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In re Papst Licensing Gmbh & Co. Kg Litigation

United States District Court, District Circuit

May 8, 2013

IN RE PAPST LICENSING GMBH & CO. KG LITIGATION. MDL No. 1880 This document relates to ALL CASES

MEMORANDUM OPINION RE: CAMERA MANUFACTURERS' MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT WITH RESPECT TO THE "DATA TRANSMIT/RECEIVE DEVICE" CLAIM LIMITATION

ROSEMARY M. COLLYER, District Judge.

Papst Licensing GmbH & Co. KG, a German company, sues multiple manufacturers of digital cameras for alleged infringement of two patents owned by Papst: U.S. Patent Number 6, 470, 399 (399 Patent) and U.S. Patent Number 6, 895, 449 (449 Patent). The Camera Manufacturers[1] have moved for summary judgment of noninfringement with respect to the "data transmit/receive device" claim limitation in both Patents, asserting that when accused devices (basically, digital cameras) operate in Universal Serial Bus (USB) Mass. Storage Class (MSC) mode they do not infringe the Patents as alleged. Papst contends that specific external accessories such as lenses, flashes, GPS units, and printers constitute data transmit/receive devices within the meaning of the Patents because such accessories can transmit data to a computer via a camera operating in MSC mode. However, Papst fails to back up its argument with any evidence that contravenes the Camera Manufacturers' evidence that when the accused cameras are connected to a computer in MSC mode, the specified accessories do not and cannot transmit any data through the camera to the computer. Thus, such accessories do not and cannot meet the "data transmit/receive device" limitation in the Patents when the camera is in MSC mode. Papst fails to point to any genuine disputes over issues of material fact. The Camera Manufacturers' motion for summary judgment will be granted.

I. FACTS[2]

Papst alleges that certain accused devices manufactured and/or sold by the

Camera Manufacturers are "interface devices" that infringe Claims 1-3, 5, 7, 11, and 14-15 of the 399 Patent and Claims 1-2, 6-9, 12-13, and 15-18 of the 449 Patent. The accused products include digital cameras, camcorders, and digital voice recorders.

Each of the asserted Patent Claims requires a "data transmit/receive device" that can transmit data to a computer via the invention, an "interface device." For example, Claim 1 of the 449 Patent states:

What is claimed is:
1. An interface device for communication between a host device, which comprises drivers for input/output devices customary in a host device and a multi-purpose interface, and a data transmit/receive device comprising the following features:
a processor;
a memory;
a first connecting device for interfacing the host device with the interface device via the multi-purpose interface of the host device; and
a second connecting device for interfacing the interface device with the data transmit/receive device,
wherein the interface device is configured by the processor and the memory in such a way that the interface device, when receiving an inquiry from the host device as to the type of a device attached to the multi-purpose interface of the host device, sends a signal, regardless of the type of the data transmit/receive device attached to the second connecting device of the interface device, to the host device which signals to the host device that it is a storage device customary in a host device, whereupon the host device communicates with the interface device by means of the driver for the storage device customary in a host device, and
wherein the interface device is arranged for simulating a virtual file system to the host, the virtual file system including a directory structure.

449 Patent, Claim 1, 11:45-67 & 12:1-6 (emphases added); 399 Patent, Claim 1, 12:41-67 & 13:1-13 (as relevant here, the same as the 449 Patent).[3]

The Court construed the contested claims of the 399 and 449 Patents, finding that the term "data transmit/receive device" means "a device that is capable of either (a) transmitting data to or (b) transmitting data to and receiving data from the host device when connected to the host device by the interface device. " Modified Claims Construction Op. [Dkt. 336] (Claims Constr. Op.) at 31 (emphasis added); see also Order [Dkt. 337] at 2.[4] The immediate motion for summary judgment is based on the "data transmit/receive device" claim limitation and the Court's determination that a data transmit/receive device is a device capable of data transmission " when connected to the host device by the interface device" - that is, when the data transmit/receive device is attached to the invented interface device and thereby connected to the host computer.

The invention at issue is a "Flexible Interface for Communication Between a Host and an Analog I/O Device Connected to the Interface Regardless of the Type of the I/O Device." 399 Patent, Title; 449 Patent, Title. An I/O device is an input/output device, repeatedly referred to as a "data transmit/receive device" in the Patents. See, e.g., 399 Patent 3:43-44 & 13:1-2; 449 Patent 4:6-7 & 11:63-64. A "host" is a computer. The 449 Patent is a continuation or divisional patent[5] that is quite similar to the 399 Patent. They share the same block diagram drawings, Figures 1 and 2. See, e.g., 399 Patent 9:15-16 ("Figure 2 shows a detailed block diagram of an interface device, according to the present invention"); 449 Patent 8:15-16 (same). The 399 and 449 Patents also share much of the same specification.

The "interface device" is designed to provide data transfer between a data transmit/receive device and a computer without the need for special software; this is accomplished by telling the computer that the interface device is a transmit/receive device already known to the computer (and for which the computer already has drivers, i.e., software), regardless of what kind of data transmit/receive device actually is attached to the interface device. 399 Patent, Abstract; 449 Patent, Abstract. The Patents are "based on the finding that both a high data transfer rate and host device-independent use can be achieved if a driver for an input/output device customary in a host device, normally present in most commercially available host devices, is utilized, " instead of special driver software. 399 Patent 4:23-27; 449 Patent 3:27-31 (same); see also 399 Patent 6:19-22 (in the preferred embodiment, "[r]egardless of which data transmit/receive device at the output line 16 is attached to the second connecting device, the digital signal processor 13 informs the host device that it is communicating with a hard disk drive"); 499 Patent 5:19-22 (same).[6] Thus, the purpose of the invention is "to allow fast communication between dissimilar data transmit/receive devices and computers, without the need for special software drivers." Claims Constr. Op. at 22; see 399 Patent 3:24-27 (the purpose of the invention is to provide "communication between a host device and a data transmit/receive device whose use is host device-independent and which delivers a high data transfer rate"); 449 Patent 3:20-23 (same).

The Court determined that the Claims in both Patents provide that the data transmit/receive device is attached to the interface device when the computer initiates a data transfer from the data transmit/receive device. For example, Claim One of the 449 Patent states:

wherein the interface device is configured by the processor and the memory in such a way that the interface device, when receiving an inquiry from the host device as to the type of a device attached to the multi-purpose interface of the host device, sends a signal, regardless of the type of the data transmit/receive device attached to the second connecting device of the interface device, to the host device which signals to the host device that it is a storage device customary in a host device, whereupon the host device communicates with the interface device by means of the driver for the storage device customary in a host device.

449 Patent, Claim 1, 11:59-67, 12:1-3 (emphases added); 399 Patent, Claim 1, 12:64-67, 13:1-8 (emphasized portions the same; substitutes the term "input/output device" for "storage device"). Each of the asserted independent Claims contains similar language, indicating that the data transmit/receive device is attached to the interface device when data is transmitted from the data transmit/receive device to the computer via the interface device. See 399 Patent, Claims 1, 11, and 14; 449 Patent, Claims 1, 17, and 18.[7]

Beyond the Claims themselves, the specifications informed the construction that a data transmit/receive device must be capable of transmitting data to a computer when it is attached to the computer via the interface device. With regard to a preferred embodiment of the invention, the specification states:

If the user now wishes to read data from the data transmit/receive device via the line 16, the host device sends a command..., whereby [the second command interpreter] begins to transfer data from the data transmit/receive device via the second connecting device to the first connecting device and via the line 11 to the host device.

399 Patent 6:55-67; 449 Patent 5:55-67 (same). As the Court explained in the Claims Construction Opinion, a data transmit/receive device does not transmit data to the interface device until the interface device is connected to the computer:

[D]ata does not begin to be sent from the data transmit/receive device to the interface device until the computer and the interface device have established communication; only then does the second command interpreter begin "to transfer data from the data transmit/receive device via the second connecting device"..., then on to "the first connecting device and via the line 11 to the host device."

Claims Constr. Op. at 44 (quoting 399 Patent 6:64-67 & 449 Patent 5:64-67). The interface device allows attachment of a variety of data transmit/receive devices. See 399 Patent 1:56-59 ("It is therefore desirable that an interface be sufficiently flexible to permit attachment of very different electrical or electronic systems to a host device by means of the interface.") (emphases added); 449 Patent 1:57-60 (same). The terms "attachment" and "line" connote a physical connection. Claims Constr. Op at 37.

Data transfer from a data transmit/receive device to a computer when they are both connected to the interface device is also described in the specification as follows:

Preferably, the interface device according to the present invention simulates a hard disk with a root directory whose entries are "virtual" files which can be created for the most varied functions. When the host device system with which the interface device according to the present invention is connected is booted and a data transmit/receive device is also attached to the interface device 10, usual BIOS routines or multi-purpose interface programs issue an instruction, known by those skilled in the art as the INQUIRY instruction, to the input/output interfaces in the host device. The digital signal processor 13 receives this inquiry instruction via the first connecting device and generates a signal which is sent to the host device (not shown) again via the first connecting device 12 and the host line 11. This signal indicates to the host device that, for example, a hard disk drive is attached at the interface to which the INQUIRY instruction was sent....
Regardless of which data transmit/receive device at the output line 16 is attached to the second connecting device, the digital signal processor 13 informs the host device that it is communicating with a hard disk drive.

399 Patent 5:67 & 6:1-22 (emphases added); 449 Patent 4:66-67 & 5:1-22 (same).

Even the title of the invention reflects the basic concept of "connectedness" at the time of data transfer. The invention is titled "Flexible Interface for Communication Between a Host and an Analog I/O Device Connected to the Interface Regardless of the Type of the I/O Device." See 399 Patent, Title; 449 Patent, Title. The title refers to communication between the computer (host) and the data transmit/receive device (I/O device), via the interface device, when the three are "connected."

Papst filed Final Infringement Contentions asserting that certain accused MSC-capable products are "interface devices" that infringe the Patents. See Final Infringement Contentions (FICs) [Dkt. 416], Table 12 (MSC-capable products that allegedly infringe the 399 Patent) & Table 13 (MSC-capable products that allegedly infringe the 449 Patent) (collectively, the "Accused Cameras").[8] Papst also alleges that certain external accessories operate as data transmit/receive devices, leading to infringement when utilized with the Accused Cameras. See generally FICs at 7-10.[9] The Final Infringement Contentions identify these "External Accessories" as:

(1) audio and audio/visual devices (Table 1);
(2) flashes (Table 2);
(3) external data devices such as GPS units, bar code scanners, and remote ...

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