DCT

5:18-cv-00416

Canon Inc v. ACM Tech Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: ACM Technologies, Inc. (California)
- Plaintiff’s Counsel: George B. Piggott, A Professional Corporation; Fitzpatrick, Cella, Harper & Scinto
Case Identification: 5:18-cv-00416, C.D. Cal., 02/28/2018
Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant is incorporated in, resides in, has committed infringing acts in, and maintains a regular and established place of business within the district.
Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in certain Canon and HP laser printers, infringe a portfolio of nine U.S. patents related to the mechanical components of such cartridges.
Technical Context: The patents concern the design of coupling mechanisms that transfer rotational force from a printer's main body to the photosensitive drum within a replaceable toner cartridge, a key component in the electrophotographic printing process.
Key Procedural History: The complaint notes that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC), asserting the same patents against the same accused products. Such parallel litigation in district court and the ITC is a common strategy in patent enforcement campaigns involving imported goods.

Case Timeline

Date	Event
2006-12-22	Priority Date for all Asserted Patents
2017-08-29	U.S. Patent No. 9,746,826 Issues
2017-12-05	U.S. Patent No. 9,836,021 Issues
2017-12-12	U.S. Patent No. 9,841,727 Issues
2017-12-12	U.S. Patent No. 9,841,728 Issues
2017-12-12	U.S. Patent No. 9,841,729 Issues
2018-01-02	U.S. Patent No. 9,857,764 Issues
2018-01-02	U.S. Patent No. 9,857,765 Issues
2018-01-16	U.S. Patent No. 9,869,960 Issues
2018-01-23	U.S. Patent No. 9,874,846 Issues
2018-02-28	Complaint Filing Date

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

U.S. Patent No. 9,746,826 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

Patent Identification: U.S. Patent No. 9746826, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued August 29, 2017.

The Invention Explained

Problem Addressed: The patent addresses the mechanical challenge of reliably transmitting rotational force from a printer's main drive shaft to the photosensitive drum located inside a user-replaceable toner cartridge. Misalignment during cartridge insertion can prevent proper engagement, leading to poor print quality or device malfunction (’826 Patent, col. 2:1-32).
The Patented Solution: The invention is a "coupling member" at the end of the photosensitive drum. This coupling member is designed to be movable or pivotable relative to the drum's axis. This movement allows the coupling to align itself with the printer's drive shaft during cartridge installation, ensuring a stable connection is made to smoothly transmit the rotational force needed for printing (’826 Patent, col. 2:33-52; col. 27:1-30). Key components are illustrated in figures such as FIG. 1, which shows the process cartridge (B) within the larger apparatus (A).
Technical Importance: This design approach aims to improve the user experience and reliability of printers that use replaceable cartridges by making the mechanical connection between the consumable and the main device more robust and tolerant of minor misalignments (’826 Patent, col. 2:33-43).

Key Claims at a Glance

The complaint asserts independent claims 1 and 6 (Compl. ¶25).
Independent Claim 1: A process cartridge comprising:
- a casing including an opening and at least one protrusion;
- a photosensitive drum having an axis L1, rotatably supported in the casing;
- a coupling member having an axis L2, operatively connected to the drum, including a first end portion, a second end portion with at least one projection, and a connecting portion;
- wherein the coupling member is movable between a first position and a second position, with specific geometric relationships between the projection, the drum, and the casing protrusion in each position.
Independent Claim 6: A process cartridge comprising:
- a casing including an opening and at least one protrusion;
- a photosensitive drum having an axis L1, rotatably supported in the casing;
- a developing roller;
- a coupling member having an axis L2, operatively connected to the drum and developing roller, including a first end portion, a second end portion with a projection, and a connecting portion;
- wherein the coupling member is movable between a first position and a second position, with specific geometric relationships defined between the projection and the drum in each position.
The complaint also asserts dependent claims 4, 7, and 9 (Compl. ¶25).

U.S. Patent No. 9,836,021 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

Patent Identification: U.S. Patent No. 9836021, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 5, 2017.

The Invention Explained

Problem Addressed: Similar to the '826 patent, this patent addresses the need for a reliable connection between the replaceable process cartridge and the main printer apparatus to ensure smooth rotation of the photosensitive drum (’021 Patent, col. 2:1-32).
The Patented Solution: The patent describes a process cartridge with a specific coupling member that has "wing portions" and is movable between different positions relative to the drum's axis. This movement facilitates engagement with the printer's drive mechanism and is defined by the changing distance between the wing portions and the drum surface, which ensures proper alignment and force transmission (’021 Patent, col. 2:33-52). The structure of the coupling member (150) and its various portions are detailed in figures such as FIG. 8.
Technical Importance: The invention aims to provide a robust and smoothly operating, user-replaceable cartridge system that is less susceptible to alignment errors during installation, thereby improving the overall operability of the printing apparatus (’021 Patent, col. 2:44-52).

Key Claims at a Glance

The complaint asserts independent claim 1 (Compl. ¶33).
Independent Claim 1: A process cartridge comprising:
- developers contained within the casing;
- a photosensitive drum having an axis L1, rotatably supported;
- a developing roller;
- a drum flange at an end of the photosensitive drum;
- a coupling member having an axis L2 and including a first end portion connected to the drum and roller, a second end portion with at least one projection, and a connecting portion;
- wherein the coupling member is movable between a first and second position, defined by the distance of the projection from the drum.
The complaint also asserts dependent claims 2, 4, 5, and 7 (Compl. ¶33).

Multi-Patent Capsules

Patent Identification: U.S. Patent No. 9841727, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017.
Technology Synopsis: The patent describes a process cartridge with a photosensitive drum and a coupling member. The coupling member is movable relative to a guide member between a first position where a projection is a certain distance from the drum, and a second position where it is a greater distance away, facilitating engagement with the printer's drive mechanism. (’727 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶41).
Accused Features: The EP-CE505A (Type C) cartridge is accused of infringement (Compl. ¶41).
Patent Identification: U.S. Patent No. 9841728, "Process Cartridge Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge," issued December 12, 2017.
Technology Synopsis: The patent relates to a process cartridge where a coupling member is movable between two positions relative to a guide member. The positions are defined by the distance between a projection on the coupling member and the end of the guide member, enabling the coupling to align and transmit rotational force from the main apparatus. (’728 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶49).
Accused Features: The EP-CE505A (Type C) cartridge is accused of infringement (Compl. ¶49).
Patent Identification: U.S. Patent No. 9841729, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017.
Technology Synopsis: This patent discloses a process cartridge with a movable coupling member that has at least one projection. The coupling member's movement is characterized by a change in the distance between the projection's tip and the outer surface of the drum, allowing for proper engagement with the printer's drive shaft. (’729 Patent, Abstract).
Asserted Claims: Independent claims 1, 9, and 18 (Compl. ¶57).
Accused Features: The EP-CE505A (Type C) cartridge is accused of infringement (Compl. ¶57).
Patent Identification: U.S. Patent No. 9857764, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018.
Technology Synopsis: This patent describes a drum unit for a process cartridge that includes a photosensitive drum and a movable coupling member. The coupling member's position is defined by the distance of a projection from the outer surface of the drum, which increases as the coupling moves along its axis, ensuring proper mechanical engagement. (’764 Patent, Abstract).
Asserted Claims: Independent claim 7 (Compl. ¶65).
Accused Features: The accused toner cartridges, including the drum units therein, such as the EP-CE505A (Type C) model, are accused of infringement (Compl. ¶65).
Patent Identification: U.S. Patent No. 9857765, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018.
Technology Synopsis: The patent focuses on a drum unit with a movable coupling member having an inner and outer portion. The coupling's movement is defined by the changing distance between the outer surface of the coupling's outer portion and the axis of the photosensitive drum, a design intended to facilitate reliable mechanical connection. (’765 Patent, Abstract).
Asserted Claims: Independent claims 1, 4, and 13 (Compl. ¶73).
Accused Features: The EP-CE505A (Type C) cartridge is accused of infringement (Compl. ¶73).
Patent Identification: U.S. Patent No. 9869960, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 16, 2018.
Technology Synopsis: This patent describes a process cartridge wherein a coupling member includes a first end portion with a recess and a second end portion with a projection. The coupling member is movable, and its position is defined by the distance of the projection from the photosensitive drum, which increases as the coupling moves away from the drum. (’960 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶81).
Accused Features: The EP-CE505A (Type C) cartridge is accused of infringement (Compl. ¶81).
Patent Identification: U.S. Patent No. 9874846, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 23, 2018.
Technology Synopsis: The patent discloses a drum unit where a coupling member is movable between two positions. The positions are defined by the distance between a projection on the coupling member and the photosensitive drum, with the distance being greater in the second position than in the first, facilitating mechanical engagement with a drive source. (’846 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶89).
Accused Features: The accused toner cartridges, including the drum units therein, such as the EP-CE505A (Type C) model, are accused of infringement (Compl. ¶89).

III. The Accused Instrumentality

Product Identification: The accused instrumentalities are replacement toner cartridges that Defendant sells, offers for sale, and/or imports into the United States (Compl. ¶20). The complaint identifies a "non-limiting example" as the model EP-CE505A, which is also referred to as "Type C" in the related ITC proceeding (Compl. ¶21).
Functionality and Market Context: The complaint alleges these products are designed for use in a range of Canon and HP branded laser beam printers, which are listed in a table in the complaint (Compl. ¶20, p. 5). A photograph provided in the complaint depicts the accused EP-CE505A cartridge and its "ecoplus" branded packaging (Compl. ¶21, p. 6). The accused products function as consumable components that are installed by end-users into printers to enable the electrophotographic printing process (Compl. ¶23-24).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused toner cartridges, exemplified by the EP-CE505A (Type C) model, infringe claims of the asserted patents both literally and under the doctrine of equivalents (Compl. ¶27, 35). For each asserted patent, the complaint states that it incorporates by reference an attached exhibit containing detailed claim charts (e.g., Ex. 10 for the '826 patent, Ex. 11 for the '021 patent) (Compl. ¶25, 33). As these exhibits were not included with the complaint document, a detailed element-by-element analysis based on the plaintiff's specific infringement contentions is not possible. The infringement allegations in the body of the complaint are general and do not map specific product features to claim elements.

Identified Points of Contention:
- Scope Questions: The dispute may center on the construction of terms defining the geometry and relative positioning of the coupling member. For both the ’826 and ’021 patents, claim terms such as "movable between (i) a first position... and (ii) a second position" and the specific distance measurements that define these positions (e.g., "a first distance away from the photosensitive drum") will likely be key areas of disagreement.
- Technical Questions: A central factual question will be whether the coupling mechanism in the accused EP-CE505A cartridge actually exhibits the specific structures (e.g., "protrusion," "projection," "wing portions") and performs the specific pivoting or translational movements required by the asserted claims. The analysis will likely require expert testimony to compare the physical operation of the accused cartridges against the court's interpretation of the claim language.

V. Key Claim Terms for Construction

The Term: "coupling member" (e.g., ’826 Patent, claim 1)
Context and Importance: This term is the central component of the claimed invention. Its structural definition will be critical to the infringement analysis, as nearly all limitations of the independent claims relate to the features and movement of this member.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a general functional description, stating the coupling member is for "receiving the rotational force" from the printer's drive shaft and transmitting it to the drum ('826 Patent, col. 14:50-55). This language could support an interpretation covering any component that performs this function.
- Evidence for a Narrower Interpretation: The specification heavily details specific embodiments, such as the one shown in FIG. 8 of the '826 patent, which illustrates a complex shape with specific projections (150d), recesses (150c), and surfaces. A defendant may argue that the term "coupling member" should be limited to structures possessing these detailed features.
The Term: "movable between (i) a first position... and (ii) a second position" (e.g., ’826 Patent, claim 1)
Context and Importance: This functional limitation is critical because it defines the dynamic behavior required of the "coupling member." Infringement will depend not only on the structure of the accused part but also on whether it actually moves in the claimed manner during operation or installation. Practitioners may focus on this term because it links the static structure of the cartridge to its dynamic interaction with the printer.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not specify the cause or exact nature of the movement, which may suggest that any change between two distinct positions meeting the distance criteria would suffice.
- Evidence for a Narrower Interpretation: The detailed description links this movement to a specific purpose and mechanism: the pivoting or inclining of the coupling member to achieve alignment with the drive shaft during cartridge mounting and dismounting ('826 Patent, col. 27:1-30; col. 29:1-20). This could support a narrower construction requiring a specific type of pivotal movement for the purpose of engagement, rather than any incidental movement.

VI. Other Allegations

Indirect Infringement: For each asserted patent, the complaint alleges induced infringement. The factual basis alleged is that the Defendant knowingly induces its customers' direct infringement by promoting the accused cartridges for use in specific, compatible printers and by providing instructions for their use (Compl. ¶24, 32, 40, 48, 56, 64, 72, 80, 88).
Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, for each patent, it includes language stating that, "At the very latest, Defendant will be given notice of its infringement of the... patent upon being served with this Complaint" (Compl. ¶24, 32, 40, etc.). This allegation may form the basis for a claim of post-filing willfulness if infringement continues after Defendant is served with the complaint.

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

The resolution of this case will likely depend on the court's determination of several central issues:

A primary issue will be one of definitional scope: How will the court construe the detailed geometric and relational limitations recited in the claims, such as the specific distances and angles that define the movement of the "coupling member"? Whether these terms are interpreted broadly to cover a range of coupling mechanisms or are limited to the specific structures shown in the patent figures will be a critical determinant of infringement.
A second core issue will be one of technical and factual comparison: Assuming a claim construction, does the accused EP-CE505A cartridge's coupling mechanism actually possess the claimed structures and, more importantly, does it exhibit the specific "movable" behavior between a "first position" and a "second position" as required by the patents? This will be a fact-intensive inquiry likely revolving around expert analysis of the accused product's operation.
Finally, as this case involves nine patents from the same family with very similar disclosures and claims, a key question will be one of patent differentiation and efficiency: How will the parties and the court manage the complexity of nine asserted patents? The case may focus on a smaller subset of representative claims, and the court's construction of key terms in the lead patents will likely have a significant impact on the disposition of the remaining patents in the portfolio.