DCT
1:23-cv-00116
Canon Inc v. Print Rite Imaging Technology Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: Print-Rite Imaging Technology Inc. (Delaware) and Union Technology International (MCO) Co. Ltd. (Macau, China)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
- Case Identification: 1:23-cv-00116, D. Del., 01/31/2023
- Venue Allegations: Venue is alleged to be proper as to Print-Rite Imaging because it is a Delaware corporation that resides and has committed infringing acts in the district. Venue is alleged to be proper as to Union Technology International (UTec) on the basis that it is a foreign entity subject to personal jurisdiction in the district.
- Core Dispute: Plaintiff alleges that Defendants’ aftermarket toner cartridges, designed for use in HP laser printers, infringe a patent related to the mechanical design and gear configuration of a process cartridge.
- Technical Context: The technology concerns the specific geometric arrangement of drive-train components within replaceable printer toner cartridges, a critical aspect of ensuring reliability in the high-volume printer consumables market.
- Key Procedural History: The complaint alleges that Defendant UTec announced an "IP Safe" version of its toner cartridge on February 9, 2022, in a notice that explicitly identified the patent-in-suit. The complaint claims this "IP Safe" version was developed without the allegedly infringing helical gear, suggesting Defendants had pre-suit knowledge of the patent and its relevance to their products.
Case Timeline
| Date | Event |
|---|---|
| 2016-06-14 | U.S. Patent No. 11,169,483 Priority Date |
| 2021-11-09 | U.S. Patent No. 11,169,483 Issues |
| 2022-02-09 | Alleged date of Defendants' awareness of the ’483 patent |
| 2023-01-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,169,483 - "Process Cartridge and Electrophotographic Image Forming Apparatus"
- Patent Identification: U.S. Patent No. 11169483, "Process Cartridge and Electrophotographic Image Forming Apparatus", issued November 9, 2021 (the "’483 Patent").
The Invention Explained
- Problem Addressed: The patent addresses the need for reliable and user-friendly replaceable process cartridges in electrophotographic printers. The background highlights the challenge of designing the mechanical interface that transmits driving force from the main printer assembly to the various rotating components within the cartridge, such as the photosensitive drum and developing roller. (’483 Patent, col. 1:45-65).
- The Patented Solution: The invention describes a specific spatial and geometric arrangement for the components within the process cartridge. The solution centers on the relationship between the photosensitive drum's coupling mechanism and a separate helical gear that drives another component (like the developing roller). The patent claims a specific axial positioning of the helical gear's exposed teeth relative to the drum's coupling, and a precise radial distance for those teeth, defined as being between 90% and 110% of the photosensitive drum's radius. (’483 Patent, Abstract; col. 14:6-14). This configuration is intended to ensure proper drive engagement and allow for a compact, reliable design. (’483 Patent, col. 14:51-65).
- Technical Importance: This detailed mechanical configuration aims to improve the usability and reliability of replaceable cartridges, which is a critical factor for performance and market acceptance in the competitive printer consumables industry. (’483 Patent, col. 1:56-60).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, 17, and 33. (Compl. ¶19).
- Independent Claim 1 requires, among other elements:
- A frame, a rotatable photosensitive drum, and a rotatable developing roller.
- A coupling at one end of the photosensitive drum.
- A helical gear with exposed teeth.
- An axial positioning requirement: part of the helical gear's exposed teeth must be positioned farther from the second end of the drum than a tip of the coupling's projection.
- A radial positioning requirement: the shortest distance from the drum's axis to a tip of one of the helical gear's teeth must be 90% to 110% of the drum's radius.
- Independent Claim 8 includes the elements of Claim 1 and further requires:
- The frame must have a slit formed in it.
- An additional axial positioning requirement: part of the slit must also be positioned farther from the second end of the drum than the tip of the coupling's projection.
- The complaint reserves the right to assert numerous dependent claims. (Compl. ¶18).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the Accused Products as unauthorized toner cartridges compatible with various HP printer models, including 48A (CF248A), 141A (W1410A), 134A (W1340A), 134X (W1340X), 138A (W1380A), and 138X (W1380A). An exemplary CF248A toner cartridge is analyzed in detail. (Compl. ¶14, ¶19).
Functionality and Market Context
- The Accused Products are aftermarket, disposable consumables intended to replace original manufacturer cartridges in laser printers. (Compl. ¶14). The complaint alleges, through extensive annotated photographs, that the exemplary product contains a frame, photosensitive drum, developing roller, coupling, and helical gear arranged in a manner that satisfies the specific geometric and positional limitations of the asserted claims. (Compl. ¶¶24-96). For example, Figure 22 in the complaint shows a caliper measurement of the photosensitive drum's diameter, which is used to calculate the claimed 90%-110% radial distance range. (Compl. ¶38, Fig. 22).
IV. Analysis of Infringement Allegations
’483 Patent Infringement Allegations (Independent Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame; | The accused product includes a frame. (Compl. Fig. 3). | ¶25 | col. 49:13 |
| a photosensitive drum supported by the frame, the photosensitive drum being rotatable about an axis thereof... | The accused product includes a photosensitive drum supported by the frame and rotatable about an axis. (Compl. Fig. 5-6). | ¶26 | col. 49:14-18 |
| a developing roller supported by the frame, the developing roller being rotatable about an axis thereof; | The accused product includes a developing roller supported by the frame and rotatable about an axis. (Compl. Fig. 8-9). | ¶28 | col. 49:19-21 |
| a coupling operatively connected to the photosensitive drum... including a projection; and | The accused product includes a coupling with a projection, positioned at the first end of and coaxial with the photosensitive drum. (Compl. Fig. 10-14). | ¶¶29-32 | col. 49:22-28 |
| a helical gear positioned at the side of the process cartridge... with at least some of the teeth being exposed teeth... | The accused product includes a helical gear with a plurality of exposed teeth positioned at the side of the cartridge. (Compl. Fig. 15-18). | ¶¶33-35 | col. 49:29-37 |
| wherein, as measured in an axial direction... at least a part of the exposed teeth of the helical gear is positioned farther from the second end of the photosensitive drum than a tip of the projection... | The complaint alleges through annotated photographs that the exposed teeth of the helical gear are axially positioned farther from the drum's second end than the coupling's projection tip. (Compl. Fig. 20-21). | ¶37 | col. 49:39-44 |
| wherein, as measured along a line perpendicular to the axis of the photosensitive drum, a shortest distance from the axis... to a tip of one of the plurality of teeth is 90% to 110% of a length of a radius of the photosensitive drum. | The complaint presents caliper measurements showing the drum diameter is 23.98 mm (radius 11.99 mm) and the shortest distance to a gear tooth is 12.00 mm, which is within the claimed 90-110% range (10.79 mm to 13.19 mm). (Compl. Fig. 22-24). | ¶38 | col. 49:45-50 |
’483 Patent Infringement Allegations (Independent Claim 8)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame having a slit formed therein at a side of the process cartridge; | The accused product's frame has a slit on its side. This is depicted in an annotated photograph. (Compl. Fig. 25). | ¶42 | col. 50:52-54 |
| [Other elements are substantially similar to Claim 1] | [Allegations are substantially similar to those for Claim 1, citing paragraphs 43-54 and the same figures] | ¶¶43-54 | col. 50:55 - col. 51:24 |
| wherein, as measured in an axial direction... (ii) at least a part of the slit is positioned farther from the second end of the photosensitive drum than the tip of the projection of the coupling... | The complaint alleges through annotated photographs that the slit is axially positioned farther from the drum's second end than the coupling's projection tip. (Compl. Fig. 27-28). | ¶55 | col. 51:15-20 |
| [The 90%-110% radial distance limitation is identical to Claim 1] | [The allegation is identical to that for Claim 1, citing the same measurements and figures] | ¶56 | col. 51:21-26 |
Identified Points of Contention
- Scope Questions: The claims rely on precise numerical ranges and relative positioning (e.g., "90% to 110%," "farther from"). The infringement case may turn on whether the court accepts the plaintiff's measurement methodology as depicted in the complaint (e.g., Compl. Fig. 24) as sufficient to establish the "shortest distance" required by the claims.
- Technical Questions: A key factual question will be whether the single exemplary product analyzed in the complaint is representative of all Accused Products. Defendants may argue that manufacturing tolerances or design variations place some or all of their products outside the literal scope of the claims' specific dimensional requirements. The definition of terms like "exposed teeth" and "uncovered by the frame" may also be disputed, raising the question of whether the visual evidence (e.g., Compl. Fig. 18) demonstrates the required structural characteristic.
V. Key Claim Terms for Construction
The Term: "a shortest distance"
Context and Importance: This term is central to a quantitative limitation present in all asserted independent claims. Infringement of this element hinges entirely on a physical measurement, making the definition of how and from where that measurement is taken critical.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the phrase "as measured along a line perpendicular to the axis of the photosensitive drum," which suggests a standard, objective measurement protocol. (’483 Patent, col. 49:45-46). A party could argue this points to a plain and ordinary meaning that would be understood by a person of skill in the art using standard metrology tools.
- Evidence for a Narrower Interpretation: The specification includes detailed diagrams like Figure 1, which illustrates the drive train. A party could argue these figures provide context that narrows the meaning, for example, by implying that the "tip of one of the plurality of teeth" refers not to any point on the tooth but to a specific point relevant to gear meshing, such as a point on the pitch circle.
The Term: "exposed teeth that are uncovered by the frame"
Context and Importance: This limitation defines the accessibility of the helical gear, which is necessary for it to receive driving force from the printer. The construction of "uncovered" will determine whether the accused design meets this structural requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning suggests that any portion of the teeth not physically obstructed by the frame is "uncovered." The patent states the gear receives a driving force "from an outside of said process cartridge," supporting a view that "uncovered" means externally accessible. (’483 Patent, col. 49:32-34). The complaint’s Figure 18, showing teeth visible through an opening in the frame, supports this view. (Compl. ¶35).
- Evidence for a Narrower Interpretation: A party might argue that "uncovered" should be interpreted in the context of the space (87) provided for the drive transmission member (81) as shown in the patent's Figure 15. This could support an interpretation requiring not just visual exposure, but a functionally sufficient opening to allow for engagement with the printer's drive mechanism.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement. The factual basis includes Defendants' promotion of the Accused Products for use in specific printers, instructions provided to end-users, and offering customer support to resellers, all of which allegedly encourage direct infringement by others. (Compl. ¶97).
- Willful Infringement: The complaint makes a specific allegation of willful infringement based on pre-suit knowledge. It pleads that Defendants were aware of the ’483 patent no later than February 9, 2022, citing a public announcement by Defendant UTec for an "IP Safe" product that explicitly listed the ’483 patent number. (Compl. ¶98). The complaint further alleges that Defendants continued to sell the accused version with the helical gear despite this knowledge, and that the "IP Safe" version was designed specifically to avoid the patent, evidencing knowledge of infringement. (Compl. ¶¶99-101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the plaintiff’s infringement theory, which relies heavily on external measurements of a single sample product, be proven to apply across the entire line of Accused Products? The case may devolve into a factual dispute over metrology and manufacturing tolerances.
- A second central question will be one of willfulness and intent: The complaint presents strong evidence of pre-suit knowledge via the "IP Safe" product announcement. A key issue for trial will be whether Defendants can establish a good-faith belief of non-infringement or invalidity sufficient to rebut the claim of willful, wanton, and deliberate conduct.
- Finally, the case may turn on a question of definitional scope: While the patent language appears straightforward, the outcome could depend on how the court construes seemingly simple but critical terms like "shortest distance." A narrow construction could undermine the plaintiff’s measurement-based infringement theory, while a broader one may favor it.