DCT
1:18-cv-01490
Canon Inc v. Do It Wiser LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: Do It Wiser LLC (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
- Case Identification: 1:18-cv-01490, D. Del., 09/26/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware limited liability company, residing in and having committed infringing acts within the district.
- Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges for use in certain HP laser printers infringe a patent related to the mechanical coupling mechanism that drives the developing roller.
- Technical Context: The technology concerns the design of process cartridges, consumable components in laser printers, where precise mechanical alignment and drive transmission are critical for maintaining image quality.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2006-12-11 | ’958 Patent Priority Date |
| 2017-02-28 | U.S. Patent No. 9,581,958 Issues |
| 2018-09-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,581,958 - "Process Cartridge and Image Forming Apparatus," issued February 28, 2017
The Invention Explained
- Problem Addressed: In conventional printer process cartridges, the drive force for the developing roller is transmitted through a gear train. The engagement of these gears can introduce rotational inaccuracies in the developing roller, which can degrade image quality. There is also a continuous market demand for smaller, more compact cartridges (’958 Patent, col. 1:14-24).
- The Patented Solution: The invention provides a process cartridge with a specialized coupling member. This member directly connects the printer’s main drive assembly to the developing roller, independent of the photosensitive drum's drive mechanism. The coupling is designed to permit some movement or misalignment between the developing unit and the drum unit—for example, when they are separated for non-printing operations—while still ensuring a smooth and accurate transmission of rotational force when engaged for printing (’958 Patent, col. 2:29-47; Fig. 2).
- Technical Importance: This design aims to improve image quality by ensuring high rotational accuracy of the developing roller, while also accommodating the mechanical tolerances and movements necessary in a compact, user-replaceable cartridge system (’958 Patent, col. 2:44-47).
Key Claims at a Glance
- The complaint asserts independent claims 1, 25, 47, and 73, and reserves the right to assert other claims, including dependent claims (Compl. ¶¶16, 18).
- Independent Claim 1 recites a process cartridge with key elements including:
- A photosensitive drum supported by a first frame.
- A developing roller supported by a second frame, where the second frame is movable relative to the first.
- A coupling member with a "driving force receiving portion" that is "movable relative to said second frame in a crossing direction."
- An "urging portion" to urge the driving force receiving portion in the crossing direction.
- Independent Claim 25 is similar to Claim 1, but more specifically recites:
- A driving force receiving portion that includes a "plurality of projections."
- A "spring" (rather than an "urging portion") to urge the driving force receiving portion.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are replacement toner cartridges sold by Defendant, including those with model designations ITHPCKM552HK, ITHPCKM552HY, ITHPCKM552HC, ITHPCKM552HM, PTCF362X, and PTCF363X (“Accused Products”) (Compl. ¶13).
Functionality and Market Context
- The Accused Products are process cartridges designed for use in various models of HP Color LaserJet Enterprise printers (Compl. ¶12). Functionally, they are self-contained units that include a photosensitive drum, a developing roller, and toner, which are core components for creating an image in a laser printer. The complaint alleges that the mechanical structure of these cartridges, specifically the coupling mechanism for the developing roller, incorporates the patented invention (Compl. ¶¶21-66). The complaint uses the ITHPCKM552HK cartridge as an exemplary product representative of all Accused Products (Compl. ¶18). Figure 1 of the complaint shows an exemplary accused product and its packaging (Compl. ¶22).
IV. Analysis of Infringement Allegations
’958 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A process cartridge comprising: a photosensitive drum; | The Accused Product is a process cartridge that includes a photosensitive drum. Figure 2 of the complaint provides a labeled photograph of this component. | ¶23 | col. 21:59 |
| a first frame configured and positioned to rotatably support said photosensitive drum; | The Accused Product has a first frame that rotatably supports the photosensitive drum. | ¶24 | col. 22:1-3 |
| a developing roller configured and positioned to develop an electrostatic latent image formed on said photosensitive drum; | The Accused Product contains a developing roller for developing the latent image. | ¶25 | col. 22:4-6 |
| a second frame configured and positioned (a) to rotatably support said developing roller, and (b) to be connected to said first frame so as to be movable relative to said first frame; | The Accused Product has a second frame supporting the developing roller, which is connected to the first frame and is movable relative to it. Figure 6 of the complaint uses reference lines to illustrate this relative movement. | ¶¶26-27 | col. 22:7-11 |
| a coupling member ... including: a driving force receiving portion ... (b) to be movable relative to said second frame in a crossing direction crossing a rotational axis of said driving force receiving portion, and | The Accused Product's driving force receiving portion is alleged to be movable relative to the second frame in a direction crossing its rotational axis. Figure 9 of the complaint depicts this movement with reference lines and an arrow. | ¶30 | col. 22:16-22 |
| an urging portion configured and positioned to urge said driving force receiving portion in the crossing direction. | The Accused Product has an "urging portion" that allegedly pushes the driving force receiving portion. Figure 10(B) of the complaint illustrates how this portion allegedly urges the driving force receiving portion in the specified direction. | ¶31 | col. 22:23-25 |
Identified Points of Contention
- Scope Questions: A central question may be the interpretation of "urging portion" in Claim 1 versus "a spring" in Claim 25. The doctrine of claim differentiation suggests "urging portion" is broader than "spring." The dispute will likely focus on whether the structure in the accused device, which the complaint identifies as a spring for Claim 25 infringement (Compl. ¶42; Fig. 12(A)), can also meet the potentially broader "urging portion" limitation of Claim 1.
- Technical Questions: The complaint alleges that the "driving force receiving portion" is "movable... in a crossing direction" (Compl. ¶30). The infringement analysis will depend on factual evidence demonstrating that the movement of the accused component satisfies the specific directional and relational requirements defined by that claim phrase. The annotated photographs in the complaint (e.g., Fig. 9) provide Plaintiff's initial evidence, but the precise nature and extent of this movement will be a key technical question for the court.
V. Key Claim Terms for Construction
The Term: "urging portion"
Context and Importance: This term appears in independent claim 1, while other independent claims (e.g., claim 25) explicitly recite "a spring." Practitioners may focus on this term because its scope is critical to the infringement analysis under the doctrine of claim differentiation. If "urging portion" is construed to be broader than "a spring," it could capture more embodiments than claims limited to a spring.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the general term "urging portion" in claim 1, while using the more specific term "spring" in claim 25. This deliberate choice suggests the patentee intended "urging portion" to be a genus that includes, but is not limited to, springs. The specification also refers to an "urging member 18" which is a "torsion coil spring," but this is presented as one embodiment, not a limiting definition (’958 Patent, col. 16:26-28).
- Evidence for a Narrower Interpretation: A defendant may argue that the only embodiment of an "urging portion" disclosed and described in detail in the specification is a spring (’958 Patent, col. 16:26-28; Fig. 18). This could be used to argue that the scope of "urging portion" should be limited to the disclosed embodiment or its equivalents.
The Term: "movable relative to said second frame in a crossing direction crossing a rotational axis of said driving force receiving portion"
Context and Importance: This phrase defines the specific, complex movement of the coupling that is at the heart of the invention. The case may turn on whether the accused product's components move in a manner that falls within the court's construction of this language.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention describes the coupling member's "engaging portion" as being "movable in a direction crossing with the axial direction of the developing roller" (’958 Patent, col. 3:17-20). This more general language could support a construction not strictly limited to the precise geometry of the figures.
- Evidence for a Narrower Interpretation: The detailed description and figures (e.g., Fig. 17-20) show a specific mechanical arrangement where an "urging member 18" pushes an "engaging portion bearing member 19" along a path defined by a groove (48a) and held by contact points (11c) (’958 Patent, col. 16:26-40). A party could argue that "crossing direction" should be construed in light of this specific disclosed mechanism.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "knowingly induces customers to use its toner cartridges" by promoting them for use in specific printers and "providing customers with instructions for using its cartridges in those printers" (Compl. ¶17).
- Willful Infringement: The complaint does not contain an explicit allegation of "willful infringement." However, it alleges that Defendant will have knowledge of its infringement, at the latest, upon service of the complaint, which could form the basis for a claim of post-filing willfulness or a request for enhanced damages under 35 U.S.C. § 284 (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court’s determination of several key issues:
A central issue will be one of claim scope and differentiation: Can the term "urging portion" from claim 1 be construed more broadly than the term "a spring" from claim 25, and if so, does the accused device, which appears to use a spring, infringe the broader claim?
A key evidentiary question will be one of technical and functional operation: Does the accused cartridge’s coupling mechanism exhibit movement that meets the specific relational and directional limitations of the phrase "movable... in a crossing direction crossing a rotational axis," as that term is construed by the court?
A third question will relate to inducement: Assuming direct infringement by end-users is established, the focus will shift to whether Plaintiff can prove Defendant's promotional materials and instructions show the specific intent required to induce customers to perform the claimed actions.