DCT
3:23-cv-02303
Seiko Epson Corp v. Weston Tees LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Seiko Epson Corporation (Japan); Epson America, Inc. (California); and Epson Portland Inc. (Oregon)
- Defendant: Weston Tees LLC (Texas); Weston Griffin (Texas); and Devon Walden (Texas)
- Plaintiff’s Counsel: K&L Gates LLP; Quinn Emanuel Urquhart & Sullivan, LLP
- Case Identification: 3:23-cv-02303, N.D. Tex., 10/18/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because the defendants reside in the judicial district and have committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket ink cartridges and replacement circuit boards ("chips") for use in Epson printers infringe two patents related to the electrical design and layout of contacts on such cartridges.
- Technical Context: The technology concerns the design of circuit boards on consumable ink cartridges, which enables communication between the printer and the cartridge to manage functions like monitoring ink levels while preventing electrical shorts.
- Key Procedural History: The complaint notes that the U.S. International Trade Commission (ITC) has previously issued two general exclusion orders (in ITC Inv. Nos. 337-TA-946 and 337-TA-565) that prohibit the importation of ink cartridges that infringe certain Epson patents, including the two patents asserted in this case. This history may be relevant to allegations of knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-26 | Earliest Priority Date for ’749 and ’116 Patents |
| 2013-06-04 | U.S. Patent No. 8,454,116 Issued |
| 2014-08-05 | U.S. Patent No. 8,794,749 Issued |
| 2022-04-26 | Certificate of Correction for U.S. Patent No. 8,454,116 Issued |
| 2023-03-10 | Corporate existence of Defendant Weston Tees LLC forfeited |
| 2023-10-04 | Date of Plaintiff's documented visit to Defendant's website |
| 2023-10-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
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 describes a risk inherent in ink cartridges that feature multiple electronic devices, such as a low-voltage memory chip and a separate high-voltage sensor (e.g., for detecting ink levels). An errant drop of conductive ink or other foreign matter could create a short circuit between the terminals for these different devices, potentially damaging the cartridge or the printer itself (’749 Patent, col. 1:41-54).
- The Patented Solution: The invention proposes a specific geometric arrangement of electrical contact terminals on the cartridge's circuit board to mitigate this risk. The solution involves organizing the terminals into two rows, with the terminals for the high-voltage device placed at the outermost ends of one row. This spatial separation is intended to make a damaging short circuit between the high-voltage and low-voltage systems less likely (’749 Patent, Abstract; col. 9:4-24).
- Technical Importance: This design approach seeks to enhance the electrical reliability of consumable ink cartridges, allowing for the integration of more sophisticated, multi-voltage electronics while protecting the host printer from electrical damage (’749 Patent, col. 2:18-25).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶29).
- Claim 1 Essential Elements:
- A printing material container adapted for insertion into a printing apparatus.
- 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 voltage higher than the low voltage.
- A plurality of container-side terminals with contact portions arranged to enable electrical communication with the printer.
- The terminals include a plurality of low voltage contact portions coupled to the low voltage device, and first and second high voltage contact portions coupled to the high voltage device.
- The contact portions are arranged in a first row and a second row, with the rows extending generally orthogonal to the insertion direction.
- 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 the opposite ends of the first row.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,454,116 - PRINTING MATERIAL CONTAINER, AND BOARD MOUNTED ON PRINTING MATERIAL CONTAINER, Issued June 4, 2013
The Invention Explained
- Problem Addressed: Similar to its family member, the ’116 Patent addresses the technical problem of preventing damage from electrical shorts between terminals for different devices on an ink cartridge circuit board (’116 Patent, col. 1:41-54).
- The Patented Solution: The patent claims a circuit board with a specific relative ordering of its contact portions. When viewed from the perspective of the printer's electrical contacts, the terminals are arranged in a precise sequence that includes contacts for a memory device, contacts for another electronic device (e.g., a high-voltage sensor), and a dedicated "short detection contact portion." This specific layout allows the printer's circuitry to detect a short, such as one caused by an ink spill, and take protective action (’116 Patent, Abstract; col. 2:4-17).
- Technical Importance: This claimed arrangement provides a built-in electrical failsafe, enabling the printer to actively monitor the integrity of the cartridge interface and protect its own sensitive electronics from over-voltage events caused by shorts on the consumable cartridge (’116 Patent, col. 2:47-56).
Key Claims at a Glance
- The complaint asserts independent claim 18 (Compl. ¶43).
- Claim 18 Essential Elements:
- A circuit board mountable on a printing material container.
- A memory device adapted to be driven by a memory driving voltage.
- An electronic device adapted to receive a voltage higher than the memory driving voltage.
- A plurality of terminals with contact portions, including:
- Plurality of memory contact portions coupled to the memory device.
- First and second electronic device contact portions coupled to the higher-voltage electronic device.
- A short detection contact portion arranged to contact a corresponding member coupled to a short detection circuit in the printer.
- A specific positional arrangement of these contact portions when viewed from the vantage of the printer's contacts with the cartridge's ink exit facing downwards.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are aftermarket "Texas Tees" branded ink cartridges, refillable ink cartridges, and aftermarket circuit boards ("chips") designed for use with Epson SureColor F2000 and F2100 printers (Compl. ¶¶18, 28, 42).
Functionality and Market Context
The complaint alleges that the accused products are sold as direct replacements for genuine Epson ink cartridges (Compl. ¶18). They are designed to be physically inserted into Epson printers and feature a circuit board with electrical contacts that interface with the printer to enable its function (Compl. ¶¶29, 43). An annotated screenshot from the defendants' website shows a listing for "Epson F2000/F2100 DTG Ink" cartridges, marketed as "IDENTICAL to the OEM Epson ink" (Compl. ¶18, p. 5). The products are allegedly sold directly to consumers and end users via the tx-tees.com website (Compl. ¶16).
IV. Analysis of Infringement Allegations
'749 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [1c] 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 comprise a low voltage electronic device (an IC chip) with a memory device, which is confirmed by the printer reading and displaying remaining ink level information from the cartridge. | ¶29 (p. 13-14) | col. 9:1-5 |
| [1d] 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 cartridges comprise a high voltage electronic device (e.g., a resistor or other components) on the printed circuit board that receives a higher voltage (approx. 42 volts) from the printer than the voltage applied to the memory device (approx. 4 volts). | ¶29 (p. 15-16) | col. 11:47-53 |
| [1f] the contact portions are arranged in a first row of contact portions and in a second row of contact portions, the first row... and the second row... extending in a row direction which is generally orthogonal to the insertion direction, | The contact portions on the accused cartridge's circuit board are arranged in two rows (a top row of four and a bottom row of five), which extend in a direction orthogonal to the cartridge's insertion direction into the printer. An annotated photograph in the complaint illustrates this two-row, nine-contact arrangement (Compl. ¶29, p. 19). | ¶29 (p. 18-19) | col. 9:6-14 |
| [1h] the first row of contact portions has a first end position and a second end position at opposite ends thereof, the first high voltage electronic device contact portion is disposed at the first end position... and the second high voltage... is disposed at the second end position... | The first and second high voltage contact portions are located at the opposite ends of the first (bottom) row of contact portions. | ¶29 (p. 20) | col. 9:20-24 |
Identified Points of Contention
- Scope Questions: A potential issue is whether the accused product's "high voltage electronic device," alleged to be a resistor or other passive components, meets the definition of the claim term (’749 Patent, col. 11:47-53). The patent's primary example is an active piezoelectric sensor that vibrates to detect ink levels, raising the question of whether the claim term is limited to such active devices or can be construed to cover passive components.
- Technical Questions: What evidence demonstrates that the accused "high voltage electronic device" performs a "function" as required by the claim? The complaint alleges it is "adapted to receive and function with a high voltage" by virtue of being connected to printer contacts that apply approximately 42 volts (Compl. ¶29, p. 16), but the nature of this "function" beyond passive electrical connection may be a point of dispute.
'116 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [18b] a memory device adapted to be driven by a memory driving voltage; | The circuit board on the accused cartridge includes a memory device that is driven by a memory driving voltage (approx. 4 volts) supplied by the printer. | ¶43 (p. 25-26) | col. 31:36-38 |
| [18c] an electronic device adapted to receive a voltage higher than the memory driving voltage; | The circuit board includes an electronic device (e.g., a resistor) that is adapted to receive a higher voltage (approx. 42 volts) than the memory driving voltage. | ¶43 (p. 26-27) | col. 31:39-41 |
| [18d] ...a short detection contact portion positioned and arranged to electrically contact a contact forming member that itself is electrically coupled to a short detection circuit of the printing apparatus... | The circuit board includes a contact portion that aligns with a printer contact coupled to the printer's internal short detection circuit. This was allegedly confirmed during testing in a prior ITC investigation. An annotated photograph shows the location of this "short detection contact portion" (Compl. ¶43, p. 29). | ¶43 (p. 27, 29) | col. 31:50-54 |
| [18e] the contact portions are arranged so that, when the terminal arrangement is viewed from the vantage of the contact forming members... the contact portion farthest to the left is the first electronic device contact portion, the contact portion that is farthest to the right is the second electronic device contact portion... | When viewed from the printer's perspective, the contact portions on the accused circuit board are arranged in the specific left-to-right order recited in the claim. The complaint provides an annotated photograph illustrating this specific positional relationship of the various contacts (Compl. ¶43, p. 31). | ¶43 (p. 30-31) | col. 32:55-67 |
Identified Points of Contention
- Scope Questions: The construction of the phrase "viewed from the vantage of the contact forming members" will be critical. This term defines the specific perspective from which the claim's precise geometric layout of contacts must be assessed. The parties may dispute the exact meaning and application of this orientational language.
- Technical Questions: Does the accused product's designated "short detection contact portion" actually function as claimed by interacting with a "short detection circuit" in the printer? The complaint relies on findings from a prior ITC investigation to support this point (Compl. ¶43, p. 29-30), but a defendant would likely challenge the applicability of that finding and demand evidence of how the accused product and printer circuitry actually operate together.
V. Key Claim Terms for Construction
For the ’749 Patent
- The Term: "high voltage electronic device"
- Context and Importance: The theory of infringement depends on the accused cartridges containing a component that meets this definition. The patent specification's main embodiment describes an active piezoelectric sensor (’749 Patent, col. 11:47-48), whereas the complaint alleges the accused device may be a passive resistor (Compl. ¶29, p. 15). Practitioners may focus on this term because its scope—whether it is limited to active sensors or broadly covers any component receiving a higher voltage—is central to infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, simply reciting "an electronic device adapted to receive and function with a high voltage" without specifying a particular type or function (’749 Patent, cl. 1).
- Evidence for a Narrower Interpretation: The specification repeatedly and consistently describes the "high voltage electronic device" as "sensor 104," which is a "piezoelectric element" used to actively detect the remaining ink level by vibrating (’749 Patent, col. 11:47-67). This consistent description of a specific active component could be used to argue for a narrower construction that excludes simple passive resistors.
For the ’116 Patent
- The Term: "viewed from the vantage of the contact forming members" (from claim 18)
- Context and Importance: This phrase establishes the specific point-of-view from which the relative positions of the various contact pads (memory, high-voltage, short detection) must be judged to determine infringement of claim 18[e]. The entire infringement analysis for this limitation turns on establishing this specific orientation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue this is a common and unambiguous way to define orientation in the art, referring to the perspective of the printer's physical contact pins looking toward the cartridge's circuit board. Figures in the patent depict the physical relationship between the apparatus-side "contact forming members" and the cartridge terminals, providing context for this vantage point (’116 Patent, Fig. 6A-6B).
- Evidence for a Narrower Interpretation: A party might argue that the term is indefinite without a more explicit definition in the specification, given the three-dimensional nature of cartridge insertion. They could argue that a simple "view" is insufficient to define the precise alignment required by the claim's detailed positional recitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. It asserts that Defendants offer for sale and sell cartridges and chips to end-users with knowledge of the patents and with the intent that the end-users will directly infringe by using the products in compatible Epson printers. The complaint further alleges the accused components are not staple articles of commerce and are especially made for this infringing use (Compl. ¶¶30-34; ¶¶44, 47-48).
- Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶¶38, 52). This allegation is based on the assertion that Epson's patent enforcement and the two ITC general exclusion orders covering the patents-in-suit are widely known in the aftermarket ink cartridge industry, suggesting Defendants had pre-suit knowledge of the patents and their infringement (Compl. ¶2).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "high voltage electronic device," which the patent specification exemplifies as an active piezoelectric sensor, be construed to cover the passive resistors or other components allegedly used in the accused aftermarket cartridges?
- A key evidentiary question will be one of technical operation: does the accused circuit board have a "short detection contact portion" that is "positioned and arranged" to interact with a "short detection circuit" in a genuine Epson printer in the specific manner required by claim 18 of the '116 patent?
- A central question for damages will be one of intent: given the public history of litigation and ITC exclusion orders related to the asserted patents, can the plaintiff prove that the defendants' alleged infringement was willful, which could lead to an award of enhanced damages?