Pena v. Hewlett Packard Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rubén O. Peña (California)
  • Defendant: Hewlett-Packard Inc. (Delaware)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 5:25-cv-09919, N.D. Cal., 11/17/2025
• Venue Allegations: Venue is based on Defendant's principal place of business being located in Palo Alto, California, within the district, where global compensation and IP-ownership decisions allegedly occurred.
• Core Dispute: Plaintiff, a former employee and named inventor, alleges that Defendant failed to provide compensation for his invention related to a U.S. patent, asserting rights under Spanish inventor compensation and labor law.
• Technical Context: The dispute centers on a patented method and apparatus for refilling disposable thermal inkjet printer cartridges, a technology aimed at reducing consumer costs and waste.
• Key Procedural History: The complaint alleges a long history of litigation in Spain, culminating in a December 28, 2020 ruling from the Supreme Court of Catalunya affirming Plaintiff's "RIGHT to SUE" HP Inc. in the U.S. for compensation. The complaint further relies on multiple tolling orders from Spanish courts, with the latest issued on November 15, 2024, to assert the timeliness of the current action.

Case Timeline

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

U.S. Patent No. 5,680,164 - "Refill method and apparatus for ink cartridge units"

The Invention Explained

• Problem Addressed: The patent's background describes the conventional practice of disposing of thermal inkjet cartridges after a single use, despite the printhead components remaining operational. This practice is noted as creating "increased consumer costs, as well as the production of additional waste materials." (’164 Patent, col. 2:36-41).
• The Patented Solution: The invention provides a self-contained "refill unit" containing a foam body saturated with ink. (’164 Patent, Abstract). This unit is designed to be inserted into a modified empty cartridge, where it forms a fluid-tight seal and engages with the cartridge's internal ink filter, allowing the reused cartridge to function. The design includes features like an annular channel on the refill unit that mates with an annular seal member in the cartridge to ensure proper alignment and prevent leaks. (’164 Patent, col. 3:12-16; Fig. 2).
• Technical Importance: The technology provided a structured method for consumers to reuse expensive inkjet cartridges, directly addressing the economic and environmental drawbacks of the single-use model prevalent at the time. (Compl. ¶¶ 1, 33).

Key Claims at a Glance

• The complaint does not assert any specific claims for patent infringement. The patent is presented as the basis for an inventor compensation dispute. As a technical reference, independent claim 1 describes the core refill unit:
  • A housing sized for placement within an empty ink cartridge.
  • The housing's lower portion comprising a lower panel with at least one opening.
  • The lower panel having an exterior surface and a "continuous annular channel separate from said opening" and surrounding it.
  • A fluid absorbent member positioned within the housing's internal cavity.
  • The fluid absorbent member having a lower section that extends outwardly through the opening.
  • A supply of ink retained within the fluid absorbent member.

III. The Accused Instrumentality

Product Identification

The complaint does not accuse a specific product of infringement. Instead, it focuses on Defendant's commercial exploitation of the invention embodied in U.S. Patent No. 5,680,164 (’164 Patent).

Functionality and Market Context

The complaint alleges that Defendant used the patented technology in its own commercial product families, specifically "13 Black TIJ 2.0 InkJet Cartridges," to protect its market from "global 'refill' competitors." (Compl. ¶33). It is alleged that this use allowed Defendant to "re-capture 19.97% of previously lost market-share" and generate significant profits. (Compl. ¶33). The complaint also alleges that Defendant used the ’164 Patent to win two federal lawsuits, which in turn caused its stock price to increase. (Compl. ¶34).

No probative visual evidence provided in complaint.

IV. Other Key Allegations

• Violation of Spanish Inventor-Rights Law: The central allegation is that under Spanish law, inventions created by an employee outside the normal scope of their duties entitle the employee to compensation if the employer commercially exploits the invention. (Compl. ¶¶ 4, 28). Plaintiff alleges his work as a Quality Assurance engineer did not include an expectation to invent and that HP's subsequent commercial use of his invention triggers this mandatory compensation right. (Compl. ¶¶ 3, 17, 42).
• Unjust Enrichment / Breach of Contract: Plaintiff alleges that Defendant was unjustly enriched by billions of dollars in profits, litigation victories, and market share recapture derived from the invention, while failing to provide any compensation. (Compl. ¶¶ 9, 37). The complaint also alleges Defendant breached express and implied promises to compensate employees for inventions pursuant to Spanish law and its own global employment policies. (Compl. ¶34).
• Statute of Limitations and Tolling: A critical legal predicate for the case is the assertion that Spanish court rulings have repeatedly tolled the statute of limitations. (Compl. ¶¶ 6, 38-39). Plaintiff argues that under principles of international comity and conflict-of-laws rules, these foreign tolling orders should be applied by the U.S. court, making the current lawsuit, filed years after the patent's expiration, timely. (Compl. ¶¶ 40-43).

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

This case appears to be a novel application of foreign law to a U.S. patent dispute, presenting several threshold legal questions distinct from a typical patent infringement action.

• A core issue will be one of choice of law: can Spanish substantive law governing employee-inventor compensation be applied by a U.S. court to a dispute over a U.S. patent owned by a U.S. corporation, based on the inventor's employment status in Spain at the time of the invention's development?
• A related question concerns international comity: what legal weight, if any, will the U.S. court give to the prior rulings from the Spanish courts, particularly the judgment authorizing the Plaintiff's "RIGHT to SUE" the U.S. parent corporation?
• Finally, a dispositive procedural question will be the statute of limitations: will the court recognize the tolling orders issued by Spanish courts as sufficient to make claims timely, given that the underlying patent was filed in 1994 and expired in 2014?