DCT
2:22-cv-01122
Seiko Epson Corp v. RJ Intl Group Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Seiko Epson Corporation (Japan); Epson America, Inc. (California); Epson Portland Inc. (Oregon)
- Defendant: RJ International Group, Inc. (California); Yiping Jen (California)
- Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
- Case Identification: 2:22-cv-01122, C.D. Cal., 02/18/2022
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the judicial district and have committed the alleged acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ aftermarket ink cartridges for use in Epson printers infringe a patent related to the electrical design and terminal layout on the cartridge.
- Technical Context: The technology concerns the design of electrical interfaces on ink cartridges, a critical area for ensuring compatibility and preventing damage in printers that use cartridges with multiple electronic components (e.g., memory chips and sensors).
- Key Procedural History: The complaint highlights a long history of litigation by Epson to enforce its ink cartridge patents, including two U.S. International Trade Commission (ITC) investigations. Notably, the patent-in-suit was litigated in the ITC’s 946 Investigation, which resulted in a General Exclusion Order prohibiting the importation of infringing cartridges. This history is cited to support allegations of knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-26 | ’749 Patent Priority Date |
| 2007-10-19 | ITC 565 Investigation Final Determination |
| 2014-08-05 | ’749 Patent Issue Date |
| 2016-05-26 | ITC 946 Investigation Final Determination |
| 2021-09-29 | Date of visit to Defendants' accused product listing on ebay.com |
| 2021-10-13 | Date of visit to Defendants' accused product listing on ebay.com |
| 2021-11-11 | Date of visit to Defendants' accused product listing on ebay.com |
| 2021-11-15 | Date of visit to Defendants' accused product listing on ebay.com |
| 2021-11-17 | Date of visit to Defendants' accused product listing on ebay.com |
| 2022-02-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
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, issued August 5, 2014.
The Invention Explained
- Problem Addressed: The patent addresses the risk of electrical short-circuits on ink cartridges that are equipped with multiple electronic components operating at different voltages, such as a low-voltage memory chip and a separate high-voltage circuit (e.g., an ink level sensor). An accidental short, potentially caused by an ink drop, could damage the cartridge or the printer itself (’749 Patent, col. 1:44-55).
- The Patented Solution: The invention proposes a specific geometric arrangement of electrical contact terminals on a circuit board mounted on the cartridge. By placing the terminals for the high-voltage device at the extreme ends of a row of contacts, the design reduces the number of adjacent terminals and thus minimizes the chance of a damaging short. The design also contemplates positioning dedicated short-detection terminals next to the high-voltage terminals to detect a short before damage can occur (’749 Patent, Abstract; col. 2:1-27). This layout is illustrated in patent figures such as Figure 3A (’749 Patent, Fig. 3A).
- Technical Importance: This terminal arrangement provided a way to increase the electronic complexity of ink cartridges while enhancing their reliability and protecting the host printer from electrical damage (’749 Patent, col. 1:30-43).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶34).
- The essential elements of independent claim 1 include:
- A printing material container with an ink supply opening.
- A low voltage electronic device (comprising a memory device) 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 and second row.
- The contact portions include a plurality for the low voltage device and first and second contact portions for the high voltage device.
- The first row of contacts is disposed further in the insertion direction than the second row.
- The first and second high voltage contact portions are disposed at opposite ends of the first row.
- The complaint does not explicitly reserve the right to assert dependent claims, though this remains a possibility.
III. The Accused Instrumentality
Product Identification
The accused products are aftermarket ink cartridges sold by Defendants, including models T694100, T694200, T694300, T694400, T694500, T653100, T636100, and T689100 (collectively, the "Accused ’749 Ink Cartridges") (Compl. ¶33). These were allegedly sold on ebay.com under the seller name "fusion-inkjet" (Compl. ¶16).
Functionality and Market Context
The Accused ’749 Ink Cartridges are designed for use in specific Epson printers, such as the Epson SureColor T7270D (Compl. ¶34). The complaint alleges they contain a printed circuit board with electrical contacts that interface with the printer to provide information, such as remaining ink levels, from an on-board memory device (Compl. ¶34, pp. 17-18). The complaint provides a photograph of a representative accused cartridge showing its physical configuration, including the circuit board with terminals. (Compl. p. 14). The products are marketed as "compatible" with genuine Epson cartridges and, in some cases, are allegedly mislabeled as "OEM" products (Compl. ¶¶17-26).
IV. Analysis of Infringement Allegations
’749 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A printing material container adapted to be attached to a printing apparatus... | The accused cartridge is a container adapted to be inserted into and attached to an Epson ink jet printer. | ¶34, p. 14 | col. 9:45-50 |
| 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 a printed circuit board with an IC chip that functions as a memory device and operates at a low voltage (approx. 4 volts) to communicate information like ink levels to the printer. | ¶34, pp. 17-19 | col. 9:4-6 |
| a high voltage electronic device adapted to receive and function with a high voltage... | The accused cartridge includes a high voltage electronic device, such as a resistor, on its printed circuit board that is adapted to receive and function with a high voltage (approx. 42 volts) from the printer. | ¶34, pp. 19-20 | col. 12:49-51 |
| a plurality of container-side terminals having contact portions adapted and positioned to contact corresponding apparatus-side contact forming members... | The accused cartridge has a board with nine metallic terminals arranged to make electrical contact with the printer's contact members. An annotated photograph shows where the printer's contacts allegedly touch the cartridge terminals. | ¶34, pp. 20-21 | col. 9:14-24 |
| the contact portions are 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 nine contact portions are arranged in two rows (a top row of four and a bottom row of five) that are orthogonal to the direction the cartridge is inserted into the printer. | ¶34, p. 23 | col. 9:10-14 |
| the first row of contact portions is disposed at a location that is further in the insertion direction than the second row... | The first row of contacts (allegedly containing the high voltage contacts) is located deeper inside the printer than the second row when the cartridge is installed. An annotated image illustrates this relative positioning. | ¶34, p. 24 | col. 41:7-10 |
| the first high voltage electronic device contact portion is disposed at the first end position of the first row...and the second high voltage electronic device contact portion is disposed at the second end position of the first row... | The two contacts for the high voltage device are located at the opposite ends of the first row of contacts. An annotated photograph highlights these two end positions. | ¶34, p. 25 | col. 41:12-19 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the definition of a "high voltage electronic device." The patent’s preferred embodiment describes a piezoelectric sensor, an active component (’749 Patent, col. 12:49-51). The complaint alleges that a passive component, such as a resistor, meets this limitation in the accused cartridges (Compl. ¶34, p. 19). The case may turn on whether the claim term is construed broadly to cover any component operating at a high voltage, or narrowly to components performing a specific function like the described sensor.
- Technical Questions: The complaint alleges that Epson printers supply specific high (approx. 42V) and low (approx. 4V) voltages to the corresponding terminals (Compl. ¶34, pp. 19-20). A key factual question for the court will be whether the components on the accused cartridges are, in fact, "adapted to receive and function" with these respective voltages as required by the claim language. This raises an evidentiary question regarding the actual operation of the accused cartridges in a printer.
V. Key Claim Terms for Construction
The Term: "a high voltage electronic device"
Context and Importance: This term's construction is fundamental to the infringement analysis. The accused cartridges allegedly use a simple resistor, while the patent's main example is a more complex piezoelectric sensor. Practitioners may focus on this term because its scope will likely determine whether the accused products can be found to infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself uses the broad term "device," not "sensor." The patent's background describes a "high voltage circuit" generally, suggesting the problem being solved is not specific to one type of component ('749 Patent, col. 1:35-36).
- Evidence for a Narrower Interpretation: The patent specification repeatedly and consistently describes the "high voltage electronic device" in its embodiment as a piezoelectric element used as an ink level sensor (’749 Patent, col. 12:49-64). A defendant may argue that this consistent description limits the claim scope to this type of active device.
The Term: "adapted to receive and function with a high voltage"
Context and Importance: This functional language connects the physical structure of the cartridge to its intended operation. Infringement requires not just the presence of a "device," but one that is configured to operate in a specific electrical environment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that if a component is part of a circuit that receives a high voltage from the printer and performs any electrical function (e.g., creating a voltage drop), it is "adapted to function" as claimed.
- Evidence for a Narrower Interpretation: A defendant may argue that "function" implies a more specific, active purpose beyond mere electrical presence, pointing to the specific "vibration" and "detection" functions of the piezoelectric sensor embodiment described in the specification (’749 Patent, col. 12:51-64).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by selling the accused cartridges to end-users with the knowledge and intent that the users will install and use them in an infringing manner (Compl. ¶¶35-36). This is allegedly supported by Defendants’ business of selling the cartridges for use in Epson printers and the instructions on their packaging (Compl. pp. 7-11).
- Willful Infringement: The complaint alleges that Defendants' infringement is willful (Compl. ¶41). This allegation is based on Defendants' alleged knowledge of the ’749 patent, which Plaintiff asserts stems from Epson's widely publicized enforcement actions and, specifically, the ITC's General Exclusion Order in the 946 Investigation that adjudicated the ’749 patent (Compl. ¶¶2, 5, 37). The complaint further alleges that defendant Yiping Jen, as CEO and Director, personally directs the infringing activities (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "high voltage electronic device," which is exemplified in the patent as an active piezoelectric sensor, be construed to cover a passive electrical component like a resistor, as allegedly found in the accused aftermarket cartridges?
- A key evidentiary question will be one of functional operation: Does discovery and testing confirm that the accused cartridges, when used in an Epson printer, contain components that are "adapted to receive and function with" the distinct high and low voltages as required by the claim elements and alleged in the complaint?
- A third central question will concern willfulness: Given the extensive public litigation history involving Epson and the ’749 patent, including an ITC General Exclusion Order, the court will likely need to determine whether Defendants acted with the requisite knowledge and intent to support a finding of willful infringement, potentially leading to enhanced damages.