DCT
2:24-cv-10133
Seiko Epson Corp v. Burkwitz Solutions 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: Burkwitz Solutions, Inc. (California); Armen Sargsyan (individual); Simon Mikail (individual)
- Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
- Case Identification: 2:24-cv-10133, C.D. Cal., 11/22/2024
- Venue Allegations: Venue is alleged to be proper as Defendants reside in, conduct business within, and have committed acts of infringement in the Central District of California, where a substantial portion of the events giving rise to the claims occurred.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket ink cartridges and their integrated circuit boards ("chips") infringe two U.S. patents related to the specific arrangement of electrical contacts on such cartridges.
- Technical Context: The technology concerns the design of electronic interfaces on printer ink cartridges, which enable communication with the printer for functions like memory storage and ink-level sensing while mitigating risks of damaging electrical shorts.
- Key Procedural History: The complaint states that the patents-in-suit were previously the subject of an International Trade Commission investigation (No. 337-TA-946) that resulted in a General Exclusion Order (the "946-GEO") prohibiting the importation of infringing products. This history may be relevant to questions of claim validity and the defendant's alleged knowledge of the patents.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-26 | Priority Date for ’749 Patent and ’116 Patent |
| 2013-06-04 | U.S. Patent No. 8,454,116 Issued |
| 2014-08-05 | U.S. Patent No. 8,794,749 Issued |
| 2016-05-26 | ITC Final Determination in Investigation No. 337-TA-946 |
| 2022-04-26 | Certificate of Correction for U.S. Patent No. 8,454,116 Issued |
| 2023-06-12 | Accused Products Offered for Sale on Amazon.com |
| 2023-06-20 | Accused Products Offered for Sale on eBay.com |
| 2024-07-31 | Accused Products Offered for Sale on Walmart.com and Inkjetsclub.com |
| 2024-11-22 | Complaint Filed |
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" (Issued Aug. 5, 2014)
The Invention Explained
- Problem Addressed: The patent describes a technical challenge with ink cartridges that incorporate multiple electronic devices, such as a low-voltage memory chip and a separate high-voltage circuit (e.g., an ink level sensor). There is a risk that liquid ink or other debris could create an electrical short between the terminals for these different devices, potentially damaging the low-voltage components or the printer itself (Compl. Ex. A, ’749 Patent, col. 1:43-57).
- The Patented Solution: The invention proposes a specific geometric arrangement of electrical contact portions on the ink cartridge. The solution places the contact portions for the high-voltage device at the opposite ends of a row of contacts, which physically isolates them and reduces the likelihood that a random short will damage the more sensitive, low-voltage memory-related contacts located between them (Compl. Ex. A, ’749 Patent, Abstract; col. 2:2-19). Figure 3A of the patent illustrates an exemplary terminal layout with high-voltage sensor drive terminals (250, 290) at the ends of the lower row (’749 Patent, Fig. 3A).
- Technical Importance: This terminal arrangement provides a more robust design for "smart" ink cartridges, allowing manufacturers to include multiple electronic functions on a single consumable product while mitigating a key risk of electrical failure (Compl. Ex. A, ’749 Patent, col. 2:50-61).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶38).
- The essential elements of independent Claim 1 include:
- A printing material container with an ink supply opening, a low-voltage electronic device (with memory), and a high-voltage electronic device.
- A plurality of terminals with contact portions, including multiple low-voltage contacts coupled to the low-voltage device and first and second high-voltage contacts coupled to the high-voltage device.
- The contact portions are arranged in a first row and a second row, with the first row being "further in the insertion direction" than the second row.
- The first row has two opposite ends, with the first high-voltage contact portion at the first end and the second high-voltage contact portion at the second end.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,454,116 - "PRINTING MATERIAL CONTAINER, AND BOARD MOUNTED ON PRINTING MATERIAL CONTAINER" (Issued June 4, 2013)
The Invention Explained
- Problem Addressed: As a parent patent to the ’749 Patent, the ’116 Patent addresses the same technical problem of potential electrical shorting between terminals for different electronic components on an ink cartridge circuit board (Compl. Ex. B, ’116 Patent, col. 1:43-57).
- The Patented Solution: This invention also specifies a particular layout of terminals on a circuit board to enhance reliability. The claims define the relative positions of memory contacts, high-voltage contacts, and a "short detection contact portion" when the cartridge is viewed from a specific orientation ("with the exit of the ink supply opening facing downwards"). This precise spatial relationship is designed to ensure that if a short occurs, it can be detected, and to minimize the risk of damage (Compl. Ex. B, ’116 Patent, Abstract; col. 29:3-31).
- Technical Importance: The claimed arrangement provides a method for both preventing and detecting electrical shorts on complex ink cartridge interfaces, improving the reliability of the printer-cartridge system (Compl. Ex. B, ’116 Patent, col. 2:48-59).
Key Claims at a Glance
- The complaint asserts at least independent Claim 18 (Compl. ¶51).
- The essential elements of independent Claim 18 include:
- A circuit board for a printing material container, comprising a memory device, a higher-voltage electronic device, and a plurality of terminals.
- The terminals include memory contact portions, first and second electronic device contact portions, and a "short detection contact portion."
- The claim requires a specific arrangement when viewed from the vantage of the printer's contacts with the cartridge's ink exit facing downwards:
- The "farthest to the left" contact is the first electronic device contact.
- The "farthest to the right" contact is the second electronic device contact.
- The "second farthest to the right" contact is the short detection contact.
- The memory contacts are located between the short detection contact and the first electronic device contact.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are aftermarket ink cartridges and their associated circuit boards ("chips") sold by Defendants for use in Epson printers. Specific model series identified include T252, T127, T502, and T540 (Compl. ¶¶ 36, 50). The complaint uses representative models (e.g., 252120, 2521XL) for its detailed infringement analysis (Compl. ¶¶ 38, 51).
Functionality and Market Context
- The accused products are third-party consumables designed to function as replacements for original Epson ink cartridges (Compl. ¶2). They incorporate a circuit board with electrical contacts intended to interface with the printer's electronics to enable use of the cartridge (Compl. ¶¶ 13, 26). The complaint alleges these products are sold through various online storefronts, including inkjetsclub.com, walmart.com, amazon.com, and ebay.com (Compl. ¶22). A screenshot from Defendants' listing on walmart.com shows packaging for a "Compatible Ink Cartridge Replacement for Epson 252XL" (Compl. ¶23, p. 8).
IV. Analysis of Infringement Allegations
’749 Patent 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 a printed circuit board with an integrated circuit ("IC") chip that functions as a memory device and operates at a low voltage (approx. 4 volts) when installed in an Epson printer. | ¶38, p. 16-17 | col. 7:5-7 |
| a high voltage electronic device adapted to receive and function with a high voltage, which is a higher voltage than the low voltage | The accused cartridge's circuit board includes electronic components (e.g., a resistor) capable of receiving a higher voltage (approx. 42 volts) from the printer than the voltage supplied to the memory device. | ¶38, p. 18 | col. 1:33-37 |
| 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 on the accused cartridge's circuit board are arranged in two rows (four in the top, five in the bottom) that are orthogonal to the direction the cartridge is inserted into the printer. | ¶38, p. 21-22 | col. 9:8-14 |
| 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 bottom row of contacts on the accused cartridge is positioned to be inserted deeper into the printer than the top row of contacts. This is illustrated in a photograph showing the relative positions of the rows with respect to the insertion direction (Compl. ¶38, p. 22). | ¶38, p. 22 | col. 10:57-60 |
| 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 electronic device contact portion is disposed at the second end position | The two high-voltage contacts on the accused cartridge are located at the opposite ends of the bottom row of contacts. | ¶38, p. 23 | col. 9:56-65 |
- Identified Points of Contention:
- Scope Questions: The analysis may center on the construction of "high voltage electronic device." The complaint alleges this element is met by components such as a resistor (Compl. ¶38, p. 18), whereas the patent specification frequently discusses it in the context of a piezoelectric ink level sensor (’749 Patent, col. 11:47-50). A potential dispute is whether a simple passive component like a resistor qualifies as the claimed "device."
- Technical Questions: A key evidentiary question may be whether the accused cartridge's components are truly "adapted to receive and function with" the high and low voltages supplied by an Epson printer. The complaint's allegations are based on testing the accused cartridge in a representative Epson printer (Compl. ¶38, p. 17-18). The analysis may turn on evidence of the accused device's standalone design and intended operation, independent of the printer environment.
’116 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A circuit board mountable on a printing material container... the circuit board comprising: a memory device adapted to be driven by a memory driving voltage; an electronic device adapted to receive a voltage higher than the memory driving voltage | The accused product is a circuit board mounted on an ink cartridge, containing both a memory device that operates on a low "memory driving voltage" (approx. 4 volts) and a separate electronic device (e.g., a resistor) that operates on a higher voltage (approx. 42 volts). | ¶51, p. 29-30 | col. 7:1-12 |
| a plurality of terminals having contact portions... including... a short detection contact portion positioned and arranged to electrically contact a contact forming member that itself is electrically coupled to a short detection circuit of the printing apparatus | The circuit board terminals include a contact portion that, when installed, connects with a corresponding contact in the printer that is part of the printer's short detection circuit. The complaint alleges this functionality was confirmed via testing during the ITC 946 Investigation (Compl. ¶51, p. 34). | ¶51, p. 34 | col. 11:24-34 |
| when the terminal arrangement is viewed... with the exit of the ink supply opening facing downwards, the contact portion farthest to the left is the first electronic device contact portion | When the accused cartridge is oriented with its ink exit facing down, the contact on the far left of the terminal array is coupled to the high-voltage electronic device. | ¶51, p. 35-36 | col. 10:20-25 |
| the contact portion that is farthest to the right is the second electronic device contact portion | In the same downward-facing orientation, the contact on the far right of the terminal array is also coupled to the high-voltage electronic device. | ¶51, p. 35-36 | col. 10:25-28 |
| the contact portion that is second farthest to the right is the short detection contact portion | In the same orientation, the contact immediately to the left of the far-right contact is the "short detection contact portion." The complaint provides an annotated photograph identifying these specific contacts on the accused product's circuit board (Compl. ¶51, p. 36). | ¶51, p. 35-36 | col. 10:28-32 |
- Identified Points of Contention:
- Scope Questions: A central issue will likely be the proper construction of the orientational phrase "when the terminal arrangement is viewed from the vantage of the contact forming members." The specific relative positions ("farthest to the left," "second farthest to the right") required by the claim depend entirely on this point of view, which could be a point of dispute.
- Technical Questions: The functionality of the "short detection contact portion" will be a key factual question. The complaint asserts this functionality based on testing where shorting this contact allegedly causes the printer to display an error (Compl. ¶51, p. 34). The infringement analysis may turn on whether the accused terminal is designed for this purpose or whether this is an artifact of its interaction with the Epson printer.
V. Key Claim Terms for Construction
’749 Patent
- The Term: "high voltage electronic device"
- Context and Importance: The infringement theory depends on the accused cartridge containing both a "low voltage" and a "high voltage" device. The complaint identifies the high voltage device as potentially being a resistor (Compl. ¶38, p. 18). Whether a simple passive component meets the definition of a "device" that is "adapted to receive and function with a high voltage" will be critical to the scope of Claim 1.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification broadly describes the second device as one "applied to higher voltage than the driving voltage of the memory" (’749 Patent, col. 1:35-37). This language does not limit the device to a specific type or function, which may support an interpretation covering any component operating at a higher potential.
- Evidence for a Narrower Interpretation: The specification consistently uses a "remaining ink level sensor using a piezoelectric element" as the primary example of the high-voltage device (’749 Patent, col. 1:33-35; col. 11:47-50). The defense may argue that the term should be construed to require an active sensing function, rather than reading on any passive component.
’116 Patent
- The Term: "short detection contact portion"
- Context and Importance: This term appears to impart a functional requirement on a physical terminal. Infringement of Claim 18 requires not just a contact at a specific location, but one that performs a "short detection" role in conjunction with the printer. Practitioners may focus on this term because the defendant will likely argue its corresponding terminal serves a different purpose (e.g., ground) and lacks the claimed functionality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language states the portion is "positioned and arranged to electrically contact a contact forming member that itself is electrically coupled to a short detection circuit of the printing apparatus" (’116 Patent, col. 29:26-29). This defines the contact by its intended connection within the printer system, which may support a broad reading that covers any terminal that physically aligns with the printer's short detection pin.
- Evidence for a Narrower Interpretation: The detailed description explains that the short detection function involves specific logic where the printer detects an anomaly and displays an error message when this contact is shorted to a high-voltage line (’116 Patent, col. 15:19-33). This may support a narrower construction requiring proof that the accused contact, when used, actually enables this specific error-reporting function.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. It alleges inducement on the grounds that Defendants sell the products to end-users with the knowledge and intent that the users will infringe by operating them in Epson printers (Compl. ¶¶ 39, 52). Contributory infringement is alleged on the basis that the accused cartridges and their circuit boards are especially designed for infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 42, 55).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' purported knowledge of the patents-in-suit. This knowledge is alleged to stem from the widely publicized ITC 946-GEO proceeding that involved the asserted patents, as well as from Epson's practice of virtual patent marking (Compl. ¶¶ 4-6, 46, 59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional scope: do the electronic components on the accused cartridges perform the specific functions required by the claims? This will likely require the court to determine whether a passive resistor can be construed as a "high voltage electronic device" under the ’749 patent and whether a specific terminal on the accused board functions as a "short detection contact portion" under the ’116 patent, or if these are merely artifacts of testing in an Epson printer.
- A key evidentiary question will be one of prior adjudication: what weight, if any, will be given to the findings of the prior ITC Investigation (946-GEO) mentioned in the complaint? While not binding on a district court, the ITC’s previous analysis of the patents and similar technologies may influence arguments regarding claim construction, validity, and the defendants’ state of mind for willfulness.
- A central claim construction question for the ’116 patent will be one of orientational perspective: how will the court interpret the precise layout requirements of Claim 18, which are dependent on a specific vantage point ("with the exit of the ink supply opening facing downwards")? The infringement analysis will turn on whether the physical arrangement of contacts on the accused product's circuit board satisfies the claim's "farthest to the left/right" and "second farthest to the right" limitations under that construction.