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In re Papst Licensing GmbH & Co. KG Litigation

United States District Court, District of Columbia

November 20, 2012


Page 44

Steven John Routh, Timothy Vann Pearce, Jr., Sten A. Jensen, Orrick, Herrington & Sutcliffe, LLP, Washington, DC, James P. White, John Aron Carnahan, Joseph E. Cwik, Walter J. Kawula, Jr., William Francis Demarest, Jr., Yasmin S. Schnayer, Husch Blackwell, LLP, Chicago, IL, Rachel M. Capoccia, Alston & Bird LLP, Los Angeles, CA, David Schumann, Fenwick & West, LLP, San Francisco, CA, for Plaintiffs.

Richard de Bodo, DLA Piper LLP, Los Angeles, CA, Daniel R. Cherry, Welsh & Katz, Ltd., Chicago, IL, for Plaintiffs/Defendants.

Patrick J. Kelleher, Drinker BiddleGardner Carton, Raymond R Ricordati, III, Husch Blackwell, LLP, David L. Witcoff, Marc S. Blackman, Jones Day, Timothy J. Vezeau, Katten Muchin Zavis Rosenman, Chicago, IL, William Francis Demarest, Jr., Husch Blackwell LLP, Paul Devinsky, McDermott, Will & Emery, Mark E. Ungerman, Morrison & Foerster LLP, Washington, DC, James L. Wamsley, III, Jones Day, Cleveland, OH, for Defendants.


ROSEMARY M. COLLYER, District Judge.

Papst Licensing GmbH & Co. KG brought suit against Samsung Techwin

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Co., Ltd., and Samsung Opto-Electronics America, Inc., for alleged infringement of Patent Nos. 6,470,399 and 6,895,449. Defendants seek summary judgment of noninfringement on forty-seven accused products that Defendants assert they never made, used, sold, offered, or imported in/into the United States.[2] The eight-page motion has occasioned a blizzard of paper but none that effectively challenges Defendants' sworn affidavits. In an effort to avoid summary judgment, Papst claims indirect infringement by inducement but that claim was not sufficiently preserved in its final infringement contentions and will not be heard now. Papst also argues that it needs discovery, but nothing on which it seeks discovery would refute the highly confidential sales records that Defendants already have shared with Papst. Summary judgment of noninfringement as to the forty-seven products will be granted to Defendants.


This suit has a long procedural history. In June 2007, Papst brought suit against Korea-based Samsung Techwin Company (Techwin) and its U.S. subsidiary, Samsung Opto-Electronics America, Inc. (Opto-Electronics) (collectively, Defendants).[3] Papst complained that Defendants infringed U.S. Patent Nos. 6,470,399 and 6,895,449 (the Patents) by " making, using, offering to sell or selling within the United States and/or importing into the United States ... digital cameras" covered by the Patents. See Papst Licensing GmbH & Co. KG v. Samsung Techwin Co. (Papst v. Techwin), Civ. No. 07-2088 (D.D.C.), Compl. [Dkt. 3-1] ¶¶ 9, 17. Papst also alleged that Defendants " actively induced others and/or contributed to the infringement" of the Patents. Id. ¶¶ 10, 18.

The Multi District Litigation Panel transferred the case into this Multi District Litigation (MDL). See id., MDL Transfer Order [Dkt. 1]. In September 2008, the Court held a three-day Markman hearing.[4] Thereafter, the Court rendered its claims construction opinion and order. See Modified Claims Construction Op. [Dkt. 336]; Modified Order [Dkt. 337] (replacing original claims construction Op. [Dkt. 312] and Order [Dkt. 313] ).

In February 2009, after the claims construction hearing but before the claims construction ruling, Techwin transferred its digital camera business to Samsung Digital Imaging Company, which in turn merged its digital camera business into Korea-based Samsung Electronics Company Ltd. on April 1, 2010.[5] Before Techwin's transfer to Samsung Digital Imaging Company, co-Defendant Opto-Electronics purchased digital cameras made by Techwin and Opto-Electronics

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sold these cameras in the United States. See Mot. for Summ. J. Regarding Wrongfully Accused Products [Dkt. 448], Ex. 2 (First Lee Decl.) ¶ 2; Resp. to Surreply [Dkt. 495], Ex. 8 (Second Lee Decl.) ¶ 2.

A year and a half after Techwin spun-off its digital camera business, in October 2010, Papst moved for leave to file a first amended complaint, seeking to add as defendants in Papst v. Techwin, the following: Samsung Electronics Company Ltd. and its U.S. subsidiaries, Samsung Electronics America, Inc. and Samsung Telecommunications America, LLC. (all three collectively, Samsung Electronics Entities). The Court denied the motion to amend because it was untimely and because it would complicate and delay the litigation against Defendants.[6] See Op. [Dkt. 424]; Order [Dkt. 425].

Thereafter, the Court ordered Papst to file final asserted infringement claims and contentions (Final Contentions) in compliance with detailed requirements. See Mot. for Sanctions [Dkt. 388], Ex. A (Tr. of Aug. 31, 2010 Hearing); Sixth Prac. & Pro. Order (Sixth PPO) [Dkt. 372]. In January 2011, Papst filed Final Contentions, but because Papst failed to follow the direct orders of the Court, the Court ordered sanctions. See Final Contentions [Dkt. 416]; Sanctions Op. [Dkt. 429]; Sanctions Order [Dkt. 430]. In the Sanctions Order, the Court barred Papst " from advancing any arguments for infringement ... that are not set forth specifically and explicitly" in the Final Contentions. See Sanctions Order [Dkt. 430] at 2. In its Final Contentions, Papst also attempted to advance claims against the Samsung Electronics Entities that are not part of this MDL. In the Sanctions Order, the Court struck all contentions that assert claims against the Samsung Electronics Entities. Id.


Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment shall be granted " if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Moreover, summary judgment is properly granted against a party who " after adequate time for discovery and upon motion ... fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

In ruling on a motion for summary judgment, the court must draw all justifiable inferences in the nonmoving party's favor. Anderson, 477 U.S. at 255, 106 S.Ct. 2505. A nonmoving party, however, must establish more than " the mere existence of a scintilla of evidence" in support of its position. Id. at 252, 106 S.Ct. 2505. The nonmoving party must point out specific facts showing that there is a genuine issue for trial. Celotex, 477 U.S. at 324, 106 S.Ct. 2548. In addition, the nonmoving party may not rely solely on allegations or conclusory statements. Greene v. Dalton, 164 F.3d 671, 675 (D.C.Cir.1999). Rather, the nonmoving party must present specific facts that would enable a reasonable jury to find in its favor. Id. at 675. If the evidence " is merely colorable, or is not significantly probative, summary judgment

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may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citations omitted).

Papst seeks additional discovery under Federal Rule of Civil Procedure 56(d), which provides:

If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:
(1) defer considering the motion or deny it;
(2) allow time to obtain affidavits or declarations or to take discovery; or
(3) issue any other appropriate order.

Fed.R.Civ.P. 56(d). " The nonmoving party bears the burden of identifying the facts to be discovered that would create a triable issue and the reasons why the party cannot produce those facts in opposition to the motion. The nonmoving party must show a reasonable basis to suggest that discovery would reveal triable issues of fact." Scott-Blanton v. Universal City Studios Prods. LLLP, 246 F.R.D. 344, 347 (D.D.C.2007), aff'd 308 Fed.Appx. 452 (D.C.Cir.2009). A generalized, speculative request for more discovery is insufficient; a request for more discovery must show that " further specific discovery will defeat a summary judgment motion." Estate of Parsons v. Palestinian Auth., 715 F.Supp.2d 27, 35 (D.D.C.2010), aff'd, 651 F.3d 118 (D.C.Cir.2011).


In its Final Contentions, Papst accused Defendants and the Samsung Electronics Entities of infringement, pointing to over 350 " Samsung" products. Since the Samsung Electronics Entities are not parties in this MDL, especially after this Court barred their untimely addition, Defendants asked Papst to withdraw its contentions regarding certain alleged " Samsung" products that the Samsung Electronics Entities may have made, used, sold, offered for sale, or imported (" made/sold" ) in/into the United States, but that were not made/sold in the United ...

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