In re Papst Licensing Gmbh & Co. Kg Litigation
| Decision Date | 24 November 2009 |
| Docket Number | MDL No. 1880.,Misc. Action No. 07-493 (RMC). |
| Citation | 670 F.Supp.2d 16 |
| Parties | In re PAPST LICENSING GMBH & CO. KG LITIGATION. This Document Relates to the First Wave Cases—Fujifilm Corp. v. Papst, 07-cv-1118; Matsushita Elec. Indus. Co., Ltd. v. Papst, 07-cv-1222; Papst v. Olympus Corp., 07-cv-2086; Papst v. Samsung Techwin Co., 07-cv-2088; Papst v. Ricoh Co. Ltd., 07-cv-612; Hewlett Packard Co. v. Papst, 08-cv-865; and Papst v. Nikon Corp., 08-cv-985. |
| Court | U.S. District Court — District of Columbia |
Steven John Routh, Sten A. Jensen, Orrick, Herrington & Sutcliffe, LLP, Washington, DC, for Fujifilm Corporation.
Daniel R. Cherry, Welsh & Katz, Ltd., James P. White, John Aron Carnahan, Joseph E. Cwik, Walter J. Kawula, Jr., Husch Blackwell Sanders LLP, Chicago, IL, William Francis Demarest, Jr., Husch Blackwell Sanders LLP, Washington, DC, for Papst Licensing GmbH & Co. Kg Litigation.
Adam K. Levin, Hogan & Hartson LLP, Paul Devinsky, McDermott, Will & Emery, Washington, DC, Rachel M. Capoccia, Richard De Bodo, Hogan & Hartson LLP, Los Angeles, CA, Patrick J. Kelleher, Drinker Biddle Gardner Carton, David L. Witcoff, Marc S. Blackman, Jones Day, Chicago, IL, for Matsushita Elec. Indus. Co., Ltd., Olympus Corp., Samsung Techwin Co., Ricoh Co. Ltd. Nikon Corp. Heather N. Mewes, Fenwick & West LLP, San Francisco, CA, for Hewlett Packard Co.
MODIFIED MEMORANDUM OPINION REGARDING CLAIMS CONSTRUCTION
Papst Licensing GMBH & Co. ("Papst") acquired two patents from inventor Michael Tasler and in this MDL has alleged that digital camera manufacturers that sell products in the United States have infringed its patents. Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Court is required to construe the contested claims of the patents before a jury can determine whether the accused products infringe.
Papst alleges that the Camera Manufacturers1 (also referred to as "CMs") infringe two patents: U.S. Patent Nos. 6,470,399 ("'399 Patent") and 6,895,449 ("'449 Patent") (collectively the "Patents"). The Court held a claims construction hearing on September 22 through 24, 2008, with the benefit of extensive briefing and arguments by Papst and the Camera Manufacturers.2 For purposes of this MDL, Papst is treated as the plaintiff regardless of how any individual lawsuit originated in its home court.
The Court issued its Memorandum Opinion Regarding Claims Construction on June 12, 2009, 624 F.Supp.2d 54 (D.D.C. 2009). Papst filed a Request for Clarification and Reconsideration of Part of the Court's Order Regarding Claims Construction on July 13, 2009. See Dkt. # 321. This Modified Opinion grants the request for reconsideration. For ease of future review, if any, it contains the full opinion in a single document and the June 12, 2009, Memorandum Opinion and Order [Dkt. ## 312 & 313] will be vacated.
Papst is a German company, whose business is to acquire and enforce intellectual property rights. That is, it acquires patents on products or methods invented by others and then searches the world for products it might challenge for infringement. When faced with such a challenge, the allegedly infringing party chooses whether (1) to enter into a licensing agreement and pay royalties to Papst or (2) to take part in patent infringement litigation, either as a defendant in an infringement suit seeking damages filed by Papst or as a plaintiff in a suit seeking declaratory judgment of non-infringement against Papst. In this case, Papst acquired certain rights to the Patents from the inventor, Michael Tasler. Papst then sought to negotiate license agreements with manufacturers of digital cameras all over the world. When numerous manufacturers who sell digital cameras in the United States refused to enter licensing agreements with Papst, Papst and the manufacturers filed lawsuits against one another and this MDL ensued.
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; 3 449 Patent, col. 3:20-23 (emphasis added); see '399 Patent, col. 3:24-27 ("It is an object of the present invention to provide an interface device for 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.").
The '399 Patent was issued on October 22, 2002, with an application date of March 3, 1998; the '449 Patent was issued on May 17, 2005, with an application date of August 15, 2002. As of March 1998, when Mr. Tasler applied for the '399 Patent, Tr. 1:5 (Papst).4 Another problem with the prior art was that "if you start[ed] installing specific drivers for each piece of hardware that you add[ed] to the computer, these drivers [could] start butting heads with each other ... [and] [t]he computer crashe[d]." Id. 1:6 (Papst). Drivers Tr. 1:5 (Papst). However, all kinds of computers could "communicate with ... very common hardware devices such as hard disk drives" and printers. Id. 1:7 (Papst). "The present invention is 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, col. 4:23-27; see also '449 Patent, col. 3:27-30 (same).
[T]o make his invention flexible [Mr. Tasler sought] to simulate one of these customary devices [such as the hard disk drive already on the computer] and be able to communicate with the computer with the language that it already knew and to in fact configure the data to simulate files and file systems that the computers would expect to see, [making the communication between the device and the computer] faster and more reliable.
He also saw that by not writing drivers, specific drivers for his own interface device and instead causing the computer to use the drivers that were supplied by the computer makers that he would achieve a more reliable invention, a more reliable data communication and in fact, the drivers for certain of these devices such as the disk drives were highly optimized for each operating system so they worked very well and transferred data at a very fast rate compared to the drivers for the known interface devices.
Also he made it easier to hook one of these up. He put into the interface device the ability to respond to an inquiry from a computer and generate a response that would cause the computer to recognize it as a piece of hardware that [the computer] already knew about and then by doing that [the interface device] allowed the computer to install, recognize and install the interface device without any input from the person who is using the computer [because no special driver was needed].
Tr. 1:7-8 (Papst).
To illustrate the nature of the invention at the claims construction hearing, Papst showed a "prototype board" (an integrated circuit board) and "matched up" the devices on the prototype board "that corresponded with some of the things that are shown" in Figure 2 of each Patent. Id. 1:11 (Papst); see also id. 1:19-20 (Papst). "[T]he circuit board itself was designed by Mr. Tasler," id. 1:13 (Papst), meaning that Mr. Tasler himself selected and arranged the configuration and connections between the parts on the circuit board. Id. 1:13-14 (Papst). Papst noted calibration relays on the right side of the board, suggesting the inputs, amplifiers, and sample and hold circuits in Figure 2, where...
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