DCT

2:23-cv-02692

Seiko Epson Corp v. Planet Green Cartridges Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-02692, C.D. Cal., 04/10/2023
  • Venue Allegations: Venue is alleged to be proper in the Central District of California on the grounds that the defendants reside in the district and have committed acts of direct and indirect patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket ink cartridges, and the circuit boards thereon, infringe a patent related to the specific arrangement of electrical terminals on an ink cartridge.
  • Technical Context: The technology concerns the design of electronic circuits on ink cartridges that communicate with a printer, a critical interface in the market for printer consumables where original equipment manufacturers compete with third-party suppliers.
  • Key Procedural History: The complaint highlights a significant history of prior enforcement actions by Epson, including two U.S. International Trade Commission (ITC) investigations that resulted in General Exclusion Orders (GEOs) prohibiting the importation of infringing ink cartridges. The patent-in-suit was expressly litigated and included in the GEO from the ITC’s 946 Investigation, a fact that may be material to claim scope and allegations of willfulness.

Case Timeline

Date Event
2005-12-26 '116 Patent - Earliest Priority Date
2007-10-19 ITC 565 Investigation Final Determination Date
2013-06-04 '116 Patent - Issue Date
2016-05-26 ITC 946 Investigation Final Determination Date
2022-04-18 Earliest Alleged Date of Observed Offer for Sale
2022-04-26 '116 Patent - Certificate of Correction Issue Date
2023-03-29 Latest Alleged Date of Observed Offer for Sale
2023-04-10 Complaint Filing Date

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

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 (“the ’116 Patent”), “Printing material container, and board mounted on printing material container,” issued June 4, 2013.

The Invention Explained

  • Problem Addressed: The patent describes a problem in ink cartridges that are equipped with multiple electronic devices, such as a low-voltage memory chip and a separate high-voltage circuit (e.g., for a piezoelectric ink level sensor). In such designs, there is a risk that an electrical short could occur between the terminals for the different devices, potentially caused by a stray drop of conductive ink, which could damage the cartridge or the printer itself (’116 Patent, col. 1:41-52).
  • The Patented Solution: The invention proposes a specific geometric arrangement of the electrical terminals on the cartridge's circuit board to mitigate this risk. By strategically placing the terminals for the high-voltage device at the outer edges of the terminal array and positioning a "short detection terminal" adjacent to them, the system can detect a short circuit and take protective action before damage occurs (’116 Patent, Abstract; Fig. 3A). The layout is designed to make shorts between high- and low-voltage terminals less likely and more detectable if they do occur (’116 Patent, col. 2:35-40).
  • Technical Importance: This design approach allows for the integration of more sophisticated, multi-voltage electronics onto a consumable ink cartridge while enhancing the system's electrical robustness and protecting the main printer apparatus from damage (’116 Patent, col. 2:53-57).

Key Claims at a Glance

  • The complaint provides an exemplary infringement analysis for independent claim 18 (’116 Patent, col. 31:28-col. 32:5; Compl. ¶33).
  • The essential elements of independent claim 18 include:
    • A circuit board mountable on a printing material container.
    • The circuit board comprising a memory device and a separate electronic device adapted to receive a higher voltage.
    • A plurality of terminals with contact portions for enabling electrical communication with the printing apparatus.
    • The terminals include memory contact portions, first and second electronic device contact portions, and a short detection contact portion.
    • A specific spatial arrangement of the contact portions: when viewed from the printer with the ink exit facing downwards, the contact portion "farthest to the left" is the first electronic device contact, the one "farthest to the right" is the second electronic device contact, and the one "second farthest to the right" is the short detection contact.

III. The Accused Instrumentality

Product Identification

The complaint accuses aftermarket ink cartridges and their associated circuit boards ("chips") sold by Defendants under various names, including "DoorStepInk," for use in a wide range of Epson printers (Compl. ¶¶ 16, 32). A representative product, a substitute for Epson model T802XL120, is used for the infringement analysis (Compl. ¶33).

Functionality and Market Context

The Accused Products are identified as remanufactured ink cartridges intended to function as replacements for genuine Epson cartridges (Compl. ¶17). Their circuit boards are designed to interface with the Epson printers to enable functionality (Compl. ¶¶ 16, 32-33). The complaint presents screenshots from Defendants' websites, such as planetgreenrecycle.com and an Amazon.com storefront, showing these products for sale (Compl. ¶¶ 17-25). For example, one screenshot from the planetgreenrecycle.com website depicts a "DoorStepInk Brand for Epson T802XL... Remanufactured" cartridge pack (Compl. ¶17). These products compete directly with the Plaintiffs' own consumable supplies in the aftermarket space (Compl. ¶2).

IV. Analysis of Infringement Allegations

Claim Chart Summary

The complaint provides a detailed, illustrated claim chart alleging that the Accused Products literally infringe at least claim 18 of the ’116 patent (Compl. ¶33).

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
[18a] A circuit board mountable on a printing material container that is used in an ink jet printing apparatus... the circuit board comprising: The Accused Product is a representative ink cartridge containing a circuit board and is used in a representative Epson printer. The complaint includes a photograph depicting the circuit board mounted on the cartridge (p. 16). ¶33 col. 4:26-38
[18b] a memory device adapted to be driven by a memory driving voltage; The circuit board on the accused cartridge allegedly includes a memory device. The complaint states that Epson printers apply approximately 4 volts to the contacts for this device, which was confirmed via testing during the ITC 946 Investigation. ¶33 col. 5:2-7
[18c] an electronic device adapted to receive a voltage higher than the memory driving voltage; and The accused cartridge's circuit board is alleged to comprise an electronic device (e.g., a resistor) capable of receiving a higher voltage. The complaint alleges Epson printers apply approximately 42 volts to the contacts for this device. ¶33 col. 1:30-33
[18d] a plurality of terminals having contact portions adapted and positioned to contact corresponding apparatus-side contact forming members... The accused circuit board has gold-colored metallic terminals. The complaint provides photographs of an ink-scratch test used to identify the precise contact points between the cartridge terminals and the printer (p. 21). ¶33 col. 9:4-10
[18e] the contact portions are arranged so that, when the terminal arrangement is viewed from the vantage of the contact forming members... the contact portion farthest to the left is the first electronic device contact portion, the contact portion that is farthest to the right is the second electronic device contact portion... The complaint alleges that the terminals on the accused cartridge are arranged in the specific spatial order required by the claim. This allegation is supported by an annotated photograph marking the first and second electronic device contacts, the short detection contact, and the memory contacts (p. 25). ¶33 col. 28:5-18

Identified Points of Contention

  • Scope Questions: The infringement analysis for claim 18 hinges on the precise spatial arrangement of terminals. A potential point of contention is whether the accused products literally meet the directional limitations (e.g., "farthest to the left," "second farthest to the right") when analyzed from the specific vantage point defined in the claim. The defense may argue that their terminal layout differs sufficiently to fall outside the literal scope of the claim.
  • Technical Questions: The complaint alleges infringement of functional limitations, such as a device being "adapted to receive a voltage higher than the memory driving voltage," based in part on "testing during the ITC 946 Investigation" (Compl. ¶33). A technical question is whether that prior testing is sufficient to prove that these specific Accused Products operate in the claimed manner, or if new evidence and testing specific to these products will be required to establish that the alleged "electronic device" performs the function contemplated by the patent.

V. Key Claim Terms for Construction

  • The Term: "contact portion farthest to the left" (and related directional terms in claim 18)

    • Context and Importance: These terms are the crux of the infringement allegation, defining the specific physical layout that distinguishes the invention. The entire literal infringement case for claim 18 depends on establishing that the accused board’s layout maps precisely to this claimed geometry from the specified viewpoint.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue for a plain and ordinary meaning, guided by the reference axes and directions provided in the patent's figures. Figure 3A, for example, explicitly labels the insertion direction "R," providing a clear frame of reference for terms like "left" and "right" (’116 Patent, Fig. 3A).
      • Evidence for a Narrower Interpretation: A party could argue that the terms require a perfect, unambiguous alignment and that any deviation, rotation, or alternative interpretation of the "vantage of the contact forming members" avoids infringement. The specification's description of a "staggered arrangement" could be used to argue for a very specific and restrictive geometric meaning (’116 Patent, col. 9:26-34).

  • The Term: "adapted to"

    • Context and Importance: This term appears in the claim to describe the function of the "memory device" and the "electronic device." Its construction determines whether a component must be specifically designed for a purpose or merely be capable of performing it. Practitioners may focus on this term because it delineates the required functionality of the separate low-voltage and high-voltage components.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification's general descriptions could support an interpretation where a device is "adapted to" perform a function if it is structurally capable of it, as in "a memory for storing information" (’116 Patent, col. 1:30-32).
      • Evidence for a Narrower Interpretation: The patent’s background distinguishes between a low-voltage memory and a high-voltage circuit, suggesting "adapted to" implies a specific design purpose. For example, the description of a "high voltage circuit ... applied to higher voltage than the driving voltage of the memory" could support an argument that the device must be intended for such operation (’116 Patent, col. 1:32-35).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced infringement and contributory infringement. Inducement is based on allegations that Defendants knowingly encourage end-users to infringe by selling the cartridges (Compl. ¶34). Contributory infringement is based on allegations that the accused cartridges are a material part of the invention, are especially made or adapted for infringement, and are not a staple commodity with substantial non-infringing uses (Compl. ¶37).

Willful Infringement

The complaint alleges that infringement was willful, pointing to the extensive public history of Epson's patent enforcement, including the two ITC General Exclusion Orders (one of which expressly covers the '116 patent) as providing Defendants with pre-suit knowledge of the patent and their infringement (Compl. ¶¶ 2-3, 5, 36, 41). The complaint further alleges knowledge "at least since the filing and service of this complaint" to establish a basis for ongoing willful infringement (Compl. ¶36).

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

  • A core issue will be one of claim construction and literal infringement: can the specific, relative positional limitations of claim 18, such as "farthest to the left" and "second farthest to the right," be proven to read literally on the physical layout of the accused cartridges' circuit boards, given the precise "vantage point" required by the claim?
  • A key evidentiary question will be the weight of prior litigation: to what extent can findings from the ITC 946 Investigation, which litigated the '116 patent, be used to establish the technical operation and infringement of the specific products at issue here, and will new, product-specific testing be required?
  • A central question for potential damages will be willfulness: given the complaint’s allegations regarding a history of litigation and the existence of a General Exclusion Order covering the asserted patent, can the Defendants mount a credible defense that their alleged infringement was not undertaken with knowledge and intent, or does this history create a high barrier to defeating the willfulness claim?