DCT

3:16-cv-02324

Seiko Epson Corp v. Shoppers Smart LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:16-cv-02324, D. Or., 12/14/2016
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of direct and indirect patent infringement in the District of Oregon and reside in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket inkjet printer cartridges infringe two U.S. patents related to the mechanical and electrical interface between a cartridge and a printer.
  • Technical Context: The case concerns the multi-billion dollar printer consumables market, where patent protection for the interface between printers and ink cartridges is a critical tool for original equipment manufacturers (OEMs) to compete against third-party cartridge makers.
  • Key Procedural History: The complaint details an extensive litigation history for the patents-in-suit. The ’917 patent was previously litigated in five separate district court cases and an International Trade Commission (ITC) investigation (337-TA-565) that resulted in a General Exclusion Order. The ’749 patent was previously litigated in another ITC investigation (337-TA-946) that also resulted in a General Exclusion Order. The ’917 patent also successfully underwent ex parte reexamination. This history suggests the patents have been significantly vetted and may carry a heightened presumption of validity.

Case Timeline

Date Event
1998-05-18 U.S. Patent No. 6,502,917 Priority Date
2003-01-07 U.S. Patent No. 6,502,917 Issue Date
2005-12-26 U.S. Patent No. 8,794,749 Priority Date
2009-02-03 U.S. Patent No. 6,502,917 C1 Reexamination Certificate Issued
2014-08-05 U.S. Patent No. 8,794,749 Issue Date
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 Jan. 7, 2003

The Invention Explained

  • Problem Addressed: The patent addresses the risk of failed data communication between an ink cartridge and a printer due to improper electrical contact when a user attaches or detaches the cartridge (’917 Patent, col. 2:1-5). If the connection is unreliable, the printer cannot read important data from the cartridge’s memory chip, potentially leading to data loss or printing failure (’917 Patent, col. 2:1-5).
  • The Patented Solution: The invention solves this by defining a specific geometric and electrical layout for the cartridge's contact pads relative to its mechanical features. It specifies that the electrical contacts are arranged in two rows, where the row of contacts closer to the ink supply port is longer than the row further away (’917 Patent, Claim 9). This physical configuration, in conjunction with the printer's carriage design, is intended to ensure a reliable and properly sequenced electrical connection during cartridge installation (’917 Patent, col. 7:25-39; Fig. 7(c)).
  • Technical Importance: This design provides a robust electromechanical interface, aiming to improve reliability for consumers and protect the printer’s sensitive electronics from connection errors inherent in user-replaceable components.

Key Claims at a Glance

  • The complaint asserts independent claim 9 (Compl. ¶23).
  • Essential elements of claim 9 include:
    • An ink cartridge with external walls defining a chamber and an ink supply port.
    • A semiconductor storage device for storing information about the ink.
    • A plurality of electrical contacts arranged in a plurality of rows.
    • The row of contacts closest to the exit opening of the ink supply port is longer than the row of contacts furthest from that exit opening.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,794,749 - Printing Material Container, and Board Mounted on Printing Material Container, Issued Aug. 5, 2014

The Invention Explained

  • Problem Addressed: The patent addresses the problem of electrical shorting on an ink cartridge that contains multiple electronic devices operating at different voltages, such as a low-voltage memory chip and a high-voltage ink level sensor (’749 Patent, col. 1:30-46). An accidental short, caused by spilled ink or a foreign object, between a high-voltage terminal and a low-voltage terminal could damage the memory chip or the printer itself (’749 Patent, col. 1:46-51).
  • The Patented Solution: The invention discloses a specific arrangement of electrical contact portions on the cartridge's circuit board designed to mitigate the risk of damaging shorts. The solution places the high-voltage contact portions at the opposite ends of the "first row" of contacts, which is the row inserted further into the printer (’749 Patent, Claim 1). This physical separation is intended to reduce the likelihood of a conductive bridge forming between a high-voltage contact and the more sensitive low-voltage contacts grouped between them (’749 Patent, col. 2:1-26).
  • Technical Importance: This terminal layout provides an electronic failsafe, aiming to protect the sophisticated and sensitive electronics in both the cartridge and the printer from damage due to foreseeable accidents like ink spills.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶34).
  • Essential elements of claim 1 include:
    • A container with an ink supply opening, a low voltage electronic device (e.g., memory), and a high voltage electronic device.
    • A plurality of container-side terminals with distinct low-voltage and 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 and second high-voltage contact portions are disposed at opposite ends of the first row.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

  • Product Identification: Aftermarket ink cartridges sold by Defendants under at least the "iTinte" brand, as well as generic (unbranded) cartridges, designed for use in Epson inkjet printers (Compl. ¶¶16, 22, 33). The complaint uses a representative cartridge, Model No. T02001, for its infringement analysis (Compl. ¶10, p.10; ¶34, p.21).
  • Functionality and Market Context: The complaint alleges these products are sold as "low-priced, excellent quality alternative[s] to OEM cartridges" (Compl. ¶16). They are designed to be mechanically and electrically compatible with specific Epson printers, such as the Epson WorkForce WF-2540 (Compl. ¶10, p.10). Functionally, they contain ink and are equipped with a circuit board and contacts intended to interface with the printer, including a chip that stores information such as the amount of remaining ink (Compl. ¶12, p.12). The complaint provides a screenshot of the "iTinte Ink Cartridges" branding used on Defendants' website (Compl. ¶16, p.7).

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
a plurality of external walls defining at least some of a chamber; The accused cartridge has a plastic housing with several external walls that define an internal chamber to hold ink. ¶11 col. 4:40-46
an ink supply port for receiving said ink supply needle...communicating with the chamber; The accused cartridge has an ink supply port on its bottom that receives the printer’s ink needle and allows ink to flow from the chamber. ¶11 col. 4:47-52
a semiconductor storage device storing information about the ink carried by said cartridge; The accused cartridge includes a chip that stores information about the quantity of ink. The complaint provides screenshots showing the printer reading and displaying decremented ink levels from the chip after printing. ¶12 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 accused cartridge’s contacts are arranged in two rows. Physical testing, evidenced by photographs of scratch marks on the contact pads, allegedly shows the lower row (closer to the ink port) is longer than the upper row. ¶¶15-18 col. 5:22-29; col. 5:61-64
  • Identified Points of Contention:
    • Factual Question: The complaint's infringement theory for the ’917 patent appears to rest on a direct comparison of the accused product's physical geometry to the claim language. A key question will be whether discovery and expert analysis confirm the physical measurements alleged in the complaint, specifically that one row of contacts is demonstrably "longer than" the other, as required by the claim. The complaint provides a photograph of an accused cartridge with annotations purporting to show this geometric relationship (Compl. ¶19, p.19).

U.S. Patent No. 8,794,749 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
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 cartridge has an integrated circuit chip that functions as a memory device, confirmed by tests showing the printer reads remaining ink level information from it. The complaint alleges this device functions with a low voltage (approx. 4 volts). ¶25-26 col. 1:33-35
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 cartridge allegedly includes a high voltage electronic device (e.g., a resistor or other components) that is adapted to function with a higher voltage (approx. 42 volts) applied by the printer. ¶27 col. 1:35-37
a plurality of container-side terminals...the contact portions are arranged in a first row of contact portions and in a second row of contact portions... The accused cartridge has nine contact portions arranged in two rows (four in the top/first row, five in the bottom/second row), as shown in annotated photographs. ¶¶28-31 col. 9:5-13
the first row of contact portions is disposed at a location that is further in the insertion direction than the second row of contact portions... The complaint provides a photograph illustrating that the top row of contacts is positioned deeper inside the printer upon insertion than the bottom row. ¶31 col. 9:14-19
the first high voltage electronic device contact portion is disposed at the first end position of the first row...and the second high voltage electronic device contact portion is disposed at the second end position of the first row... The complaint alleges that the two outermost contact portions in the top/first row are the high-voltage contacts, corresponding to the claim requirement. ¶32 col. 9:36-44
  • Identified Points of Contention:
    • Scope Question: A primary issue will be the construction of "high voltage electronic device." The defense may argue that the components on the accused cartridge (e.g., a simple resistor) do not meet the definition of a "device," which the patent suggests is for a function like sensing remaining ink level. The complaint’s allegation that the device may be a resistor raises the question of whether a passive component without a sensing function falls within the claim's scope.
    • Technical Question: Infringement will depend on factual evidence that the accused cartridge's circuitry operates as claimed. This includes verifying that the printer applies, and the cartridge is "adapted to receive and function with," two distinct and different voltage levels (e.g., ~4V and ~42V) at the specific contact portions identified in the complaint.

V. Key Claim Terms for Construction

For U.S. Patent No. 8,794,749:

  • The Term: "high voltage electronic device"
  • Context and Importance: This term is central to the infringement analysis of claim 1. The definition will determine whether the circuitry present on the accused cartridges qualifies. Practitioners may focus on this term because the patent links it to a specific function (ink level sensing), while the complaint suggests it could be a more generic component like a resistor.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not limit the "device" to a specific function, only that it is "adapted to receive and function with a high voltage." This could support an argument that any component designed to operate at the specified high voltage meets the limitation, regardless of its function.
    • Evidence for a Narrower Interpretation: The specification repeatedly provides the example of "a high voltage circuit (e.g. a remaining ink level sensor using a piezoelectric element)" when describing the related art and the problem being solved (’749 Patent, col. 1:35-37). This may support a narrower construction requiring the device to perform an active function beyond simple resistance.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. It asserts that Defendants know the cartridges are especially made for infringement and not suitable for substantial non-infringing use, and that they induce end-users to infringe by selling the products for their intended purpose (Compl. ¶¶24-25, 35-36).
  • Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶¶29, 40). While the complaint does not specify a basis for pre-suit knowledge, the extensive history of prior successful litigation and ITC General Exclusion Orders against identical or similar products provides strong circumstantial context that Plaintiff may use to argue that Defendants knew or should have known of the patents and the infringing nature of their activities.

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

  • A central issue will be one of claim scope: can the term "high voltage electronic device" in the ’749 patent, which the specification exemplifies as an active sensor, be construed to cover the more generic electronic components allegedly found on the accused cartridges?
  • A key evidentiary question will be one of factual correspondence: does the physical geometry of the accused cartridges’ contacts meet the specific "longer than" limitation of the ’917 patent’s claim 9, and do the electrical components of the accused cartridges actually function with distinct "low" and "high" voltages as required by the ’749 patent’s claim 1?
  • Given the extensive prior litigation and ITC exclusion orders cited in the complaint, a critical question will be one of willfulness: what evidence can Plaintiff produce to show that these specific Defendants had pre-suit knowledge of the patents and the infringing nature of their aftermarket cartridges, potentially exposing them to enhanced damages?