DCT

1:18-cv-01496

Canon Inc v. Arlington Industries Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01496, N.D. Ill., 02/28/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the Northern District of Illinois and has committed the alleged infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s replacement toner cartridges, designed for use in certain Canon, Inc and HP laser printers, infringe nine U.S. patents related to the mechanical structure and coupling mechanisms of toner cartridges and their internal components.
  • Technical Context: The technology concerns the mechanical interface that allows a replaceable toner cartridge to reliably engage with a printer's drive mechanism, ensuring the proper rotation of internal components like the photosensitive drum.
  • Key Procedural History: The complaint notes that this action is related to a concurrent proceeding filed in the U.S. International Trade Commission (ITC), asserting the same patents against the same accused products. An ITC investigation can proceed more quickly than a district court case and may result in an exclusion order barring the importation of infringing products into the United States.

Case Timeline

Date Event
2006-12-22 Earliest Priority Date for all Asserted Patents
2017-08-29 U.S. Patent No. 9,746,826 Issued
2017-12-05 U.S. Patent No. 9,836,021 Issued
2017-12-12 U.S. Patent Nos. 9,841,727, 9,841,728, & 9,841,729 Issued
2018-01-02 U.S. Patent Nos. 9,857,764 & 9,857,765 Issued
2018-01-16 U.S. Patent No. 9,869,960 Issued
2018-01-23 U.S. Patent No. 9,874,846 Issued
2018-02-28 Complaint Filed

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 on August 29, 2017 (the “’826 Patent”). (Compl. ¶9)

The Invention Explained

  • Problem Addressed: The patent describes a technical challenge in ensuring a smooth and reliable transfer of rotational force from a printer's main body to a detachable process cartridge. Misalignment during cartridge insertion can prevent proper engagement or cause damage, and unstable force transmission can degrade image quality. (’826 Patent, col. 1:44-2:42)
  • The Patented Solution: The invention is a process cartridge with a specially designed "coupling member" at one end of the photosensitive drum. This coupling member is movable; its axis (L2) can incline relative to the drum's axis (L1). This flexibility allows the coupling to engage with the printer's drive shaft even with some misalignment during installation, ensuring a stable connection for transmitting rotational force. (’826 Patent, Abstract; col. 2:43-67)
  • Technical Importance: This design facilitates easier and more reliable cartridge replacement for the end-user and helps maintain consistent, high-quality printing by ensuring the photosensitive drum rotates smoothly and at the correct speed. (’826 Patent, col. 2:43-51)

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6. (Compl. ¶25)
  • Independent Claim 1 requires, in essential part:
    • A process cartridge with a casing and a rotatably supported photosensitive drum.
    • A "coupling member" operatively connected to the drum.
    • The coupling member has a first end portion, a second end portion with at least one "projection," and a connecting portion between them.
    • The coupling member is movable between a first position and a second position, where the tip of the projection is closer to the drum in the second position than in the first.
  • Independent Claim 6 requires, in essential part:
    • A process cartridge with a casing, a photosensitive drum, and a movable developing roller.
    • A "coupling member" connected to both the drum and the developing roller.
    • The coupling member has specified geometric relationships and is movable between two positions, similar to claim 1.
    • The casing has a protrusion adjacent to the coupling member, leaving part of the coupling "uncovered to outside of the casing" when in its first position.
  • The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶25)

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 on December 5, 2017 (the “’021 Patent”). (Compl. ¶10)

The Invention Explained

  • Problem Addressed: The patent addresses the same general technical problem as the ’826 Patent: the need for a detachable process cartridge that can reliably and smoothly engage with a printer’s drive mechanism to receive rotational force. (’021 Patent, col. 1:17-2:42)
  • The Patented Solution: This invention also utilizes a movable coupling member. The key claimed features of this coupling member include "wing portions" and "projections" on its second end portion. The coupling is designed to be movable between an initial position and an inclined second position relative to the drum's axis, which facilitates the engagement and disengagement process with the printer's drive shaft. (’021 Patent, Abstract; col. 2:43-67)
  • Technical Importance: The claimed structure provides a specific mechanical solution to the problem of cartridge alignment and drive force transmission, aiming to improve operability and the user experience for replaceable consumables. (’021 Patent, col. 2:43-51)

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶33)
  • Independent Claim 1 requires, in essential part:
    • A process cartridge with a casing, a photosensitive drum, and a developing roller.
    • A "coupling member" connected to the drum and roller.
    • The coupling member has a second end portion that includes "wing portions" and "projections."
    • The "wing portions" include a surface that extends away from the connecting portion of the coupling member.
    • The coupling member is movable between two positions, defined by the distance of a projection's tip from the photosensitive drum.
  • The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶33)

U.S. Patent No. 9,841,727 - "Process Cartridge, Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge"

  • Patent Identification: U.S. Patent No. 9,841,727, "Process Cartridge, Having Changeable Relative Positioning of a Coupling Member and Another Part of the Process Cartridge," issued December 12, 2017 (the “’727 Patent”). (Compl. ¶11)
  • Technology Synopsis: This patent relates to a process cartridge with a coupling member and a "guide member." The guide member helps control the position of the coupling member as the cartridge is mounted, facilitating proper engagement with the printer's drive components. The relative positioning between the guide member and the coupling member is changeable. (’727 Patent, Abstract)
  • Asserted Claims: Independent claims 1 and 16 are asserted. (Compl. ¶41)
  • Accused Features: The complaint alleges infringement by the Defendant's replacement toner cartridges, including the PRMHT505A model. (Compl. ¶¶39, 41)

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 (the “’728 Patent”). (Compl. ¶12)
  • Technology Synopsis: This patent also describes a process cartridge with a movable coupling member and a guide member. The invention focuses on the relative positioning and configuration of these components to ensure the cartridge can be smoothly mounted and dismounted from the printer apparatus. (’728 Patent, Abstract)
  • Asserted Claims: Independent claims 1 and 16 are asserted. (Compl. ¶49)
  • Accused Features: The complaint alleges infringement by the Defendant's replacement toner cartridges, including the PRMHT505A model. (Compl. ¶¶47, 49)

U.S. Patent No. 9,841,729 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,841,729, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017 (the “’729 Patent”). (Compl. ¶13)
  • Technology Synopsis: This patent concerns a drum unit within a process cartridge that includes a movable coupling member. The coupling member's position is defined relative to the photosensitive drum, and it features at least one projection that moves between a first distance and a second, greater distance from the drum's end. (’729 Patent, Abstract)
  • Asserted Claims: Independent claims 1, 9, and 18 are asserted. (Compl. ¶57)
  • Accused Features: The complaint alleges infringement by the Defendant's replacement toner cartridges, including the PRMHT505A model. (Compl. ¶¶55, 57)

U.S. Patent No. 9,857,764 - "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit"

  • Patent Identification: U.S. Patent No. 9,857,764, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018 (the “’764 Patent”). (Compl. ¶14)
  • Technology Synopsis: This patent describes a drum unit for a process cartridge with a movable coupling member. The coupling has an end portion with a projection, and it can move between two positions relative to the photosensitive drum, with the distance of the projection's tip from the drum changing between these positions. (’764 Patent, Abstract)
  • Asserted Claims: Independent claim 7 is asserted. (Compl. ¶65)
  • Accused Features: The complaint alleges infringement by the drum units contained within Defendant's accused toner cartridges. (Compl. ¶¶63, 65)

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 (the “’765 Patent”). (Compl. ¶15)
  • Technology Synopsis: This patent describes a process cartridge with a photosensitive drum and a movable coupling member. The coupling member features a projection and is movable between two positions, with specific dimensional relationships claimed between the coupling member's surfaces and its axis. (’765 Patent, Abstract)
  • Asserted Claims: Independent claims 1, 4, and 13 are asserted. (Compl. ¶73)
  • Accused Features: The complaint alleges infringement by the Defendant's replacement toner cartridges, including the PRMHT505A model. (Compl. ¶¶71, 73)

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 (the “’960 Patent”). (Compl. ¶16)
  • Technology Synopsis: This patent describes a process cartridge with a movable coupling member having an inner and outer portion. The coupling member is movable between two positions relative to the photosensitive drum, and the claims recite specific dimensional relationships between the inner and outer portions of the coupling member. (’960 Patent, Abstract)
  • Asserted Claims: Independent claim 1 is asserted. (Compl. ¶81)
  • Accused Features: The complaint alleges infringement by the Defendant's replacement toner cartridges, including the PRMHT505A model. (Compl. ¶¶79, 81)

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 (the “’846 Patent”). (Compl. ¶17)
  • Technology Synopsis: This patent describes a drum unit for a process cartridge that includes a drum flange and a movable coupling member. The coupling member has a connecting portion and an end portion with a projection, and it is movable between two positions relative to the photosensitive drum. (’846 Patent, Abstract)
  • Asserted Claims: Independent claim 1 is asserted. (Compl. ¶89)
  • Accused Features: The complaint alleges infringement by the drum units contained within Defendant's accused toner cartridges. (Compl. ¶¶87, 89)

III. The Accused Instrumentality

Product Identification

  • The accused products are replacement toner cartridges sold and/or imported by Defendant for use in various Canon and HP laser beam printers. (Compl. ¶20). The complaint identifies model PRMHT505A as a "non-limiting example" of an infringing product. (Compl. ¶21)

Functionality and Market Context

  • The accused products are third-party consumables intended to replace original equipment manufacturer (OEM) toner cartridges. (Compl. ¶20). The image provided in the complaint shows packaging for the PRMHT505A cartridge, which indicates it is a replacement for the HP CE505A toner cartridge and is compatible with HP LaserJet P2055 series printers. (Compl. ¶21, Image). These cartridges are alleged to contain components, such as photosensitive drum units, that are covered by the asserted patents. (Compl. ¶20)

IV. Analysis of Infringement Allegations

The complaint alleges that claim chart exhibits detail the infringement theories for each asserted patent; however, these exhibits were not publicly filed with the complaint. The infringement analysis is therefore based on the narrative allegations.

  • ’826 Patent Infringement Allegations: The complaint asserts that Defendant's accused toner cartridges, exemplified by the PRMHT505A model, infringe one or more claims of the ’826 Patent, including at least claims 1, 4, 6, 7, and 9. (Compl. ¶25). Canon alleges that each element of the asserted claims is literally present in the accused products. (Compl. ¶27). The complaint references Exhibit J for a detailed claim chart analysis, which is not provided. (Compl. ¶25)
  • ’021 Patent Infringement Allegations: The complaint asserts that the PRMHT505A cartridge infringes one or more claims of the ’021 Patent, including at least claims 1, 2, 4, 5, and 7. (Compl. ¶33). Canon alleges that each element of the asserted claims is literally present in the accused products. (Compl. ¶35). The complaint references Exhibit K for a detailed claim chart analysis, which is not provided. (Compl. ¶33)
  • Identified Points of Contention:
    • Scope Questions: A central dispute may concern whether the specific mechanical structures in the accused cartridges meet the definitions of the claimed elements. For the ’826 Patent, this could involve whether the accused device has a "coupling member" with a "connecting portion" and "projection" that satisfy the specific geometric relationships required by the claims. For the ’021 Patent, a key question may be whether components of the accused cartridge's coupling mechanism meet the definition of "wing portions."
    • Technical Questions: The infringement analysis will likely turn on a detailed comparison of the physical components and operation of the accused cartridges against the patent claims. A key technical question may be whether the coupling mechanism in the accused cartridges is "movable" between a first and second position in the specific manner described and claimed in the patents to facilitate engagement with a printer's drive shaft.

V. Key Claim Terms for Construction

  • The Term: "coupling member" (’826 Patent, Claim 1; ’021 Patent, Claim 1)

  • Context and Importance: This term is foundational to the asserted claims across multiple patents. The definition of what constitutes a "coupling member" and its constituent parts (e.g., "first end portion," "second end portion," "connecting portion") will be critical to determining whether the accused products infringe.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specifications disclose numerous alternative embodiments for the "coupling member," designated as items 150, 1150, 1250, etc., with varying shapes and features. (e.g., ’826 Patent, Description of the Preferred Embodiments, col. 9:10-78:7). A party may argue this disclosure supports a construction that is not limited to the specific shapes shown in any one figure.
    • Evidence for a Narrower Interpretation: The claims consistently break the "coupling member" down into distinct portions (e.g., first end, second end, connecting portion). A party may argue that for a structure to be a "coupling member," it must have these separately identifiable structural elements. (e.g., ’826 Patent, col. 84:10-16)

  • The Term: "wing portions" (’021 Patent, Claim 1)

  • Context and Importance: This structural limitation is unique to the asserted claim of the ’021 patent. Whether the accused device contains structures that fall within the scope of this term could be dispositive for infringement of this patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent does not appear to provide an explicit textual definition for "wing portions," which could support giving the term its plain and ordinary meaning to one of skill in the art.
    • Evidence for a Narrower Interpretation: The patent figures, such as Figure 8, depict specific structures identified as "projections 150g/i" that appear to constitute the "wing portions." (’021 Patent, FIG. 8; col. 15:35-16:47). A party may argue that the term should be construed in light of these embodiments to require a similar shape, orientation, and function.

VI. Other Allegations

  • Indirect Infringement: For each of the nine asserted patents, the complaint alleges induced infringement. The factual basis alleged is that Defendant knowingly induces its customers to infringe by promoting the accused cartridges for use in specific compatible printers and by providing instructions on how to use them. (Compl. ¶¶ 24, 32, 40, 48, 56, 64, 72, 80, 88)
  • Willful Infringement: The complaint does not contain an explicit count for willful infringement or allege pre-suit knowledge of the patents. However, for each asserted patent, it includes language stating that "At the very latest, Defendant will be given notice of its infringement ... upon being served with this Complaint," which may form the basis for a claim of post-filing willfulness. (Compl. ¶¶ 24, 32, 40, 48, 56, 64, 72, 80, 88)

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

  • A core issue will be one of definitional scope: can the specific structural terms recited in the asserted claims—such as "coupling member," "wing portions," "projections," and their claimed geometric and positional relationships—be construed to cover the mechanical design of the accused third-party toner cartridges? The outcome of claim construction for these terms will likely be highly influential.
  • A second key issue will be one of mechanical functionality: what evidence will be presented to show that the coupling mechanism in the accused cartridges is "movable" between different positions relative to the photosensitive drum's axis in the precise manner required by the claims to facilitate engagement and disengagement from a printer? This question may require expert testimony and technical testing to resolve.