IN RE PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION. PAPST LICENSING GMBH & CO. KG, Plaintiff-Appellant,
FUJIFILM CORPORATION, FUJIFILM NORTH AMERICA CORPORATION (formerly known as Fujifilm USA, Inc.), HEWLETT-PACKARD COMPANY, JVC COMPANY OF AMERICA, NIKON CORPORATION, NIKON, INC., OLYMPUS CORP., OLYMPUS IMAGING AMERICA INC., PANASONIC CORPORATION (formerly known as Matsushita Electric Industrial Co., LTD.), PANASONIC CORPORATION OF NORTH AMERICA, SAMSUNG OPTO-ELECTRONICS AMERICA, INC., SAMSUNG TECHWIN CO., AND VICTOR COMPANY OF JAPAN, LTD., Defendants-Appellees
As Corrected February 9, 2015.
Counsel Amended February 6, 2015.
[Copyrighted Material Omitted]
Appeal fro the United States District Court for the District of Columbia in No. 1:07-mc-00493-RMC, Judge Rosemary M. Collyer.
JOHN T. BATTAGLIA, Fisch Sigler LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief were ALAN M. FISCH and ROY WILLIAM SIGLER.
RACHEL M. CAPOCCIA, Alston & Bird LLP, of Los Angeles, California, argued for defendants-appellees. With her on the brief for Panasonic Corporation, et al., was THOMAS W. DAVISON. On the brief for Fujifilm Corporation, et al., were STEVEN J. ROUTH, STEN A. JENSEN, JOHN R. INGE and T. VANN PEARCE, JR, Orrick, Herrington & Sutcliffe LLP, of Washington, DC. On the brief for Nikon Corporation, et al., were DAVID L. WITCOFF and MARC S. BLACKMAN, Jones Day, of Chicago, Illinois. Of counsel was MARRON ANN MAHONEY. On the brief for Olympus Corporation, et al., were RICHARD DE BODO and ANDREW V. DEVKAR, Bingham McCutchen LLP, of Santa Monica, California. Of counsel was SUSAN BAKER MANNING, Morgan, Lewis & Bockius LLP, of Washington, DC. On the brief for Samsung Techwin, Co., et al., was PATRICK J. KELLEHER, Drinker Biddle & Reath LLP, of Chicago, Illinois.
CHARLENE M. MORROW, Fenwick & West LLP, of Mountain View, California, argued for defendant-appellee Hewlett-Packard Company. With her on the brief were DAVID D. SCHUMANN and BRYAN A. KOHM, of San Francisco, CA.
Before TARANTO, SCHALL, and CHEN, Circuit Judges.
[113 U.S.P.Q.2d 1535] Taranto, Circuit Judge.
Papst Licensing GmbH & Co. KG owns U.S. Patent Nos. 6,470,399 and 6,895,449. The written descriptions are largely the same, the '449 patent having issued on a divisional application carved out of the application that became the '399 patent. The focus of both patents is an interface device for transferring data between an input/ output data device and a host computer. The current appeal involves whether certain digital-camera manufacturers infringe Papst's patents. The district court, applying and elaborating on its constructions of various claim terms, entered summary judgment of non-infringement, concluding that none of the manufacturers' accused products at issue here come within any of the asserted claims. Papst appeals five claim constructions. We agree with Papst that the district court erred in the identified respects. We therefore vacate the summary judgment of non-infringement.
The '399 and '449 patents, both entitled " Flexible Interface for Communication Between a Host and an Analog I/O Device Connected to the Interface Regardless the Type of the I/O Device," disclose a device designed to facilitate the transfer of data between a host computer and another device on which data can be placed or from which data can be acquired. '399 patent, Title and Abstract. The written description states that, while interface devices were known at the time of the invention, the existing devices had limitations, including that they tended to require disadvantageous sacrifices of data-transfer speed or of flexibility as to what host computers and data devices they would work with. '399 patent, col. 1, line 15, to col. 2, line 13. Thus, " standard interfaces" --those " which, with specific driver software, can be used with a variety
[113 U.S.P.Q.2d 1536] of host systems" --" generally require very sophisticated drivers" to be downloaded onto the host computer, but such drivers " are prone to malfunction and . . . limit data transfer rates." Id. at col. 1, lines 22-28. On the other hand, with interface devices that " specifically match the interface very closely to individual host systems or computer systems," " high data transfer rates are possible," but such interface devices " generally cannot be used with other host systems or their use is very ineffective." Id. at col. 1, line 67, to col. 2, line 7. The fast, host-tailored interface also " must be installed inside the computer casing to achieve maximum data transfer rates," which is a problem for laptops and other space-constrained host systems. Id. at col. 2, lines 8-13.
The patents describe an interface device intended to overcome those limitations. It is common ground between the parties that, when a host computer detects that a new device has been connected to it, a normal course of action is this: the host
asks the new device what type of device it is; the connected device responds; the host determines whether it already possesses drivers for (instructions for communicating with) the identified type of device; and if it does not, the host must obtain device-specific drivers (from somewhere) before it can engage in the full intended communication with the new device. In the patents at issue, when the interface device of the invention is connected to a host, it responds to the host's request for identification by stating that it is a type of device, such as a hard drive, for which the host system already has a working driver. By answering in that manner, the interface device induces the host to treat it--and, indirectly, data devices on the other side of the interface device, no matter what type of devices they are--like the device that is already familiar to the host. Thereafter, when the host communicates with the interface device to request data from or control the operation of the data device, the host uses its native device driver, and the interface device translates the communications into a form understandable by the connected data device. See id. at col. 3, line 25, to col. 5, line 32.
The interface device of the invention thus does not require that a " specially designed driver" for the interface device be loaded into a host computer--neither a " standard" one to be used for a variety of hosts nor one customized for a particular host. Id. at col. 5, line 15. Instead, it uses a host's own familiar driver, which (as for a hard drive) often will have been designed (by the computer system's manufacturer) to work fast and reliably. The result, says the written description, is to allow data transfer at high speed without needing a new set of instructions for every host--" 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." Id. col. 3, lines 25-28.
Claim 1 of the '399 patent sets forth the specifics of the claimed interface device:
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 multipurpose 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,
[113 U.S.P.Q.2d 1537] 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 initiating a transfer of the digital data to the host device.
Id. col. 12, line 42, to col. 13, line 13 (emphases added to highlight language of particular significance to the issues on appeal). Claim 1 of the '449 patent is similar, but it does not require the data device to be an analog device, and it requires the interface device to respond to the host that it is a storage device. '449 patent, col. 11, line 46, to col. 12, line 6. A few other differences between the claims are discussed infra.
Beginning in 2006, Papst sent letters to major digital-camera manufacturers, accusing them of infringing its patents and requesting that they enter into negotiations to license its inventions. One of the manufacturers sued Papst in the United States District Court for the District of Columbia, seeking a declaratory judgment of non-infringement. In 2008, Papst filed infringement suits against the camera manufacturers in multiple district courts across the ...