DCT

1:18-cv-05036

Seiko Epson Corp v. FTrade Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-05036, E.D.N.Y., 09/05/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant FTrade Inc. is a New York corporation, Defendant Wei Feng Li is a resident of New York, and Defendants have allegedly committed acts of patent infringement within the judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket ink cartridges, sold under various brand names, infringe three U.S. patents related to the mechanical and electrical interface between an ink cartridge and an inkjet printer.
  • Technical Context: The technology concerns the design of replaceable ink cartridges, focusing on the reliability of the electrical contacts that allow the printer to communicate with a memory chip on the cartridge.
  • Key Procedural History: The complaint notes that all three patents-in-suit have been the subject of prior U.S. International Trade Commission (ITC) investigations which resulted in General Exclusion Orders prohibiting the importation of infringing ink cartridges. Specifically, the ’749 and ’116 patents were litigated in the "ITC 946 Investigation," and the ’917 patent was litigated in the "ITC 565 Investigation." Additionally, the ’917 patent underwent an ex parte reexamination. This history may be relevant to allegations of knowledge and willfulness.

Case Timeline

Date Event
1998-05-18 Earliest Priority Date for ’917 Patent
2003-01-07 Issue Date of ’917 Patent
2005-12-26 Earliest Priority Date for ’749 and ’116 Patents
2009-02-03 Reexamination Certificate for ’917 Patent Issued
2013-06-04 Issue Date of ’116 Patent
2014-08-05 Issue Date of ’749 Patent
2017-02-21 Date of visit to Defendant GPC's Amazon.com listing
2018-01-12 Date of visit to Defendant FTrade's Amazon.com listing
2018-09-05 Complaint Filing Date

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

U.S. Patent No. 6,502,917 - "INK-JET PRINTING APPARATUS AND INK CARTRIDGE THEREFOR,"

The Invention Explained

  • Problem Addressed: The patent describes a problem where rough handling of an ink cartridge during installation or removal can cause faulty contact between the cartridge’s memory chip and the printer’s electronics, potentially leading to data loss or operational failure (’917 Patent, col. 2:3-11).
  • The Patented Solution: The invention proposes placing the circuit board with its electrical contacts on a side wall of the cartridge, near the ink supply port. This configuration uses the ink supply needle as a pivot point during installation, forcing the cartridge to rotate into place. This controlled motion ensures that the electrical contacts engage with the printer in a predictable and reliable sequence, preventing data corruption (’917 Patent, col. 4:26-31, FIG. 11).
  • Technical Importance: This design sought to improve the reliability of communication between disposable cartridges and the printer, a critical factor for functions like tracking ink levels and authenticating supplies.

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 9.
  • Essential elements of Claim 9:
    • An ink cartridge for mounting on a carriage of an ink jet printing apparatus.
    • A plurality of external walls defining a chamber.
    • An ink supply port for receiving an ink supply needle, having an exit opening and a centerline.
    • A semiconductor storage device storing information about the ink.
    • A plurality of contacts for connecting the storage device to the printer, with the contacts formed in a plurality of rows.
    • One row of contacts is closer to the ink supply port’s exit opening than another row.
    • The row of contacts closest to the exit opening is longer than the row of contacts that is furthest from the exit opening.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’917 Patent.

U.S. Patent No. 8,794,749 - "PRINTING MATERIAL CONTAINER, AND BOARD MOUNTED ON PRINTING MATERIAL CONTAINER,"

The Invention Explained

  • Problem Addressed: The patent addresses the risk of electrical shorting on a cartridge’s circuit board, which may contain terminals for both low-voltage components (like a memory chip) and high-voltage components (like a piezoelectric sensor for detecting ink levels). An accidental bridge between these terminals, for instance from a stray drop of conductive ink, could damage the cartridge or the printer electronics (’749 Patent, col. 1:40-52).
  • The Patented Solution: The invention specifies a particular geometric arrangement of contact terminals on the circuit board. It places the two high-voltage contacts at the opposite ends of the "first row" of contacts (the row that inserts deeper into the printer). This physical separation maximizes the distance between the high-voltage terminals and other terminals, reducing the likelihood of a short circuit and containing the highest-risk components at the periphery of the contact array (’749 Patent, Abstract; col. 9:55-67).
  • Technical Importance: This layout provides a robust electronic interface designed to prevent electrical failures in cartridges that integrate multiple electronic components operating at different voltages.

Key Claims at a Glance

  • The complaint asserts exemplary independent claim 1.
  • Essential elements of Claim 1:
    • A printing material container adapted for insertion into a printing apparatus.
    • An ink supply opening.
    • A low voltage electronic device comprising a memory device.
    • A high voltage electronic device adapted to receive a higher voltage than the low voltage device.
    • A plurality of container-side terminals with contact portions, including low voltage contact portions and first and second high voltage contact portions.
    • The contact portions are arranged in a first row and a second row.
    • The first row is disposed further in the insertion direction than the second row.
    • The first row has a first end and a second end, with the first high voltage contact portion disposed at the first end and the second high voltage contact portion disposed at the second end.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’749 Patent.

U.S. Patent No. 8,454,116 - "PRINTING MATERIAL CONTAINER, AND BOARD MOUNTED ON PRINTING MATERIAL CONTAINER,"

The Invention Explained

  • Technology Synopsis: Belonging to the same family as the ’749 patent, this patent also addresses the problem of electrical shorting on an ink cartridge circuit board. The claimed solution involves a specific spatial arrangement of various contact portions (memory, high-voltage electronic device, and short detection) on the circuit board, defined from the perspective of the printer's contact members, to ensure electrical integrity and reliability (’116 Patent, Abstract; col. 2:27-52).

Asserted Claims and Accused Features

  • Asserted Claims: The complaint asserts exemplary claim 18 (Compl. ¶47).
  • Accused Features: The complaint alleges that the circuit boards mounted on the accused cartridges infringe by incorporating a memory device, an electronic device, and a specific arrangement of terminals that maps onto the claimed layout (Compl. ¶47).

III. The Accused Instrumentality

Product Identification

  • Aftermarket ink cartridges compatible with Epson inkjet printers (Compl. ¶2). The products are sold under various brand names, including but not limited to Valuetoner, GPC Image, Uniwork, LxTek, wel-image, and e-jet (Compl. ¶¶12-15). Specific accused models include 69, 200XL, 220XL, 252XL, 273XL, 277XL, and 288XL (Compl. ¶23, ¶34, ¶46).

Functionality and Market Context

  • The accused products are designed to function as direct replacements for original Epson ink cartridges (Compl. ¶2). They contain ink, a physical housing that mounts on the printer's carriage, an ink supply port to interface with the printer, and a circuit board with a memory chip and electrical contacts to communicate with the printer (Compl. ¶¶24, 35, 47). The complaint provides screenshots of Defendants' online listings on marketplaces like Amazon.com, which describe the products as "Remanufactured Ink Cartridges for Epson" or "Compatible Ink Cartridge Replacement for Epson" (Compl. p. 13).

IV. Analysis of Infringement Allegations

’917 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
An ink cartridge for mounting on a carriage of an ink jet printing apparatus... The accused products are ink cartridges marketed as compatible with and for mounting on the carriage of specific Epson inkjet printers. ¶24 col. 1:21-26
a plurality of external walls defining at least some of a chamber; Each accused cartridge has external walls that form an internal chamber to hold ink. A photograph in the complaint identifies these features on a representative cartridge. ¶24 col. 4:40-42
an ink supply port for receiving said ink supply needle, the ink supply port having an exit opening and a centerline and communicating with the chamber; Each accused cartridge has an ink supply port on its bottom surface to receive the printer’s ink supply needle and deliver ink from the chamber. ¶24 col. 4:50-54
a semiconductor storage device storing information about the ink carried by said cartridge; Each accused cartridge includes a chip on a circuit board that stores ink level information, which is read by the printer to display the amount of consumed ink. ¶24 col. 5:29-37
a plurality of contacts for connecting said semiconductor storage device to the ink jet printing apparatus, the contacts being formed in a plurality of rows so that one of said rows is closer to said exit opening of said ink supply port than an other of said rows, the row of said contacts which is closest to said exit opening of said ink supply port being longer than the row of said contacts which is furthest from said exit opening of said ink supply port. The contacts on the accused cartridge's circuit board are arranged in two rows; the lower row is closer to the ink supply port and is longer than the upper row, matching the printer's contact member configuration. The complaint provides an annotated photograph to illustrate this specific geometric arrangement. ¶24 col. 11:25-39

The complaint provides a detailed annotated photograph showing the claimed two-row contact structure on a representative accused cartridge (Compl. p. 26).

  • Identified Points of Contention:
    • Factual Question: The central dispute will likely be a factual one: do the physical and electrical characteristics of the accused cartridges, specifically the layout of their contact pads, correspond to the specific geometric and relational limitations of claim 9? The complaint presents photographic evidence suggesting they do.
    • Scope Question: A potential question for the court could be whether minor variations in the length or alignment of the contact rows in the accused products are sufficient to fall outside the scope of the claim language "longer than."

’749 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A printing material container adapted to be attached to a printing apparatus by being inserted...in an insertion direction... The accused ink cartridges are designed to be inserted in a specific direction into corresponding Epson printers. ¶35 col. 8:16-24
an ink supply opening, having an exit, adapted to supply ink... Each accused cartridge has an ink supply opening to transfer ink to the printer. ¶35 col. 9:1-3
a low voltage electronic device adapted to receive and function with a low voltage, the low voltage electronic device comprising a memory device; The accused cartridges include an integrated circuit chip comprising a memory device that operates at a low voltage (allegedly approx. 4 volts) supplied by the printer. ¶35 col. 12:7-14
a high voltage electronic device adapted to receive and function with a high voltage, which is a higher voltage than the low voltage of the low voltage electronic device; The accused cartridges include an electronic device (e.g., a resistor or other components) that receives and functions with a higher voltage from the printer (allegedly approx. 42 volts) for purposes such as ink level sensing. ¶35 col. 12:15-21
a plurality of container-side terminals having contact portions...including a plurality of low voltage electronic device contact portions...and a first high voltage electronic device contact portion and a second high voltage electronic device contact portion... The circuit board on the accused cartridges has a plurality of terminals, including five low-voltage contacts coupled to the memory device and two high-voltage contacts coupled to the high-voltage device. ¶35 col. 9:55-67
the contact portions are arranged in a first row of contact portions and in a second row of contact portions...the first row of contact portions is disposed at a location that is further in the insertion direction than the second row... The nine contact portions on the accused cartridges are arranged in two rows, with the first row (containing four contacts) positioned deeper into the printer than the second row (containing five contacts). ¶35 col. 9:5-15
the first row of contact portions has a first end position and a second end position at opposite ends thereof, the first high voltage electronic device contact portion is disposed at the first end position...and the second high voltage electronic device contact portion is disposed at the second end position... The two high-voltage contact portions are located at the opposite ends of the first row of contacts on the accused cartridge's circuit board. The complaint provides an annotated diagram illustrating this specific arrangement. ¶35 col. 9:55-67

The complaint includes an annotated photograph showing the claimed arrangement of high-voltage and low-voltage contacts in two distinct rows on the accused product (Compl. p. 38).

  • Identified Points of Contention:
    • Technical Question: A key question will be whether the accused cartridges contain two distinct "electronic devices"—one "low voltage" and one "high voltage"—as required by the claim. The defense may argue that the accused circuitry does not map onto this claimed structure.
    • Scope Question: The definitions of "low voltage" and "high voltage" may be at issue. The analysis will depend on whether the voltages used by the accused products and their corresponding printers fall within the scope of these terms as understood from the patent's specification.

V. Key Claim Terms for Construction

For the ’917 Patent

  • The Term: "the row of said contacts which is closest to said exit opening of said ink supply port being longer than the row of said contacts which is furthest from said exit opening of said ink supply port" (Claim 9)
  • Context and Importance: This term defines the core structural innovation of the claim—a specific, asymmetric geometric relationship between two rows of electrical contacts relative to a physical feature (the ink port). The infringement analysis will turn on whether the accused cartridges embody this exact geometric arrangement. Practitioners may focus on this term because it is a precise structural limitation that appears to be clearly depicted in the complaint's photographic evidence of the accused product.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim uses the general term "longer than," which may not require a specific ratio or degree of difference in length, potentially covering any non-trivial difference.
    • Evidence for a Narrower Interpretation: The specification and figures, such as Figure 7(a), show a specific embodiment where the lower row has more contacts than the upper row, making it physically longer. A party could argue the term should be construed in light of this embodiment, where the length difference is a direct consequence of a differing number of contacts in each row (’917 Patent, FIG. 7(a); col. 5:21-29).

For the ’749 Patent

  • The Term: "high voltage electronic device" / "low voltage electronic device" (Claim 1)
  • Context and Importance: The claim requires two distinct electronic devices operating at different voltages. The entire infringement theory depends on mapping the accused cartridge’s circuitry to this claimed structure of two separate devices with a hierarchical voltage relationship. Practitioners may focus on these terms because the distinction is fundamental to the patent's stated purpose of preventing shorts between different voltage-level circuits.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The terms are relative ("high" vs. "low"). A party might argue that any two functionally distinct circuits on the cartridge that operate at demonstrably different, non-trivial voltage levels would satisfy this limitation, regardless of their specific implementation.
    • Evidence for a Narrower Interpretation: The specification provides context by associating the "low voltage" device with the memory chip (operating at approx. 3.3V) and the "high voltage" device with a component like a piezoelectric sensor (operating at approx. 36V) (’749 Patent, col. 12:7-21). A party could argue that the terms should be limited to devices and voltage ranges analogous to those described for these distinct functions.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. The basis for inducement includes allegations that Defendant Wei Feng Li directs and controls the infringing activities of the other defendants and that Defendants' promotion, advertising, and sale of the accused products encourages infringement by end-users (Compl. ¶25, ¶37). The basis for contributory infringement is that the accused cartridges are components especially made for use in an infringing manner and are not staple articles of commerce (Compl. ¶26, ¶38).
  • Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be willful" (Compl. ¶30, ¶42, ¶54). The allegations are supported by assertions that the patents-in-suit and their relevance to the aftermarket ink cartridge industry are widely known due to prior, high-profile ITC investigations that resulted in General Exclusion Orders against infringing products (Compl. ¶¶2, 6, 7). The complaint also alleges Defendants had knowledge of the ’116 patent at least as of March 9, 2018, from a related litigation (Compl. ¶49).

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

This case appears to present several focused issues for judicial determination, grounded in extensive factual allegations and prior enforcement history.

  • A primary issue will be one of evidentiary proof: does the physical evidence from the accused cartridges directly map onto the detailed structural and relational limitations of the asserted claims? The complaint provides extensive photographic and diagrammatic evidence suggesting a direct correspondence, framing the dispute as a factual comparison rather than a complex issue of claim construction.
  • A second key question will concern knowledge and intent: what is the legal effect of the prior ITC General Exclusion Orders on the issue of willfulness? The court will need to determine whether these public orders, which adjudicated the same patents against similar products, establish that Defendants knew of or were willfully blind to the infringing nature of their activities, potentially exposing them to enhanced damages.
  • A third question may be one of technical mapping: do the electronic components of the accused cartridges constitute separate "low voltage" and "high voltage" devices as claimed in the ’749 and ’116 patents, or do they function as a single, undifferentiated circuit that falls outside the claim scope? This will require an analysis of the actual operation of the accused products in conjunction with the corresponding printers.