In Re: Papst Licensing Digital Camera Patent Litigation - Mdl 1880 ( 2011 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
IN RE PAPST LICENSING GMBH & CO. KG
LITIGATION
Misc. Action No. 07-493 (RMC)
MDL Docket No. 1880
This Document Relates To:
Hewlett Packard Co. v. Papst Licensing GmbH &
Co. KG, 08-865 (D.D.C.)
MEMORANDUM OPINION ON HP’S MOTION TO STRIKE
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”). In opposition, the camera manufacturers seek a declaratory judgment of non-
infringement and/or patent invalidity.1
1
This litigation currently consists of First and Second Wave Cases. The “First Wave Cases,”
currently are: 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; Hewlett
Packard Co. v. Papst, 08-cv-865; and Papst v. Nikon Corp., 08-cv-985. The “First Wave Camera
Manufacturers” include: Fujifilm Corporation; Fujifilm U.S.A., Inc.; Fujifilm Japan; Matsushita
Electric Industrial Co., Ltd.; Victor Company of Japan, Ltd.; Olympus Corporation; Olympus
Imaging America Inc.; Samsung Techwin Co.; Samsung Opto-Electronics America, Inc.; Panasonic
Corporation of North America; JVC Company of America; Hewlett-Packard Company; Nikon
Corporation; and Nikon, Inc. The “Second Wave Cases” are: Papst v. Canon, 08-cv-1406; Papst
v. Eastman Kodak, 08-cv-1407; Papst v. Sanyo, 09-cv-530. The “Second Wave Camera
Manufacturers” include: Canon, Inc.; Canon USA, Inc.; Eastman Kodak Company; Sanyo Electric
Co., Ltd; and Sanyo North America Corporation. At the time this Court gained jurisdiction over the
Second Wave Cases, the First Wave Cases were on the eve of the September 2008 claims
construction hearing. Because no discovery had been conducted in the Second Wave Cases, those
cases could not be addressed in the claims construction hearing. Rather than put the First Wave
Papst filed its Final Asserted Claims and Infringement Contentions pursuant to the
Court’s order. See Revised Final Asserted Claims and Contentions [Dkt. # 416] (revising prior
version at [Dkt. # 379]). Hewlett Packard Company (“HP”) moves to strike all of those claims and
contentions that are asserted against HP because (1) they contravene Papst’s admission and
representation to the Court that HP’s accused devices do not infringe and (2) they improperly add
new accused products to this litigation. The motion will be granted in part and denied in part. The
claims and contentions against HP’s digital cameras and against Palm products will be stricken. The
claims and contentions against HP as a seller of digital cameras manufactured by other companies
will be stayed as against HP.
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. 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 they proposed to be entered stated:
Cases on hold for an extended period while the Second Wave Cases conducted discovery and caught
up, the Court stayed the Second Wave Cases. The Second Wave Cases currently remain stayed. See
Seventh Practice and Procedure Order [Dkt. # 391].
2
The Modified Claims Construction Opinion and Order were issued upon reconsideration
and replaced the original opinion and order filed on June 12, 2009. See Op. [Dkt. # 312]; Order
[Dkt. # 313]. Papst filed a second motion for reconsideration, but that motion was denied on January
29, 2010. See Order [Dkt. # 343].
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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 appeal arising from 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 a decision 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
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that appeal. The Camera Manufacturers would have had no right to be heard in that litigation. 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, Papst and HP’s stipulation 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 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 stay, the Minute Order
of July 30, 2010, required the parties to “meet and confer and jointly submit a focused discovery
proposal and deadlines.” See id. The parties each filed their own proposal, although they put them
in one document. See Proposal [Dkt. # 367]. 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 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 told Papst that its asserted claims and infringement contentions needed to be
specific:
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
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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 to or are inducing
that direct infringement. Insofar as alleged direct infringement is
based on joint acts of multiple parties, the role of each such party in
the direct infringement must be described.
e. Whether each limitation of each asserted claim is alleged to be
literally present or present under the doctrine of equivalents in the
Accused Instrumentality; and
f. For any patent that claims priority to an earlier application, the
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priority date to which each asserted claim allegedly is entitled.3
Id. ¶ 2.
Pursuant to the Sixth Practice and Procedure Order, on October 13, 2010, 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 Revised Final Asserted Claims
and Contentions [Dkt. # 416] (revising prior version at [Dkt. # 379]) (“Final Asserted Claims and
Infringement Contentions”). HP contends that the Final Asserted Claims and Infringement
Contentions against HP and its products should be stricken because (1) they contravene Papst’s
admission that HP’s accused devices do not infringe pursuant to the Court’s construction of the term
“second connecting device” and (2) because Papst improperly added new accused products to this
litigation.
III. ANALYSIS
A. Papst’s Factual Statements to the Court
HP seeks to hold Papst to its own factual statements that the accused HP devices do
not infringe the Patents because they lack a “second connecting device.” Papst argues that it should
not be held to its prior statements because the stipulation proffered by Papst and HP in their motion
for entry of judgment was never formally entered and, therefore, judicial estoppel does not prevent
Papst from asserting new infringement contentions against HP.
Papst correctly notes that its stipulation of non-infringement with HP was not adopted
by the Court and that judicial estoppel does not prevent a party from changing its position when the
position was never ruled on. See Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1249 (2010)
3
See Rule 3-1 of the Local Rules of Practice for Patent Cases before the U.S. District Court
for the Northern District of California (“N.D. Calif. Local Patent Rules”).
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(petitioner could change argument on appeal because its initial position was rejected by the district
court and there was no danger of inconsistent court determinations); see also Lava Trading, Inc. v.
Sonic Trading Management, LLC, 445 F.3d 1348, 1353 (Fed. Cir. 2006) (“[J]udicial estoppel does
not normally apply on appeal to prevent a party from altering an unsuccessful position before the trial
court. . . . [E]stoppel would not bar Lava from departing from a claim construction theory
unsuccessfully advocated before the trial court.”); Konstantinidis v. Chen, 626 F.2d 933, 939 (D.C.
Cir. 1980) (noting that “success in the prior proceeding is clearly an essential element of judicial
estoppel”).
But HP does not rely on the doctrine of judicial estoppel. Instead, HP contends that
Papst should be held to the affirmative statements of fact that it made to the Court. The Court agrees.
Papst represented numerous times that the accused HP devices do not infringe because they do not
include a “second connecting device” under the Court’s claims construction. Papst proclaimed,
“After the Court’s rulings on claims construction, Papst studied the effect of the Court’s rulings.
Papst was able to determine that none of Hewlett-Packard’s (“HP”) accused devices met the Court’s
definition of ‘second connecting device.’” See Papst’s Reply in Support of Joint Motion for Entry
of Judgment [Dkt. # 349] at 1. Papst elaborated, stating that “[f]rom this record the Federal Circuit
can readily understand what it is that makes the HP devices noninfringing, namely, they lack ways
for attaching external data transmit/receive devices.” Id. at 8. In addition to declaring this fact in
support of its motion for entry of judgment, Papst made the same assertion in its request for a stay of
the MDL against the other Camera Manufacturers pending Papst’s appeal of the HP matter. Papst’s
motion to stay averred, “Papst can stipulate to non-infringement in that case because each accused
HP device ‘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 HP
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device.” Papst’s Mot. to Stay All Other Proceedings [Dkt. # 347] at 2. Papst again confirmed the fact
that the HP devices do not infringe in its Opposition to the Camera Manufacturers’ Proposal
Regarding Resolution of This Case on Summary Judgment. See CMs’ Proposal Regarding
Resolution on Summ. J. [Dkt. # 353]. There, Papst stated, “HP and Papst were able to determine and
agree that HP’s accused products do not infringe the Court’s construction of the term ‘second
connecting device.’” Papst’s Opp’n to CMs’ Proposal [Dkt. # 355] at 12; see also Papst’s Surreply
regarding CMs’ Proposal [Dkt. # 366] at 1 (“HP happens to sell only cameras that everyone agrees
do not infringe under the current construction of ‘second connecting device.’”); id. at 7 (“If [the
Court’s claim construction is] affirmed, that eliminates HP’s liability.”).
Facts, stipulated into the record, are binding and conclusive and not subject to
subsequent variation. Christian Legal Soc’y Chapter of the Univ. of Cal., 130 S. Ct. 2971 (2010).
Papst contends that its stipulation was not formally entered because it was conditioned on the entry
of judgment and a stay of the case and the Court did not grant the motion for entry of judgment or for
stay. But Papst cannot avoid the fact that by submitting the joint stipulation, Papst undertook to be
bound by the factual statement contained in the stipulation. Papst repeatedly admitted that the HP
products did not infringe, not only in its motions for entry of judgment and stay, but also in opposition
to the Camera Manufacturers’ proposal to resolve the case on summary judgment. The Supreme
Court long ago recognized the binding nature of counsel admissions in the context of a trial. “The
power of the court to act in the disposition of a trial upon facts conceded by counsel is as plain as its
power to act upon the evidence produced.” Oscanyan v. Arms Co., 103 U.S. 261, 263 (1880). The
Court further explained:
In the trial of a cause the admissions of counsel, as to matters to be
proved, are constantly received and acted upon. They may dispense
with proof of facts for which witnesses would otherwise be called.
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They may limit the demand made or the set-off claimed. Indeed, any
fact, bearing upon the issues involved, admitted by counsel, may be
the ground of the court’s procedure equally as if established by the
clearest proof.
Id. While Papst’s affirmative statements of fact were not made in the course of a trial, the statements
still constitute an admission in the unique circumstances presented here. To be clear, Papst is bound
by its statement that HP’s accused products do not infringe the Patents because they lack a “second
connecting device” as such term has been construed by the Court in the Modified Claims
Construction Opinion and Order. See Modified Claims Construction Op. [Dkt. # 336]; Modified
Order [Dkt. # 337].
Papst made multiple representations of fact to this Court which it does not actually
now disavow. It has merely asserted that it has a new theory or theories of infringement against HP’s
accused devices, which cannot carry the weight it would impose. The only new theory that Papst
explains in any detail is its theory that HP cameras have sockets for the insertion of memory cards,
including Eye-Fi memory cards which are capable of wireless communication. Papst contends that
Eye-Fi cards are data transmit/receive devices that are connectable to HP’s accused interface devices.
The proposition that an HP product that did not infringe when it was sold can be transformed into an
infringing device by a third party’s sale of a compatible transmit/receive device is dubious. See, e.g.,
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310– 11 (Fed Cir. 2005)
(a device does not infringe merely because it can be converted into an infringing device); High Tech
Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551,1555 (Fed. Cir. 1995) (“The
question is not what [a device] might have been made to do, but what it was intended to do and did
do . . . . [T]hat a device could have been made to do something else does not of itself establish
infringement.”) (quoting Hap Corp. v. Heyman Mfg. Co., 311 F.2d 839, 843 (1st Cir. 1962)).
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Because the Court finds that Papst must be held to the truth of its assertion that the HP devices lack
a “second connecting device,” it is not necessary to reach this issue. Papst’s Final Asserted Claims
and Infringement Contentions regarding HP digital cameras will be stricken.
B. New Products and New Product Categories
1. Palm Products
Having agreed that HP’s products do not infringe under the Court’s claim construction,
Papst now tries to bring new HP non-camera product lines into the case. In its Final Asserted Claims
and Infringement Contentions, Papst asserts that it can properly enlarge this suit to include alleged
infringement based on HP’s sales of Palm smartphones as well as HP’s sales of Canon and Samsung
digital cameras.
Papst’s Final Asserted Claims and Infringement Contentions were required to meet
the standards set forth by the Court at the August 31, 2010 hearing and in the Sixth Practice and
Procedure Order. The Court directed that Papst file its Final Asserted Claims and Infringement
Contentions, understanding that Papst had filed its original claims and contentions on May 28, 2008,
before claims construction, and that Papst needed to amend them to conform with the November 24,
2009 Modified Claims Construction Opinion and Order. The Court did not give Papst carte blanche
to start this litigation anew, with new claims against new categories of devices. Papst’s Final
Asserted Claims and Infringement Contentions directly contravene the Court’s direct order. They
include claims and contentions against HP regarding Palm smartphones — the Palm Pixi, Palm Pixi
Plus, Palm Pre, and Palm Pre Plus. Papst also claims that it “reserves the right” to accuse more
devices. Papst’s Final Asserted Claims and Infringement Contentions [Dkt. # 379] at 306-312. Not
so. Papst can only amend its claims and contentions by first obtaining leave of Court.
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The good cause standard under Federal Rule of Civil Procedure 16(b) applies to a
request to amend asserted claims and infringement contentions. Rule 16(b) provides that a court may
enter a scheduling order that limits the time to amend the pleadings and that such schedule may be
modified only for good cause and with the judge’s consent. Fed. R. Civ. P. 16(b)(4) (emphasis
added). To show good cause under this Rule, the moving party must show both diligence and a lack
of prejudice to the opposing parties. See Robinson v. Detroit News, Inc., 211 F. Supp. 2d 101, 114
(D.D.C. 2002) (motion to amend denied due to undue delay); Leary v. Daeschner, 349 F.3d 888, 906
(6th Cir. 2003) (to determine whether good cause has been shown, a court must consider the issue of
prejudice).
With regard to HP specifically, Papst’s Counterclaim against it states:
HP has alleged that it has been and is engaged in making, using,
offering for sale and selling products, including digital cameras to
customers in the United States, or imported into the United States, and
upon information and belief, that such products embody the elements
of one or more claims of the ’449 and ’399 patents, and therefore,
infringe those patents under the U.S. patent laws, 35 U.S.C. § 271.
See Counterclaim [Dkt. # 170] ¶ 65 (emphasis added). Papst points to this language, noting that it
is not explicitly limited to digital cameras, but alleges instead that “products, including digital
cameras” infringe. Papst argues that because its Counterclaim is worded in this vague manner, Papst
was not required to move to amend its Counterclaim or to amend its Asserted Claims and
Infringement Contentions against HP. Papst is wrong.
This MDL has been pending since November 5, 2007, i.e., over three years. When the
MDL Panel transferred this litigation to this Court, the suit included the following five cases:
1. Casio, Inc. v. Papst Licensing GmbH & Co. KG, D.D.C. No. 06-1751;
2. Fujifilm Corp. v. Papst Licensing GmbH & Co. KG, D.D.C. No. 07-1118;
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3. Papst Licensing GmbH & Co. KG v. Olympus Corp., D. Del. No. 07-415 (07-2086
(D.D.C.));
4. Papst Licensing GmbH & Co. KG v. Fujifilm Corp., N.D. Ill. No. 07-3401 (07-2087
D.D.C.) ; and
5. Papst Licensing GmbH & Co. KG v. Samsung Techwin Co., D.N.J. No. 07-4940 (07-2088
D.D.C.).
See MDL Transfer Order [Dkt. # 1]. The MDL Panel determined that “[t]he actions involve common
factual allegations regarding digital cameras made by certain manufacturers, which Papst claims
infringe two of its patents; the validity and enforceability of these patents is at issue in all five
actions.” Id. (emphasis added). The MDL Panel titled the litigation “In re Papst Licensing Digital
Camera Patent Litigation.” In sum, venue for these cases was transferred here because these cases
all involved the question of whether digital cameras infringe the Patents.
Since the inception of this MDL, the Court and the parties have proceeded believing
that the products at issue were digital cameras. The September 3, 2008 tutorial hearing, held in
preparation for claims construction, was focused exclusively on digital cameras. The parties chose
the terms for claims construction with an eye toward how such claims terms would apply to digital
cameras. 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. See Modified Claims
Construction Op. [Dkt. # 336]; Modified Order [Dkt. # 337].4 Further, a great deal of discovery has
been completed with a focus on digital cameras. When discovery was stayed in November 2008,
there were fewer than six weeks remaining for fact discovery on liability. Adding product categories
4
The Modified Claims Construction Opinion and Order were issued upon reconsideration
and replaced the original opinion and order filed on June 12, 2009. See Mem. Op. [Dkt. # 312];
Order [Dkt. # 313].
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this late in the case would significantly expand and delay this litigation, thereby causing great
prejudice to HP. See, e.g., Realtime Data, LLC v. Packeteer, Inc., Civ. No. 08-144, 2009 WL
2590101, at *9 (E.D. Tex. Aug. 18, 2009) (prohibiting plaintiff from modifying its infringement
contentions which would require defendants to continue litigating while starting discovery anew on
new patents, claims and accused products); Monolithic Power Sys., Inc. v. O2 Micro Internat’l Ltd.,
Civ. No. 08-4567 (N.D. Cal. Oct. 16, 2009) (denying plaintiff’s request to add fifteen new products
to patent infringement litigation because plaintiff had information regarding the products three
months earlier but waited until after discovery was closed before moving to amend).
It should also be noted that HP recently acquired Palm Inc. as its subsidiary, but Palm
remains a separate corporate entity. The matter of Papst’s potential claims against Palm was raised
at the August 31, 2010, status conference. The Court did not approve Papst’s suggestion that it could
bring its claims against Palm products into its suit against HP. Instead, the Court suggested that if
Papst wanted to assert claims against Palm, it would have to file another suit. CMs’ Mot. for
Sanctions [Dkt. # 388], Ex. A (Tr. of Aug. 31, 2010 Hearing) at 46 (Court: “So there you have it.
Now you know you would have to sue [Palm].”)
Papst claims that camera phones are not really a new category of product — that they
are merely digital cameras that also have the capability of making telephone calls. The Court rejects
this rationale, noting again that the Court and the parties proceeded through years of discovery and
claims construction with the sole focus on digital cameras. The addition of cell phones would require
that discovery start from scratch on those accused products.
Papst argues that cell phones are already part of this MDL because in its suit against
Sanyo, it alleged infringement by Sanyo products including cell phones with digital camera functions,
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and it named specifically the Sanyo SCP-8500 camera phone as an infringing product. Papst
Licensing GmgH & Co. KG v. Sanyo Electric Co. Ltd., Civ. No. 09-530 (D.D.C.), First Am. Compl.
[Dkt. # 8] ¶¶ 12 & 14. Notably, Papst’s Final Asserted Claims and Infringement Contentions do not
list the Sanyo cell phone SCP-8500 as an accused product. The Sanyo SCP-8500 cell phone is not
part of this MDL.
In sum, Papst’s Final Asserted Claims and Infringement Contentions regarding Palm
products will be stricken.
2. Canon and Samsung Digital Cameras Sold by HP
In its Final Asserted Claims and Infringement Contentions, Papst also asserts that HP
infringes the Patents via its sales of Canon and Samsung digital cameras. Under the “customer suit”
doctrine, courts stay infringement suits against product sellers while litigation proceeds against the
manufacturer who produced the infringing product. “[L]itigation against or brought by the
manufacturer of infringing goods takes precedence over a suit by the patent owner against customers
of the manufacturer.” Katz v. Lear Siegler, 909 F.2d 1459, 1464 (Fed. Cir. 1990). Underlying the
customer suit doctrine is the preference that infringement determinations should be made in suits
involving the true defendant, the party that controls the product’s design, rather than suits involving
secondary parties such as customers of the manufacturer. Accordingly, the Court will stay Papst’s
claims against HP as a seller of Canon and Samsung digital cameras.
IV. CONCLUSION
Thus, the fact remains that the HP cameras do not infringe, as Papst has admitted,
because they have no “second connecting device” as this Court has construed that term. That Papst
disagrees with the Court’s construction is of no moment at this juncture. The facts are clear. Papst
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will not be allowed to entangle HP in expensive discovery on a whim or a bad legal theory to expand
HP’s potential liability. Papst’s efforts come close to abuse of litigation and will not be countenanced
by this Court. HP’s motion to strike [Dkt. # 389] will be granted in part and denied in part as follows:
Papst’s Final Asserted Claims and Infringement Contentions [Dkt. # 416] will be stricken to the
extent that they make claims against HP digital cameras and Palm products. Papst’s Final Asserted
Claims and Infringement Contentions against HP as a seller of Canon and Samsung digital cameras
will be stayed until further order of the Court. As a result, all discovery as to HP, including discovery
on invalidity, will be stayed until further order of the Court.
Date: February 2, 2011 /s/
ROSEMARY M. COLLYER
United States District Judge
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