DCT
1:10-cv-00564
Lexmark Intl Inc v. Ink Tech Printer Supplies LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lexmark International, Inc. (Delaware)
- Defendant: Ink Technologies Printer Supplies, LLC, ET AL.
- Plaintiff’s Counsel: Stoll Keenon Ogden PLLC; Banner & Witcoff Ltd.
- Case Identification: 1:10-cv-00564, S.D. Ohio, 04/22/2013
- Venue Allegations: Plaintiff alleges venue is proper because Defendants intentionally serve the United States market, including Ohio, by selling or offering for sale the accused products through the stream of commerce and via websites accessible in the judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ unauthorized aftermarket and remanufactured toner cartridges, intended for use in Lexmark laser printers, infringe twenty-one U.S. patents covering various aspects of toner cartridge technology.
- Technical Context: The technology relates to electrophotographic printing, specifically the design and function of replaceable toner cartridges, which represent a significant recurring revenue market for printer manufacturers.
- Key Procedural History: The complaint notes that on September 27, 2011, the U.S. International Trade Commission (ITC) found that the original defendants in this action had infringed Lexmark’s patents and consequently entered a General Exclusion Order prohibiting importation of infringing toner cartridges. This prior finding may be significant for establishing knowledge in the current district court action. The complaint also mentions that the Court has entered Stipulated Permanent Injunction Orders against the original defendants.
I.I. Case Timeline
| Date | Event |
|---|---|
| 1993-02-26 | Priority Date for U.S. Patent No. 5,337,032 |
| 1994-08-09 | Issue Date for U.S. Patent No. 5,337,032 |
| 1996-02-16 | Priority Date for U.S. Patent No. 5,634,169 |
| 1997-05-27 | Issue Date for U.S. Patent No. 5,634,169 |
| 2011-09-27 | ITC finds infringement and enters General Exclusion Order |
| 2013-04-22 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
II.I. U.S. Patent No. 5,337,032 - “Reduced Component Toner Cartridge”
II.I.I. The Invention Explained
- Problem Addressed: The patent’s background describes prior toner cartridges that used a "toner pump" to meter toner from a storage chamber located above the developer station. This mechanism added components, manufacturing cost, and could introduce operational inconsistencies such as pressure variations and torque fluctuations, potentially affecting print quality (’032 Patent, col. 1:10–44).
- The Patented Solution: The invention claims to solve this by eliminating the toner pump and reconfiguring the cartridge architecture. The primary toner chamber is located "predominantly below" the developer roller. A rotating paddle within the chamber brings toner up to a toner applying roller, which then supplies the developer roller. This design simplifies the toner feed mechanism, reduces the number of parts, and aims to provide more stable operation (’032 Patent, col. 2:5–31; Fig. 1).
- Technical Importance: This design reflects an engineering effort to reduce the cost and complexity of consumable toner cartridges while improving reliability by removing a potential source of mechanical variability.
II.I.II. Key Claims at a Glance
The complaint alleges infringement of the ’032 Patent but does not specify which claims are asserted in the table at Paragraph 16 (Compl. ¶16, 59). Independent claims 1 and 7 are representative of the patented technology.
- Independent Claim 1:
- An electrophotographic imaging toner cartridge comprising a developer roller
- a doctor blade in contact with said developer roller near the top
- a toner applying roller in contact with said developer roller and located on substantially the same horizontal plane
- a chamber for electrophotographic toner positioned predominantly below said developer roller
- Independent Claim 7:
- An electrophotographic imaging toner cartridge comprising a developer roller
- a doctor blade in contact with said developer roller near the top
- a toner applying roller in contact with said developer roller, the location of said contact being 90 degrees from the location of said contact of said doctor blade
- a photoconductive roller in nip relationship with said developer roller, the location of said nip being substantially 120 degrees from the doctor blade contact
- a chamber for electrophotographic toner positioned on the side of said toner applying roller opposite said developer roller and having a predominate portion below said developer roller
II.II. U.S. Patent No. 5,634,169 - “Multiple Function Encoder Wheel For Cartridges Utilized In An Electrophotographic Output Device”
II.II.I. The Invention Explained
- Problem Addressed: The patent background explains that electrophotographic printers require information about the installed cartridge—such as toner type, capacity, or colorimetric properties—to optimize performance. Previous methods for providing this information, such as conductive strips or basic memory chips, were limited in the amount of data they could convey or lacked an accurate method for measuring the remaining toner level (’169 Patent, col. 1:10–2:65).
- The Patented Solution: The invention discloses a single encoder wheel mounted on the shaft of the toner agitator paddle. This wheel serves multiple functions. One portion of the wheel contains encoded information (e.g., via covered or uncovered slots) that provides static data about the cartridge's characteristics to a sensor in the printer. Another function is to enable toner level measurement by detecting the mechanical resistance the paddle encounters as it moves through toner. This resistance creates an angular lag between the drive motor and the encoder wheel, which can be measured by the sensor and correlated to the amount of toner remaining in the sump (’169 Patent, Abstract; col. 8:8–62).
- Technical Importance: This technology provided a more sophisticated and integrated method for a printer to identify a cartridge and dynamically monitor the consumable level, enabling more intelligent device operation and better user feedback.
II.II.II. Key Claims at a Glance
The complaint asserts independent claims 32, 36, and 42 against various accused cartridges (Compl. ¶16).
- Independent Claim 32:
- A cartridge for an imaging apparatus, the improvement comprising a wheel having coding representing one or more preselected cartridge characteristics.
- The complaint also reserves the right to assert other claims, including dependent claims (Compl. ¶16).
II.III. U.S. Patent No. 5,758,231 - “Venting Plug In Toner Cartridge”
- Patent Identification: “Venting Plug In Toner Cartridge,” issued May 26, 1998.
- Technology Synopsis: The patent addresses the problem of internal air pressure buildup in a toner cartridge during operation, which can cause toner to leak. The solution is a venting plug with a labyrinthine path that allows air to escape while trapping toner particles, thereby relieving pressure without contamination (’231 Patent, Abstract).
- Asserted Claims: Claims 1–16 are asserted against various cartridge models (Compl. ¶16).
- Accused Features: The complaint alleges that the Accused Cartridges incorporate a venting plug that infringes the claims of the ’231 Patent (Compl. ¶¶ 12, 16).
II.IV. U.S. Patent No. 5,758,233 - “Toner Cartridge With Locating [Surfaces] On Photoconductor Shaft”
- Patent Identification: “Toner Cartridge With Locating [Surfaces] On Photoconductor Shaft,” issued May 26, 1998.
- Technology Synopsis: This invention relates to precisely positioning the toner cartridge within a printer to ensure proper alignment between the developer roller and the photoconductive drum. The patented solution uses the central shaft of the photoconductive drum itself as a primary physical locator when the cartridge is installed in the printer, ensuring accurate alignment (’233 Patent, Abstract).
- Asserted Claims: The complaint alleges infringement of the ’233 Patent but does not specify which claims are asserted in the table at Paragraph 16 (Compl. ¶¶ 16, 59).
- Accused Features: The complaint alleges that the Accused Cartridges utilize the same locating features on the photoconductor shaft as Lexmark’s patented cartridges (Compl. ¶¶ 12, 59).
II.V. U.S. Patent No. 5,768,661 - “Toner Cartridge With External Planar Installation Guides”
- Patent Identification: “Toner Cartridge With External Planar Installation Guides,” issued June 16, 1998.
- Technology Synopsis: This patent addresses the user-facing problem of easily and correctly installing a toner cartridge. The invention provides thin, curved, wing-like guides on the exterior of the cartridge that mate with corresponding tracks inside the printer, directing the cartridge into its correct operational position (’661 Patent, Abstract).
- Asserted Claims: Claims 1–3 and 7–9 are asserted against various cartridge models (Compl. ¶16).
- Accused Features: The complaint alleges that the Accused Cartridges include external installation guides that are copies of Lexmark’s patented designs (Compl. ¶¶ 12, 16).
III. The Accused Instrumentality
- Product Identification: The accused products are "unauthorized, aftermarket toner cartridges," including both "clones" (newly manufactured copies) and "remanufactured versions" of cartridges originally sold outside the United States, which are designed as substitutes for use in a wide range of Lexmark laser printers (Compl. ¶¶ 11–12).
- Functionality and Market Context: The complaint alleges that the Accused Cartridges are "mere copies" of Lexmark's genuine cartridges and "blatantly duplicate the components" covered by the patents-in-suit (Compl. ¶13). The side-by-side comparison of a "Lexmark Genuine E250 Cartridge" and an "Exemplary Infringing E250 Cartridge" visually supports the allegation that the accused products are identical in form and structure to the patented articles (Compl. p. 7). The complaint alleges these products are sold for importation, imported, and distributed in the United States through various online and retail channels by the numerous defendants (Compl. ¶¶ 11, 18–48).
IV. Analysis of Infringement Allegations
The complaint's primary infringement theory is that the Accused Cartridges are direct copies of Lexmark's own products and therefore embody the patented technology (Compl. ¶13).
IV.I. 5,337,032 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a developer roller | The Accused Cartridges are alleged to be copies containing the same components as Lexmark's patented cartridges, including a developer roller. Visual evidence suggests identical external assembly configurations (Compl. p. 7). | ¶12, 13, 59 | col. 2:5-14 |
| a doctor blade in contact with said developer roller near the top of said developer roller | The Accused Cartridges are alleged to contain a doctor blade arranged in the same configuration as the patented design. | ¶12, 13, 59 | col. 2:6-7 |
| a chamber for electrophotographic toner positioned predominantly below said developer roller... | The complaint alleges the Accused Cartridges duplicate the patented design, which locates the toner chamber below the developer station. The side-by-side comparison of the E250 cartridge housings supports this allegation of structural identity (Compl. p. 7). | ¶12, 13, 59 | col. 2:14-17 |
| a toner applying roller in contact with said developer roller...on substantially the same horizontal plane | The complaint's theory of direct copying implies the presence of an identically positioned toner applying roller within the accused cartridges. | ¶12, 13, 59 | col. 2:18-21 |
IV.II. 5,634,169 Patent Infringement Allegations
| Claim Element (from Independent Claim 32) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a cartridge for an imaging apparatus, the improvement comprising a wheel having coding... | The complaint alleges that infringing cartridges contain encoder wheels that are direct copies of Lexmark's patented encoder wheels. | ¶14, 59 | col. 16:32-35 |
| ...representing one or more preselected cartridge characteristics. | A side-by-side photograph compares a "Lexmark Patented Encoder Wheel" to an "Encoder Wheel Taken From An Exemplary Infringing Cartridge," showing visually identical structures, including slots that would be used for coding cartridge characteristics (Compl. p. 10). | ¶14, 59 | col. 16:32-35 |
IV.III. Identified Points of Contention
- Factual Questions: The central point of contention will likely be factual. Defendants may argue that their products, while functionally similar, are designed differently and do not meet specific limitations of the asserted claims. The complaint's theory of "mere copies" will be tested through discovery and claim construction.
- Scope Questions: For the '032 patent, a potential dispute is the scope of the term "predominantly below," which distinguishes the invention from prior art. For the '169 patent, the meaning of "single encoded wheel" and the functions it must perform could be a point of contention.
- Legal Questions (Patent Exhaustion): For the accused "remanufactured" cartridges, defendants may raise a patent exhaustion defense, arguing their activities constitute permissible repair. The plaintiff's allegation that these cartridges were first sold outside the United States is likely intended to preempt this defense (Compl. ¶11).
V. Key Claim Terms for Construction
The Term: "chamber for... toner positioned predominantly below said developer roller" (’032 Patent, Claim 1)
- Context and Importance: This term is central to the novelty of the ’032 patent, which moved the toner supply from above the developer station (requiring a "toner pump") to below it. The definition of "predominantly below" will determine the structural scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states, "Since the toner chamber 9 occupies an area predominantly below roller 3, space is conserved" (’032 Patent, col. 2:14–16). The use of the general term "area" may support a construction that is not limited to the exact geometry shown in the figures.
- Evidence for a Narrower Interpretation: Figure 1 depicts a specific embodiment where the toner chamber extends downward more than twice the diameter of the toner adder roller. A party might argue that "predominantly" requires a substantial portion of the chamber's volume to be below the roller, consistent with the illustrated embodiment (’032 Patent, Fig. 1; col. 2:25–26).
The Term: "single encoded wheel" (’169 Patent, Claim 32)
- Context and Importance: The invention's advance was integrating multiple functions—cartridge identification and toner level sensing—onto a single component. Practitioners may focus on this term because a defendant could argue its component is not a "single" wheel if it is composed of multiple pieces or if it does not perform all the functions described in the specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract describes "A single encoder wheel" and the claim itself uses this simple language, which may support a broad definition covering any single, rotating component with the claimed coding (’169 Patent, Abstract).
- Evidence for a Narrower Interpretation: The specification describes a wheel with distinct sections: one with "radially extending, equally spaced apart, slots" for data bits, and another with slots positioned to measure the angular lag caused by toner resistance (’169 Patent, col. 8:14–52). A defendant may argue that to be a "single encoded wheel" as claimed, the component must integrate both of these specific, disclosed functions.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of contributory infringement under 35 U.S.C. § 271(c) for three patents (’489, ’031, and ’792), asserting that Defendants have knowledge of these patents and their acts give rise to contributory infringement (Compl. ¶60).
- Willful Infringement: The complaint alleges that Defendants' infringement "has been, and continues to be, with full knowledge of the Patents-in-Suit and is deliberate and willful" (Compl. ¶61). The basis for this alleged knowledge may be the prior ITC investigation that found infringement of Lexmark's patents (Compl. ¶3).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual identity: Given the complaint’s core theory that the accused products are "mere copies," the case will likely turn on extensive factual discovery to determine if the accused cartridges, component-by-component, practice each and every limitation of the asserted claims, or if there are material technical differences.
- A key procedural question will be the impact of the prior ITC proceeding: The court will need to determine the extent to which the ITC’s 2011 finding of infringement and the resulting General Exclusion Order can be used to establish pre-suit knowledge for willfulness, or potentially to preclude relitigation of certain infringement issues against parties to that investigation.
- A likely legal battle will concern patent exhaustion and repair rights: For the accused "remanufactured" cartridges, a primary defense will likely be that the defendants' actions constitute permissible repair of patented articles. This will raise the question of whether their activities cross the line into impermissible reconstruction, a determination that may be influenced by the complaint's allegation that many of the cartridges were first sold outside the United States.