Fitzpatrick
`
`JOHN E. NAPPI
`jnappi@fchs.com
`202-721-5463
`
`WASHINGTON
`
`975 F Street, N.W.
`
`Washington, D.C. 20004-1462
`T 202-530-1010
`F 202-530-1055
`www.fitzpatrickcella.com
`
`
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`
`June 12, 2015
`
`VIA EXPRESS DELIVERY
`
`General Plastic Industrial Co., Ltd.
`Attn: Mr. Jerry Wang, President
`50 Tzu-Chiang Road
`Wu-Chi Town, Taichung County
`Taiwan
`
`Color Imaging, Inc.
`Attn: Dr. Sueling Wang: President
`4350 Peachtree Industrial Blvd., Suite 100
`Norcross, Georgia 30071
`
`Re: New Complaint Filed with the U.S. International Trade Commission:
`
`
`
`
`Certain Toner Sup_ply Containers and Components Thereof
`
`Dear Sirs:
`
`Enclosed is a courtesy copy of a Complaint that Canon Inc., Canon U.S.A., Inc. and Canon
`Virginia, Inc. filed with the U.S. International Trade Commission on June 12, 2015, naming
`your company as a proposed Respondent.
`
`Sincerely,
`
`Enclosure
`
`cc:
`
`John Fry (via express delivery with enclosures)
`
`Morris, Manning & Martin, LLP
`1600 Atlanta Financial Center
`3343 Peachtree Road, NE
`Atlanta, GA 30326
`
`FCHS_WS ll531365vl.doc
`
`NEW YORK WASHINGTON CALIFORNIA
`
`1
`
`CANON KABUSHIKI KAISHA EXHIBIT 2009
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha
`IPR2016-01359
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable _________________
`
`In the Matter of
`
`CERTAIN TONER SUPPLY CONTAINERS
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-_____
`
`COMPLAINT OF CANON INC. ET AL.
`UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED
`
`Proposed Respondents:
`General Plastic Industrial Co., Ltd.
`50 Tzu-Chiang Road
`Wu-Chi Town, Taichung County
`Taiwan
`Phone: +886-4-2639-3103
`
`Color Imaging, Inc.
`4350 Peachtree Industrial Blvd., Suite 100
`Norcross, Georgia 30071
`Phone: 770-840-1090
`
`Complainants:
`Canon Inc.
`30-2, Shimomaruko 3-chome
`Ohta-ku, Tokyo 146-8501, Japan
`Phone: 81-3-3758-2111
`
`Canon U.S.A., Inc.
`One Canon Park
`Melville, New York 11747
`Phone: 631-330-5000
`
`Canon Virginia, Inc.
`12000 Canon Boulevard
`Newport News, Virginia 23606
`Phone: 757-881-6001
`
`Counsel for Complainants:
`Nicholas M. Cannella
`Michael P. Sandonato
`Anna Y. Huang
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, New York 10104-3800
`Phone: 212-218-2100
`Fax: 212-218-2200
`
`(continued on next page)
`
`2
`
`

`
`Counsel for Complainants (continued):
`Edmund J. Haughey
`Stephen E. Belisle
`Seth E. Boeshore
`Chitra M. Kalyanaraman
`FITZPATRICK, CELLA, HARPER & SCINTO
`975 F Street, N.W.
`Washington, D.C. 20004
`Phone: 202-530-1010
`Fax: 202-530-1055
`
`- ii -
`
`3
`
`

`
`TABLE OF EXHIBITS
`
`Exhibit
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`
`17
`
`18
`19
`20
`21
`22
`
`Description
`Certified Copy of U.S. Patent No. 8,909,094
`Certified Copy of U.S. Patent No. 9,046,8201
`Certified Assignment Records for U.S. Patent Nos. 8,909,094 and 9,046,820
`Confidential Exhibit – Confidential Declaration of John R. Briggs
`Confidential Exhibit – Licensees of the Asserted Patents
`Canon Press Release dated January 7, 2015
`Table of Certain Canon Toner Supply Containers and Compatible Copy Machines
`Claim Chart Applying ’094 Patent, Claim 1 to Accused Toner Containers
`Claim Chart Applying ’094 Patent, Claim 11 to Accused Toner Containers
`Claim Chart Applying ’094 Patent, Claim 29 to Accused Toner Containers
`Claim Chart Applying ’094 Patent, Claim 38 to Accused Toner Containers
`Claim Chart Applying ’820 Patent, Claim 1 to Accused Toner Containers
`Claim Chart Applying ’820 Patent, Claim 16 to Accused Toner Containers
`Claim Chart Applying ’094 Patent, Claim 1 to Canon GPR-30 Toner (Black)
`Claim Chart Applying ’820 Patent, Claim 1 to Canon GPR-30 Toner (Black)
`Photographs – Color Imaging (General Plastic) FCA2270
`Photographs – Color Imaging (General Plastic) FCAC2030-K packaging (pictorial
`instructions)
`Photographs – Canon GPR-30 Toner (Black)
`Packing Slip – Color Imaging
`Panjiva Reports – Shipments from General Plastic to Color Imaging
`Records (Secretary of State) – Kings Brothers, LLC
`Records (Secretary of State) – GPI USA, Inc.
`
`1
`
`Canon has ordered a certified copy of U.S. Patent No. 9,046,820, and once received, will
`substitute it for the non-certified version submitted herewith.
`
`- iii -
`
`4
`
`

`
`Exhibit
`23
`24
`25
`
`26
`
`27
`
`28
`
`29
`
`30
`
`Description
`Color Imaging 2014 Product Catalog
`Website Information – General Plastic (Company Profile)
`Website Information – Color Imaging (Company Profile)
`Canon Inc. v. Color Imaging, Inc. et al., Case No. 1:11-cv-03855, DEFENDANT
`GENERAL PLASTIC INDUSTRIAL CO., LTD.’S AMENDED ANSWER AND COUNTERCLAIMS
`TO PLAINTIFF’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, D.I. 274 (N.D.
`Ga. July 9, 2014)
`Canon Inc. v. Color Imaging, Inc. et al., Case No. 1:11-cv-03855, DEFENDANT
`COLOR IMAGING, INC.’S AMENDED ANSWER AND COUNTERCLAIMS TO PLAINTIFF’S
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT, D.I. 273 (N.D. Ga. July 9, 2014)
`Canon Inc. v. Color Imaging, Inc. et al., Case No. 1:11-cv-03855, JOINT STIPULATION
`BETWEEN THE PARTIES REGARDING USE OF DEFENDANTS’ ACCUSED TONER BOTTLE
`PRODUCTS, D.I. 208 (N.D. Ga. March 24, 2014)
`Canon Inc. v. Color Imaging, Inc. et al., Case No. 1:11-cv-03855, UPDATED JOINT
`STIPULATION BETWEEN THE PARTIES REGARDING REPRESENTATIVE ACCUSED TONER
`BOTTLE PRODUCTS, D.I. 207 (N.D. Ga. March 24, 2014)
`Letter from Canon to Respondents, dated June 3, 2015
`
`- iv -
`
`5
`
`

`
`TABLE OF APPENDICES
`
`Appendix
`I
`II
`III
`IV
`
`Description
`Certified Copy of U.S. Patent No. 8,909,094 Prosecution History2
`Cited References for U.S. Patent No. 8,909,094
`Certified Copy of U.S. Patent No. 9,046,820 Prosecution History3
`Cited References for U.S. Patent No. 9,046,820
`
`2
`
`3
`
`Canon has ordered a certified copy of the U.S. Patent No. 8,909,094 prosecution history,
`and once received, will substitute it for the non-certified version submitted herewith.
`Canon has ordered a certified copy of the U.S. Patent No. 9,046,820 prosecution history,
`and once received, will substitute it for the non-certified version submitted herewith.
`
`- v -
`
`6
`
`

`
`TABLE OF PHYSICAL EXHIBITS
`
`Physical
`Exhibit
`
`A
`
`B
`
`Description
`Color Imaging (General Plastic) toner supply container, model No. FCA2270
`(GPR-15/GPR-16), with packaging
`Canon toner supply container, model No. GPR-30 Toner (Black), with packaging
`
`- vi -
`
`7
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION AND PLAIN-ENGLISH IDENTIFICATION OF
`ACCUSED PRODUCTS.....................................................................................................1
`
`THE PARTIES.....................................................................................................................2
`
`A.
`
`B.
`
`Complainants ...........................................................................................................2
`
`Proposed Respondents .............................................................................................3
`
`1.
`
`2.
`
`General Plastic Industrial Co., Ltd...............................................................3
`
`Color Imaging, Inc.......................................................................................4
`
`THE PRODUCTS AT ISSUE .............................................................................................5
`
`THE ASSERTED PATENTS AND NON-TECHNICAL
`DESCRIPTIONS OF THE INVENTIONS .......................................................................10
`
`A.
`
`The Asserted Patents..............................................................................................10
`
`1.
`
`2.
`
`U.S. Patent No. 8,909,094..........................................................................10
`
`U.S. Patent No. 9,046,820..........................................................................11
`
`B.
`
`C.
`
`D.
`
`Non-Technical Descriptions of the Inventions ......................................................12
`
`Corresponding Patents and Patent Applications....................................................20
`
`Licenses..................................................................................................................26
`
`V.
`
`UNLAWFUL AND UNFAIR ACTS OF THE RESPONDENTS –
`PATENT INFRINGEMENT .............................................................................................26
`
`A.
`
`B.
`
`Representative Accused Toner Containers ............................................................28
`
`Respondents’ Prior Stipulation Concerning Representative
`Accused Toner Containers.....................................................................................28
`
`VI.
`
`SPECIFIC INSTANCES OF IMPORTATION AND SALE ............................................32
`
`VII. DOMESTIC INDUSTRY..................................................................................................33
`
`A.
`
`Economic Prong.....................................................................................................34
`
`1.
`
`2.
`
`Significant Investment in Plant and Equipment.........................................34
`
`Significant Employment of Labor and Capital ..........................................36
`
`- vii -
`
`8
`
`

`
`3.
`3.
`
`Substantial Investment in Exploitation of Asserted Patents ......................37
`Substantial Investment in Exploitation of Asserted Patents .................... ..37
`
`B.
`B.
`
`Technical Prong .....................................................................................................38
`Technical Prong ................................................................................................... ..3 8
`
`VIII. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS.............................................39
`VIII.
`HARMONIZED TARIFF SCHEDULE ITEM NUMBERS ........................................... ..39
`
`IX.
`
`RELATED LITIGATION .................................................................................................39
`RELATED LITIGATION ............................................................................................... ..3 9
`
`A.
`A.
`
`B.
`B.
`
`U.S. Proceedings....................................................................................................39
`U. S. Proceedings .................................................................................................. ..39
`
`Foreign Proceedings...............................................................................................40
`Foreign Proceedings ............................................................................................. ..40
`
`X.
`
`RELIEF REQUESTED......................................................................................................41
`RELIEF REQUESTED .................................................................................................... ..41
`
`- viii -
`— viii -
`
`9
`
`

`
`I.
`
`INTRODUCTION AND PLAIN-ENGLISH IDENTIFICATION OF ACCUSED
`PRODUCTS
`
`1.
`
`Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively,
`
`“Complainants” or “Canon”) file this Complaint pursuant to Section 337 of the Tariff Act of
`
`1930, as amended, 19 U.S.C. § 1337, based upon Respondents’ unlawful importation into the
`
`United States, sale for importation into the United States, and sale within the United States after
`
`importation of certain toner supply containers (“Accused Toner Containers”) and components
`
`thereof that infringe multiple U.S. patents owned by Canon Inc. These toner supply containers
`
`are for use in image forming devices, such as copy machines, to supply toner to the devices for
`
`printing images on paper. For purposes of this action, Canon alleges that the Accused Toner
`
`Containers infringe the following fifteen claims of two such patents (independent claims are
`
`shown in bold):
`
`U.S. Patent No.
`8,909,094
`9,046,820
`
`Short Name
`’094 patent
`’820 patent
`
`Asserted Claims
`1, 7-9, 11, 16-18, 29, and 38
`1, 7-9, and 16
`
`The ’094 and ’820 patents are collectively referred to herein as the “Asserted Patents,” and the
`
`above-listed claims of the Asserted Patents are collectively referred to herein as the “Asserted
`
`Claims.”
`
`2.
`
`The two proposed respondents are General Plastic Industrial Co., Ltd. and Color
`
`Imaging, Inc. These Respondents are currently defendants in Canon Inc. v. Color Imaging, Inc.
`
`et al. in the U.S. District Court for the Northern District of Georgia, Case No. 1:11-cv-03855
`
`(“NDGA District Court Action”), in which Canon has alleged that certain of their toner supply
`
`containers (including but not limited to the Accused Toner Containers) infringe U.S. Patent
`
`No. 7,647,012, which is an earlier-issued patent in the same family as the Asserted Patents.
`
`- 1 -
`
`10
`
`

`
`3.
`
`A domestic industry as required by 19 U.S.C. §§ 1337(a)(2) and (3) exists in the
`
`United States relating to the technology protected by the Asserted Patents. For example, Canon
`
`has manufactured in the United States millions of toner supply containers that utilize the
`
`technology of the Asserted Patents. Since 2013, Canon has installed and placed into operation
`
`various assembly lines that currently are being used to produce toner supply containers that
`
`utilize the technology of the Asserted Patents. During that same time period, Canon has
`
`additionally installed a toner manufacturing line that is being used to manufacture toner for those
`
`toner supply containers. Canon plans to use these assembly and manufacturing lines to continue
`
`to produce such containers and toner for the foreseeable future.
`
`4.
`
`Canon seeks as relief a limited exclusion order against Respondents, barring from
`
`entry into the United States all infringing toner supply containers, including the Accused Toner
`
`Containers, and components thereof. Canon further seeks cease and desist orders prohibiting
`
`Respondents from marketing, distributing, selling, offering for sale, warehousing inventory for
`
`distribution, or otherwise transferring or importing into the United States infringing toner supply
`
`containers and components thereof.
`
`II.
`
`THE PARTIES
`
`A.
`
`5.
`
`Complainants
`
`Canon Inc. (“CINC”) is a corporation organized and existing under the laws of
`
`Japan, with a principal place of business located at 30-2, Shimomaruko 3-chome, Ohta-ku,
`
`Tokyo 146-8501, Japan. CINC owns by assignment the entire right, title, and interest in and to
`
`- 2 -
`
`11
`
`

`
`each of the Asserted Patents. Certified copies of the assignment records of the Asserted Patents
`
`are attached as Exhibit 3.4
`
`6.
`
`Canon U.S.A., Inc. (“CUSA”) is a corporation organized and existing under the
`
`laws of the State of New York, with a principal place of business located at One Canon Park,
`
`Melville, New York 11747. CUSA is the exclusive distributor of Canon’s toner supply
`
`containers in the United States, including all of those that utilize the technology of the Asserted
`
`Patents. CUSA was established in New York in 1965.
`
`7.
`
`Canon Virginia, Inc. (“CVI”) is a corporation organized and existing under the
`
`laws of the Commonwealth of Virginia, with a principal place of business located at 12000
`
`Canon Boulevard, Newport News, Virginia 23606. CVI manufactures toner supply containers
`
`that utilize the technology of the Asserted Patents, and these toner supply containers are sold by
`
`CUSA to third-parties for consumption and/or distribution throughout the United States and in
`
`other countries. CVI was established in Newport News, Virginia in 1985.
`
`8.
`
`CUSA and CVI are both subsidiaries of CINC. See Confidential Ex. 4
`
`(“Confidential Briggs Declaration”), ¶ 2.
`
`B.
`
`Proposed Respondents
`
`1.
`
`General Plastic Industrial Co., Ltd.
`
`9.
`
`On information and belief, General Plastic Industrial Co., Ltd. (“General Plastic”
`
`or “GPI”) is an entity registered in Taiwan, with its principal place of business located at 50 Tzu-
`
`Chiang Road, Wu-Chi Town, Taichung County, Taiwan. On information and belief, General
`
`4
`
`Canon Inc. is the English translation of Canon Kabushiki Kaisha, the latter of which is
`the name listed in the assignment records. The U.S. patent applications identified by
`number in the assignment records are earlier-filed applications in the same family as the
`Asserted Patents, to which the Asserted Patents claim priority.
`
`- 3 -
`
`12
`
`

`
`Plastic is engaged in the design, manufacture, importation into the United States, sale for
`
`importation into the United States, and/or sale within the United States after importation of
`
`Accused Toner Containers, including the sale of Accused Toner Containers to Respondent Color
`
`Imaging, Inc. See Ex. 26 (NDGA District Court Action: General Plastic Amended Answer) at
`
`¶ 5 (“GPI admits that it designs and manufactures toner cartridges5 for Color Imaging.”); id. at
`
`¶ 15 (“GPI admits that it designs and manufactures toner cartridges and offers these toner
`
`cartridges to customers worldwide, including to Color Imaging in the United States.”); Ex. 24
`
`(General Plastic webpage: showing that General Plastic manufactures, markets, and sells “copier
`
`toner cartridges,” among other products). On information and belief, General Plastic conducts
`
`activities via the Internet at least as gpi.com.tw and cartridgeweb.com.
`
`10.
`
`General Plastic owns ten percent or more of the stock of Color Imaging, Inc. Id.
`
`at ¶ 5.
`
`2.
`
`Color Imaging, Inc.
`
`11.
`
`On information and belief, Color Imaging, Inc. (“Color Imaging”) is a corporation
`
`organized and existing under the laws of the State of Georgia (GA Corp. No. 3589599, formed
`
`May 27, 2010), with its principal place of business located at 4350 Peachtree Industrial Blvd.,
`
`Suite 100, Norcross, Georgia 30071. On information and belief, Color Imaging purchases empty
`
`Accused Toner Containers from General Plastic, then fills, packages, and warehouses these
`
`Accused Toner Containers (both empty and filled Accused Toner Containers) at Color Imaging’s
`
`facility in Georgia. See Ex. 27 (NDGA District Court Action: Color Imaging Amended Answer)
`
`at ¶ 15 (“Color Imaging is a customer of General Plastic in the United States.”). On information
`
`5
`
`Respondents sometimes refer to the Accused Toner Containers as “toner cartridges.”
`
`- 4 -
`
`13
`
`

`
`and belief, Color Imaging sells such empty and filled Accused Toner Containers worldwide,
`
`including within the United States. See id.
`
`12.
`
`On information and belief, Color Imaging is engaged in the design, manufacture,
`
`importation into the United States, and/or sale within the United States after importation of
`
`Accused Toner Containers, including Accused Toner Containers manufactured by General
`
`Plastic. See id. at ¶ 5 (“Color Imaging admits that it is the formulator and manufacturer of toner
`
`used in toner cartridges that, upon information and belief, [are] designed and manufactured by
`
`GPI.”); id. at ¶ 15 (“Color Imaging admits that it manufactures color, monochrome, magnetic
`
`character recognition and other specialty toners and fills and sells these toners in bottles, bags,
`
`bulk drums and cartridges.”). On information and belief, Color Imaging conducts activities via
`
`the Internet at least as colorimaging.com.
`
`13.
`
`On information and belief, Color Imaging leases its approximately 320,000 square
`
`feet manufacturing facility in Norcross, Georgia from Kings Brothers, LLC, an affiliated Georgia
`
`company having the same principal place of business as Color Imaging. See Ex. 21 (GA SOS
`
`Record – Kings Brothers, LLC); Ex. 25 (Color Imaging Website – “Company Profile”). On
`
`information and belief, Color Imaging also has the same principal place of business as GPI USA,
`
`Inc., a Georgia company affiliated with General Plastic. See Ex. 22 (GA SOS Record – GPI
`
`USA, Inc.).
`
`III.
`
`THE PRODUCTS AT ISSUE
`
`14.
`
`The products at issue are toner supply containers for use in Canon image forming
`
`devices such as copy machines, including certain of Canon’s imageRUNNER®,
`
`imageRUNNER® ADVANCE, and imagePRESS® copy machines. An example of Canon’s
`
`- 5 -
`
`14
`
`

`
`toner supply container model No. GPR-30 Toner (Black) and imageRUNNER® ADVANCE
`
`C5045 copy machine in which the container is used are shown below.
`
`15.
`
`For more than three decades, Canon has been a leading innovator in the field of
`
`electrophotographic imaging, the technology used in copy machines and other imaging devices
`
`to produce images on a recording medium, such as paper. Canon zealously seeks to protect its
`
`innovations in this field by filing patent applications on them, both in the United States and
`
`abroad. To date, Canon has received approximately 11,600 U.S. patents relating to
`
`electrophotographic image forming apparatuses and processes.
`
`16.
`
`In order to form images on a medium such as paper, Canon copy machines utilize
`
`a powder-like substance called toner, which is applied to a light-sensitive drum in the copy
`
`machine, transferred from the drum to a sheet of paper, and finally fused to the paper through a
`
`combination of heat and pressure to create a copy. As a copy machine makes copies, toner is
`
`consumed, so that toner needs to be replaced periodically throughout the life of the copy
`
`machine.
`
`17.
`
`Both the nature of toner that is used and the manner in which that toner is
`
`supplied to the copy machine have a substantial impact on the quality of the copies that the
`
`machine creates. Moreover, toner can be a messy substance which can adhere to hands and
`
`clothes and cause parts of the copy machine to jam if it is supplied to the copy machine
`
`- 6 -
`
`15
`
`

`
`improperly. Accordingly, it is very desirable that the toner be contained and provided in a
`
`manner that allows the user to replenish the machine with toner, without causing any unwanted
`
`discharge of toner on the user or within the machine.
`
`18.
`
`Canon has been researching, developing, and improving toner supply systems for
`
`copy machines for more than thirty years. In earlier days, Canon provided toner for its copy
`
`machines in so-called bulk form, in which the toner was provided in a receptacle and the user
`
`was required to pour the toner into the machine to fill a hopper located therein. The bulk toner
`
`approach relied upon the force of gravity to discharge the toner from the receptacle, and provided
`
`the toner to the copy machine all at once. Speaking generally, the bulk toner approach was
`
`cumbersome, and caused numerous problems, including that (a) it was messy, and could result in
`
`unwanted toner being discharged on the user or within the machine during the filling process;
`
`(b) it could result in an overflow of the hopper, again causing the presence of unwanted toner
`
`within the machine; (c) due to the consistency of the toner, it was difficult to discharge all of the
`
`toner contained in the receptacle into the hopper, and some portion of the toner in the receptacle
`
`would therefore often be wasted; and (d) again due to the consistency of the toner, the pouring
`
`process was time consuming (a minute or more) and generally required that the user tap or bang
`
`the receptacle to cause the toner to fall out of it and into the hopper. Accordingly, since at least
`
`the 1970s, Canon has worked to invent new and improved ways to reduce the user’s contact with
`
`the toner and enable the toner to be delivered to the copy machine in the most user-friendly and
`
`efficient manner possible.
`
`19.
`
`More specifically, in the 1970s and through the mid-1980s, Canon provided toner
`
`to users in an aluminum bag, which the user in essence tore open to allow the toner to be poured
`
`into the machine. This approach was messy, as it provided very little in the way of isolating the
`
`- 7 -
`
`16
`
`

`
`toner from the user or protecting against spillage. Accordingly, in the mid-1980s, Canon
`
`introduced a new toner supply system in which the toner was provided in a hard plastic
`
`container, which the user could mount vertically on top of the copy machine and allow the toner
`
`to be released by pulling out a seal. This approach proved to be cleaner than the aluminum bag
`
`approach, since it provided some added isolation between the toner and the user, but still
`
`suffered from the aforementioned problems. To isolate the user from the toner even further, in
`
`the early-1990s Canon developed an improved bulk toner supply approach, in which the
`
`unsealing of the toner container was coordinated with the opening of a shutter in the hopper, and
`
`the toner seal, which would naturally be smeared with toner dust, was automatically rolled-up
`
`into the toner container during the unsealing operation. Once again, this approach, while
`
`representing an improvement over the approach developed in the mid-1980s, continued to suffer
`
`from the aforementioned problems.
`
`20.
`
`In view of the problems of providing toner in bulk form as described above,
`
`Canon invested substantial resources in the research and development of toner containers of what
`
`it called the “Set On” type. The Set On toner containers that Canon developed are designed to be
`
`inserted into the copy machine and remain there during copy machine operation, discharging the
`
`toner that they contain on a substantially continuous basis. Canon developed one such toner
`
`container—which it called Set On I—from about 1994 through 1998. The Set On I container
`
`included an internal auger which rotated during copy machine operation, so that while the
`
`container remained fixed within the copy machine, the rotation of the auger caused the toner to
`
`move and discharge for use. Canon received U.S. and foreign patents on its Set On I design, and
`
`utilized the Set On I design commercially. However, the Set On I design had certain drawbacks,
`
`including that the moving parts made it expensive and complex, and limitations in terms of how
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`much toner it could contain, since it was found that too much toner would inhibit the rotation of
`
`the auger.
`
`21.
`
`In an effort to solve the problems of the Set On I design, Canon developed
`
`another toner container, which it called Set On II. The Set On II container also remained fixed
`
`within the copy machine, and included an internal arrangement of paddles which rotated to move
`
`the toner and cause its discharge. Canon received U.S. and foreign patents on its Set On II
`
`design, and also utilized the Set On II design commercially. However, the Set On II design
`
`suffered from drawbacks similar to those of Set On I, namely, that the moving paddles within the
`
`container made the design expensive and complex, and placed limitations on the amount of toner
`
`that could be accommodated.
`
`22.
`
`In the 1998-1999 timeframe, Canon began a research and development program
`
`in an effort to create a new toner supply container design, which would solve the problems of
`
`both the Set On I and Set On II designs. It is this new design of toner supply container—which
`
`Canon calls Set On III—that resulted in the Asserted Patents, among other patents. In the
`
`patented Set On III container, there are no moving parts within the container to move the toner
`
`and cause its discharge, and the container itself is designed to be rotated by a part in the copy
`
`machine to cause the discharge of the toner. The Set On III toner supply container is less
`
`complex and expensive than the prior Set On containers, can accommodate larger amounts of
`
`toner than its predecessors, and discharges toner in an effective and efficient manner.
`
`23.
`
`The patented technology at issue here relates specifically to the inventive design
`
`of the Set On III toner supply container, which includes a sealing member that is capable of
`
`interfacing with a part in the copy machine to (a) allow the toner supply container to be opened
`
`following its insertion into the machine; (b) allow the toner supply container to be rotated during
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`the copying operation of the machine to effect the discharge of toner; and (c) allow the toner
`
`supply container to be closed so that it can be removed from the machine after the toner is used
`
`up.
`
`24.
`
`Respondents sell for importation into the United States, import into the United
`
`States, and/or sell within the United States after importation the Accused Toner Containers,
`
`which are intended as substitutes for toner supply containers manufactured and sold by Canon.
`
`These Accused Toner Containers are covered by one or more of the Asserted Claims, and
`
`therefore infringe the Asserted Patents.
`
`IV.
`
`THE ASSERTED PATENTS AND NON-TECHNICAL
`DESCRIPTIONS OF THE INVENTIONS
`
`A.
`
`25.
`
`The Asserted Patents
`
`The Asserted Patents, namely, the ’094 and ’820 patents, belong to the same
`
`patent family. Complainant CINC owns by assignment the entire right, title, and interest in and
`
`to each of the Asserted Patents. See Ex. 3. Certified copies of the Asserted Patents are attached
`
`as Exhibits 1 and 2.6
`
`1.
`
`U.S. Patent No. 8,909,094
`
`26.
`
`The ’094 patent, titled “Sealing Member, Toner Accommodating Container and
`
`Image Forming Apparatus,” issued on December 9, 2014, from U.S. Application
`
`No. 13/617,050, filed September 14, 2012, which claims priority through a series of U.S. patent
`
`applications to Japanese Application Nos. 2001-042536, filed February 19, 2001, and 2001-
`
`6
`
`Canon has ordered a certified copy of U.S. Patent No. 9,046,820, and once received, will
`substitute it for the non-certified version submitted herewith.
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`197546, filed June 28, 2001. Yusuke Yamada, Yutaka Ban, Katsuya Murakami, Fumio Tazawa,
`
`and Hironori Minagawa are the named inventors on the ’094 patent.
`
`27.
`
`Pursuant to Commission Rule 210.12(c), four copies of the certified prosecution
`
`history of the ’094 patent (U.S. Application No. 13/617,050) have been submitted with this
`
`Complaint as Appendix I,7 and four copies of the cited references for the ’094 patent have been
`
`submitted with this Complaint as Appendix II.
`
`2.
`
`U.S. Patent No. 9,046,820
`
`28.
`
`The 9,046,820 patent, titled “Sealing Member, Toner Accommodating Container
`
`and Image Forming Apparatus,” issued on June 2, 2015, from U.S. Application No. 14/532,438,
`
`filed November 4, 2014, which is a division of U.S. Application No. 13/617,050 (which issued
`
`as the ’094 patent), filed September 14, 2012, and which claims priority through a series of U.S.
`
`patent applications to Japanese Application Nos. 2001-042536, filed February 19, 2001, and
`
`2001-197546, filed June 28, 2001. Yusuke Yamada, Yutaka Ban, Katsuya Murakami, Fumio
`
`Tazawa, and Hironori Minagawa are the named inventors on the ’820 patent.
`
`29.
`
`Pursuant to Commission Rule 210.12(c), four copies of the certified prosecution
`
`history of the ’820 patent (U.S. Application No. 14/532,438) have been submitted with this
`
`Complaint as Appendix III,8 and four copies of the cited references for the ’820 patent have been
`
`submitted with this Complaint as Appendix IV.
`
`7
`
`8
`
`Canon has ordered a certified copy of the U.S. Patent No. 8,909,094 prosecution history,
`and once received, will substitute it for the non-certified version submitted herewith.
`Canon has ordered a certified copy of the U.S. Patent No. 9,046,820 prosecution history,
`and once received, will substitute it for the non-certified version submitted herewith.
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`B.
`
`30.
`
`Non-Technical Descriptions of the Inventions9
`
`As mentioned above, the ’094 and ’820 patents are both part of the same patent
`
`family and disclose the same subject matter (i.e., their specifications and drawings are the same),
`
`but claim different aspects of the inventions disclosed therein. Generally, these patents describe
`
`and claim an inventive toner supply container, including a sealing member, which is usable in an
`
`electrophotographic image forming apparatus, such as a copy machine.
`
`31.
`
`At a very basic level, a copy machine works by adhering a fine powdery
`
`substance, called toner, to a sheet of paper in a pattern that matches the text or image to be
`
`copied. Because toner is consumed each time a copy is made, from time to time a copier’s toner
`
`supply must be replenished. Toner is very messy, so care must be taken to avoid getting it on
`
`one’s hands, clothing, or workspace, or on the copier itself. To allow users to replenish their
`
`own toner, manufacturers often supply toner in the form of a sealed container that can be
`
`installed in the copier whenever a fresh supply of toner is needed. When the toner supply is
`
`depleted, the user removes the container and replaces it with a full one. In that way, from the
`
`user’s perspective, replenishing the copier’s toner supply is as simple as switching out
`
`containers.
`
`32.
`
`The ideal toner supply container is one that is easily installable and removable for
`
`a user, one that reliably seals the toner within the container when the container is outside the
`
`copy machine, one that discharges the right amount of toner at the right time when installed in
`
`the copy machine, and one that is economical. The toner supply containers described and
`
`9
`
`This description and any other non-technical descriptions within this Complaint are for
`illustrative purposes only. Nothing in any non-technical description contained within this
`Complaint is intended to express or imply any position regarding the proper construction
`or scope of any claim of