DCT

1:18-cv-01276

Canon Inc v. GPC Trading Co Ltd

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Canon Inc. (Japan)
- Defendant: GPC Trading Co., Limited (Hong Kong)
- Plaintiff’s Counsel: Fitzpatrick, Cella, Harper & Scinto
Case Identification: 1:18-cv-01276, E.D.N.Y., 02/28/2018
Venue Allegations: Venue is alleged to be proper because the Defendant, a foreign entity not residing in the United States, is subject to personal jurisdiction in the district.
Core Dispute: Plaintiff alleges that Defendant’s compatible replacement toner cartridges, sold for use in certain Canon and HP laser printers, infringe seven U.S. patents related to the mechanical coupling mechanisms within process cartridges and photosensitive drum units.
Technical Context: The technology concerns the design of mechanical couplers that transfer rotational force from a printer's main drive motor to the photosensitive drum within a user-replaceable toner cartridge, a critical function for image quality in the multi-billion dollar printer consumables market.
Key Procedural History: The complaint states that this action is related to a concurrent proceeding filed by Canon at the U.S. International Trade Commission (ITC), asserting the same patents against the same accused products. Such parallel ITC actions are often used to seek an exclusion order to block the importation of infringing goods into the U.S., which can proceed on a faster timeline than district court litigation.

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	Complaint Filed

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

U.S. Patent No. 9,746,826

Patent Identification: U.S. Patent No. 9,746,826, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued August 29, 2017.

The Invention Explained

Problem Addressed: The patent addresses the technical challenge of ensuring that a user-replaceable process cartridge, when inserted into a printer, can receive rotational force from the main apparatus smoothly and with high precision. Any instability or non-uniformity in the rotation of the photosensitive drum can lead to defects in the printed image. (’826 Patent, col. 2:25-38).
The Patented Solution: The invention is a specific mechanical coupling member located at the end of the photosensitive drum. This coupler is designed to engage with a drive shaft from the printer. The geometry of the coupler allows it to pivot and move between an initial "pre-engagement" position and a final "rotational force transmitting" position, ensuring the drum's rotational axis becomes co-axial with the drive shaft for stable, precise rotation. (’826 Patent, Abstract; col. 28:29-57).
Technical Importance: This design facilitates the reliable operation of modular, user-serviceable components (toner cartridges) in complex electrophotographic systems, balancing ease-of-use with the high mechanical precision required for quality printing. (’826 Patent, col. 2:50-57).

Key Claims at a Glance

The complaint asserts independent claims 1 and 6 (Compl. ¶23).
Essential elements of independent claim 1 include:
- A process cartridge comprising a casing.
- An electrophotographic photosensitive drum rotatably supported in the casing about a first axis (L1).
- A coupling member having a second axis (L2) and including a first end portion, a second end portion with at least one projection, and a connecting portion.
- The coupling member is movable between a first position and a second position, wherein the distance of the projection tip from the drum differs between the two positions.
The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶23).

U.S. Patent No. 9,836,021

Patent Identification: U.S. Patent No. 9,836,021, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 5, 2017.

The Invention Explained

Problem Addressed: Similar to the ’826 patent, this patent aims to solve the problem of achieving stable and smooth rotation of a photosensitive drum within a detachably mountable process cartridge. (’021 Patent, col. 2:25-38).
The Patented Solution: The solution is again a specifically designed coupling member. The claims of this patent focus on a coupling member that includes a "wing portion" and is movable between two positions. The claim defines these positions by specific geometric relationships: in the first position, the tip of a projection is a first distance from the drum, and in the second position, it is a second, greater distance from the drum. (’021 Patent, Abstract; col. 84:1-23).
Technical Importance: This patent describes a variation of a high-precision coupling mechanism that enables the mass production of reliable, user-replaceable printer cartridges that do not sacrifice image quality. (’021 Patent, col. 2:50-57).

Key Claims at a Glance

The complaint asserts independent claim 1 (Compl. ¶31).
Essential elements of independent claim 1 include:
- A process cartridge with a casing, developer, developing roller, and a photosensitive drum having a first axis (L1).
- A coupling member with a second axis (L2) operatively connected to the drum and the developing roller.
- The coupling member includes a first end portion, a second end portion with a "wing portion" and a projection, and a connecting portion.
- The coupling member is movable between a first position where the projection tip is a first distance from the drum, and a second position where it is a second, greater distance from the drum.
The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶31).

U.S. Patent No. 9,841,727

Patent Identification: U.S. Patent No. 9,841,727, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued December 12, 2017.
Technology Synopsis: This patent describes a process cartridge with a coupling member and a guide member. The invention focuses on the relative positioning and movement of these two members, which are configured to change the cartridge's position as it is mounted into a printing apparatus to ensure proper engagement with the drive shaft. (’727 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶39).
Accused Features: The mechanical coupling and guiding structures of the accused replacement toner cartridges (Compl. ¶37).

U.S. Patent No. 9,841,728

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.
Technology Synopsis: This patent discloses a process cartridge where a coupling member is movable between different positions relative to a guide member. The key feature is that the distance between a projection on the coupling member and the guide member changes as the cartridge is installed, facilitating alignment and engagement. (’728 Patent, Abstract).
Asserted Claims: Independent claims 1 and 16 (Compl. ¶47).
Accused Features: The coupling and guide member mechanisms within the accused replacement toner cartridges (Compl. ¶45).

U.S. Patent No. 9,857,765

Patent Identification: U.S. Patent No. 9,857,765, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 2, 2018.
Technology Synopsis: This patent focuses on the geometry of the coupling member, specifically defining relationships between the maximum distance from the coupling's axis to its outer surface and the distance to its connecting portion. The claims describe the coupling moving between positions where this distance relationship changes, ensuring proper alignment. (’765 Patent, Abstract).
Asserted Claims: Independent claims 1 and 13 (Compl. ¶55).
Accused Features: The specific geometry and movement of the coupling member in the accused replacement toner cartridges (Compl. ¶53).

U.S. Patent No. 9,869,960

Patent Identification: U.S. Patent No. 9,869,960, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 16, 2018.
Technology Synopsis: This patent claims a process cartridge with a drum flange and a coupling member. The invention centers on the specific structure of the coupling, which has an inner portion connected to the drum flange and an outer portion that moves between different positions relative to the inner portion as it engages the printer. (’960 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶63).
Accused Features: The drum flange and coupling member assembly in the accused replacement toner cartridges (Compl. ¶61).

U.S. Patent No. 9,874,846

Patent Identification: U.S. Patent No. 9,874,846, "Process Cartridge, Electrophotographic Image Forming Apparatus, and Electrophotographic Photosensitive Drum Unit," issued January 23, 2018.
Technology Synopsis: This patent discloses a drum unit for a process cartridge that includes a drum, a drum flange, and a movable coupling member. The claims define the coupling member's movement in relation to projections on the drum flange, specifying different distances from the drum's axis in its engaged and disengaged positions. (’846 Patent, Abstract).
Asserted Claims: Independent claim 1 (Compl. ¶71).
Accused Features: The drum unit, including the drum flange and movable coupling member, within the accused replacement toner cartridges (Compl. ¶69, ¶71).

III. The Accused Instrumentality

Product Identification: The accused instrumentalities are "replacement toner cartridges" sold under the "GPC Image" brand for use in various Canon and HP laser beam printers (Compl. ¶¶5, 18). The complaint identifies the GPC Image model CF226A cartridge as a "non-limiting example" of an infringing product (Compl. ¶19).
Functionality and Market Context: The accused products are third-party consumables designed to be installed by users into printers manufactured by Canon and HP, replacing the original manufacturer's toner cartridges (Compl. ¶18). The complaint provides an image of the accused CF226A product, showing a fully assembled toner cartridge designed for insertion into a printer (Compl. ¶19, p. 5). The complaint alleges these cartridges are imported into and sold within the United States through online storefronts like Amazon.com and gpcimage.com (Compl. ¶¶5, 18).

IV. Analysis of Infringement Allegations

The complaint alleges that claim charts detailing infringement are attached as exhibits, but these exhibits were not included with the filed complaint document (Compl. ¶23, ¶31). The narrative allegations for each patent assert that the accused toner cartridges, exemplified by the CF226A model, contain each element of the asserted claims (Compl. ¶25, ¶33). The core of the infringement theory is that the mechanical structure used in the accused cartridges to engage with the printer's drive shaft is the same as the patented "coupling member" described in the asserted claims.

Identified Points of Contention

Structural Questions: The asserted claims from the ’826 and ’021 patents recite coupling members with a high degree of structural and geometric specificity (e.g., "first end portion," "second end portion," "connecting portion," "wing portion"). A central point of contention may be whether the components in the accused cartridges meet these precise structural definitions. The analysis will likely involve detailed physical inspection and measurement of the accused products to compare them against the claim language.
Functional and Positional Questions: The claims require the coupling member to be "movable between (i) a first position...and (ii) a second position," with these positions defined by specific and changing distances relative to the photosensitive drum. A key question for the court will be whether the accused coupling member actually performs this claimed movement and exhibits these distinct positional states during the process of installation and operation. Proving infringement may require dynamic analysis of how the accused cartridge interacts with a printer, not just a static examination of its parts.

V. Key Claim Terms for Construction

For the ’826 Patent

The Term: "coupling member ... movable between (i) a first position ... and (ii) a second position"
Context and Importance: This term is the central inventive concept of claim 1. The infringement analysis will depend entirely on whether the accused device's coupling mechanism can be shown to have these two distinct, claimed positions defined by specific distances. Practitioners may focus on this term because it combines structural ("coupling member") and functional ("movable between...") limitations.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the specification discloses numerous embodiments of the coupling (e.g., ’826 Patent, FIGS. 8, 26, 82-85), suggesting the term should not be limited to any single shape but should cover any structure that achieves the claimed movement between two functionally distinct positions.
- Evidence for a Narrower Interpretation: The claim language itself strictly defines the first and second positions by relative distances ("a first distance," "a second distance," "the first distance being greater than the second distance"). A party could argue that this language requires two discrete, measurable, and stable positions, not merely a continuous path of movement, and that the term should be construed as limited to structures that explicitly exhibit these specific states as shown in figures like FIG. 22. (’826 Patent, col. 27:23-41).

For the ’021 Patent

The Term: "wing portion"
Context and Importance: This term is a specific structural element recited in claim 1 of the '021 patent, distinguishing it from other claims in the patent family. The presence or absence of a structure meeting this definition in the accused device will be a critical, dispositive fact for infringement of this patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition of "wing portion." A party might argue it should be given its plain and ordinary meaning, covering any wing-like projection from the main body of the coupling member.
- Evidence for a Narrower Interpretation: The specification consistently illustrates this feature in specific ways (e.g., ’021 Patent, FIG. 8(b), items 150g, 150h). A party could argue that the term should be limited to these depicted shapes, which appear to be distinct arms or protrusions that engage with other components, and not just any unevenness on the surface.

VI. Other Allegations

Indirect Infringement: The complaint alleges induced infringement for all seven patents. The factual basis alleged is that the Defendant knowingly induces infringement by its customers by "promoting its cartridges for use in specific printers and/or providing customers with instructions for using its cartridges in those printers." (Compl. ¶22, ¶30, ¶38, ¶46, ¶54, ¶62, ¶70).
Willful Infringement: The complaint does not contain an explicit allegation of willful infringement or pre-suit knowledge. However, for each asserted patent, it states that "Defendant will be given notice of its infringement ... upon being served with this Complaint," which serves to put the Defendant on notice and could form the basis for a subsequent claim of willful infringement for any infringing activity occurring after the date of service. (Compl. ¶22, ¶30, ¶38, ¶46, ¶54, ¶62, ¶70).

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

A core issue will be one of structural and geometric correspondence: Do the mechanical coupling components in the accused GPC cartridges embody the highly specific geometries—including the precise distances, relative positions, and named features like the "wing portion"—recited in the asserted claims, or are there material structural differences?
A key evidentiary question will be one of dynamic operation: Can the coupling mechanisms in the accused cartridges be shown to physically move through the distinct functional states (e.g., "first position" and "second position") that are explicitly defined by the claims' distance limitations, particularly during the cartridge installation and drive engagement process?