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 BASED ON THE LIMITATION OF AN "INPUT/OUTPUT [STORAGE] DEVICE CUSTOMARY IN A HOST DEVICE"
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 "input/output [storage] device customary in a host device" claim limitation in both Patents. The Camera Manufacturers' motion for summary judgment will be granted in part and denied in part. The Picture Transfer Protocol accused devices do not meet the "customary in a host device" limitation because they identify themselves to a computer as still image capture devices (scanners) that could not be found inside computers at the time of the invention. In contrast, the Mass. Storage Class accused devices meet the "customary in a host device" limitation because they identify themselves as mass storage devices (hard drives) that were commonly found inside computers at the relevant time. Summary judgment of noninfringement will be granted with regard to the Picture Transfer Protocol accused devices only.
A. The Invention
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. The 449 Patent is a continuation or divisional patent 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 specification describes communication between the interface device and a computer, explaining that in response to a query from the computer, the interface device sends a signal to the computer indicating that, for example, a hard disk drive is attached to the interface device:
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 (emphasis added); 449 Patent 4:66-67 & 5:1-22 (same). In other words, when a computer receives a signal from the interface device that the interface device is, for example, a hard disk drive, the computer communicates with the interface device using its customary software for a hard disk drive.
By fooling the computer into communicating using its own customary software, 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); see Claims Constr. Op. at 22 (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"); 399 Patent 4:23-27 (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); 449 Patent 3:27-31 (same).
B. "Customary in a Host Device" Claim Limitation
Each of the asserted Patent Claims includes the "customary in a host device" claim limitation. That is, every independent claim of the 399 Patent requires the interface device to identify itself to the host device (computer) as an "input/output device customary in a host device, " and every independent claim of the 449 Patent requires the interface device to identify itself to the computer as a "storage device customary in a host device." For example, Claim One of the 399 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, the data transmit/receive device being arranged for providing analog data, comprising:
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, the second connecting device including a sampling circuit for sampling the analog data provided by the data transmit/receive device and an analog-to-digital converter for converting data sampled by the sampling circuit into digital data,
wherein the interface device is configured by the processor and the memory to include a first command interpreter and a second command interpreter,
wherein the first command interpreter is configured in such a way that the command interpreter, when receiving an inquiry from the host device as to a 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 an input/output device customary in a host device, whereupon the host device communicates with the interface device by means of the driver for the input/output device customary in a host device, and
wherein the second command interpreter is configured to interpret a data request command from the host device to the type of input/output device signaled by the first command interpreter as a data transfer command for ...