Seiko Epson Corp v. Advance Image Manufacturers Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seiko Epson Corporation (Japan)
  • Defendant: Advance Image Manufacturers, Inc. (Pennsylvania)
  • Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
• Case Identification: 3:17-cv-00425, D. Or., 03/16/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of Oregon because Defendant has committed acts of patent infringement in and resides in the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s aftermarket ink cartridges infringe patents related to the specific geometric arrangement of electrical contacts and the use of distinct high- and low-voltage electronic circuits on the cartridges.
• Technical Context: The technology concerns the complex mechanical and electrical interface between replaceable ink cartridges and inkjet printers, a critical area of competition between original equipment manufacturers (OEMs) and third-party consumables suppliers.
• Key Procedural History: The complaint notes that both patents-in-suit have been the subject of prior, successful International Trade Commission (ITC) investigations, resulting in the issuance of General Exclusion Orders (GEOs) against infringing ink cartridges. The U.S. Patent No. 6,502,917 ('917) was the subject of ITC Inv. No. 337-TA-565 and also underwent an ex parte reexamination. U.S. Patent No. 8,794,749 ('749) was the subject of ITC Inv. No. 337-TA-946. These prior proceedings and GEOs may significantly influence questions of claim scope and willfulness.

Case Timeline

Date	Event
1998-05-18	’917 Patent Priority Date
2003-01-07	’917 Patent Issue Date
2005-12-26	’749 Patent Priority Date
2007-10-19	ITC Final Determination in Investigation No. 337-TA-565 ('917 Patent)
2009-02-03	’917 Patent Reexamination Certificate Issued
2009-06-01	U.S. Supreme Court Denies Certiorari for ITC-565 Appeal ('917 Patent)
2012-06-15	Last of Five Prior D. Or. Cases Involving the '917 Patent Concluded
2014-08-05	’749 Patent Issue Date
2016-05-26	ITC Final Determination in Investigation No. 337-TA-946 ('749 Patent)
2016-11-29	Date of Visit to Accused Product Listing on Amazon.com
2017-03-16	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 addresses the risk of failed electrical connections when a user replaces an ink cartridge. It notes that improper insertion or "rough operation" can lead to poor contact between the cartridge's onboard memory chip and the printer, potentially causing data loss or preventing the printer from functioning. (’917 Patent, col. 1:59-col. 2:6).
• The Patented Solution: The invention specifies a unique physical arrangement for the electrical contacts on the ink cartridge. The contacts are placed on a circuit board in multiple rows, with a specific geometric relationship where the row of contacts closest to the ink supply port is longer than the row farther away. (’917 Patent, Abstract; col. 6:26-44). This design helps ensure a reliable and properly sequenced electrical connection as the cartridge is mechanically inserted into the printer's carriage. (’917 Patent, Fig. 7(c)).
• Technical Importance: This configuration provides a robust physical interface that allows the printer to reliably read critical data from the cartridge, such as ink type and volume, which is essential for print quality and device functionality. (’917 Patent, col. 5:32-40).

Key Claims at a Glance

• The complaint asserts independent claim 9. (Compl. ¶19).
• The essential elements of claim 9 are:
  • An ink cartridge comprising a chamber, an ink supply port, and a semiconductor storage device.
  • A plurality of contacts for connecting the storage device to the printing apparatus.
  • The contacts are formed in a plurality of rows.
  • One row is closer to the ink supply port's exit opening than the other.
  • 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 reserves the right to assert other claims. (Compl. ¶18).

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 challenges of designing ink cartridges that incorporate multiple, distinct electronic systems, specifically a low-voltage memory device and a separate high-voltage circuit (such as a piezoelectric sensor for detecting ink levels). The primary problem is the risk of an electrical short between the high-voltage and low-voltage terminals—potentially caused by a stray ink drop or condensation—which could damage the sensitive memory chip or the printer's mainboard. (’749 Patent, col. 1:30-55).
• The Patented Solution: The invention describes a specific layout for the electrical contacts that segregates the high-voltage and low-voltage terminals to minimize the risk of shorts. The high-voltage contacts are placed at the opposite ends of a contact row, physically separated from the cluster of low-voltage contacts. This arrangement allows the printer's circuitry to detect a short and take protective action before damage can occur. (’749 Patent, Abstract; col. 2:9-28).
• Technical Importance: This layout acts as a safety feature to protect increasingly complex and sensitive electronics within both the consumable cartridge and the host printer from electrical damage. (’749 Patent, col. 1:50-55).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶30).
• The essential elements of claim 1 are:
  • A printing material container with an ink supply opening.
  • A low voltage electronic device comprising a memory device.
  • A high voltage electronic device that operates at a higher voltage.
  • A plurality of container-side terminals, including low-voltage and high-voltage contact portions.
  • The contact portions are arranged in a first row and a second row, with the first row being located further in the insertion direction.
  • The first high-voltage contact portion is disposed at the first end of the first row, and the second high-voltage contact portion is disposed at the opposite (second) end of the first row.
• The complaint reserves the right to assert other claims. (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

• The accused products are aftermarket, generic ink cartridges sold by Defendant under various online storefronts, including "AIM Distribution," "AIM Distribution2," and "NEXiMAGING." (Compl. ¶¶11-12). The complaint focuses on representative models, including T200220, which are marketed as "AIM Compatible Replacement" cartridges for use in Epson printers. (Compl. ¶¶12, 18, 29).

Functionality and Market Context

• The cartridges are designed to function as direct replacements for Epson's OEM ink cartridges, fitting into Epson printers like the WorkForce WF-2540 and supplying ink to the printhead. (Compl. ¶10). They include an onboard chip intended to interface with the printer's electronics to report information such as ink levels, a key feature for compatibility. (Compl. ¶19d). The complaint alleges these are sold online through major retailers like Amazon and Newegg, as well as directly. (Compl. ¶12). An included screenshot shows the product described as "AIM Compatible Replacement - Epson... - Generic." (Compl. p. 7).

IV. Analysis of Infringement Allegations

’917 Patent 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 that forms a chamber to hold ink.	¶19b	col. 3:41-43
an ink supply port for receiving said ink supply needle, the ink supply port having an exit opening...	The accused cartridge has an ink supply port on its bottom surface that receives the printer's ink needle and allows ink to exit the cartridge.	¶19c	col. 3:46-51
a semiconductor storage device storing information about the ink carried by said cartridge;	The accused cartridge includes a chip on a printed circuit board that stores information about the quantity of consumed ink. The complaint provides screenshots showing the printer utility correctly displaying a decrementing ink level.	¶19d	col. 5:32-40
a plurality of contacts... formed in a plurality of 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...	The contacts on the accused cartridge's circuit board are arranged in two rows. The complaint provides annotated photographs from tests alleging that the lower row (closer to the ink port) is longer than the upper row.	¶19e	col. 6:26-44

The complaint includes a detailed image demonstrating the alleged infringement of the final element of claim 9, showing the two rows of contacts on the accused cartridge with lines indicating the shorter upper row and the longer, closer lower row. (Compl. p. 18).

Identified Points of Contention

• Technical Questions: A potential dispute may arise over whether the accused "semiconductor storage device" performs all the functions contemplated by the patent, although the claim language "storing information about the ink" is broad. The complaint's evidence of a decrementing ink level counter appears to meet this limitation. (Compl. ¶19d).
• Scope Questions: The infringement analysis will turn on whether the accused cartridge's contacts have the specific geometric relationship recited in the claim. While the complaint's photographic evidence appears compelling, the Defendant may challenge the measurement methodology or argue that minor physical differences avoid infringement.

’749 Patent 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... comprising a memory device;	The accused cartridge has an integrated circuit (IC) chip on its circuit board that functions as a memory device and operates at a low voltage (allegedly ~4 volts).	¶30c	col. 1:43-45
a high voltage electronic device adapted to receive and function with a high voltage...	The accused cartridge's circuit board includes components (e.g., a resistor) that are part of a high-voltage circuit (allegedly ~42 volts), likely for ink sensing.	¶30d	col. 1:33-37
a plurality of container-side terminals... including a plurality of low voltage... contact portions... and a first high voltage... and a second high voltage... contact portion...	The terminals on the accused cartridge are alleged to include distinct contact portions for the low-voltage memory and the high-voltage sensor circuit.	¶30e	col. 2:1-4
the contact portions are arranged in a first row... and in a second row... orthogonal to the insertion direction,	The terminals are arranged in two horizontal rows, which are orthogonal to the vertical insertion direction of the cartridge.	¶30f	col. 2:15-18
the first row of contact portions is disposed at a location that is further in the insertion direction than the second row...	The "first row" of contacts is located deeper within the printer upon insertion than the "second row."	¶30g	col. 2:18-21
the first high voltage electronic device contact portion is disposed at the first end position of the first row... and the second high voltage... contact portion is disposed at the second end position...	The two high-voltage contacts are located at the opposite ends of the deeper "first row" of contacts. The complaint provides an annotated photograph showing these alleged positions.	¶30h	col. 2:21-28

The complaint provides an annotated photograph to support its allegation regarding the location of the high-voltage contacts at opposite ends of the first row of terminals. (Compl. p. 32).

Identified Points of Contention

• Technical Questions: The core technical question is whether the circuitry on the accused product's single printed circuit board constitutes "a low voltage electronic device" and "a high voltage electronic device" as two distinct entities required by the claim, or if it is a single, integrated device with multiple functions.
• Scope Questions: The case will likely involve a dispute over the proper construction of "electronic device." Does the term require physically separate components (e.g., two different chips), or can it refer to functionally distinct circuits integrated onto a single substrate?

V. Key Claim Terms for Construction

Term: "a low voltage electronic device" and "a high voltage electronic device" (’749 Patent, Claim 1)

Context and Importance

• This language is critical because the claim requires two distinct devices. Infringement will depend on whether the defendant's integrated circuit board can be said to comprise two separate "devices." Practitioners may focus on this term because the accused product likely uses a single, highly integrated PCB, and the plaintiff's ability to prove the presence of two distinct "devices" will be determinative.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification refers to the devices by their function, for example a "memory" and a "high voltage circuit (e.g. a remaining ink level sensor)." (’749 Patent, col. 1:33-37). This functional language may support an interpretation where distinct circuits on a single chip can satisfy the limitation.
• Evidence for a Narrower Interpretation: The claim's repeated use of the article "a" ("a low voltage electronic device... a high voltage electronic device") could imply two structurally separate and distinct items are required. The abstract's phrasing "an electrical device, a memory device" could also be argued to require separate entities.

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." (’917 Patent, Claim 9)

Context and Importance

• This limitation defines the specific, core geometry of the patented invention. Infringement requires a direct physical correspondence in the accused product. Practitioners may focus on this term because it is a purely structural limitation that must be met exactly for literal infringement.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The claim language itself is the clearest guide and is not explicitly limited to any particular number of contacts or rows beyond "a plurality." The purpose, to ensure proper seating and contact, might be used to argue against an overly rigid interpretation of the geometry.
• Evidence for a Narrower Interpretation: A defendant may point to the specific embodiment shown in Figure 7(c) of the patent, which depicts a precise arrangement, to argue that the claim scope should not extend far beyond that example. The reexamination history, which amended the claim to its current form, will likely provide significant context for its proper scope. (’917 Patent, Reexamination Certificate).

VI. Other Allegations

Indirect Infringement

• The complaint alleges both induced infringement (35 U.S.C. § 271(b)) and contributory infringement (35 U.S.C. § 271(c)) for both patents. The allegations state that Defendant provides the cartridges, which are a material part of the invention and not a staple article of commerce, with the knowledge and intent that end-users will combine them with Epson printers to infringe. (Compl. ¶¶20-21, 31-32).

Willful Infringement

• The complaint alleges that Defendant's infringement has been and continues to be willful. (Compl. ¶¶25, 36). The basis for willfulness is exceptionally strong, as the complaint cites prior, successful ITC investigations for both patents that resulted in General Exclusion Orders against infringing cartridges. (Compl. ¶¶4-5). These public proceedings may be used to argue that Defendant knew or should have known of the patents and the high likelihood of infringement.

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

• A core issue will be one of definitional scope: for the ’749 patent, can the terms "a low voltage electronic device" and "a high voltage electronic device" be construed to read on functionally distinct circuits that are integrated onto a single printed circuit board, or must they be structurally separate components?
• A key question for damages will be one of willfulness and pre-suit knowledge: given that both patents-in-suit were previously the subject of successful ITC investigations resulting in General Exclusion Orders, what evidence can the defendant present to counter the allegation that its infringement was willful?
• A central evidentiary question will be one of structural correspondence: for the ’917 patent, does the accused cartridge’s contact layout literally meet the precise geometric requirements of claim 9, specifically that the row of contacts closer to the ink port is longer than the row farther from it?