On Friday, March 2, 2018, Canon Inc. issued an announcement stating it had filed complaints with the United States International Trade Commission (ITC) against 49 manufacturers, distributors, and resellers of toner cartridges and photo-sensitive drum units, asserting infringement of nine recently issued U.S. Patents. Canon also announced the filing of complaints against these companies in numerous U.S. District Courts according to the various locations of the defendants.
This is a complicated topic that can't be adequately covered in one article, so we plan to publish a series that attempts to provide background and context and will stay with developments as they occur.
Some Questions:
1. The Dongle Gear is at the heart of the litigation and is one of the dozens of components that make up a Canon-designed laser cartridge. Canon has been granted many patents on this component besides the nine asserted in the new round of litigation. What strategies and purpose underlay the tactics which result in so many patents being issued over an extended period?
2. How is it possible to have dozens of unique, patentable inventions on a single component, such as the dongle gear, and what is the underlying strategy for seeking to do so?
3. In the 2014 litigation, the ITC found in favor of Canon and ultimately issued a General Exclusion Order (GEO). None of the district court cases went to trial, with all the defendants defaulting or settling with admissions of patent validity and infringement.
- With their technology being developed and patent applications being filed for workaround dongle gear designs, the aftermarket manufacturers must have considered it to be in their best business interests to settle the 2014 litigation.
- In hindsight, would it have been a wiser strategy for the defendants to have gone to trial in an attempt to avoid making admissions of validity and infringement?
- Will those 2014 decisions that were taken to end the lawsuits and cap the cost of the dispute come back to haunt them in this new round of litigation?
- Is there any way the aftermarket defendants could have avoided this latest round of litigation besides exiting the market for compatible laser cartridges?
4. The '278 patent took five years to make its way from filing in 2007 to issuing in 2012. This is a long time, much longer than the average time it usually takes to obtain a patent. What obstacles, if any, did the patent encounter during the application process?
5. It has become a tactic for the OEMs to use the ITC and the Federal Courts to attempt to block products alleged to infringe their patents.
- Why has Canon elected to involve the ITC simultaneously?
- Where is the boundary for the responsibility between the Federal Courts and the ITC in terms of understanding complex patent issues requiring expert interpretation of claims?
- Is there a threshold that must be crossed before involving the ITC becomes a legitimate tactic?
- If so, did Canon reach that threshold before involving the ITC in this latest round of litigation?
6. What impact, if any, does the 2006 priority date on the nine new patents Canon just obtained have on the technology the aftermarket manufacturers developed to avoid the Canon patents at issue in the 2014 round of litigation?
7. How relevant is the 2006 priority date on the nine new patents regarding prior art? Could this affect the validity of the technology and the enforceability of the patents obtained by the aftermarket companies manufacturing dongle gears since 2014?
8. What modifications were made to the claims in the nineteen continuations added to the parent between 2008 and 2017 and before they were granted? [one is still pending]. Assuming modifications to the claims took place, did they have any bearing or overlap on the workaround technology developed by the defendants in the aftermath of the 2014 litigation?
Conclusions:
Specifically, if Canon has filed continuation or divisional applications along the way, the description and drawings in its later issues will likely be identical to US 8,280,278 B2 patent. The real key is that the originally filed drawings and descriptions that carried through to the most recently issued patents and pending application(s) allow Canon to find different ways to claim the inventive subject matter, i.e., only the claims change.
It is sometimes difficult to determine whether a claim is “broader” or “narrower” than another since one or more individual claim limitations may be broader or narrower than a similar limitation in another patent. Still, there are a myriad of different combinations of limitations. Therefore, it is difficult to conclude that one claim is broader or narrower than another, which is why we must use terms like “re-shaping, re-working, altering, etc.” when referring to the claims that have been prosecuted to issuance in the more recent patents.
Also, the aftermarket companies seek patents on their design around. If a patent is granted, this is a recognition that the design-around invention is new, useful, and nonobvious relative to what is already known in the art. Receiving the patent does NOT mean that the aftermarket company has a right to make, use, or sell its patented product, but instead grants the aftermarket company the right to “exclude others from making, using, or selling a product that falls within the scope of its patent.” Even then, a third party could find that it has avoided (i.e., does not infringe) the patent owned by the aftermarket company but still falls within the scope of the dominant Canon patent.
It cannot be emphasized enough how difficult a task it is to design around the OEM patents directed to a component (e.g., dongle gear, toner cartridge, drum, etc.) that necessarily must interface and work with the remainder of the OEM system (the printer that is configured in a unique way to receive the component, and effectively operate with the component).