DCT

1:23-cv-00570

Seiko Epson Corp v. Creek Mfg LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00570, E.D. Cal., 04/11/2023
  • Venue Allegations: Venue is alleged to be proper as Defendants have committed acts of infringement in and reside in the judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket ink cartridges and associated circuit boards for use in Epson printers infringe a patent related to the specific arrangement of electrical contacts on a circuit board designed to prevent damage from electrical shorts.
  • Technical Context: The technology concerns protective circuit designs for consumable printer supplies, a field critical for original equipment manufacturers seeking to ensure printer reliability and manage the aftermarket for consumables.
  • Key Procedural History: The complaint states that the patent-in-suit was previously litigated in the U.S. International Trade Commission (ITC) Investigation No. 337-TA-946, which resulted in a General Exclusion Order prohibiting the importation of infringing ink cartridges. The existence of this prior adjudication and order may be relevant to the defendants' alleged knowledge and willfulness.

Case Timeline

Date Event
2005-12-26 ’116 Patent Priority Date
2007-10-19 ITC Inv. No. 337-TA-565 Final Determination
2013-06-04 ’116 Patent Issue Date
2016-05-26 ITC Inv. No. 337-TA-946 Final Determination
2022-04-26 ’116 Patent Certificate of Correction Issued
2022-09-22 Accused Products Offered for Sale (as of)
2022-11-16 Accused Products Offered for Sale (as of)
2023-03-13 Accused Products Offered for Sale (as of)
2023-04-11 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”

(Issued June 4, 2013)

The Invention Explained

  • Problem Addressed: The patent describes a technical problem arising when an ink cartridge is equipped with multiple electronic devices that operate at different voltages, such as a low-voltage memory chip and a high-voltage sensor (e.g., for detecting the remaining ink level) (’116 Patent, col. 1:27-35). An accidental electrical short between the terminals for the high-voltage device and other terminals, potentially caused by a drop of conductive ink, could damage the low-voltage components or the printer itself (’116 Patent, col. 1:47-51).
  • The Patented Solution: The invention proposes a specific geometric arrangement of electrical terminals on a circuit board to mitigate damage from such shorts (’116 Patent, Abstract). The solution involves placing a dedicated "short detection contact portion" adjacent to a high-voltage terminal. The layout is designed so that if foreign matter creates a short circuit involving the high-voltage terminal, it is highly likely to also make contact with the short detection terminal. This allows the printer’s circuitry to detect the anomaly and initiate a protective action, such as interrupting power, before the short can damage more sensitive components like the memory device (’116 Patent, col. 2:27-40; Fig. 8).
  • Technical Importance: This design provides an integrated safety mechanism that allows for the use of more sophisticated, multi-voltage electronics on a disposable ink cartridge while protecting the host printer from a common failure mode.

Key Claims at a Glance

  • The complaint asserts independent claim 18 (’116 Patent, col. 31:27-32:2).
  • Essential elements of Claim 18 include:
    • A circuit board mountable on a printing material container.
    • 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.
    • A plurality of terminals with specific contact portions, including memory contact portions, first and second electronic device contact portions, and a short detection contact portion.
    • A specific positional arrangement of these contact portions, defined relative to a particular viewing orientation ("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 contact portion that is second farthest to the right is the short detection contact portion;
      • the memory contact portions are located to the left of the short detection contact portion and to the right of the first electronic device contact portion.
  • The complaint also alleges infringement of claim 9 in the context of indirect infringement allegations (Compl. ¶42).

III. The Accused Instrumentality

Product Identification

The accused products are aftermarket ink cartridges and aftermarket circuit boards ("chips") for use with Epson SureColor F2000 and F2100 printers (Compl. ¶40). The products are sold under brands including "Creek Manufacturing," "DTG Printer Parts," and "Image Armor" (Compl. ¶¶24, 26). The complaint also identifies "chip-less refillable ink cartridges" as accused instrumentalities (Compl. ¶30).

Functionality and Market Context

The accused cartridges are marketed as "direct replacement" products for genuine Epson cartridges (Compl. ¶28). The complaint includes a screenshot from a defendant's website showing a product described as "Non Genuine DTG inks for the F2000" (Compl. ¶28, p. 9). The cartridges contain a circuit board with metallic terminals designed to make electrical contact with the printer (Compl. ¶41, p. 15). The complaint alleges that Defendants also sell refillable cartridges without circuit boards and instruct customers to purchase and install the chips separately (Compl. ¶¶30-31), providing a screenshot of a website stating "YOU WILL NEED TO BUY CHIPS ON ALIBABA for these to WORK" (Compl. ¶30, p. 10).

IV. Analysis of Infringement Allegations

Claim Chart Summary

The complaint provides a detailed, non-limiting claim chart alleging infringement of claim 18 by a "Representative Ink Cartridge."

U.S. Patent No. 8,454,116 Infringement Allegations

| Claim Element (from Independent Claim 18) - Alleged Infringing Functionality - Complaint Citation | Patent Citation |
|:--------------------------------------------------------------------------------------------------------------------------------------------------------------------------------- |:----------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------- |:-----------------------|:-------------------|
| [18a] A circuit board mountable on a printing material container... | A circuit board is mounted on the Representative Ink Cartridge, which is a printing material container for use in an Epson ink jet printer. - ¶41 | col. 31:27-36 |
| [18b] a memory device adapted to be driven by a memory driving voltage; | The circuit board on the accused product comprises a memory device adapted to be driven by a memory driving voltage supplied by the printer. - ¶41 | col. 31:37-38 |
| [18c] an electronic device adapted to receive a voltage higher than the memory driving voltage; | The circuit board on the accused product comprises an electronic device (e.g., a resistor) adapted to receive a voltage of approximately 42 volts, which is higher than the memory driving voltage of approximately 4 volts. - ¶41 | col. 31:39-41 |
| [18d] a plurality of terminals having contact portions adapted and positioned to contact corresponding apparatus-side contact forming members... including a plurality of memory contact portions..., a first electronic device contact portion..., a second electronic device contact portion..., and a short detection contact portion... | The accused product's circuit board has a plurality of terminals with distinct contact portions, identified via analysis of scratch marks from installation, corresponding to memory, first and second electronic device, and short detection functions. The complaint provides an annotated photograph identifying these distinct contact portions on the accused product's circuit board (Compl. ¶41, p. 20). | ¶41 | col. 31:42-59 |
| [18e] wherein: 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 contact portion that is second farthest to the right is the short detection contact portion, and the memory contact portions are located to the left of the short detection contact portion and to the right of the first electronic device contact portion. | The complaint alleges that the contact portions on the accused product's circuit board are arranged in the specific geometry required by the claim. This allegation is supported by an annotated photograph depicting the terminal arrangement from the claimed vantage point (Compl. ¶41, p. 22). | ¶41 | col. 31:60-32:2 |

Identified Points of Contention

  • Scope Questions: The infringement analysis for claim 18 depends entirely on a specific geometric arrangement of terminals when viewed from a particular orientation ("from the vantage of the contact forming members"). A potential point of contention may be whether this vantage point is ambiguous and whether the accused products' layout meets every spatial limitation (e.g., "farthest to the left," "second farthest to the right") under a proper construction of that orienting language.
  • Technical Questions: What evidence does the complaint provide that the accused product's "electronic device" is "adapted to receive a voltage higher than the memory driving voltage" during actual operation? The complaint asserts this was "confirmed through testing during the ITC 946 Investigation" (Compl. ¶41, p. 17), raising the question of whether discovery in this case will validate those prior findings with respect to the currently accused products.

V. Key Claim Terms for Construction

  • The Term: "short detection contact portion"

    • Context and Importance: This term is central to the patent's inventive concept of providing a protective mechanism. The infringement determination will depend on whether a specific terminal on the accused product is properly characterized as having this function and structure.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent claims 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" (’116 Patent, col. 31:55-59). This suggests a functional definition based on its electrical connectivity and purpose.
      • Evidence for a Narrower Interpretation: The specification describes this portion in the context of a specific circuit design (the "first detection circuit 5021") that monitors voltage levels to detect a short (’116 Patent, col. 11:34-37; Fig. 8). A defendant may argue that the term should be limited to a contact portion that operates as part of this specific disclosed circuit logic, rather than any terminal that could hypothetically be used to detect a short.

  • The Term: "viewed from the vantage of the contact forming members"

    • Context and Importance: This phrase establishes the specific orientation from which the claim's geometric limitations ("farthest to the left," etc.) must be assessed. The entire infringement analysis of the final "wherein" clause hinges on establishing this viewpoint.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification does not appear to provide an explicit definition. Plaintiff’s complaint interprets this as a direct, line-of-sight view from the printer toward the cartridge, as depicted in its annotated photos (Compl. ¶41, p. 22). This interpretation aligns with the physical interaction of the components.
      • Evidence for a Narrower Interpretation: A defendant might argue that the term "vantage" implies more than a simple line of sight and could require a specific electrical or mechanical reference frame that is not present, potentially rendering the term indefinite or non-infringed.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement by accusing Defendants of selling "chip-less refillable ink cartridges" and actively instructing users to purchase and install third-party infringing chips (Compl. ¶¶ 30-31, 47). The complaint supports this with a screenshot of a defendant's website instructing users they "WILL NEED TO BUY CHIPS ON ALIBABA for these to WORK" (Compl. ¶30, p. 10). It is further alleged that Defendants provide instructional videos on how to install such chips (Compl. ¶31). Contributory infringement is alleged on the basis that the chip-less cartridges and chips are not staple articles of commerce and are especially adapted for use in an infringing manner (Compl. ¶48).
  • Willful Infringement: The complaint alleges pre-suit knowledge of the ’116 patent based on Epson's widely publicized enforcement efforts and, specifically, the prior ITC investigation that resulted in a General Exclusion Order involving the ’116 patent (Compl. ¶¶ 2, 5, 43). It is alleged that infringement has been and continues to be willful (Compl. ¶55).

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

  • A core issue will be one of geometric mapping: Does the physical layout of the terminals on the accused circuit boards precisely correspond to the patent's strict spatial requirements—"farthest to the left," "farthest to the right," and "second farthest to the right"—when assessed from the specific viewpoint required by Claim 18?
  • A central evidentiary question will be one of operational fact: Can Plaintiff prove, through testing and discovery, that the "electronic device" on the currently accused products operates at a higher voltage than the memory device and that the designated "short detection contact portion" is functionally operative as claimed, especially in light of factual records that may have been developed in prior ITC proceedings?
  • A key question for damages will be one of scienter: Given the complaint’s allegations regarding prior ITC General Exclusion Orders covering the patent-in-suit and active instructions provided to customers for combining components, what is the strength of the evidence supporting willful and induced infringement?