DCT
3:16-cv-02322
Seiko Epson Corp v. Inkjet2u LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Seiko Epson Corporation (Japan)
- Defendant: InkJet2U LLC (North Carolina); Worf Corporation (North Carolina)
- Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
- Case Identification: 3:16-cv-02322, D. Or., 12/14/2016
- Venue Allegations: Venue is alleged based on Defendants having committed acts of direct and indirect infringement within the district and residing in the district.
- Core Dispute: Plaintiff alleges that Defendants’ aftermarket inkjet ink cartridges infringe two patents related to the design and electronic functionality of such cartridges.
- Technical Context: The technology concerns the design of "smart" ink cartridges for inkjet printers, which use onboard electronics for functions like tracking ink levels and ensuring compatibility.
- Key Procedural History: The complaint details an extensive history of prior enforcement. The ’917 patent was previously litigated in five settled district court cases and was the subject of a General Exclusion Order (GEO) in ITC Investigation 337-TA-565. The complaint alleges an ITC Seizure and Forfeiture Order was issued against the named Defendants under that investigation. The ’749 patent was the subject of a GEO in ITC Investigation 337-TA-946. This history is central to the complaint’s allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1998-05-18 | U.S. Patent 6,502,917 – Earliest Priority Date |
| 2003-01-07 | U.S. Patent 6,502,917 – Issue Date |
| 2005-12-26 | U.S. Patent 8,794,749 – Earliest Priority Date |
| 2007-10-19 | ITC Inv. 337-TA-565 (’917 Patent) – Final Determination and GEO |
| 2009-02-03 | U.S. Patent 6,502,917 – Reexamination Certificate C1 Issued |
| 2014-07-23 | ITC Seizure and Forfeiture Order Issued Against Defendants (’917 Patent) |
| 2014-08-05 | U.S. Patent 8,794,749 – Issue Date |
| 2016-05-26 | ITC Inv. 337-TA-946 (’749 Patent) – Final Determination and GEO |
| 2016-12-14 | 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," issued January 7, 2003
The Invention Explained
- Problem Addressed: The patent describes the unreliability of electrical connections between a printer carriage and an ink cartridge's onboard memory chip. Rough operation by a user or play between the components could cause connection failure, leading to data loss or disabled printing. (’917 Patent, col. 2:1-11).
- The Patented Solution: The invention proposes a specific mechanical and electrical interface. It places a circuit board on a side wall of the cartridge near the ink supply port and arranges electrical contacts in multiple rows. This configuration, in conjunction with the printer's carriage design, is intended to ensure that the contacts connect in a defined order and maintain a reliable connection once the cartridge is installed. (’917 Patent, Abstract; col. 7:25-44).
- Technical Importance: The design aimed to improve the robustness of smart cartridges that store data such as ink levels or manufacturing information, enhancing printer functionality and reliability. (’917 Patent, col. 1:36-57).
Key Claims at a Glance
- The complaint asserts exemplary independent claim 9, as amended by Reexamination Certificate 6,502,917 C1. (Compl. ¶21).
- The essential elements of claim 9 include:
- An ink cartridge for mounting on a carriage of an inkjet printer.
- A plurality of external walls defining a chamber.
- An ink supply port with an exit opening and centerline, for receiving an ink supply needle.
- A semiconductor storage device for 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.
- A specific geometric relationship: the row of contacts closest to the ink supply port's exit opening must be longer than the row of contacts furthest from it.
- The complaint reserves the right to assert additional claims. (Compl. ¶20).
U.S. Patent No. 8,794,749, "Printing Material Container, and Board Mounted on Printing Material Container," issued August 5, 2014
The Invention Explained
- Problem Addressed: The patent addresses the risk of electrical shorting on an ink cartridge that has terminals for both a low-voltage component (like a memory chip) and a high-voltage component (like a piezoelectric ink level sensor). A drop of conductive ink could bridge these terminals, potentially damaging the cartridge or the printer. (’749 Patent, col. 1:26-42).
- The Patented Solution: The invention discloses a specific arrangement of terminals on a circuit board. This arrangement includes contacts for the low- and high-voltage devices, as well as one or more dedicated "short detection" terminals. These detection terminals are positioned adjacent to the high-voltage terminals, such that a short is likely to occur between them first. This allows the printer's circuitry to detect the short and take preventative action, such as cutting power, before damage occurs. (’749 Patent, Abstract; col. 2:6-19).
- Technical Importance: This technology provides an electronic safety mechanism for increasingly complex ink cartridges that integrate multiple electronic systems with disparate voltage requirements. (’749 Patent, col. 2:48-59).
Key Claims at a Glance
- The complaint asserts exemplary independent claim 1. (Compl. ¶32).
- The essential elements of claim 1 include:
- A printing material container adapted for insertion into a printing apparatus.
- An ink supply opening.
- A low voltage electronic device (e.g., a memory device).
- A high voltage electronic device that operates at a higher voltage than the low voltage device.
- A plurality of container-side terminals with contact portions arranged in a first row and a second row, extending in a direction orthogonal to the insertion direction.
- The first row is disposed further in the insertion direction than the second row.
- The terminals include a first and second high voltage contact portion, each electrically coupled to the high voltage device, located at opposite ends of the first row.
- The complaint reserves the right to assert additional claims. (Compl. ¶31).
III. The Accused Instrumentality
- Product Identification: Various models of aftermarket, generic (unbranded) ink cartridges compatible with Epson inkjet printers, such as models 200XL-1 and E-2001 XL (Compl. ¶13, 20, 31). The complaint refers to them collectively as the "Accused '917 Ink Cartridges" and "Accused '749 Ink Cartridges."
- Functionality and Market Context: The complaint alleges these cartridges are imported and sold by Defendants through online channels, including their own websites and third-party marketplaces like Amazon and eBay. (Compl. ¶11, 13). The cartridges are designed to function in Epson printers and contain an electronic chip that stores information, such as the amount of remaining ink. (Compl. ¶21, p. 12). The complaint provides an image of a representative cartridge, which is inserted into an Epson WorkForce WF-2540 printer to demonstrate its infringing operation. (Compl. ¶21, p. 11; ¶32, p. 23). A photo from the complaint shows the representative accused ink cartridge for testing purposes. (Compl. p. 11).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,502,917 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 and for supplying ink to a printhead... | The accused products are ink cartridges marketed as compatible with and for mounting on the carriage of Epson inkjet printers to supply ink. | ¶21 | col. 1:25-29 |
| a plurality of external walls defining at least some of a chamber; | The accused cartridges have external walls that form an ink-holding chamber, as shown in a provided photograph. | ¶21 | col. 4:40-43 |
| an ink supply port for receiving said ink supply needle, the ink supply port having an exit opening and a centerline... | The accused cartridges possess an ink supply port on their bottom surface to receive the printer's ink needle and allow ink to exit. | ¶21 | col. 4:46-52 |
| a semiconductor storage device storing information about the ink carried by said cartridge; | Each cartridge includes a chip that stores information, such as the quantity of remaining ink, which is read by the printer. This is evidenced by screenshots of the printer's utility software displaying decremented ink levels after printing. (Compl. p. 13). | ¶21 | col. 5:29-43 |
| a plurality of contacts ... formed in a plurality of rows so that one of said rows is closer to said exit opening ... the row of said contacts which is closest to said exit opening ... being longer than the row of said contacts which is furthest from said exit opening... | The cartridge chip has contacts arranged in two rows. Photos and diagrams are provided to show that the lower row (closer to the ink port) is physically longer than the upper row, with scratch marks from the printer's pins confirming the contact locations. (Compl. p. 17-19). | ¶21 | col. 7:45-56 |
U.S. Patent No. 8,794,749 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... | The accused products are ink cartridges adapted to be inserted into and attached to an Epson printing apparatus. | ¶32 | Abstract |
| an ink supply opening, having an exit, adapted to supply ink... | The accused cartridges have an ink supply opening to deliver ink to the printer. A photo depicts this feature on a representative cartridge. (Compl. p. 25). | ¶32 | col. 8:45-49 |
| 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 functions with a low voltage (~4 volts) supplied by the printer to store and report ink levels. | ¶32 | col. 1:43-45 |
| a high voltage electronic device adapted to receive and function with a high voltage, which is a higher voltage... | The accused cartridges include a high voltage electronic device (e.g., a resistor or other components) that functions with a higher voltage (~42 volts) applied by the printer. | ¶32 | col. 1:33-37 |
| 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 cartridges has a plurality of terminals, which include distinct contact portions electrically coupled to the low and high voltage devices. A photo with annotations indicates the locations of these nine contact portions. (Compl. p. 29). | ¶32 | col. 2:2-19 |
| the contact portions are arranged in a first row ... and in a second row ... extending in a row direction which is generally orthogonal to the insertion direction, | Photographs and diagrams show the contacts are arranged in two rows, and that the direction of these rows is orthogonal to the direction of cartridge insertion. | ¶32 | col. 9:10-13 |
| the first row of contact portions is disposed at a location that is further in the insertion direction than the second row... | A provided diagram shows that the first row is positioned deeper inside the printer upon insertion than the second row. | ¶32 | col. 9:10-13 |
| the first row... has a first end position and a second end position... 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... | An annotated photograph shows that the two high-voltage contact portions are located at the opposite ends of the first row of contacts. (Compl. p. 33). | ¶32 | col. 10:14-22 |
- Identified Points of Contention:
- Scope Questions: For the ’749 patent, a question may arise as to whether the components on the accused product's circuit board constitute separate "low voltage" and "high voltage" devices as contemplated by the patent, or if they are part of a single, undifferentiated integrated circuit. For the ’917 patent, the dispute may center on the construction of the geometric term "longer than" as applied to the rows of contacts, a term added during reexamination.
- Technical Questions: A key technical question for both patents is whether the physical arrangement of the contacts on the accused cartridges precisely matches the geometric and relational limitations required by the claims. While the complaint provides photographic evidence, the defense may challenge the measurement methodology or present evidence of a technically distinct, non-infringing layout.
V. Key Claim Terms for Construction
U.S. Patent No. 6,502,917
- 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 limitation defines a specific geometric relationship between the two rows of electrical contacts. As this language was added during reexamination, its interpretation is critical for determining both infringement and validity. Practitioners may focus on this term because the infringement case hinges on a precise physical measurement of the accused products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a method of measurement. A party could argue that any reasonable measurement of the rows' overall span that satisfies the "longer than" condition is sufficient.
- Evidence for a Narrower Interpretation: The specification and drawings show a distinct physical layout. For example, Figure 7(c) illustrates two rows of contacts where the bottom row is visibly wider. A party might argue that the term "longer" must be interpreted in a manner consistent with this embodiment, potentially limiting it to a specific axis of measurement or a certain degree of difference.
U.S. Patent No. 8,794,749
- The Term: "low voltage electronic device" and "high voltage electronic device" (Claim 1)
- Context and Importance: The patent's core inventive concept is the protection against shorting between these two types of devices. The definitions of these terms are therefore central to the dispute. Infringement requires the accused cartridge to possess two distinct electronic systems that fall within these categories.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the low-voltage device as a "memory" and the high-voltage device as a "high voltage circuit (e.g. a remaining ink level sensor...)." (’749 Patent, col. 1:33-45). A party might argue these are merely examples and that the terms should be construed broadly to cover any two electronic functions on the cartridge that operate at relatively different voltages.
- Evidence for a Narrower Interpretation: A party could argue that the terms require structurally distinct components, not merely different functional blocks within a single integrated circuit. The embodiments consistently describe the high-voltage device in the context of a specific function (ink level sensing), which could be used to argue for a narrower construction tied to that function. (’749 Patent, col. 1:34-35).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced infringement and contributory infringement for both patents. It asserts that Defendants know their cartridges are especially made for use in infringing Epson's patents when used with Epson printers and are not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶22-23, 33-34).
- Willful Infringement: The complaint alleges willful infringement for both patents. (Compl. ¶27, 38). The allegations are particularly detailed for the ’917 patent, for which the complaint states that Defendants were parties to a "Seizure and Forfeiture Order" issued by the ITC on July 23, 2014, providing direct evidence of pre-suit knowledge of the patent and its infringement. (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope and claim construction: can the terms "low voltage electronic device" and "high voltage electronic device" in the ’749 patent be construed to read on different functional circuits within a single integrated chip, and what is the proper method for measuring the "longer than" requirement for the contact rows in the ’917 patent?
- A key evidentiary question will be one of structural correspondence: does the physical and electrical layout of the accused cartridges' circuit boards—as they will be proven to exist at trial—fall within the specific geometric and relational constraints mandated by the asserted claims of both patents?
- Given the extensive history of prior enforcement actions detailed in the complaint, including an ITC Seizure and Forfeiture Order allegedly issued against the Defendants, a critical question for damages will be culpability: can Epson prove that the Defendants' alleged infringement was willful, which could expose them to a finding of an exceptional case and treble damages?