DCT

2:22-cv-04123

Seiko Epson Corp v. Dongguan Ocbestjet Digital Technology Co Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-04123, C.D. Cal., 06/15/2022
  • Venue Allegations: Venue is alleged to be proper based on Defendants conducting business in the district, including offering to sell and selling the accused products within the Central District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s aftermarket ink cartridges, continuous ink supply systems, and circuit boards infringe three patents related to ink cartridge mechanical and electrical interface technology.
  • Technical Context: The technology concerns the design of removable ink cartridges for inkjet printers, focusing on features that ensure reliable mechanical mounting and electrical communication between the cartridge and the printer.
  • Key Procedural History: The complaint asserts that the patents-in-suit have been the subject of prior enforcement actions at the U.S. International Trade Commission (ITC). The ’116 and ’749 patents were part of the “ITC 946 Investigation,” which resulted in a General Exclusion Order against infringing products; Defendants were named respondents and defaulted. The ’422 patent was part of the earlier “ITC 565 Investigation,” which also resulted in a General Exclusion Order. The complaint further notes that a Seizure and Forfeiture Order was issued against "Ocbestjet Company" in the ITC 946 Investigation.

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 Issues
2005-12-26 U.S. Patent No. 8,454,116 Priority Date
2005-12-26 U.S. Patent No. 8,794,749 Priority Date
2007-10-19 ITC issues final determination in Investigation No. 565
2013-06-04 U.S. Patent No. 8,454,116 Issues
2014-08-05 U.S. Patent No. 8,794,749 Issues
2016-05-26 ITC issues final determination in Investigation No. 946
2019-09-09 ITC issues Seizure and Forfeiture Order against Defendant
2022-06-15 Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical challenge of designing an ink cartridge that can be easily mounted by a user onto a printer’s ink supply needle without causing damage, while simultaneously ensuring a precise and reliable electrical connection for an on-board memory device (Compl. ¶42; ’422 Patent, col. 1:10-54).
  • The Patented Solution: The invention proposes a specific mechanical design for the cartridge body. It features a memory device with electrodes on a first surface, and on that same surface, a "retaining member" located at a "trailing end side" relative to the memory device. This retaining member has a movable portion that engages with the printer carriage to lock the cartridge in place, which secures its position both on the ink needle and for the electrical contacts (’422 Patent, Abstract; col. 2:2-11).
  • Technical Importance: This design facilitates the reliable use of "smart" cartridges containing memory chips, which store data such as ink levels and color profiles, by creating a robust and user-friendly electromechanical interface (’422 Patent, col. 1:46-51).

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 1 (Compl. ¶¶44-45).
  • The essential elements of independent Claim 1 (as amended by reexamination) include:
    • An ink cartridge detachably mountable on a printer carriage.
    • A container for storing ink with an ink supply port at its "leading end side" and having substantially parallel first and second opposite surfaces.
    • A memory device with a plurality of electrodes fixed on the first surface and disposed in a "first plane."
    • A retaining member on the first surface with a "movable engagement portion" located at a "trailing end side" relative to the electrodes, which engages the carriage.
    • A specific geometric arrangement 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 alleges infringement of "at least one claim," preserving the right to assert others (Compl. ¶44).

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

The Invention Explained

  • Problem Addressed: The patent addresses the risk of electrical shorting on ink cartridges that incorporate multiple electronic components operating at different voltages, such as a low-voltage memory chip and a separate high-voltage circuit (e.g., a piezoelectric ink level sensor). Spilled ink or condensation could create a conductive path between terminals, potentially damaging the cartridge or the printer (’749 Patent, col. 1:39-51).
  • The Patented Solution: The invention specifies a particular arrangement of electrical terminals on the cartridge’s circuit board to mitigate this risk. Terminals for a "low voltage electronic device" are physically segregated from terminals for a "high voltage electronic device." The terminals are arranged in two rows, with the two high-voltage contacts placed at the opposite ends of the "first row," separated by the low-voltage contacts, which creates a greater physical distance between them (’749 Patent, Abstract; col. 2:52-col. 3:10).
  • Technical Importance: This terminal layout enhances the electrical robustness of multi-function "smart" cartridges by minimizing the likelihood of damaging shorts caused by environmental factors like moisture (’749 Patent, col. 1:45-51).

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 1 (Compl. ¶¶55, 57).
  • 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).
    • A "high voltage electronic device" adapted to function with a higher voltage than the low voltage device.
    • A plurality of terminals, including multiple low-voltage contact portions and a first and second high-voltage contact portion.
    • The contact portions are arranged in a first row and a second row, extending in a direction generally orthogonal to the insertion direction.
    • The first row is disposed further in the insertion direction than the second row.
    • The first row has first and second end positions at its opposite ends.
    • The first high-voltage contact portion is at the first end position of the first row, and the second high-voltage contact portion is at the second end position of the first row.
  • The complaint alleges infringement of "at least one claim," preserving the right to assert others (Compl. ¶55).

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 (Compl. ¶66).
  • Technology Synopsis: This patent also addresses electrical shorting risks on multi-function ink cartridge circuit boards. It claims a specific spatial arrangement of contact portions for a memory device (driven by a "memory driving voltage"), a separate electronic device (receiving a "higher" voltage), and a dedicated "short detection contact portion." The claimed layout defines the relative positions of these contacts to facilitate the detection of shorts and protect the electronics (’116 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of at least Claim 18 (Compl. ¶69).
  • Accused Features: The complaint accuses aftermarket ink cartridges and circuit boards (e.g., model T702XL220) of infringing by including a circuit board with the claimed arrangement of terminals for memory, a higher-voltage electronic device, and short detection (Compl. ¶¶68-69).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are aftermarket ink cartridges, "continuous ink supply systems" (CISS), and separate circuit boards ("chips") designed for use with Epson-brand inkjet printers (Compl. ¶¶1, 10, 13).

Functionality and Market Context

The products are marketed and sold as "100% compatible" replacements for Epson’s original equipment manufacturer (OEM) cartridges (Compl. ¶13). The complaint alleges Defendants sell these products globally through online storefronts on platforms such as Alibaba.com and Aliexpress.com (Compl. ¶21). The complaint includes a screenshot of an online storefront listing showing an "Empty Refillable Cartridge for Epson Surecolor" printers (Compl. ¶22). The commercial purpose of these products is to function as lower-cost alternatives to OEM consumables by replicating the physical and electrical interfaces of Epson's patented cartridges (Compl. ¶10).

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
[1a] An ink cartridge detachably mountable on a carriage which is reciprocally movable in a recording apparatus... The accused cartridges are designed for detachable mounting on the movable carriage of an Epson inkjet printer (Compl. ¶45, pp. 19-20). ¶45 col. 1:10-15
[1b] a container that stores ink therein and has an ink supply port connectable to the ink supply needle, the ink supply port being located in a leading end side in an insertion direction... the first surface being substantially parallel to the insertion direction... The accused cartridges have a container that stores ink with an ink supply port on the leading end for insertion. The complaint provides a photograph illustrating that the cartridge has a first surface substantially parallel to the insertion direction (Compl. ¶45, p. 21). ¶45 col. 3:42-50
[1c] a memory device having a plurality of electrodes disposed substantially in a first plane... the electrodes of the memory device being fixed relative to the first surface of the container... The accused cartridges have a memory device with electrodes disposed in a first plane (the plane of the circuit board) that is fixed to the container's first surface (Compl. ¶45, p. 22). ¶45 col. 3:64-col. 4:4
[1d] a retaining member disposed on the first surface of the container, and having a movable engagement portion that can shift position... located at a trailing end side relative to the electrodes of the memory device... The accused cartridges have a retaining member on the first surface with a movable engagement portion. This portion is located at a trailing end relative to the electrodes (i.e., further from the ink port) to engage the printer carriage (Compl. ¶45, pp. 22-23). ¶45 col. 4:54-61
[1e] 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 alleges this geometric condition is met and provides a diagram showing a single vertical plane intersecting one of the electrodes, the engagement portion, and the axis of the ink supply port, where that plane is perpendicular to the plane of the circuit board (Compl. ¶45, p. 23). This diagram shows the "second plane represented by red vertical line" intersecting the required elements. ¶45 col. 2:2-11; Abstract

Identified Points of Contention

  • Scope Questions: A central point of contention may be the construction of "movable engagement portion that can shift position." The dispute will likely focus on what degree and type of movement (e.g., pivoting, flexing, sliding) satisfies this limitation and whether the accused products exhibit such movement.
  • Technical Questions: The infringement allegation for limitation [1e] relies on a specific three-dimensional geometric relationship. A key technical question will be whether the accused cartridges, when physically measured and analyzed, actually meet this precise geometric constraint, or if there is a deviation that takes them outside the claim scope.

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

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[1c] 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 cartridges include a low voltage electronic device (an IC chip comprising a memory device) on a printed circuit board, which is adapted to function with a low voltage (allegedly approx. 4 volts) from the printer (Compl. ¶57, pp. 29-31). ¶57 col. 1:39-44
[1d] 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 cartridges also include a high voltage electronic device (e.g., a resistor) that is adapted to function with a higher voltage (allegedly approx. 42 volts) from the printer (Compl. ¶57, pp. 31-32). ¶57 col. 1:39-44
[1e] a plurality of container-side terminals having contact portions... including a plurality of low voltage... contact portions... and a first high voltage... contact portion and a second high voltage... The circuit board on the accused cartridges has nine contact portions, which include five low-voltage portions coupled to the memory device and two high-voltage portions coupled to the high-voltage device (Compl. ¶57, pp. 32-35). The complaint provides an annotated photograph showing five low-voltage contacts marked with blue boxes and two high-voltage contacts marked with red boxes (Compl. ¶57, pp. 34-35). ¶57 col. 2:52-col. 3:1
[1f] the contact portions are arranged in a first row... and in a second row... extending in a row direction which is generally orthogonal to the insertion direction, The nine contact portions are arranged in two rows (four in the top row, five in the bottom row), and the rows extend in a direction orthogonal to the cartridge insertion direction (Compl. ¶57, pp. 36-37). ¶57 col. 2:52-col. 3:1
[1g] 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 (containing the high-voltage contacts) is located deeper in the printer when inserted (further in the insertion direction) than the second row (Compl. ¶57, pp. 37-38). ¶57 col. 2:52-col. 3:1
[1h] the first row of contact portions has a first end position and a second end position at opposite ends thereof, the first high voltage... contact portion is disposed at the first end position... The first high-voltage contact is located at one end of the first row, and the second high-voltage contact is located at the opposite end of that same row (Compl. ¶57, pp. 38-39). ¶57 col. 2:52-col. 3:1

Identified Points of Contention

  • Scope Questions: The case may turn on the definitions of "low voltage" and "high voltage." As the patent does not provide numerical values, the court will need to determine their meaning in the context of the specification and the state of the art. The question is whether the terms require specific types of circuits (e.g., memory vs. sensor) or can be satisfied by any two circuits with a relative voltage difference.
  • Technical Questions: A factual dispute may arise over whether the specific terminals identified by the plaintiff as "high voltage" and "low voltage" on the accused products actually perform those functions and are electrically coupled as required by the claim. This could involve reverse engineering of the accused circuit boards.

V. Key Claim Terms for Construction

Term: "movable engagement portion that can shift position" (’422 Patent, Claim 1)

Context and Importance

This term defines the primary locking mechanism of the cartridge. Infringement requires that the accused product's latching feature be both "movable" and able to "shift position." A narrow construction might exclude cartridges with merely flexible or resilient tabs, while a broader one could encompass them.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The claim uses the general term "movable," not a more restrictive term like "pivotable." The specification states the retaining member "can be shifted outward" without being limited to a single mechanism (’422 Patent, col. 3:58-60).
  • Evidence for a Narrower Interpretation: The preferred embodiment consistently describes and illustrates the retaining member (5) as a "pivotable lever" that engages with a recess (107) in the carriage (’422 Patent, col. 3:56-58, FIG. 6B). This specific example could be used to argue that the claim scope should be understood in the context of this lever-based mechanism.

Term: "high voltage electronic device" and "low voltage electronic device" (’749 Patent, Claim 1)

Context and Importance

The entire inventive concept of Claim 1 is predicated on the specific terminal arrangement for these two distinct types of devices. The viability of the infringement claim depends on whether the accused products contain devices that meet these definitions.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The patent defines the "high voltage circuit" only in relative terms as one "applied to higher voltage than the driving voltage of the memory" (’749 Patent, col. 1:41-44). This supports a broad, functional definition where any two devices on the cartridge with different operating voltages could satisfy the claim, regardless of their absolute voltage levels.
  • Evidence for a Narrower Interpretation: The background and detailed description consistently provide the context of a "memory" (low voltage) and a "high voltage circuit" such as a "remaining ink level sensor using a piezoelectric element" (’749 Patent, col. 1:41-44). A defendant might argue that the terms should be construed as limited to these specific types of well-known inkjet cartridge components, not just any two circuits with a voltage differential.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants induced infringement of all three patents by "non-parties, including end-users" (Compl. ¶¶46, 58, 70). The specific facts alleged to support the requisite knowledge and intent for inducement, beyond general knowledge of the patents, are not detailed in the counts themselves but may be inferred from the willfulness allegations.

Willful Infringement

The complaint alleges willful infringement for all three patents (Compl. ¶¶5, 51, 64, 76). The allegations are based on extensive pre-suit knowledge, including Defendants' status as respondents who defaulted in the ITC 946 Investigation concerning the ’116 and ’749 patents. The complaint further alleges that the ITC issued a Seizure and Forfeiture Order against "Ocbestjet Company" and that U.S. Customs informed Defendants of the associated General Exclusion Order, putting them on direct notice of infringement (Compl. ¶¶10, 36).

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

  • A central issue will be one of claim construction: Can the term "movable engagement portion that can shift position" in the ’422 patent be construed broadly enough to read on the accused cartridge's latching mechanism, and can the relative terms "high voltage" and "low voltage" in the ’749 patent be defined in a way that maps onto the functionality of the accused device's electronics?
  • A key question for damages will be one of egregious conduct: Given the detailed allegations of prior notice, including Defendants' default in a prior ITC investigation and a specific Seizure and Forfeiture Order, what evidence can Defendants present to rebut the claim of willful infringement and the potential for enhanced damages?
  • A core evidentiary question will be one of technical correspondence: Will expert analysis and testing confirm the complaint's photographic and diagrammatic assertions that the accused products meet every specific geometric and electrical layout limitation of the asserted claims, or will a mismatch in technical operation or structure be revealed?