Ricoh Co., Ltd. v. Quanta Computer Inc.

• Decision Date: 23 December 2008
• Docket Number: No. 2007-1567.,2007-1567.
• Citation: 550 F.3d 1325
• Parties: RICOH COMPANY, LTD., Plaintiff-Appellant, v. QUANTA COMPUTER INC., Quanta Storage, Inc., Quanta Computer USA, Inc., and NU Technology, Inc., Defendants-Appellees, and Business Line Data, Philips Optical Storage, and Philips Taiwan, Ltd., Defendants.
• Court: U.S. Court of Appeals — Federal Circuit

550 F.3d 1325

RICOH COMPANY, LTD., Plaintiff-Appellant, v. QUANTA COMPUTER INC., Quanta Storage, Inc., Quanta Computer USA, Inc., and NU Technology, Inc., Defendants-Appellees, and Business Line Data, Philips Optical Storage, and Philips Taiwan, Ltd., Defendants.

No. 2007-1567.

United States Court of Appeals, Federal Circuit.

December 23, 2008.

John C. Rozendaal, Kellogg, Huber, Hansen, Todd, of Washington, DC, argued for plaintiff-appellant. With him on the brief were Mark C. Hansen, Michael E. Joffre, Richard H. Stern. Of counsel on the brief was Ivan S. Kavrukov, Cooper & Dunham LLP, of New York, NY.

Terrence D. Garnett, Paul, Hastings, of Los Angeles, CA, argued for Defendants-Appellees and Defendants. With him on the brief were Vincent K. Yip, Peter J. Weid, and Jay C. Chiu. Of counsel were Hua Chen, Daniel Prince, Todd Snyder, and Katherine F. Murray.

Before GAJARSA, LINN, and DYK Circuit Judges.

PER CURIAM.

This is a patent infringement case. Plaintiff-appellant Ricoh Company, Ltd. ("Ricoh") appeals from a summary judgment dismissing all claims against defendant-appellees Quanta Computer Inc. ("QCI"), Quanta Storage, Inc. ("QSI"), Quanta Computer USA, Inc. ("QCA"), and NU Technology, Inc. ("NU"). On summary judgment, the district court ruled that the asserted claims of U.S. Patent No. 6,631,109 ("the `109 patent") are invalid for obviousness; that the accused devices do not practice the methods of the asserted claims of U.S. Patent No. 6,172,955 ("the '955 patent"); and that Ricoh failed to present evidence sufficient to create a material issue of fact as to either direct or indirect infringement of U.S. Patent Nos. 5,063,552 ("the '552 patent") and 6,661,755 ("the '755 patent") by the defendant-appellees. Ricoh Co. v. Quanta Computer, Inc., 579 F.Supp.2d 1110 (W.D.Wisc.2007) ("Summary Judgment Order"). Because the district court applied erroneous legal standards for assessing (1) whether Quanta contributorily infringed the '552 and '755 patents and (2) whether QSI induced infringement of the '552 and '755 patents, the district court's summary judgment of noninfringement is vacated on these issues. The remainder of the decision is affirmed in all respects.

BACKGROUND

The patents in suit are directed to various aspects of optical disc drive technology.¹ Recordable optical discs and disc drives (e.g., CD-R, DVD-R) allow a user to permanently record data, and rewritable optical discs and disc drives (e.g., CD-RW, DVD-RW) allow a user to record, erase, or overwrite data. Recording speeds are expressed as multiples of a nominal standard speed referred to as "1X speed." 1X speed corresponds to a disc having a linear velocity of 1.2 to 1.4 meters per second ("m/s") relative to the laser beam, while a 4X speed corresponds to a linear velocity of 4.8 to 5.6 m/s.²

The '109 patent is directed to methods and apparatuses for generating a particular pulse sequence for recording information to a rewritable optical disc. '109 patent col.3 1.66 to col.4 1.30. Rewritable optical discs store information on a "phase change" material, usually a metal alloy. Id. at col.1 ll.17-22. When writing, a rewritable optical disc drive can thus use a laser pulse sequence or write strategy to change the material from a relatively crystalline phase (having a more ordered atomic structure) to a relatively amorphous phase (having a more disordered atomic structure), and vice versa. Id. at col.2 ll.8-15. When reading, the laser can detect these regions based on their different reflective properties.

The asserted method claims of the '109 patent cover a specific write strategy for making legible marks on phase-change optical discs over a wide range of disc speeds. Asserted claim 1 of the '109 patent states:

An optical recording method which records a sequence of data blocks onto a recording layer of an optical recording medium by emitting light to the recording layer of the medium and changing a phase of a recording material of the recording layer, comprising the steps of:

applying a light source driving power to a light source to control emission of a light beam to the recording layer of the medium, the driving power including a sequence of mark and space portions, each mark portion having a pulse width that corresponds to a multiple of a period T of a write clock based on a write data modulation method;

setting a multi-pulse waveform of each mark portion of the driving power that includes a front-end portion, a multi-pulse portion and a tail-end portion, the front-end portion having a first pulse width t1 with a high-power write level Pw and starting from a middle-power erase level Pe, the multi-pulse portion including a sequence of write pulses each having a second pulse width t2 with the write level Pw and a third pulse width t3 with a low-power base level Pb, the multi-pulse portion having a given duty ratio z = t2/(t2 + t3), and the tail-end portion having a fourth pulse width t4 with the base level Pb and ending at the erase level Pe;

setting a linear velocity of rotation of the medium at a controlled speed; and

controlling the waveform when the linear velocity of rotation of the medium is set in a high-speed range from 5 m/s to 28 m/s, such that the first pulse width t1 of the front-end portion ranges 0.1 T to 1T and the fourth pulse width t4 of the tail-end portion ranges 0.2T to 1.3T.

Id. at col. 12 l.65 to col. 13 l.28.

The '955 patent is directed to methods and apparatuses for formatting rewritable optical discs. '955 patent col.1 ll.10-14. For certain types of recording modes, a rewritable disc must be formatted by dividing the recording area on the disc into fixed-sized units, called packets. Id. at col.2 ll.14-19. If formatting occurs as a foreground process, the optical disc drive is incapable of performing read or write commands during the formatting period. Id. at col.2 ll.22-29. Thus, the '955 patent teaches formatting as a background process, such that the background formatting can be interrupted to carry out a read or write command. The optical disc drive employs background formatting by misinforming the host computer that it is not busy formatting, allowing the host computer to send read or write commands to the drive. Id. at col.4 ll.20-24.

Asserted claim 8 of the '955 patent states:

A formatting method for formatting a rewritable optical disc, data being recorded on said optical disc by using a fixed packet write method, said formatting method comprising the steps of:

starting a formatting process for said optical disc as a background process, the formatting process being performed so as to fill a recording area of said optical disc by packets having a fixed length;

enabling execution of at least one of a recording process and a reproducing process by interrupting the formatting process and resuming the formatting process after the at least one of the recording process and the reproducing process is ended; and

ending the formatting process after the recording area to be formatted has been filled by the packets having the fixed length.

'955 patent col. 13 ll.34-50.

The '552 patent is directed to an apparatus and method for controlling the velocity at which a disc drive spins an optical disc. Optical disc drives typically spin discs at either a constant angular velocity ("CAV") or a constant linear velocity ("CLV"). '552 patent col.1 ll.19-24. In a CAV system, the disc completes the same number of revolutions per unit time, regardless of where on the disc the laser beam is positioned. Id. at col.1 ll.25-38. In a CLV system, the linear velocity of the disc is constant relative to the laser beam, such that the disc is turning faster when the laser is near the center of the disc and slower when the laser is near the outer edge of the disc. Id. at col.1 ll.39-46. The use of a CLV system increases the recording capacity of an optical disc but requires more complicated machinery in the optical disc drive. Id. at col.2 ll.15-36. The invention of the '552 patent addresses this trade-off through the use of Zone-CLV. Zone-CLV, as claimed in the '552 patent, divides an optical disc into annular zones, wherein each zone is recorded at constant linear velocity, but different linear velocities are used for different zones. '552 patent col.3 ll.5-68.

Asserted claim 1 of the '552 patent states:

A method for controlling an information recording and/or reproduction speed "f" and a rotation speed "n" of an optical disk used in an information recording and/or reproduction device, said optical disk having a plurality of tracks in the form of concentric circles or a spiral, said information recording and/or reproduction device being adapted to access said tracks by means of a light beam while rotating said optical disk, thereby to optically record information on or reproduce information from said tracks, said method comprising the steps of:

dividing said tracks into a plurality of concentric annular blocks which are different in radius from each other;

changing said information recording and/or reproduction speed "f" in accordance with the radius of a track to be accessed in such a manner that said recording and/or reproduction speed "f" is constant within a block but different as between said blocks depending on the block radii; and

changing said rotation speed "n" of said optical disk in such a manner that f/(n-r) is constant, where "r" is the radius of said track to be accessed.

'552 patent col.8 l.48 to col.9 l.3.

The '755 patent is directed to methods of writing data to optical discs in multiple sessions. '755 patent col.3 ll.34-44. Optical disc drives typically store the data to be written to the optical disc in a temporary memory called the buffer. Id. at col.1 ll.37-40. Many optical disc drives can write data to a disc faster than the data is received by the buffer, which can cause the buffer to go empty — a condition known as "buffer run." Id. at col.1 ll.54-63. In addition, at the time the...