Seiko Epson Corp v. Gaea Supplies Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seiko Epson Corporation (Japan); Epson America, Inc. (California); and Epson Portland Inc. (Oregon)
  • Defendant: Gaea Supplies Corporation (California)
  • Plaintiff’s Counsel: Schwabe, Williamson & Wyatt, P.C.; Quinn Emanuel Urquhart & Sullivan, LLP
• Case Identification: 3:17-cv-00366, D. Or., 03/03/2017
• Venue Allegations: Plaintiffs allege venue is proper in the District of Oregon because Defendant has committed acts of patent infringement in the district and resides in the district.
• Core Dispute: Plaintiff alleges that Defendant’s aftermarket inkjet printer cartridges infringe two U.S. patents related to the design and function of the cartridges' electrical interfaces, including memory chips and contact arrangements.
• Technical Context: The technology concerns the electronic communication interface between a replaceable ink cartridge and an inkjet printer, a critical area for ensuring product compatibility, functionality, and anti-counterfeiting in the high-volume printer consumables market.
• Key Procedural History: The complaint notes an extensive history of enforcement for both patents-in-suit. The ’917 patent was the subject of prior district court litigation and a U.S. International Trade Commission (ITC) investigation (Inv. No. 337-TA-565) that resulted in a General Exclusion Order. The ’749 patent was also the subject of an ITC investigation (Inv. No. 337-TA-946) resulting in a General Exclusion Order against similar products. The ’917 patent also underwent an ex parte reexamination, which confirmed the patentability of asserted claims and may affect subsequent claim construction.

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
2007-10-19	ITC Final Determination in Inv. No. 337-TA-565 (’917 Patent)
2009-02-03	Reexamination Certificate for U.S. Patent No. 6,502,917 Issued
2009-06-01	U.S. Supreme Court Denies Certiorari in ITC-565 Investigation
2012-06-15	Prior District Court Litigation Involving ’917 Patent Concluded
2014-08-05	U.S. Patent No. 8,794,749 Issue Date
2016-05-26	ITC Final Determination in Inv. No. 337-TA-946 (’749 Patent)
2017-03-03	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's background describes the risk of data loss or corruption on an ink cartridge's onboard memory device due to improper electrical contact when a user installs or removes the cartridge. An unstable connection can lead to signals being applied at the wrong time, disabling the reading of data or even erasing it. (’917 Patent, col. 2:1-6).
• The Patented Solution: The invention proposes a specific physical arrangement of electrical contacts on a circuit board mounted on the ink cartridge. The contacts are organized into multiple rows with a defined geometric relationship to each other and to the cartridge's ink supply port. This structure ensures that as the cartridge is inserted, the contacts engage with the printer in a reliable, predetermined sequence, protecting the integrity of the data stored on the cartridge's semiconductor memory. (’917 Patent, Abstract; col. 7:25-38).
• Technical Importance: This design enabled printer manufacturers to reliably incorporate "smart" features into disposable cartridges, such as accurate ink-level tracking, and to implement systems to ensure compatibility and prevent the use of incorrect or counterfeit supplies. (’917 Patent, col. 2:36-58).

Key Claims at a Glance

• The complaint asserts independent claim 9 as an exemplary claim (Compl. ¶19). It also states infringement of "numerous claims" (Compl. ¶18).
• Independent Claim 9 requires, among other elements:
  • An ink cartridge with external walls, a chamber, and an ink supply port.
  • A semiconductor storage device that stores information about the ink carried by the cartridge.
  • A plurality of contacts for the storage device, arranged in a plurality of rows.
  • A specific geometric arrangement of these rows, where the row closer to the ink supply port's exit opening is longer than the row that is further away.

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: This patent addresses the risk of electrical short-circuits on more advanced ink cartridges that feature both low-voltage circuitry (e.g., for a memory device) and high-voltage circuitry (e.g., for a piezoelectric ink-level sensor). If conductive material like ink or dust bridges a high-voltage terminal and a low-voltage terminal, it can damage the cartridge's memory or the printer's sensitive control electronics. (’749 Patent, col. 1:31-43).
• The Patented Solution: The invention specifies a terminal arrangement that incorporates both "low voltage" and "high voltage" electronic devices and their corresponding contacts. Critically, the terminals are laid out such that the high-voltage contacts are placed at the ends of a row of contacts. This strategic placement makes the high-voltage terminals less likely to short to other terminals and facilitates the detection of any shorts that do occur, allowing the system to take protective measures. (’749 Patent, Abstract; col. 2:9-24).
• Technical Importance: The claimed arrangement provides a built-in safety mechanism to protect the electronic components of both the cartridge and the printer from electrical damage, enhancing the overall reliability of the printing system.

Key Claims at a Glance

• The complaint asserts independent claim 1 as an exemplary claim (Compl. ¶30). It also alleges infringement of "numerous claims" (Compl. ¶29).
• Independent Claim 1 requires, among other elements:
  • A printing material container with an ink supply opening.
  • A low voltage electronic device (comprising a memory device) adapted to function with a low voltage.
  • A high voltage electronic device adapted to function with a higher voltage.
  • A plurality of container-side terminals with low-voltage and high-voltage contact portions.
  • A specific geometric arrangement where contacts are in two rows, with the first row "further in the insertion direction" and having the first and second high-voltage contacts at its opposite ends.

III. The Accused Instrumentality

Product Identification

• The accused products are "aftermarket ink cartridges" that Defendant Gaea Supplies Corp. allegedly makes, uses, imports, offers to sell, and sells (Compl. ¶18). The complaint states these are sold online via Amazon and eBay under the seller name "toner4usa" (Compl. ¶12). The complaint identifies a "Representative" accused product, Model No. 200XL-1, for its analysis of both patents (Compl. ¶¶ 19, 30).

Functionality and Market Context

• The accused products are marketed as "Generic Compatible Ink Cartridges" for use in specific Epson inkjet printers, such as the Epson WorkForce WF-2540 (Compl. ¶¶ 12, 19). The complaint provides a screenshot from an Amazon.com listing describing the product as a "Replacement for Epson T200" (Compl. p. 7). The allegations suggest the products are designed to function as direct, lower-cost replacements for Plaintiffs' genuine Epson-branded cartridges (Compl. ¶12).

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 and for supplying ink to a printhead...	The accused product is an ink cartridge marketed as compatible with and for mounting on specific Epson inkjet printers.	¶19	col. 1:21-27
a plurality of external walls defining at least some of a chamber;	The cartridge body consists of external walls that define an ink-holding chamber. A photograph of the cartridge body is provided as evidence.	¶19	col. 3:4-5
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;	The cartridge includes an ink supply port on its bottom surface designed to receive the printer's ink supply needle. A photograph of this port is provided.	¶19	col. 3:36-39
a semiconductor storage device storing information about the ink carried by said cartridge;	The cartridge includes a chip on a circuit board that allegedly stores ink-related information. The complaint provides screenshots from a printer utility showing the displayed ink level decreasing after use, which is presented as evidence of this function.	¶19	col. 5:32-38
a plurality of contacts for connecting said semiconductor storage device..., the contacts being 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... which is furthest from said exit opening...	The contacts on the cartridge's circuit board are arranged in two rows. An annotated photograph demonstrates that the lower row (closer to the ink port) is longer than the upper row.	¶19	col. 7:42-50

• Identified Points of Contention:
  • Scope Questions: A potential issue is the scope of "semiconductor storage device storing information about the ink carried by said cartridge." A defense may argue that the accused chip is a simple authenticator that does not store dynamic, variable "information about the ink," such as quantity consumed, as contemplated by the patent. The complaint's evidence of a decrementing ink level display (Compl. pp. 12-14) is intended to preemptively address this point.

'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...	The accused product is an ink cartridge adapted for insertion into an Epson inkjet printer.	¶30	col. 1:26-29
an ink supply opening, having an exit, adapted to supply ink...	The cartridge features an ink supply opening on its bottom surface to supply ink to the printer.	¶30	col. 4:5-7
a low voltage electronic device adapted to receive and function with a low voltage, the low voltage electronic device comprising a memory device;	An integrated circuit (IC) chip on the cartridge functions as a memory device and is alleged to operate with a low voltage (approx. 4 volts) supplied by the printer.	¶30	col. 1:31-35
a high voltage electronic device adapted to receive and function with a high voltage...	The cartridge allegedly includes a separate electronic device (e.g., a resistor) adapted to function with a high voltage (approx. 42 volts) supplied by the printer for functions like ink level sensing.	¶30	col. 1:35-40
a plurality of container-side terminals having contact portions... including a plurality of low voltage... contact portions... and a first high voltage... contact portion and a second high voltage... contact portion...	The circuit board has a plurality of terminals, which are alleged to include distinct low-voltage and high-voltage contacts.	¶30	col. 3:45-50
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,	An annotated photograph shows the contacts arranged in two rows that are orthogonal to the direction of cartridge insertion.	¶30	col. 3:51-54
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,	An annotated photograph illustrates that the first row of contacts is located deeper within the printer, relative to the insertion direction, than the second row.	¶30	col. 3:51-54
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... contact portion is disposed at the second end position...	An annotated photograph shows that the alleged high-voltage contacts are located at the opposite ends of the first row of contacts.	¶30	col. 3:55-62

• Identified Points of Contention:
  • Technical Questions: The primary dispute may center on whether the accused cartridge actually contains a distinct "high voltage electronic device." A defense could argue that the entire circuit is a single low-voltage system and lacks the claimed dual-voltage architecture. The complaint's infringement theory relies on how the cartridge functions when installed in an Epson printer that applies different voltages (Compl. ¶30, pp. 25-26), raising questions about whether the cartridge itself meets the claim limitations.
  • Scope Questions: The construction of "high voltage electronic device" and "adapted to receive and function with a high voltage" will be critical. The question for the court will be whether these terms require a specific, active component like the piezoelectric sensor described in the patent's specification, or if they can be read more broadly to cover any component designed to interface with a high-voltage signal from the printer.

V. Key Claim Terms for Construction

For the ’917 Patent:

• The Term: "semiconductor storage device storing information about the ink carried by said cartridge" (Claim 9)
• Context and Importance: This term's definition is central to infringement. The dispute will likely focus on what type of "information" must be stored. Practitioners may focus on this term because if it is construed to require dynamic data (e.g., ink volume consumed), it would necessitate more complex circuitry than if it were construed to cover static data (e.g., a cartridge model number).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests the device may store various types of data, including "the quantity of ink housed," "the manufacturing date of the ink, its trademark and the like," which could support a reading on static or dynamic data. (’917 Patent, col. 5:42-46).
  • Evidence for a Narrower Interpretation: The specification also mentions storing "a maintenance status transmitted from the body of the printing apparatus," which implies a more sophisticated device capable of receiving and storing updated information from the printer, potentially supporting a narrower construction requiring dynamic data storage. (’917 Patent, col. 5:46-48).

For the ’749 Patent:

• The Term: "high voltage electronic device" (Claim 1)
• Context and Importance: This term is fundamental to the patent's claimed invention, which is based on a dual-voltage architecture. The infringement case hinges on the accused product containing such a device. Practitioners may focus on this term because its construction will determine whether a simple passive component can satisfy the limitation or if a more complex, active component is required.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language uses the general term "electronic device." The complaint alleges this could be "a resistor, or one or more other coupled electronic components" (Compl. ¶30, p. 25). The broad term "adapted to receive and function with a high voltage" could be interpreted to cover any component designed for that purpose, regardless of its complexity.
  • Evidence for a Narrower Interpretation: The specification provides a specific example of the high voltage device as a "remaining ink level sensor using a piezoelectric element." (’749 Patent, col. 1:35-38). A party could argue that the claims should be limited to this more complex embodiment, rather than covering simple passive components.

VI. Other Allegations

• Indirect Infringement: For both patents, the complaint alleges induced and contributory infringement. The allegations are based on Defendant marketing and selling the cartridges specifically for use in Epson printers, with the knowledge that using the cartridges as intended would cause end-users to infringe. The cartridges are alleged to be a "material part of the inventions" and "especially made or especially adapted for use in an infringement." (Compl. ¶¶ 20-21, 31-32).
• Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be willful (Compl. ¶¶ 25, 36). While not explicitly tied to pre-suit knowledge in the pleadings, this allegation is likely grounded in the extensive public litigation history of the patents-in-suit, including the issuance of General Exclusion Orders by the ITC, which Plaintiffs would argue placed the entire industry on notice. (Compl. ¶¶ 5-6).

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

• A key evidentiary question will be one of technical implementation: Does the circuitry of the accused cartridges contain two distinct electronic systems—a "low voltage" memory and a "high voltage" device—as required by the '749 patent, and does the memory device perform the dynamic function of "storing information about the ink" as required by the '917 patent? The outcome will depend heavily on expert analysis of the accused products' design and their interaction with an Epson printer.
• A central issue for willfulness and potential damages enhancement will be one of constructive knowledge: Given the well-documented, public enforcement history of both asserted patents, including multiple ITC General Exclusion Orders against overlapping groups of products, can the defendant establish a credible good-faith belief of non-infringement or invalidity?
• A core legal question will be one of claim scope: Can the term "high voltage electronic device," which is exemplified in the '749 patent as a complex piezoelectric sensor, be construed broadly enough to encompass a simple passive component, such as a resistor, that is merely "adapted to" receive a high-voltage signal from the printer?