Canon Inc v. Hong Kong Boze Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Canon Inc. (Japan)
  • Defendant: Hong Kong BoZe Co., Limited (Hong Kong)
  • Plaintiff’s Counsel: Fitzpatrick, Cella, Harper & Scinto
• Case Identification: 1:18-cv-01277, E.D.N.Y., 02/28/2018
• Venue Allegations: Venue is alleged to be proper because the defendant, a foreign entity, does not reside in the United States and is subject to personal jurisdiction in the Eastern District of New York.
• Core Dispute: Plaintiff alleges that Defendant’s replacement laser printer toner cartridges infringe seven U.S. patents related to the mechanical coupling mechanisms that connect the cartridge's photosensitive drum to the printer's drive motor.
• Technical Context: The patents relate to the design of user-replaceable toner cartridges, a high-volume consumable product central to the laser printer market, focusing on ensuring reliable mechanical engagement.
• 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, a common strategy used by patent holders to seek both monetary damages in district court and an exclusion order from the ITC.

Case Timeline

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," issued August 29, 2017

The Invention Explained

• Problem Addressed: The patent's background describes the challenge of ensuring a smooth and reliable transfer of rotational force from a printer's main body to the photosensitive drum within a detachable process cartridge. A faulty or misaligned connection can result in poor image quality or damage to the components during cartridge installation or removal (’826 Patent, col. 1:47-67).
• The Patented Solution: The invention proposes a specific "coupling member" located at the end of the photosensitive drum. This coupling member is designed to be movable; it can pivot or incline relative to the drum's axis. This movement allows the coupling to align with the printer's drive shaft during installation and disengage smoothly during removal, preventing binding and ensuring a stable transmission of rotational force once installed ('826 Patent, Abstract; col. 2:35-53). Figure 24 illustrates the relationship between the printer's drive shaft (180), the coupling member (150), and the photosensitive drum (107).
• Technical Importance: The claimed solution aims to enhance the usability and operational longevity of replaceable toner cartridges, which are a key component of the consumer and business printing market.

Key Claims at a Glance

• The complaint asserts independent claims 1 and 6 (Compl. ¶23).
• Independent Claim 1 requires:
  • A process cartridge comprising a casing.
  • An opening in the casing and an external protrusion adjacent to the opening.
  • A photosensitive drum rotatably supported in the casing.
  • A coupling member connected to the drum, having a first end portion, a second end portion, and a connecting portion.
  • Wherein the coupling member is movable between a first position and a second position, defined by the distance of the coupling's tip from the drum as measured in a direction perpendicular to the drum's axis.
• Independent Claim 6 requires:
  • A process cartridge comprising a casing, a photosensitive drum, and a developing roller.
  • A coupling member connected to the drum, with a protrusion.
  • Wherein the coupling member is movable between a first position and a second position, defined by the coupling's position relative to the drum's axis and an inclined position relative to the drum's axis.
• The complaint reserves the right to assert additional claims (Compl. ¶23).

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: This patent addresses the same technical problem as the ’826 Patent: enabling a detachable process cartridge to reliably engage with the main apparatus's drive shaft to rotate the photosensitive drum smoothly and without damage during installation (’021 Patent, col. 1:47-67).
• The Patented Solution: The invention is a process cartridge with a specific coupling member that has a first end portion, a second end portion with wing portions, and a connecting portion. The claims focus on the geometry and relative movement of these parts, defining the coupling member's movement between a first position and a second position based on specific distances measured from the photosensitive drum ('021 Patent, Abstract). The design intends to provide a process cartridge that is easily mountable and demountable while ensuring smooth rotation of the photosensitive drum ('021 Patent, col. 2:54-61).
• Technical Importance: As with the ’826 patent, this technology seeks to improve the mechanical reliability of a high-volume consumer product.

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶31).
• Independent Claim 1 requires:
  • A process cartridge comprising a casing and a developer.
  • A photosensitive drum rotatably supported in the casing.
  • A coupling member operatively connected to the drum and the developing roller, the coupling member having a first end portion, a second end portion with wing portions, and a connecting portion.
  • Wherein the coupling member is movable between a first position and a second position, defined by specific distances of the wing portion's tip from the photosensitive drum.
• The complaint reserves the right to assert additional claims (Compl. ¶31).

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

• 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 (Compl. ¶11).
• Technology Synopsis: This patent describes a process cartridge with a coupling member and a "guide member." The relative positioning of these two members is changeable between different configurations, which facilitates the mounting and demounting of the cartridge from the main printer body (’727 Patent, Abstract).
• Asserted Claims: Independent claims 1 and 16 (Compl. ¶39).
• Accused Features: The accused replacement toner cartridges are alleged to contain the claimed guide member and coupling member assembly (Compl. ¶37, 39).

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 (Compl. ¶12).
• Technology Synopsis: This patent is directed to a process cartridge with a guide member and a coupling member whose relative position can be changed between at least two configurations. This feature is intended to ensure proper engagement with a driving motor in the main printer apparatus (’728 Patent, Abstract).
• Asserted Claims: Independent claims 1 and 16 (Compl. ¶47).
• Accused Features: The accused replacement toner cartridges are alleged to contain the claimed combination of a guide member and a changeable coupling member (Compl. ¶45, 47).

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 (Compl. ¶13).
• Technology Synopsis: This patent discloses a process cartridge where the coupling member has a specific structure including a first portion, a second portion with an extending projection, and a connecting portion. The claims focus on the distances and geometric relationships of these parts to ensure proper functionality (’765 Patent, Abstract).
• Asserted Claims: Independent claims 1 and 13 (Compl. ¶55).
• Accused Features: The accused replacement toner cartridges are alleged to embody the specific coupling member structure described in the patent (Compl. ¶53, 55).

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 (Compl. ¶14).
• Technology Synopsis: This patent describes a process cartridge with a developer, a photosensitive drum, a drum flange, and a coupling member. The claims define the coupling member's movement relative to the drum and flange using specific positional and distance-based limitations (’960 Patent, Abstract).
• Asserted Claims: Independent claim 1 (Compl. ¶63).
• Accused Features: The accused toner cartridges are alleged to contain the claimed developer, drum, flange, and coupling member assembly (Compl. ¶61, 63).

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 (Compl. ¶15).
• Technology Synopsis: This patent is directed to a drum unit for a process cartridge that includes a photosensitive drum, a drum flange, and a coupling member. The coupling member is movable between two positions defined by the distance of a projection's tip from the drum's axis (’846 Patent, Abstract).
• Asserted Claims: Independent claim 1 (Compl. ¶71).
• Accused Features: The drum units contained within the accused toner cartridges are alleged to infringe (Compl. ¶69, 71).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "replacement toner cartridges for use in one or more Canon and HP laser beam printers" (Compl. ¶18). The complaint provides a non-limiting example, model AP-HF226A, which is shown in a photograph along with its packaging (Compl. ¶19).

Functionality and Market Context

• The products are third-party consumable cartridges intended to replace original equipment manufacturer (OEM) cartridges in a wide range of popular Canon and HP printers (Compl. ¶18). The complaint alleges these cartridges are sold and imported into the United States through online storefronts such as "Fituwork" on Amazon.com and the website greenskytoner.com (Compl. ¶5). Their function is to contain toner and transfer it to paper via a photosensitive drum, which must mechanically couple with the printer’s drive system.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are incorporated by reference but not attached to the pleading itself (Compl. ¶23, 31). Therefore, the infringement allegations are summarized below in prose.

• '826 Patent Infringement Allegations
  The complaint alleges that the accused toner cartridges, such as the AP-HF226A model, literally infringe at least claims 1 and 6 of the ’826 Patent (Compl. ¶23, 25). The narrative theory is that the accused products are process cartridges that include all claimed elements: a casing with an opening, a photosensitive drum, and a coupling member connected to the drum. The complaint contends that this coupling member is movable between the first and second positions as defined by the geometric and positional limitations recited in the independent claims (Compl. ¶23).

• '021 Patent Infringement Allegations
  The complaint alleges that the accused toner cartridges also literally infringe at least claim 1 of the ’021 Patent (Compl. ¶31, 33). The infringement theory asserts that the accused products contain a developer, a photosensitive drum, and a coupling member with the specific "wing portions" and "connecting portion" required by the claim. It further alleges that this coupling member moves between the claimed first and second positions, which are defined by specific distances from the photosensitive drum (Compl. ¶31).

• Identified Points of Contention:

  • Scope Questions: The dispute may center on the interpretation of claim terms defining the movement and position of the coupling member. For example, a question for the court could be whether the movement of the accused coupling mechanism satisfies the specific distance-based definitions of the "first position" and "second position" relative to the drum's axis, as recited in claims like claim 1 of the '826 patent.
  • Technical Questions: A key factual question will be whether the mechanical structure and operation of the accused coupling mechanism are the same as that claimed. The complaint asserts literal infringement, raising the question of what evidence will show that the accused cartridges' coupling part, for example, has the specific "protrusion" of '826 claim 6 or the "wing portions" of '021 claim 1, and that these features move in the exact manner required by the claims.

V. Key Claim Terms for Construction

• The Term: "coupling member" ('826 Patent, claim 1)

  • Context and Importance: This term is the central element of the asserted claims across all seven patents. The definition of what constitutes a "coupling member" under the patents will be critical to determining the scope of the claims and whether the accused products infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses numerous embodiments of the coupling member (e.g., '826 Patent, FIGS. 8, 29, 82-84), suggesting the term is not limited to a single structure. A party might argue the term should be construed functionally to cover any component that connects the drum to the drive shaft and is movable in the claimed manner.
    • Evidence for a Narrower Interpretation: The detailed descriptions of the embodiments provide very specific structural details, such as "a plurality of drive receiving projections" ('826 Patent, col. 68:44-46) and specific conical or spherical shapes. A party could argue that these specific descriptions limit the term to the structures disclosed, rather than any structure that performs a coupling function.

• The Term: "movable between (i) a first position...and (ii) a second position" ('826 Patent, claim 1)

  • Context and Importance: The alleged novelty of the invention lies not just in the coupling member's existence, but in its specific movement. The definitions of "first position" and "second position," which are based on distances and angles relative to the drum axis (axis L1), are central to distinguishing the invention from the prior art and will be a focal point of the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the movement in general terms, such as being "swingable (pivotable) relative to the axis L1" ('826 Patent, col. 29:3-4) and capable of "whirling motion" ('826 Patent, col. 19:50-54). This language may support a construction that encompasses a wide range of tilting or pivoting movements.
    • Evidence for a Narrower Interpretation: The claims themselves provide precise mathematical definitions for the positions (e.g., "a first distance...is greater than the second distance" in '826 claim 1). Figures 22 and 25 depict specific "engaged" and "disengaged" states. A party may argue that these definitions and depictions require a specific type and range of motion that is not met by the accused devices.

VI. Other Allegations

• Indirect Infringement: For each asserted patent, the complaint alleges induced infringement. The factual basis for inducement is the allegation that the defendant provides instructions and markets its cartridges for use in specific printers, thereby knowingly encouraging and instructing its customers (end-users) to perform the infringing act of installing and using the cartridges (e.g., Compl. ¶22, 30).
• Willful Infringement: The complaint does not use the word "willful." 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" (e.g., Compl. ¶22, 30). This allegation appears to lay the groundwork for a claim of post-filing willfulness, based on knowledge acquired from the lawsuit itself, rather than alleging pre-suit knowledge.

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

• A core issue will be one of claim construction and scope: will the court construe the detailed geometric and positional limitations of the "coupling member" (e.g., "first position," "second position," "wing portions") narrowly to the specific embodiments shown in the patents, or more broadly to cover a wider range of coupling mechanisms that achieve a similar result? The large number of asserted patents with similar disclosures but slightly different claim language suggests a strategy of creating a "patent thicket" that may complicate this analysis.
• The central evidentiary question will be one of technical equivalence in operation: does the coupling mechanism in the accused third-party cartridges operate in the same specific, multi-step manner as described and claimed in the patents? The case will likely require detailed expert testimony and technical evidence, such as product teardowns and analysis, to compare the precise movements and structures of the accused devices against the patent claims.