angle and shape of the surface on the accused product's coupling member fall within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent repeatedly discusses the coupling member moving to an "inclined" position relative to other components, suggesting that "slanted" could be interpreted broadly to mean any surface that is not perpendicular or parallel to the axis L2 (’688 Patent, col. 29:3-7).
- Evidence for a Narrower Interpretation: The specification describes the function of this surface in relation to engaging a drive shaft and facilitating disengagement. For example, the abstract refers to a "disengaging angular portion." This functional context, along with the specific angles and shapes shown in embodiments like Figures 22, 25, and 30, may support a narrower construction tied to achieving this specific function.
The Term: "movable between (i) a first position... and (ii) a second position" (’688 Patent, Claim 1; ’766 Patent, Claim 1)
- Context and Importance: This limitation appears in the independent claims of multiple asserted patents and is central to the claimed invention's operation. Its construction will determine what evidence is required to prove infringement—specifically, whether the accused device must be shown to actively move between these positions during normal operation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify when or how the movement occurs, only that the member is "movable between" the positions. Plaintiff may argue that if the device is capable of being placed in both positions, it meets the limitation, regardless of whether it fully transitions between them in every operational cycle.
- Evidence for a Narrower Interpretation: The detailed description explains the movement in the context of the cartridge being installed into and removed from the main printer apparatus (’688 Patent, col. 25:5-26:24). This operational context suggests the "movable between" limitation requires that the component is designed to, and actually does, transition between these positions as part of its intended function of engaging and disengaging from the printer drive.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement of infringement for all asserted patents. The factual basis for this allegation is that Defendants allegedly promote the accused cartridges for use in specific models of Canon and HP printers and provide customers with instructions for using them, thereby encouraging customers to perform the infringing act of using the cartridges in the printers (Compl. ¶¶37, 90, 119, 168, 213).
Willful Infringement
- The complaint does not contain an explicit allegation of willful infringement or plead facts suggesting pre-suit knowledge of the patents. However, for each patent, the complaint states that "At the very latest, Defendants will be given notice of their infringement... upon being served with or otherwise receiving this Complaint," which may form the basis for a claim of post-filing willfulness (Compl. ¶¶37, 90, 119, 168, 213).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: How will the court construe key geometric terms like "slanted surface" and functional descriptions of shape, such as a radius that "increases as the distance... increases"? The case may turn on whether these terms are given a broad, plain-meaning interpretation or are narrowed by the patent's specification and figures to a degree that excludes the accused products.
- A key evidentiary question will be one of operational function: Does the complaint's use of static, annotated photographs suffice to demonstrate that the accused coupling members perform the dynamic actions required by the claims, such as being "movable between" distinct first and second positions during the actual process of cartridge installation, operation, and removal? Defendants may challenge whether this claimed functionality is present in the accused products under real-world operating conditions.
- A third question concerns the multiplicity of patents: With five asserted patents from the same family covering similar mechanical features, the case will likely involve significant overlap in claim construction and infringement arguments. A key strategic question will be whether the subtle distinctions between the patents—such as the direct connection in the '688 patent versus the gear-train connection in the '710 patent—provide distinct infringement theories or if the case will collapse into a single dispute over the core coupling technology common to all asserted patents.