DCT

1:18-cv-00552

Canon Inc v. Do It Wiser LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00552, D. Del., 04/13/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware limited liability company and thus resides in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in various Canon and HP printers, infringe seven patents related to the mechanical coupling mechanism between the cartridge and the printer.
  • Technical Context: Electrophotographic (laser) printers rely on consumable process cartridges containing a photosensitive drum and toner, creating a significant secondary market for compatible, non-OEM replacement cartridges.
  • Key Procedural History: The complaint notes that this action is related to a concurrent proceeding before the U.S. International Trade Commission (ITC), Investigation No. 337-TA-1106, involving the same parties, patents, and accused products. It also references a prior, related action filed in the Northern District of Georgia, which Plaintiff intended to voluntarily dismiss in favor of this Delaware action.

Case Timeline

Date Event
2006-12-22 Earliest 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
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 Related Georgia Action and ITC Proceeding Filed
2018-04-13 Complaint Filed in D. Del.

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. 9,746,826, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued August 29, 2017 (’826 Patent). (Compl. ¶10).

The Invention Explained

  • Problem Addressed: The patent addresses the mechanical challenge of smoothly and reliably transmitting rotational force from a printer's main drive shaft to the photosensitive drum within a user-replaceable process cartridge. Misalignment between the drive shaft and the drum's axis during cartridge installation can lead to unstable rotation and degraded image quality. (’826 Patent, col. 2:1-35).
  • The Patented Solution: The invention is a coupling member on the end of the drum that is designed to be movable or "pivotable" relative to the drum's primary axis. This allows the coupling to engage with the printer's drive shaft even if the two components are not perfectly aligned, ensuring a stable transfer of rotational force. (’826 Patent, Abstract; col. 2:50-56). The design allows the coupling's axis to be "inclined relative to the axis of the photosensitive drum." (’826 Patent, col. 12:35-42).
  • Technical Importance: This approach aims to improve the usability and reliability of replaceable printer cartridges by making the mechanical connection less sensitive to precise user alignment during installation. (’826 Patent, col. 2:40-45).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6. (Compl. ¶26).
  • Independent Claim 1 includes these essential elements:
    • A process cartridge comprising a casing, a photosensitive drum rotatably supported in the casing, and a developer-carrying developing roller.
    • A coupling member connected to the drum, having a first end portion, a second end portion, and a connecting portion.
    • The coupling member is movable between a first position and a second, inclined position relative to the drum's axis.
    • The first and second positions are defined by specific relative distances between projections on the coupling and the drum.
  • Independent Claim 6 includes these essential elements:
    • A process cartridge comprising a casing with an opening and at least one protrusion, a photosensitive drum, a developing roller, and a coupling member.
    • The coupling member is movable between a first position and a second, inclined position relative to the drum's axis.
    • The protrusion on the casing is positioned adjacent to the coupling member when the coupling member is in its first position.
  • The complaint reserves the right to assert additional claims, including dependent claims 2, 4, 7, and 9. (Compl. ¶26).

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

  • Patent Identification: U.S. Patent No. 9,836,021, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 5, 2017 (’021 Patent). (Compl. ¶11).

The Invention Explained

  • Problem Addressed: The ’021 Patent, which shares a specification with the ’826 Patent, addresses the same technical problem of ensuring smooth and reliable rotational force transmission to a photosensitive drum in a replaceable cartridge, particularly when the cartridge's axis and the printer's drive shaft are misaligned. (’021 Patent, col. 2:1-35).
  • The Patented Solution: The solution is also a movable coupling member that connects the drum to the printer's drive shaft. The coupling is configured to pivot, allowing its axis to become inclined relative to the drum's axis to accommodate misalignment and maintain stable rotation. (’021 Patent, Abstract; col. 2:50-56).
  • Technical Importance: This design provides a robust mechanical interface for a consumable component, which improves the user experience and the operational consistency of the printing apparatus. (’021 Patent, col. 2:40-45).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 8. (Compl. ¶¶36-38).
  • Independent Claim 1 includes these essential elements:
    • A process cartridge with a casing, a photosensitive drum, a developing roller, and a coupling member.
    • The coupling member has a first end portion, a second end portion with wing portions, and a connecting portion.
    • The coupling member is movable between a first position and a second, inclined position, with the positions defined by relative distances.
  • Independent Claim 8 includes these essential elements:
    • A process cartridge with a casing, a drum, a developing roller, and a coupling member.
    • The coupling member includes wing portions and is movable between a first and second position.
    • The claim specifies dimensional relationships between the wing portions and the drum's photosensitive surface.
  • The complaint reserves the right to assert additional claims, including dependent claims 2, 4, 5, and 7. (Compl. ¶36).

U.S. Patent No. 9,841,727 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit”

  • Patent Identification: U.S. Patent No. 9,841,727, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017 (’727 Patent). (Compl. ¶12).
  • Technology Synopsis: The ’727 Patent addresses the same technical challenge of coupling a replaceable process cartridge to a printer's drive mechanism. The invention uses a guide member and a movable coupling member to ensure proper engagement and stable rotation of the photosensitive drum, even with slight misalignment. (’727 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claims 1 and 16. (Compl. ¶46).
  • Accused Features: The complaint alleges that the coupling mechanism and guiding structures on the accused toner cartridges infringe the ’727 patent. (Compl. ¶¶44, 46).

U.S. Patent No. 9,841,728 - “Process Cartridge Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge”

  • Patent Identification: U.S. Patent No. 9,841,728, "Process Cartridge Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge," issued December 12, 2017 (’728 Patent). (Compl. ¶13).
  • Technology Synopsis: The ’728 Patent discloses a process cartridge with a coupling member whose position relative to other cartridge components is changeable. This design, involving a guide member and projections, facilitates proper alignment and force transmission between the printer's drive motor and the cartridge's photosensitive drum. (’728 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claims 1 and 16. (Compl. ¶56).
  • Accused Features: The accused features are the coupling and guiding components of the Defendant's replacement toner cartridges. (Compl. ¶¶54, 56).

U.S. Patent No. 9,857,765 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit”

  • Patent Identification: U.S. Patent No. 9,857,765, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018 (’765 Patent). (Compl. ¶14).
  • Technology Synopsis: The ’765 Patent describes a process cartridge with a coupling member featuring an end portion that extends away from the drum and is movable between different positions. The invention focuses on specific dimensional relationships of the coupling member to ensure it can engage the printer drive while accommodating misalignment. (’765 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claims 1 and 13. (Compl. ¶66).
  • Accused Features: The complaint accuses the coupling mechanism of Defendant's toner cartridges, which allegedly contains the claimed structural and positional features. (Compl. ¶¶64, 66).

U.S. Patent No. 9,869,960 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit”

  • Patent Identification: U.S. Patent No. 9,869,960, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 16, 2018 (’960 Patent). (Compl. ¶15).
  • Technology Synopsis: The ’960 Patent discloses a process cartridge featuring a coupling member with specific inner and outer portions. The relative dimensions and positioning of these portions are designed to allow the coupling member to move and incline relative to the drum axis, thereby facilitating a stable connection with the printer's drive mechanism. (’960 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶76).
  • Accused Features: The allegedly infringing features are the coupling components of the accused cartridges, which are asserted to meet the dimensional and positional requirements of the claims. (Compl. ¶¶74, 76).

U.S. Patent No. 9,874,846 - “Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit”

  • Patent Identification: U.S. Patent No. 9,874,846, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 23, 2018 (’846 Patent). (Compl. ¶16).
  • Technology Synopsis: The ’846 Patent describes a drum unit for a process cartridge with a drum flange and a movable coupling member. The invention focuses on the coupling member's ability to move between a first position and a second, inclined position, with the relative positions defined by specific distances, to ensure proper engagement with a drive shaft. (’846 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶86).
  • Accused Features: The infringement allegations target the drum unit and its associated coupling mechanism within the Defendant's replacement toner cartridges. (Compl. ¶¶84, 86).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are replacement toner cartridges sold and/or imported by Defendant Do It Wiser LLC for use in various Canon and HP laser printers. (Compl. ¶19). The complaint identifies three non-limiting examples: model ITHPM426FDSK1 US ("Type F"), model ITHPLPRO400K1 US ("Type G"), and model ITHPCE255ASY US ("Type H"). (Compl. ¶¶20-22).

Functionality and Market Context

The accused products are consumable components that contain toner and a photosensitive drum unit, and are designed to be installed by end-users into printers. (Compl. ¶19). The complaint provides a photograph of an accused "Type G" cartridge, showing the complete assembly and the coupling mechanism at one end. (Compl. p. 6). The accused functionality is the mechanical coupling on the cartridge that engages with a drive shaft inside the printer to receive rotational force for the printing process. (Compl. ¶¶24, 34). The complaint alleges these cartridges are marketed as compatible replacements for a wide range of commercially significant Canon and HP printer models. (Compl. ¶19, Table on pp. 5-6).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing its infringement contentions for each asserted patent. (Compl. ¶¶26-28, 36-38). Therefore, a claim chart table cannot be constructed from the provided documents. The narrative infringement theory is summarized below.

  • ’826 Patent Infringement Allegations
    • Canon alleges that the accused cartridges, including representative models "Type F," "Type G," and "Type H," literally infringe one or more claims of the ’826 Patent, including at least independent claims 1 and 6. (Compl. ¶¶26-28). The core of the allegation is that the coupling member on the accused cartridges has the structure and movable functionality claimed in the patent, allowing it to connect to the printer's drive mechanism and accommodate misalignment while transmitting rotational force to the cartridge's photosensitive drum. (Compl. ¶¶24, 26).
  • ’021 Patent Infringement Allegations
    • Similarly, Canon alleges that the accused cartridges literally infringe one or more claims of the ’021 Patent, including at least independent claim 1. (Compl. ¶¶36-38). The infringement theory mirrors that for the ’826 Patent, focusing on the allegation that the accused cartridges' coupling mechanism embodies the claimed structure, including specific wing portions and movable positioning relative to the drum's axis. (Compl. ¶¶34, 36).
  • Identified Points of Contention:
    • Scope Questions: A central issue may be whether the term "movable," as defined by the specific positional and dimensional limitations in the claims (e.g., "movable between (i) a first position...and (ii) a second position"), reads on the degree of movement, or mechanical "play," present in the accused cartridges' coupling mechanisms.
    • Technical Questions: The complaint provides external photographs of the accused cartridges but does not contain technical evidence (such as engineering diagrams or operational analysis) demonstrating that the coupling members actually move into an "inclined position" relative to the drum axis during operation as required by the claims. A key factual question will be whether the accused couplings are merely coaxial with some tolerance or if they are specifically designed to pivot to an inclined state to transfer torque effectively.

V. Key Claim Terms for Construction

The complaint does not provide specific proposed claim constructions. (Compl. ¶29). However, based on the technology and the nature of the allegations, certain terms may become central to the dispute.

  • The Term: "coupling member" (’826 Patent, Claim 1)
    • Context and Importance: This is the central claimed component. The entire infringement case rests on whether the corresponding structure in the accused cartridges meets the definition of the "coupling member" as recited in the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes numerous embodiments of the coupling member (e.g., 150, 1150, 1250, etc.), suggesting the term should not be limited to the exact shape of any single embodiment. (’826 Patent, col. 78:4-10).
      • Evidence for a Narrower Interpretation: The claims define the "coupling member" with specific structural limitations, such as a "first end portion," "second end portion," and "connecting portion." The patent figures depict these portions with particular shapes and configurations (e.g., FIG. 8), which could be used to argue for a more limited construction that excludes dissimilar structures. (’826 Patent, col. 84:1-11; FIG. 8).
  • The Term: "inclined position" (’826 Patent, Claim 1)
    • Context and Importance: This term defines the key functional capability of the coupling member. Whether the accused device is "movable" to an "inclined position" will be a critical infringement question.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the coupling as being "pivotable" or "swingable" in "all directions," which could support a broad interpretation covering any non-coaxial alignment that occurs during engagement. (’826 Patent, col. 19:6-14; col. 22:31-35).
      • Evidence for a Narrower Interpretation: The patent provides specific angular ranges for the inclination, stating that a "maximum angle of inclination...is about 20 degrees to about 60 degrees." (’826 Patent, col. 84:48-51). This language may support an argument that the term requires a specific, substantial, and designed-for angle of operation, not merely incidental wobble or minor mechanical tolerance.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement. The stated basis is that the Defendant promotes its cartridges for use in specific printers and provides instructions, which allegedly directs and encourages customers to install and use the cartridges in an infringing manner. (Compl. ¶¶25, 35, 45, 55, 65, 75, 85).
  • Willful Infringement: The complaint does not contain a formal count for willful infringement. However, for each patent, it states that "At the very latest, Defendant will be given notice of its infringement...upon being served with this Complaint," which may serve as a basis for alleging post-filing willfulness and seeking enhanced damages. (Compl. ¶¶25, 35, 45, 55, 65, 75, 85).

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

  • A core issue will be one of claim scope and construction: How narrowly will the court define the geometric and positional limitations recited in the claims, such as the "coupling member" being "movable" between specific first and second "inclined" positions? The outcome of this construction will likely determine whether the mechanical design of the accused cartridges falls within the literal scope of the patents-in-suit.
  • A key evidentiary question will be one of technical operation: Beyond the static appearance of the accused cartridges, what evidence will show that their coupling mechanisms are designed to, and actually do, pivot to an "inclined position" to transmit rotational force during operation, as opposed to merely having standard mechanical tolerances? The case may depend on dynamic testing and expert analysis of the products' function inside a printer.
  • The parallel ITC proceeding raises a strategic question: How will the faster-paced ITC investigation, which could result in an exclusion order barring importation of infringing products, influence the strategy and potential for settlement in this district court action, which primarily concerns monetary damages?