In re Papst Licensing Gmbh & Co. Kg Litig..This Document Relates To:hewlett Packard Co. v. Papst Licensing Gmbh & Co. Kg

• Decision Date: 15 June 2011
• Docket Number: Misc. Action No. 07–493 (RMC).MDL No. 1880.
• Citation: 791 F.Supp.2d 175
• Court: U.S. District Court — District of Columbia
• Parties: In re PAPST LICENSING GMBH & CO. KG LITIGATION.This Document Relates To:Hewlett Packard Co. v. Papst Licensing GmbH & Co. KG, 08–865 (D.D.C.).

791 F.Supp.2d 175

In re PAPST LICENSING GMBH & CO. KG LITIGATION.This Document Relates To:Hewlett Packard Co.

v. Papst Licensing GmbH & Co. KG, 08–865 (D.D.C.).

Misc. Action No. 07–493 (RMC).MDL No. 1880.

United States District Court, District of Columbia.

June 15, 2011.

Steven John Routh, Sten A. Jensen, Orrick, Herrington & Sutcliffe, LLP, Washington, DC, Daniel R. Cherry, Welsh & Katz, Ltd., James P. White, John Aron Carnahan, Joseph E. Cwik, Walter J. Kawula, Jr., Husch Blackwell, LLP, Chicago, IL, Rachel M. Capoccia, Alston & Bird, LLP, Los Angeles, CA, Heather N. Mewes, Fenwick & West, LLP, San Francisco, CA, for Plaintiffs.Patrick J. Kelleher, Drinker, Biddle, Gardner, Carton, Daniel R. Cherry, Welsh & Katz, Ltd., David L. Witcoff, Marc S. Blackman, Jones Day, Timothy J. Vezeau, Katten, Muchin, Zavis, Rosenman, Chicago, IL, Richard De Bodo, DLA Piper LLP, Los Angeles, CA, Paul Devinsky, McDermott, Will & Emery, Mark E. Ungerman, Morrison & Foerster, LLP, Washington, DC, James L. Wamsley, III, Jones Day, Cleveland, OH, for Defendants.

MEMORANDUM OPINION ON PAPST'S MOTION FOR PARTIAL RECONSIDERATION OF THE COURT'S ORDER ON HP'S MOTION TO STRIKE

ROSEMARY M. COLLYER, District Judge.

In this Multi District Litigation (“MDL”), Papst Licensing GmbH & Co. (“Papst”) has alleged that digital camera manufacturers that sell products in the United States have infringed U.S. Patent Nos. 6,470,399 (“'399 Patent”) and 6,895,449 (“'449 Patent”) (collectively the “Patents”). The Camera Manufacturers (“CMs”) seek a declaratory judgment of non-infringement and/or patent invalidity.¹

Papst filed its Final Asserted Claims and Infringement Contentions, and then revised them pursuant to the consent of the parties and leave of Court on January 21, 2011. See Final Asserted Claims and Contentions [Dkt. # 416] (revising and replacing prior version at [Dkt. # 379] ) (hereinafter “Final Asserted Claims and Infringement Contentions”). Hewlett Packard Company (“HP”) moved to strike all of those claims and contentions that were asserted against HP because (1) they contravened Papst's admissions and representations to the Court that HP's accused devices do not infringe the Patents and (2) they improperly added new accused products to this litigation. The Court granted in part and denied in part the motion, striking the claims and contentions against HP's digital cameras and against Palm products and staying the claims and contentions against HP as a seller of digital cameras manufactured by other companies. Papst now moves for partial reconsideration, seeking reconsideration of the order striking the claims and contentions against HP's digital cameras. Papst does not seek reconsideration of the order as it relates to the Palm products or the stay of the claims against HP as a seller of digital cameras manufactured by others. In opposition, HP moves for sanctions, alleging that by filing the motion for reconsideration Papst and its counsel have unreasonably multiplied these proceedings. Both motions will be denied.

I. FACTS

On May 28, 2008, Papst filed its Asserted Claims and Infringement Contentions pursuant to the Second Practice and Procedure Order [Dkt. # 36]. See Claims and Infringement Contentions [Dkt. # 110]. The Court held a claims construction hearing September 22 through 24, 2008, and rendered its final claims construction opinion and order on November 24, 2009, 670 F.Supp.2d 16 (D.D.C.2009). See Modified Claims Construction Op. [Dkt. # 336]; Modified Order [Dkt. # 337].²

Subsequently, Papst and HP filed a joint motion for entry of judgment in Hewlett Packard Co. v. Papst Licensing GmbH & Co. KG, 08–865 (D.D.C.). See Joint Mot. for J. [Dkt. # 346]. The judgment that Papst and HP proposed to be entered stated that HP's products do not infringe the Patents because they do not include a “second connecting device” as defined by the Court in the claims construction opinion. The judgment proposed stated:

The Court has construed the term “second connecting device.” (Doc. No. 337 at ¶ 8.). Solely for the purposes of this case no. 08–cv–865 and pursuant to the other conditions of this Judgment, Papst stipulates that under the Court's construction of that term, as further elaborated upon by the court in Doc. No. 336, the Accused Devices do not infringe any claim of either the ' 399 patent or the '449 patent. The basis for this stipulation of noninfringement is that each of the Accused Devices lacks an interface device having a plug or socket that permits a user readily to physically attach/detach the interface device to/from a data transmit/receive device outside the Accused Device. Nothing herein is a stipulation or admission by HP that any part of this language reads on any structure in any Accused Device. Papst disputes the aforementioned claim construction and submits that the Accused Devices do infringe the claims if they were correctly construed. HP disagrees. Papst reserves all rights to appeal all issues pertaining to the aforementioned claim construction and any finding of noninfringement based thereon. No stipulation is made by Papst regarding the effect of the Court's construction of other terms.

Joint Mot. for J. [Dkt. # 346], Ex. A (Proposed Judgment) ¶ 9. Papst also sought a stay of all proceedings in this MDL pending disposition of Papst's planned appeal of the entry of judgment in favor of HP. See Papst's Mot. to Stay All Other Proceedings [Dkt. # 347]. That motion explained, “Whatever happens in the appeal in the HP case would have a profound impact on the other cases [in this MDL]. Accordingly, it makes sense to await the result in the appeal of the HP case before undertaking further proceedings in the other cases.” Id. at 1.

The other Camera Manufacturers pointed out that because entry of judgment in the HP case would dispose of fewer than all of the parties and issues in this consolidated MDL, Papst would not be able to appeal judgment in the HP case without a certification under Federal Rule of Civil Procedure 54(b). See CM's Opp'n [Dkt. # 348] (citing Spraytex, Inc. v. DJS & T, 96 F.3d 1377, 1382 (Fed.Cir.1996) (“Absent Rule 54(b) certification, there may be no appeal of a judgment disposing of fewer than all aspects of a consolidated case.”)). Moreover, while the appeal of the HP judgment would have a profound impact on this MDL, only Papst and HP would be represented in that appeal. The Camera Manufacturers would have had no right to be heard in that appeal. The possibility that they could file an amicus brief was insufficient to protect their rights. Accordingly, the Court denied the joint motion for entry of judgment and Papst's motion to stay. See Minute Order entered July 30, 2010. Because the Court denied the motion, the stipulation between Papst and HP never went into legal effect. Even so, in the process of seeking entry of judgment, Papst repeatedly represented to the Court that the accused HP products do not infringe the Patents because they lack a “second connecting device” as defined by the Court. Those representations are detailed below.

In addition to denying the motions for entry of judgment and a stay, the Minute Order of July 30, 2010, required Papst and the Camera Manufacturers to “meet and confer and jointly submit a focused discovery proposal and deadlines.” See id. Each party submitted its own proposal. See Proposal [Dkt. # 367].³ The Court and the parties discussed the proposals at a status conference on August 31, 2010. At that conference, the Court directed Papst to bring its asserted claims and infringement contentions up-to-date, stating “[p]eople have to know what they're litigating about. And only when you do [state your contentions] can you then say okay, this is the discovery we need for these reasons.” CMs' Mot. for Sanctions [Dkt. # 388], Ex. A (Tr. of Aug. 31, 2010 Hearing) at 32. The Court expressly directed Papst to be specific in its asserted claims and infringement contentions:

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 discovery you might need that you don't already have.Id. at 33–34.

As a result of the August 31, 2010 status conference, the Court issued its Sixth Practice and Procedure Order. See Sixth Practice & Procedure Order [Dkt. # 372]. That Order defined the specificity required for the Final Asserted Claims and Infringement Contentions as follows:

2. No later than October 13, 2010, Papst shall file its Final Disclosure of Asserted Claims and Infringement Contentions. Separately for each opposing party, this Final Disclosure shall contain the following information:

a. Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted;

b. Separately for each asserted claim, each accused apparatus, product, device, process, method, act or other instrumentality (“Accused Instrumentality”) of each opposing party of which Papst is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known or by any product, device or apparatus which, when used, allegedly results in the practice of the claimed method or process;

c. A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function.

d. For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute...