IN RE PAPST LICENSING GMBH & CO. KG LITIGATION. This document relates to ALLCASES MDL No. 1880.
OPINION RE: CAMERA MANUFACTURERS' MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT REGARDING DEVICES IDENTIFIED IN TABLE 15
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 have moved for summary judgment of noninfringement with respect to the devices listed in Table 15 of Papst Final Infringement Contentions. Because Papst has not alleged infringement with regard to these devices with the required specificity, the motion will be granted.
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. Michael Tasler invented and patented the "interface device" and later sold the Patents to Papst. The invention was never produced or used.
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; see also 399 Patent 5:67 & 6:1-22; 449 Patent 4:66-67 & 5:1-22. By directing the computer to communicate using customary software already in the computer, the interface device can fulfill its purpose-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." 399 Patent 3:24-27; 449 Patent 3:20-23 (same).
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. Specifically, Papst's Final Infringement Contentions assert that (1) the Mass. Storage Class (MSC) accused devices listed in Table 12 infringe the 399 Patent; (2) the MSC accused devices listed in Table 13 infringe the 449 Patent; and (3) the Picture Transfer Protocol (PTP) accused devices listed in Table 14 infringe the 399 Patent. See Final Infringement Contentions (FICs) [Dkt. 416], Tables 12 & 13 & Table 14.
Papst also expressly noted that it lacked sufficient information to allege that other devices infringe, setting forth a list of such products on Table 15, titled "Devices likely to be MSC Capable, PTP Capable, or both." FICs at 307-13 (Table 15). With regard to Table 15, the Final Infringement Contentions (FICs) assert:
Papst has not received adequate discovery for Papst to determine if the devices in Table 15 are MSC Capable Devices, PTP Capable Devices, or both. Papst asserts that a reasonable opportunity for discovery is likely to show evidentiary support that these devices are either MSC Capable Devices, PTP Capable Devices, or both. To the extent that the devices are MSC Capable Devices, Papst asserts that a reasonable opportunity for discovery is likely to show evidentiary support that they infringe Claims 1, 2, 3, 5, 7, 11, 14, and 15 of the 399 patent, and Claims 1, 2, 6, 7, 8, 9, 12, 13, 15, 16, 17, and 18 of the 449 patent, literally and/or under the doctrine of equivalents. To the extent that the devices are PTP Capable Devices, Papst asserts that a reasonable opportunity for discovery is likely to show evidentiary support that they infringe Claims 1, 3, 5, 11, and 14 of the 449 patent, literally and/or under the doctrine of equivalents. To the extent that the devices are not MSC Capable Devices or PTP Capable Devices, Papst asserts that a reasonable opportunity for discovery is likely to show evidentiary support that they may infringe Claims 1, 2, 3, 5, 7, 11, 14, and 15 of the 399 patent, and Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, and 18 of the 449 patent, literally and/or under the doctrine of equivalents. Papst reserves the right to revise or update these contentions upon receipt of sufficient further relevant discovery from the [Camera Manufacturers].
FICs at 307. In sum, Papst made no specific allegations against the Table 15 products; it alleged only that discovery would likely show evidentiary support that these products are MSC and/or PTP devices.
The Camera Manufacturers seek summary judgment of noninfringement because Papst has not alleged infringement with any specificity whatsoever with regard to the devices set forth in Table 15, and the Court's Sanctions Opinion and Order prohibit Papst from modifying its FICs. See Mot. for Summ. J. Re Table 15 Devices [Dkt. 447]; Reply [Dkt. 505].
The Sanctions Opinion and Order, issued on February 8, 2011, required Papst to file infringement contentions with specificity. See Sanctions Op. [Dkt. 429]; Sanctions Order [Dkt. 430]. The Sanctions Order arose from Papst's failure to follow Court orders. The Court mandated that Papst revise its original infringement contentions, as Papst had filed them before the Court construed the Patents. See Claims Constr. Op. [Dkt. 336] (interpreting the claims in the Patents). The Court and the parties discussed the need for final contentions from Papst at a discovery status conference in August 2010. The Court chastised Papst for failing to propose focused discovery and ordered Papst to define its asserted claims and infringement contentions in light of the claims construction:
I said focused discovery and what I got was a shotgun shell. I mean, everything. I do not consider that focused and I don't think that it fulfills my obligation to get this done quickly and with the least expense possible under the circumstances. So what I think we need to start with is the concept that Papst filed infringement contentions... and hasn't changed them, hasn't indicated it wants to change them, hasn't indicated it plans or needs to change them but now says [it] need[s] a ton of discovery. I'm not sure that all of your contentions can stand in light of the claims construction decision which I appreciate you don't like, it's okay. But nobody knows what they're fighting about now. Nobody can tell and you don't want to tell them, and we're not going to do it that way. I mean, you're the plaintiff. You have allegations, you need to say what they are. So the first thing is I'm going to direct Papst to refile its claims contentions, its infringement contentions.... File that, then we'll know what we're arguing about. Only then can we figure out what discovery is really needed.
See Mot. for Sanctions [Dkt. 388], Ex. A (Tr. of Aug. 31, 2010 Hearing) at 18-19. The Court further directed, "you have got to bring your infringement contentions up to date. People have to know what they're litigating about. And only when you do can you then say okay, this is the discovery we need for these reasons." Id. at 32. The Court told Papst that its asserted claims and infringement contentions needed to be clear cut:
First you have to decide what your infringement contentions are. Only when you know what, what camera you're asserting [infringes] what claim and for what reason[, ] can you possibly figure out what ...