DCT

1:18-cv-01338

Seiko Epson Corp v. E Z Ink Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01338, E.D.N.Y., 08/30/2018
  • Venue Allegations: Venue is alleged based on Defendants residing in the judicial district and having committed acts of patent infringement there.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket and remanufactured ink cartridges infringe a patent related to the design and layout of the electronic circuit board on the cartridge.
  • Technical Context: The technology concerns the electronic interface between a replaceable ink cartridge and an inkjet printer, a critical component for ensuring compatibility and preventing electrical damage in the mass-market printer industry.
  • Key Procedural History: The complaint references a significant history of enforcement actions by the Plaintiff, including two U.S. International Trade Commission (ITC) investigations. One of these, the "ITC 946 Investigation," resulted in a General Exclusion Order that explicitly covers the patent-in-suit and was litigated against similar aftermarket ink cartridges. The complaint also lists numerous prior district court litigations against other sellers of aftermarket cartridges.

Case Timeline

Date Event
2005-12-26 '116 Patent Priority Date
2013-06-04 U.S. Patent No. 8,454,116 Issued
2016-05-26 ITC Final Determination in the '946 Investigation (including '116 Patent)
2017-07-01 Defendants allegedly offered infringing cartridges for sale on ezink123.com
2017-10-31 Defendants allegedly offered infringing cartridges for sale on ebay.com
2018-03-09 Date of alleged knowledge of '116 patent via service of original complaint
2018-08-30 First Amended Complaint Filing Date

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

U.S. Patent No. 8,454,116 - "Printing Material Container, and Board Mounted on Printing Material Container"

  • Patent Identification: U.S. Patent No. 8,454,116, "Printing Material Container, and Board Mounted on Printing Material Container," issued June 4, 2013 ('116 Patent).

The Invention Explained

  • Problem Addressed: The patent addresses the risk of electrical short-circuits on ink cartridges that are equipped with multiple electronic components, such as a low-voltage memory chip and a separate high-voltage device (e.g., a sensor). An accidental bridge between terminals for these different devices, caused by an ink drop or foreign object, could damage the cartridge or the printer itself (Compl. ¶23; ’116 Patent, col. 1:42-53).
  • The Patented Solution: The invention is a specific geometric arrangement of electrical contact terminals on a circuit board mounted on the cartridge. It strategically separates terminals that receive high voltage from those that receive low voltage by placing them at the outer ends of the terminal array. Critically, it includes a "short detection contact portion" placed adjacent to a high-voltage terminal, designed to detect a short and allow the printer to take protective action, such as halting operations, before damage occurs (’116 Patent, Abstract; col. 2:35-41, Fig. 3A).
  • Technical Importance: This design aims to improve the electronic reliability and safety of replaceable ink cartridges, preventing damage caused by shorting between terminals, which is a practical concern in the consumer printer market (’116 Patent, col. 2:53-57).

Key Claims at a Glance

  • The complaint asserts independent claim 18.
  • The essential elements of independent claim 18 for a circuit board include:
    • A memory device driven by a memory driving voltage.
    • An electronic device adapted to receive a voltage higher than the memory driving voltage.
    • A plurality of terminals with contact portions for enabling electrical communication with the printer.
    • These terminals include specific, electrically-coupled contact portions: a plurality for the memory device, a first and second for the electronic device, and a short detection contact portion.
    • A highly specific spatial arrangement of these contact portions when viewed from the printer with the cartridge ink supply facing downwards: the first electronic device contact portion is "farthest to the left," the second is "farthest to the right," the short detection contact portion is "second farthest to the right," and the memory contact portions are located between the others.
  • The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "at least one claim of the patent" (Compl. ¶25).

III. The Accused Instrumentality

Product Identification

  • The "Accused '116 Ink Cartridges" are aftermarket and remanufactured ink cartridges, including models 200XL, 288XL, and 410XL, that are sold for use in Epson inkjet printers (Compl. ¶25). These products are marketed by Defendants online under brands such as "E-Z Ink" and "Cartridge Evolution" through various channels including www.amazon.com, www.ebay.com, and their own websites (Compl. ¶16, 18).

Functionality and Market Context

  • The accused products are designed as lower-cost alternatives to original equipment manufacturer (OEM) cartridges. The complaint alleges they are "no more than colorably different" from cartridges previously found to infringe in an ITC investigation (Compl. ¶25). The complaint includes a screenshot of an Amazon.com listing for an "E-Z Ink (TM) Remanufactured Ink Cartridge Replacement for Epson 200," which is described as compatible with various Epson printer models (Compl. p. 10). The core of the infringement allegation centers on the circuit board mounted on these cartridges, which enables communication with the printer (Compl. ¶26, p. 15-16).

IV. Analysis of Infringement Allegations

'116 Patent Infringement Allegations

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
[18a]. A circuit board mountable on a printing material container...the ink jet printing apparatus having a print head and a plurality of apparatus-side contact forming members... The accused product is a circuit board mounted on a remanufactured ink cartridge (a printing material container) designed for use in an Epson inkjet printer, which has a print head and contact members. ¶26, p. 15-16 col. 1:32-38
[18b] a memory device adapted to be driven by a memory driving voltage; The circuit board on the accused cartridge comprises a memory device. The complaint alleges this device is driven by a memory driving voltage of approximately 4 volts supplied by the printer. ¶26, p. 17-18 col. 9:2-5
[18c] an electronic device adapted to receive a voltage higher than the memory driving voltage; The circuit board on the accused cartridge comprises an electronic device (e.g., a resistor or other component) that is connected to terminals that receive a higher voltage of approximately 42 volts from the printer. ¶26, p. 18-19 col. 11:46-54
[18d] a plurality of terminals having contact portions adapted and positioned to contact corresponding apparatus-side contact forming members...including a plurality of memory contact portions...a first electronic device contact portion...a second...and a short detection contact portion... The circuit board has gold-colored metallic terminals with contact portions that engage the printer's contacts. The complaint identifies, through annotated photographs, specific contact portions for the memory device, the first and second electronic device portions, and a short detection portion. The complaint provides an annotated photograph identifying the five memory contact portions. (Compl. p. 21). ¶26, p. 19-22 col. 9:5-24
[18e] the contact portions are arranged so that, when the terminal arrangement is viewed from the vantage of the contact forming members...with the ink cartridge oriented with the exit of the ink supply opening facing downwards... The complaint alleges that when viewed under the conditions specified in the claim, the contact portions on the accused cartridge's circuit board match the claimed spatial layout precisely. It provides a labeled photograph to illustrate this alleged arrangement, identifying the contact portion "farthest to the left," "farthest to the right," "second farthest to the right," and the memory portions in between. (Compl. p. 24). ¶26, p. 23-24 col. 10:11-24
  • Identified Points of Contention:
    • Scope Questions: The case may turn on the construction of the specific positional and orientational language in claim 18(e). The interpretation of phrases like "farthest to the left," "second farthest to the right," and the required "vantage" point for viewing will be critical. The Defendants may argue that their layout does not meet this precise geometric configuration.
    • Technical Questions: A key factual question will be whether the component identified by the Plaintiff as the "short detection contact portion" on the accused product actually functions as such, or if it is a structurally similar but functionally distinct feature. The patent describes a specific electrical behavior for this element, and the complaint alleges the accused product operates this way based on testing from the prior ITC investigation (Compl. ¶26, p. 23).

V. Key Claim Terms for Construction

  • The Term: "arranged so that, when the terminal arrangement is viewed from the vantage of the contact forming members... with the ink cartridge oriented with the exit of the ink supply opening facing downwards"

  • Context and Importance: This lengthy preamble to the layout limitation in claim 18(e) establishes a specific point-of-view and orientation for assessing infringement. The entire infringement analysis for the cartridge's physical layout depends on this framework. Practitioners may focus on this term because any ambiguity in how to apply this "test" could create a non-infringement defense.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue the language is meant to describe the standard orientation of the cartridge when installed in the printer, suggesting a common-sense, functional interpretation rather than a rigid, abstract geometric test.
    • Evidence for a Narrower Interpretation: The patent provides very specific figures (e.g., Fig. 3A, Fig. 4) showing the terminals (200), the printer's contact members (400), and the insertion direction (R). A party could argue these figures and the accompanying description define a precise, non-negotiable alignment and viewpoint for the comparison ('116 Patent, col. 9:1, col. 10:45-50).

  • The Term: "short detection contact portion"

  • Context and Importance: The identity and function of this element are central to the patent's purported solution to the technical problem of damaging electrical shorts. Practitioners may focus on this term because if the accused device lacks a component that meets the structural and functional requirements of this limitation, there can be no literal infringement of claim 18.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party might argue that any contact portion positioned adjacent to the high-voltage terminal, as claimed, meets the limitation structurally, regardless of how the printer's software actually uses it. The claim language is structural ("positioned and arranged").
    • Evidence for a Narrower Interpretation: The specification extensively describes the function of this portion in conjunction with a "short detection circuit" in the printer to prevent damage (’116 Patent, col. 12:32-46, col. 13:31-41). A party could argue this functional context is necessary to understand the term, and a mere contact pad without the associated protective function is not a "short detection contact portion."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement by asserting that Defendants' CEO, Wyman Xu, directs the infringing activities and that the companies encourage end-users to infringe by selling them the accused cartridges (Compl. ¶27). Contributory infringement is also alleged on the basis that the accused components are especially made for infringement and are not staple articles of commerce (Compl. ¶28).
  • Willful Infringement: Willfulness is alleged based on Defendants having knowledge of the '116 patent since at least March 9, 2018, following service of the original complaint. More significantly, the complaint alleges the entire aftermarket ink cartridge industry is aware of Epson's patents and the ITC's General Exclusion Order from the ITC 946 Investigation, which specifically included the '116 patent (Compl. ¶2, 5, 27, 32).

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

  • A core issue will be one of definitional scope and claim construction: Can the highly specific positional and orientational limitations of claim 18 (e.g., "farthest to the left," "viewed from the vantage of the contact forming members") be interpreted in a way that reads on the physical layout of the accused cartridges, or is there a mismatch that precludes infringement?
  • A key evidentiary question will be one of technical identity: Does the accused product's circuit board contain a "short detection contact portion" that is not only structurally present in the claimed location but also functionally operative in the manner described by the patent's specification, or is it a non-functional or different-purpose feature?
  • A central question for damages will be one of willfulness: Given the extensive public history of litigation and the specific ITC General Exclusion Order covering the '116 patent, what level of pre-suit knowledge and intent can be established against the Defendants, and will their conduct be deemed egregious enough to warrant enhanced damages?