Will Canon Strike Again?

Originally published at Imaging World Magazine Issue 104

By David Gibbons

The recent action against Do It Wiser LLC in the US District Court for the District of Delaware is a reminder that Canon will not tolerate the proliferation of infringing printer supplies in the United States or anywhere else where it has registered its patents. It seeks not only to protect its own intellectual property rights but also its commercial interests and those of Hewlett Packard which is licensed by Canon to manufacture and sell their patented printing supplies.

In September 26, Canon filed a complaint against Do It Wiser for its alleged infringement of patent US9581958, commonly known as the ‘958 patent. Do It Wiser, which is based in Wilmington, Delaware on the eastern side of the USA, also trades under the name of Image Toner and uses both doitwiser.com and imagetoner.com websites.

According to the filing, Canon believes Do It Wiser is infringing by knowingly promoting and inducing customers to use its toner cartridges—and by providing instructions for using its cartridges—in specific HP color laser printers including: HP Color LaserJet Enterprise M553dn, HP Color LaserJet Enterprise M553n, HP Color LaserJet Enterprise M553x, HP Color LaserJet Enterprise Flow MFP M577dn, HP Color LaserJet Enterprise Flow MFP M577f, HP Color LaserJet Enterprise Flow MFP M577c, and HP Color LaserJet Enterprise Flow MFP M577z.

The Canon filing alleges Do It Wiser is infringing claims 1, 25, 47 and 73 of its ’958 patent. These claims relate to certain frames and couplings on toner cartridges.  More specifically, a driving-force-receiving portion of the developer roller coupling is movable relative to the toner frame of the cartridge. Examination of the filing reveals quite clearly, through photos and diagrams that Do It Wiser’s cartridges all contain the frames, couplings, OPC drums and rollers related to Canon’s complaint.

Canon is requesting a jury trial where it expects to receive damages, reimbursement of court costs and “additional relief as the Court deems equitable, just and proper.”

Not the First ‘958 Case

This is not the first time the ‘958 patent has been tested in court. Back on December 28, 2017, Canon filed a complaint in the US District Court for the Central District of California against Kostland Inc. In short, Kostland admitted it had been infringing in a Consent Judgment and Permanent Injunction with Canon dated February 16, 2018. Kostland is now banned from, and has ceased, any and all activity related to the making, importing, using and/or selling the infringing products.

Canon was active again in May when it filed a complaint against Ink Technologies Printer Supplies LLC in the US District Court for the Southern District of Ohio—again over infringement of its ‘958 patent. That case was also settled on August 21 based upon Consent Judgment and Permanent Injunction orders. Again, the accused consented that it had “offered for sale” and sold products that had infringed Canon’s ‘958 patent and agreed to no longer being involved in any way with the manufacture, importing, promotion or sale of the “accused products” and also agreed not to be engaged in “assisting, aiding, or abetting any other person or business entity in engaging in or performing any of the [infringing] activities.”

This continued legal activity suggests Canon is vigorously defending its intellectual property rights on its ‘958 patents. The Aftermarket should see these three cases as being “writing on the wall” and we should not be surprised to see future actions as well.

Patent attorney, Mile Zhu, from Innopat Intellectual Property Company in Zhuhai China has extensive experience in this field. In his view, he believes Canon will refer this matter for investigation to the Washington DC-based US International Trade Commission (USITC) if more and more infringing products continue to appear in the US market. “Based on our knowledge and experience,” he says, “this patent group is relatively strong and Canon has tested the matter in the court in three different locations. We predict more cases will follow.” Zhu also warns this patent group could possibly spread to Europe as well and become similar to the dongle gear case. Canon’s counterpart patent application number in the European Patent Office— EP14158347.6—has already been allowed.

Canon Defends Its Rights

It is well known that Canon will pursue its intellectual property rights in the two key global markets, being the USA and Western Europe. A complaint filed by Canon at the USITC in 2012—in what was called the ‘829 investigation—covered the gear that Canon was using at the time on its laser toner cartridges, the twisted prism gear. The twisted prism gear is now obsolete and has been replaced by the dongle gear.

In 2014, in the so-called ‘918 investigation, Canon brought suit at the USITC accusing 34 respondents of infringing nine patents covering the dongle gear and drum unit on its laser printers. All of the respondents in the 918 investigation settled or defaulted, and the ITC issued a general exclusion order covering the asserted patents.

Even before the investigation was completed, however, the respondents and other Aftermarket manufacturers began developing and marketing dongle gear toner cartridges that “designed around” the ‘918 patents. These design-around cartridges worked in Canon and HP laser printers but used a redesigned dongle gear that did not infringe the ‘918 patents. “In short order, the market place was again filled with legal Aftermarket toner cartridges,” says Merritt Blakeslee, an attorney based in Washington DC specialising in international trade and intellectual property law. According to Blakeslee, the original general exclusion order Canon obtained in the ‘918 investigation had become largely worthless. “In December 2016, Canon began filing a new generation of ‘continuation’ patents where they rewrote the ‘918 patents to make the third-party design-around toner cartridges illegal.” On March 1, 2018, Canon filed a Section 337 complaint at the USITC accusing 49 different companies of infringing nine of its patents. At the same time, Canon filed 35 separate lawsuits against those respondents in federal district courts across the United States.

Print-Rite Delivers a First-to-Market ‘958 Solution

China-based Print-Rite has developed a culture of innovation within its ranks over most of its 37-year history. In this particular case, they were looking at the ‘958 patents long before Canon took action and news broke with the Kostland case late in 2017. “I don’t know what others do,” says Arnald Ho, Founding Chairman of Print-Rite. “But I do know our products will not infringe when we go to market. This has been proved over and over again.” The CE250, CE 260 , CE400 and CF360 series all use the ‘985 patented technology but Print-Rite claims it has the first-to-market non-infringing solution for this high volume product.

Philip So, the Director of Print-Rite Unicorn Image Products Co Ltd and his team have spent the last nine months examining and researching the patent claims in order to design a successful and stable workaround solution that would not infringe Canon’s ‘958 patent rights. “Our lawyers have worked hard on this one too and have, in their opinion, reassured us that our workaround solutions do not infringe Canon’s patents,” says So. “We have designed the cartridge (see picture) so that the DR coupling remains in a fixed position relative to the DR frame. This is quite different to Canon’s ‘958 patent so we are confident this cartridge can enter the US and European markets without fear.” According to So, Print-Rite has filed at least 3 patent applications in China that will be followed up in the USA and European Union.

The Aftermarket continues to invest heavily in non-infringing workaround solutions that will provide consumers with their rights to having a choice when it comes to the consumables they use in their printers. Print-Rite claims it will continue to provide dealers, resellers and customers with products that are safe and reliable to use, a commitment it has been demonstrating for its 37-year history. RT Media observes there are many manufacturers in the Aftermarket arena and if buyers want a cheaper cartridge, they can find them. However such products have little or no investment to provide such a degree of safety and reliability without compromising quality.