                         UNITED STATES DISTRICT COURT
                         FOR THE DISTRICT OF COLUMBIA
__________________________________________
                                           )
IN RE PAPST LICENSING GMBH & CO. KG )
LITIGATION                                )
                                          )    Misc. Action No. 07-493 (RMC)
This document relates to                  )
                                          )    MDL No. 1880
ALL CASES                                 )
                                          )
                                          )
__________________________________________)


    MEMORANDUM OPINION RE: CAMERA MANUFACTURERS’ MOTION FOR
    SUMMARY JUDGMENT OF NONINFRINGEMENT WITH RESPECT TO THE
         “DATA TRANSMIT/RECEIVE DEVICE” CLAIM LIMITATION
               Papst Licensing GmbH & Co. KG, a German company, sues multiple

manufacturers of digital cameras for alleged infringement of two patents owned by Papst: U.S.

Patent Number 6,470,399 (399 Patent) and U.S. Patent Number 6,895,449 (449 Patent). The

Camera Manufacturers 1 have moved for summary judgment of noninfringement with respect to

the “data transmit/receive device” claim limitation in both Patents, asserting that when accused

devices (basically, digital cameras) operate in Universal Serial Bus (USB) Mass Storage Class


1
  This Multi District Litigation currently consists of First and Second Wave Cases. The “First
Wave Cases” 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
“Second Wave Cases” currently are: Papst v. Canon, 08-cv-1406; Papst v. Eastman Kodak, 08-
cv-1407; Papst v. Sanyo, 09-cv-530. The Camera Manufacturers seeking summary judgment
here are parties in the First Wave Cases; they are: 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., Ltd.; Samsung
Opto-Electronics America, Inc.; Panasonic Corporation of North America; JVC Company of
America; Hewlett-Packard Company (HP); Nikon Corporation; and Nikon, Inc. Papst’s
infringement contentions against HP have been stricken and discovery has been stayed.

                                                1
(MSC) mode they do not infringe the Patents as alleged. Papst contends that specific external

accessories such as lenses, flashes, GPS units, and printers constitute data transmit/receive

devices within the meaning of the Patents because such accessories can transmit data to a

computer via a camera operating in MSC mode. However, Papst fails to back up its argument

with any evidence that contravenes the Camera Manufacturers’ evidence that when the accused

cameras are connected to a computer in MSC mode, the specified accessories do not and cannot

transmit any data through the camera to the computer. Thus, such accessories do not and cannot

meet the “data transmit/receive device” limitation in the Patents when the camera is in MSC

mode. Papst fails to point to any genuine disputes over issues of material fact. The Camera

Manufacturers’ motion for summary judgment will be granted.

                                           I. FACTS 2

               Papst alleges that certain accused devices manufactured and/or sold by the

Camera Manufacturers are “interface devices” that infringe Claims 1-3, 5, 7, 11, and 14-15 of the

399 Patent and Claims 1-2, 6-9, 12-13, and 15-18 of the 449 Patent. The accused products

include digital cameras, camcorders, and digital voice recorders.

               Each of the asserted Patent Claims requires a “data transmit/receive device” that

can transmit data to a computer via the invention, an “interface device.” For example, Claim 1

of the 449 Patent states:

               What is claimed is:

               1. An interface device for communication between a host device,
               which comprises drivers for input/output devices customary in a



2
 This motion is one of eight filed by the Camera Manufacturers. In the interest of timely
disposition of all, the Court does not recite the full background and assumes familiarity with its
prior rulings. See, e.g., Modified Claims Construction Op. [Dkt. 336]; Sanctions Op. [Dkt. 429].

                                                 2
               host device and a multi-purpose interface, and a data
               transmit/receive device comprising the following features:

               a processor;

               a memory;

               a first connecting device for interfacing the host device with the
               interface device via the multi-purpose interface of the host device;
               and

               a second connecting device for interfacing the interface device
               with the data transmit/receive device,

               wherein the interface device is configured by the processor and the
               memory in such a way that the interface device, when receiving an
               inquiry from the host device as to the 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 a storage device
               customary in a host device, whereupon the host device
               communicates with the interface device by means of the driver for
               the storage device customary in a host device, and

               wherein the interface device is arranged for simulating a virtual file
               system to the host, the virtual file system including a directory
               structure.

449 Patent, Claim 1, 11:45-67 & 12:1-6 (emphases added); 399 Patent, Claim 1, 12:41-67 &

13:1-13 (as relevant here, the same as the 449 Patent). 3

               The Court construed the contested claims of the 399 and 449 Patents, finding that

the term “data transmit/receive device” means “a device that is capable of either (a) transmitting

data to or (b) transmitting data to and receiving data from the host device when connected to the

host device by the interface device.” Modified Claims Construction Op. [Dkt. 336] (Claims


3
  Citations to the Patents are to “column number: line number.” The “interface device” was
invented and patented by Michael Tasler, who sold the Patents to Papst. The invention was
never produced or used.

                                                 3
Constr. Op.) at 31 (emphasis added); see also Order [Dkt. 337] at 2. 4 The immediate motion for

summary judgment is based on the “data transmit/receive device” claim limitation and the

Court’s determination that a data transmit/receive device is a device capable of data transmission

“when connected to the host device by the interface device” –– that is, when the data

transmit/receive device is attached to the invented interface device and thereby connected to the

host computer.

                 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; 449 Patent, Title. An I/O device is an input/output device, repeatedly referred

to as a “data transmit/receive device” in the Patents. See, e.g., 399 Patent 3:43-44 & 13:1-2; 449

Patent 4:6-7 & 11:63-64. A “host” is a computer. The 449 Patent is a continuation or divisional

patent 5 that is quite similar to the 399 Patent. They share the same block diagram drawings,

Figures 1 and 2. See, e.g., 399 Patent 9:15-16 (“Figure 2 shows a detailed block diagram of an

interface device, according to the present invention”); 449 Patent 8:15-16 (same). The 399 and

449 Patents also share much of the same specification.

                 The “interface device” is designed to provide data transfer between a data

transmit/receive device and a computer without the need for special software; this is


4
  The contested terms were almost entirely within Claim One of each Patent. Pursuant to
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), a court is required to construe the
contested claims of the patents before a jury can determine whether the accused products
infringe. In claims construction, a court must interpret the words of each contested claim from
the perspective of one skilled in the art at the time of invention, in light of the patent documents
and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
5
  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. Because it
is a continuation patent, Papst asserts that the 449 Patent has priority dating back to the 399
Patent.

                                                  4
accomplished by telling the computer that the interface device is a transmit/receive device

already known to the computer (and for which the computer already has drivers, i.e., software),

regardless of what kind of data transmit/receive device actually is attached to the interface

device. 399 Patent, Abstract; 449 Patent, Abstract. The Patents are “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 4:23-27; 449 Patent

3:27-31 (same); see also 399 Patent 6:19-22 (in the preferred embodiment, “[r]egardless of

which data transmit/receive device at the output line 16 is attached to the second connecting

device, the digital signal processor 13 informs the host device that it is communicating with a

hard disk drive”); 499 Patent 5:19-22 (same). 6 Thus, the purpose of the invention is “to allow

fast communication between dissimilar data transmit/receive devices and computers, without the

need for special software drivers.” Claims Constr. Op. at 22; see 399 Patent 3:24-27 (the

purpose of the invention is to provide “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”); 449 Patent 3:20-23 (same).

               The Court determined that the Claims in both Patents provide that the data

transmit/receive device is attached to the interface device when the computer initiates a data

transfer from the data transmit/receive device. For example, Claim One of the 449 Patent states:

               wherein the interface device is configured by the processor and the
               memory in such a way that the interface device, when receiving an
               inquiry from the host device as to the 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

6
 The specification often refers to Figures 1 and 2 by identifying numbered elements as they
appear in the Figures.

                                                 5
               to the second connecting device of the interface device, to the host
               device which signals to the host device that it is a storage device
               customary in a host device, whereupon the host device
               communicates with the interface device by means of the driver for
               the storage device customary in a host device.

449 Patent, Claim 1, 11:59-67, 12:1-3 (emphases added); 399 Patent, Claim 1, 12:64-67, 13:1-8

(emphasized portions the same; substitutes the term “input/output device” for “storage device”).

Each of the asserted independent Claims contains similar language, indicating that the data

transmit/receive device is attached to the interface device when data is transmitted from the data

transmit/receive device to the computer via the interface device. See 399 Patent, Claims 1, 11,

and 14; 449 Patent, Claims 1, 17, and 18. 7

               Beyond the Claims themselves, the specifications informed the construction that a

data transmit/receive device must be capable of transmitting data to a computer when it is

attached to the computer via the interface device. With regard to a preferred embodiment of the

invention, the specification states:

               If the user now wishes to read data from the data transmit/receive
               device via the line 16, the host device sends a command . . . ,
               whereby [the second command interpreter] begins to transfer data
               from the data transmit/receive device via the second connecting
               device to the first connecting device and via the line 11 to the host
               device.



7
  Claim One of the 399 Patent claims that the interface device is configured by its processor and
memory “to include a first command interpreter and a second command interpreter,” see 399
Patent 12:62-63, and “the second command interpreter is configured to interpret a data request
command from the host device . . . as a data transfer command for initiating a transfer of the
digital data to the host device.” 399 Patent, Claim 1, 13:8-12 (emphasis added). This same
concept is repeated in other Claims. See 399 Patent, Claim 11, 14:17-20 (“the second command
interpreter is configured to interpret a data request command from the host device . . . as a data
transfer command for initiating a transfer of the digital data to the host device”) (emphasis
added); id., Claim 14, 14:58-61 (“interpreting a data request command from the host device . . .
as a data transfer command for initiating a transfer of the digital data to the host device”)
(emphasis added). The 449 Patent does not contain similar “for initiating” language.

                                                 6
399 Patent 6:55-67; 449 Patent 5:55-67 (same). As the Court explained in the Claims

Construction Opinion, a data transmit/receive device does not transmit data to the interface

device until the interface device is connected to the computer:

               [D]ata does not begin to be sent from the data transmit/receive
               device to the interface device until the computer and the interface
               device have established communication; only then does the second
               command interpreter begin “to transfer data from the data
               transmit/receive device via the second connecting device” . . . ,
               then on to “the first connecting device and via the line 11 to the
               host device.”

Claims Constr. Op. at 44 (quoting 399 Patent 6:64-67 & 449 Patent 5:64-67). The interface

device allows attachment of a variety of data transmit/receive devices. See 399 Patent 1:56-59

(“It is therefore desirable that an interface be sufficiently flexible to permit attachment of very

different electrical or electronic systems to a host device by means of the interface.”) (emphases

added); 449 Patent 1:57-60 (same). The terms “attachment” and “line” connote a physical

connection. Claims Constr. Op at 37.

               Data transfer from a data transmit/receive device to a computer when they are

both connected to the interface device is also described in the specification as follows:

               Preferably, the interface device according to the present invention
               simulates a hard disk with a root directory whose entries are
               “virtual” files which can be created for the most varied functions.
               When the host device system with which the interface device
               according to the present invention is connected is booted and a
               data transmit/receive device is also attached to the interface device
               10, usual BIOS routines or multi-purpose interface programs issue
               an instruction, known by those skilled in the art as the INQUIRY
               instruction, to the input/output interfaces in the host device. The
               digital signal processor 13 receives this inquiry instruction via the
               first connecting device and generates a signal which is sent to the
               host device (not shown) again via the first connecting device 12
               and the host line 11. This signal indicates to the host device that,
               for example, a hard disk drive is attached at the interface to which
               the INQUIRY instruction was sent. . . .

                                                  7
               Regardless of which data transmit/receive device at the output line
               16 is attached to the second connecting device, the digital signal
               processor 13 informs the host device that it is communicating with
               a hard disk drive.

399 Patent 5:67 & 6:1-22 (emphases added); 449 Patent 4:66-67 & 5:1-22 (same).

               Even the title of the invention reflects the basic concept of “connectedness” at the

time of data transfer. The invention is titled “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.” See 399 Patent, Title; 449 Patent, Title. The title refers to communication between the

computer (host) and the data transmit/receive device (I/O device), via the interface device, when

the three are “connected.”

               Papst filed Final Infringement Contentions asserting that certain accused MSC-

capable products are “interface devices” that infringe the Patents. See Final Infringement

Contentions (FICs) [Dkt. 416], Table 12 (MSC-capable products that allegedly infringe the 399

Patent) & Table 13 (MSC-capable products that allegedly infringe the 449 Patent) (collectively,

the “Accused Cameras”). 8 Papst also alleges that certain external accessories operate as data

transmit/receive devices, leading to infringement when utilized with the Accused Cameras. See

generally FICs at 7-10. 9 The Final Infringement Contentions identify these “External

Accessories” as:


8
  Papst’s Final Infringement Contentions include two sets of claim charts: a set of charts listing
cameras that can communicate with a computer in MSC mode and a set of charts listing cameras
that can communicate with a computer in Picture Transfer Protocol (PTP) mode. Some accused
products are alleged to operate in both modes. See, e.g., FICs, Table 12 (asserting that Fujifilm
model V10 is MSC-capable); id., Table 14 (asserting that Fujifilm model V10 is PTP-capable).
9
  Papst alleges that data transmit/receive devices that can be readily attached/detached from the
“interface portion” of a camera include “image sensors, microphones, auto focus devices, image
stabilization devices, internal flash units, infrared ports, touch screens, internal GPS units, and
exposure units (including color and/or light metering units).” FICs at 10.

                                                 8
                (1) audio and audio/visual devices (Table 1);

                (2) flashes (Table 2);

                (3) external data devices such as GPS units, bar code scanners, and
                remote control devices (Table 3);

                (4) lenses (Table 4); and

                (5) printers (Table 6).

Id., Tables 1-4, 6.

                The Camera Manufacturers seek summary judgment of noninfringement with

regard to the Accused Cameras when they operate in MSC mode according to the following

logic: When an Accused Camera is connected to a computer and is operating in MSC mode,

none of the External Accessories can transmit data to the computer. Therefore, none of the

identified External Accessories meets the “data transmit/receive device” claim limitation when

an Accused Camera is in MSC mode. Papst opposes. See Opp’n [Dkt. 484] (redacted, public

version filed at [Dkt. 481]). 10


10
   Papst’s Final Infringement Contentions fail to allege infringement within the confines of the
Court’s claims construction. Instead of expressly alleging that data transmit/receive devices are
capable of transmitting data to a computer when a camera is connected to the computer as
required by the Claims Construction Opinion, Papst asserts only that data from a data
transmit/receive device can be, at some point, transmitted to a computer. Papst alleges that a
microphone is a “data transmit/receive device” because it provides data to “the interface portion
of an accused device which in turn, transmits the data to a host device when connected to the
host device.” FICs at 7 (emphasis added). Similarly, Papst alleges that data from various “units”
or devices is “ultimately” made available to the host device. See FICs at 12, 29 (alleging that
autofocus units “communicate information to/from the interface portion of the accused product,
and that such information is ultimately made accessible to the host device”); see also id. at 13, 31
(identical allegation regarding exposure units such as color and light meters); id. at 14, 32
(identical allegation regarding image stabilization devices). That data from a data
transmit/receive device may be “in turn” or “ultimately” transmitted to a computer does not
claim a data transmit/receive device “capable of . . . transmitting data to [ ] the host device when
connected to the host by the interface device.” See Claims Constr. Op. at 31. Papst seeks a
modification of the Claims Construction Opinion and does not pretend that its alleged facts are
consistent with the Court’s opinion. See, e.g., Opp’n at 2 (“‘Transmitting data to . . . the host
device when connected to the host device by the interface device’ is not correctly interpreted to
                                                 9
                                     II. LEGAL STANDARD

                Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment shall

be granted “if the movant shows that there is no genuine dispute as to any material fact and the

movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); accord Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). On summary judgment, the burden on a moving

party who does not bear the ultimate burden of proof in the case may be satisfied by making an

initial showing that there is an absence of evidence to support the nonmoving party’s case.

Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). This burden “may be discharged by

‘showing’––that is, pointing out to the district court––that there is an absence of evidence to

support the nonmoving party’s case.” Id.

                The burden then shifts to the nonmovant to demonstrate the existence of a

genuine issue of material fact. The nonmovant may not rest on mere allegations or denials, but

must instead by affidavit or otherwise, present specific facts showing that there is a genuine issue

for trial. See Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at 324; see also Greene v. Dalton, 164

F.3d 671, 675 (D.C. Cir. 1999) (nonmovant must present specific facts that would enable a

reasonable jury to find in its favor).

                In ruling on a motion for summary judgment, the court must draw all justifiable

inferences in the nonmoving party’s favor. Anderson, 477 U.S. at 255. A nonmoving party,

however, must establish more than “the mere existence of a scintilla of evidence” in support of

its position. Id. at 252. In addition, if the evidence “is merely colorable, or is not significantly


require that the interface device act as a ‘conduit’ for live data or the like, but instead that the
interface device acquires data from a [data transmit/receive device] and lets a host computer read
the data while the host computer is connected to the interface device, regardless of whether the
[data transmit/receive device] is connected to the interface device.”). As discussed below,
Papst’s request for reconsideration will be denied.

                                                  10
probative, summary judgment may be granted.” Anderson, 477 U.S. at 249-50 (citations

omitted). Summary judgment is properly granted against a party who “after adequate time for

discovery and upon motion . . . fails to make a showing sufficient to establish the existence of an

element essential to that party=s case, and on which that party will bear the burden of proof at

trial.” Celotex, 477 U.S. at 322.

                Summary judgment can be granted in a patent case if there is no dispute over the

structure of the accused products, at which point the question of infringement “collapses” into

the question of claim construction and may be resolved by the court. Desper Prods. Inc. v.

QSound Labs Inc., 157 F.3d 1325, 1332-33 (Fed. Cir. 1998). The burden of proving

infringement rests on the patent holder. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095

(Fed. Cir. 2008). Thus, on summary judgment the Camera Manufacturers bear the burden of

making an initial showing that there is an absence of evidence to support Papst’s claim of

infringement, and Papst bears the burden of presenting specific facts showing that there is a

genuine issue for trial.

                                         III. ANALYSIS

                A. Literal Infringement

                To prove literal infringement, a patentee must prove that the accused product

satisfies each and every limitation of a claim. Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,

520 U.S. 17, 29 (1997); Rohm & Haas v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).

The party alleging infringement bears the burden of proof. Jazz Photo Corp. v. Int’l Trade

Comm’n, 264 F.3d 1094, 1102 (Fed. Cir. 2001). To determine whether a patent has been

infringed, a court must (1) construe the patent and (2) compare the devices accused of infringing

to the construed patent claims. Mars, Inc. v. H.J. Heinz Co., LP, 377 F.3d 1369, 1373 (Fed. Cir.



                                                 11
2004). Since this Court already has interpreted the Patents, the Court now proceeds to step two,

a comparison of the Accused Cameras to the allegedly infringed Claims.

               A patent is literally infringed “when each of the claim limitations reads on, or in

other words is found in, the accused device.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d

1336, 1345 (Fed. Cir. 2002). If a device does not infringe an independent claim of a patent, the

device cannot infringe a claim dependent on that claim. 11 Wahpeton Canvas Co., Inc. v.

Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).

               1. Absence of Evidence to Support Papst’s Infringement Allegation

               An interface device can satisfy Claim One of the Patents only if it is capable of

transmitting data from a data transmit/receive device to a computer when all three are connected.

The Camera Manufacturers insist that when an Accused Camera is connected to a computer in

MSC mode, it cannot transmit data from one of the identified External Accessories. Instead,

when in MSC mode, the computer controls the camera memory that it can access and receives

data only from the camera itself, not from an External Accessory. In this configuration, no data

is or can be transmitted from any of the identified External Accessories to the computer.

Therefore, the Camera Manufacturers conclude, when any Accused Camera is connected to a

computer and operating in MSC mode, the External Accessories cannot not meet the “data

transmit/receive device” claim limitation.

                The Camera Manufacturers note that an ordinary user can observe the fact that

an External Accessory does not transfer data to a computer when attached to a camera operating

in MSC mode. A user can attach an External Accessory to an Accused Camera that is connected


11
   A claim in “dependent form” incorporates by reference all the limitations of the claim on
which it depends and adds something new, giving it a narrower scope than the claim from which
it depends. See 35 U.S.C. § 112; Phillips, 415 F.3d at 1315.

                                                12
to a computer and operating in MSC mode. Using a Windows-based computer, the user can

click on the “My Computer” icon. A camera connected to a computer in MSC mode will appear

in the “My Computer” directory as a “Removable Disk.” The user can see that the files in the

“Removable Disk” directory do not change if and/or when External Accessories are attached to

the camera. Papst presents various objections (and attempts to obfuscate) but never actually

contests these assertions by the Camera Manufacturers. The Court thus takes notice of the

readily observable operation of an Accused Camera operating in MSC mode.

                To further describe the contours of camera operation while in MSC mode, the

Camera Manufacturers present a declaration by Paul Berg. Mr. Berg is an expert in Universal

Serial Bus (USB) and MSC communications. Mot. for Summ. J. Re Data Transmit/Receive

Device Limitation [Dkt. 451], Ex. C (Berg Decl.) [Dkt. 451-3] ¶¶ 4-11. He was one of the

authors of the original USB 1.0 Specification, published in 1996. Id. ¶¶ 5, 7. Since that time,

USB technology has become his primary focus; he has been a speaker and seminar leader at

numerous meetings of USB implementers; he was a reviewer and contributor for the USB 1.1,

2.0, and 3.0 Specifications. Id. ¶¶ 7, 8. 12

                USB is a “connection standard” for communication between a computer and

peripherals such as keyboards, mice, and printers. Id. ¶ 13. Devices that can connect to a

computer using a USB interface can be categorized into different classes, one of which is USB

Mass Storage Class. USB MSC devices include “memory sticks and external hard drives that



12
   Papst challenges Mr. Berg’s qualifications as an expert, complaining that he is “not an expert
in digital systems in general.” See Opp’n at 2, 10-17. Papst does not explain what it means by
“digital systems in general” or why such expertise would be required to evaluate when, and
under what circumstances, External Accessories can transfer data through an Accused Camera,
operating in MSC mode, to a computer. This objection to Mr. Berg’s qualifications is too
amorphous to raise an issue.

                                                13
can be plugged into the USB port of a computer. Additionally, other devices, such as digital

cameras, may operate as a USB MSC device when connected to a computer.” Id. ¶ 14.

              Mr. Berg describes generally the operation of an MSC device when it is

connected to a computer as follows:

              15. The data transfer between a USB MSC device and a computer
              is governed by the USB Mass Storage Class Specifications and
              other standards, such as the Small Computer System Interface
              (“SCSI”) Standards.      These standards define the specific
              commands and specific responses communicated between a
              computer and a USB MSC device. The way in which those
              commands and responses are transported back and forth across the
              USB connection for a USB MSC device is defined in and governed
              by USB MSC Specifications.

              16. When a USB MSC device is connected to a computer by the
              USB interface, the connection is a “hosted” connection. The host
              (computer) is in charge of the connection, and controls and
              initiates all transmissions that pass through the USB interface. No
              connected USB MSC device can transfer any data through the
              USB interface without an explicit request from the host. In other
              words, the connected USB MSC device does only what it is told to
              do by the host.

              17. When a USB MSC device is connected to a computer, the
              computer has control over the USB MSC device’s memory that it
              can access (the “MSC Memory”). The USB MSC Specifications
              and standard MSC drivers do not support the change of data on a
              connected USB MSC device by anything other than the host
              computer. These specifications and drivers were based on USB
              MSC devices, such as external hard drives, which have no ability
              to change their stored data, other than by the host computer to
              which it is connected.

              18. To allow for proper operation, USB MSC devices cannot
              allow any of their data to change, other than by the connected
              computer. Errors and/or data loss may occur if the data on a USB
              MSC device were to change other than as directed by the host
              computer to which it is connected.

              19. When connected to a computer, the MSC memory of the USB
              MSC devices, operating pursuant to the USB MSC Specifications
              and standard MSC drivers, does not store any data from any source

                                               14
               other than from the computer to which it is connected. The only
               data that is capable of being transmitted from the USB MSC
               device to the computer is the data that already existed on the USB
               MSC device prior to the time the device was connected to the
               computer or data from the computer that may be subsequently
               transferred to the USB MSC device.

               20. Similarly, no data can be transmitted from accessories, such
               as audio sources, audio/video sources, flashes, GPS units, remote
               control unites, lenses and printers, that are attached to a USB MSC
               device, such as a camera or camcorder, to a connected computer
               via the USB MSC interface.

Berg Decl. ¶¶ 15-20 (emphases added). Most importantly, Mr. Berg explains that no data can be

transmitted to a computer via the USB MSC interface from External Accessories when such

External Accessories are attached to an Accused Camera operating in MSC mode. Id. ¶ 20.

               Mr. Berg also tested the MSC-mode operation of various Accused Cameras and

External Accessories. He used a bus analyzer that monitors communications on the USB

connection between a computer and an attached device, and he reports that no data was

transmitted from any External Accessory to the computer when connected to an Accused Camera

which was connected to a computer and which was operating in MSC mode. Berg Decl. ¶¶ 49,

51-53.

               Thus, the Camera Manufacturers have made an initial showing in support of

summary judgment––they have pointed to the absence of evidence supporting Papst’s claim that

the External Accessories meet the Patents’ data transmit/receive device limitation when used

with Accused Cameras operating in MSC mode. See Celotex, 477 U.S. at 325 (the burden on a

moving party who does not bear the burden of proof may be discharged by pointing out that

there is an absence of evidence to support the nonmoving party’s case.) The burden thus shifts to

Papst to support its claim that the External Accessories are data transmit/receive devices as the

Court construed the term, i.e., devices capable of transmitting data to the host device when


                                                15
connected to the host by the interface device. See Claims Constr. Op. at 31. Papst bears the

burden of presenting some evidence that the External Accessories are capable of transmitting

data to a computer when connected to the computer by an Accused Camera operating in MSC

mode. See id. at 322 (summary judgment can be granted against a party who fails to make a

showing sufficient to establish an element essential to the party’s case, on which he bears the

burden of proof). Papst has failed to do so.

                2. Papst’s Attempt to Create an Issue of Fact

                In opposing summary judgment, Papst does not challenge the Camera

Manufacturers’ assertion that the functionality of the Accused Cameras and the External

Accessories can be readily observed. As far as the record reveals, Papst failed to make its own

observations or conduct any tests. Instead, Papst presents an opposing expert declaration from

Dr. C. Douglass Locke, who challenges Mr. Berg and attempts to raise genuine issues of material

fact for jury determination. See Papst’s Notice of Filing Documents [Dkt. 475], Third Locke

Decl. [Dkt. 475-2] ¶¶ 509-559. 13 Dr. Locke’s Declaration does not reveal any genuine issues of

material fact that preclude summary judgment on this motion. Dr. Locke has shown himself to

be more dedicated to his client than to his science. Almost every paragraph of his Third

Declaration, as it relates to the critical issues here, contains a statement that is irrelevant,

contradictory, supportive of Mr. Berg’s declaration, or plainly dissembling. Because it is

necessary to understand why Dr. Locke’s Third Declaration carries no weight, the Court

elaborates:




13
  Dr. Locke’s Third Declaration addresses numerous motions; paragraphs 509-559 are relevant
here.

                                                   16
1. Third Locke Decl. ¶ 513: Dr. Locke disagrees with Mr. Berg’s characterization of

   the SCSI Standards. The asserted disagreement is irrelevant and does not create a

   genuine dispute.

2. Third Locke Decl. ¶ 514: Dr. Locke complains that Mr. Berg uses “data” transfer

   to mean one thing in ¶ 15 of the Berg Declaration, and “appears” to apply a

   different meaning for “data” transfer elsewhere. This objection is too vague,

   imprecise, and uncertain to convey any meaning. In addition, Dr. Locke’s

   admission that he in fact understands the USB Mass Storage Class

   communication protocol, to which ¶ 15 of the Berg Declaration refers, reveals the

   insincerity of the objection. See Third Locke Decl. ¶ 505 (Dr. Locke notes that

   “USB MSC devices communicate with computers as if they were hard disk drives

   using SCSI command sets . . . .”).

3. Third Locke Decl. ¶¶ 516 & 517: Dr. Locke asserts that flash memory chips

   inserted into USB MSC devices “would perform the address translation function”

   without command by the host computer so that Mr. Berg’s statement (¶ 16), “the

   connected USB MSC device does only what it is told to do by the host,” is wrong.

   Whether flash memory chips might perform any function when an Accused

   Camera in MSC mode is connected to a computer is irrelevant. Flash memory

   chips are not the subject the Camera Manufacturers’ instant motion. Most

   critically, Dr. Locke does not challenge the preceding sentence of Mr. Berg’s

   declaration. Mr. Berg declared, “No connected USB MSC device can transfer

   any data through the USB interface without an explicit request from the host.”




                                   17
              Berg Decl. ¶ 16. 14 Dr. Locke asserts that flash memory chips can perform address

              translation, not that they can transfer data through a digital camera to the

              computer while the camera is connected to the computer in MSC Mode.

           4. Third Locke Decl. ¶ 518: Dr. Locke asserts that a USB MSC with an Eye-Fi

              memory card can act on its own without control by the computer: “While

              connected, the Eye-Fi card continued to add new data and modify data previously

              stored in the memory of the card about certain card operations while the card was

              installed in the camera in the mass storage mode . . . even though the host

              computer did not tell the camera to store such information.” Again, whatever the

              accuracy of Dr. Locke’s statement concerning Eye-Fi cards, it is not relevant as

              Eye-Fi cards are not External Accessories and thus are not the subject of the

              Camera Manufacturers’ motion for summary judgment. Further, that an Eye-Fi

              memory card might modify data in its own memory does nothing to contradict the

              evidence that an External Accessory cannot transmit data to the computer through

              an Accused Camera when the camera is in MSC mode.

           5. Third Locke Decl. ¶ 519: With regard to Mr. Berg’s statement in his Declaration

              ¶ 16 that “the host (computer) is in charge of the connection, and controls and

              initiates all transmissions that pass through the USB interface,” Dr. Locke

              complains that it is not clear what Mr. Berg meant by the statement the computer

              is “in charge of the connection.” While Dr. Locke claims to finds Mr. Berg’s
14
   The specifications for the Patents reflect the concept that data is transferred from the data
transmit/receive device when commanded to do so by the computer. See 399 Patent 6:55-67 (“If
the user now wishes to read data from the data transmit/receive device via the line 16, the host
device sends a command . . . , whereby [the second command interpreter] begins to transfer data
from the data transmit/receive device via the second connecting device to the first connecting
device and via the line 11 to the host device.”); 449 Patent 5:55-67 (same).

                                               18
   Declaration unclear, the Court does not. The statement that the computer is “in

   charge of the connection” means that the computer “controls and initiates all

   transmissions that pass through the USB interface,” as described by Mr. Berg in

   the very same sentence.

6. Third Locke Decl. ¶ 520: Dr. Locke contends that “it is not clear what Mr. Berg

   defines as ‘MSC memory.’” Mr. Berg’s Declaration is unambiguous. He

   expressly defined the allegedly vague term, saying, “[w]hen a USB MSC device

   is connected to a computer, the computer has control over the USB MSC device’s

   memory that it can access (the ‘MSC Memory’). The USB MSC Specifications

   and standard MSC drivers do not support the change of data on a connected USB

   MSC device by anything other than the host computer.” Berg Decl. ¶ 17.

7. Third Locke Decl. ¶ 521: Dr. Locke claims to be unclear as to the meaning of

   “standard MSC drivers.” Dr. Locke’s opinion on the alleged lack of clarity is

   irrelevant to the issues at hand.

8. Third Locke Decl. ¶ 522: Dr. Locke attacks Mr. Berg’s statement that “USB

   MSC Specifications and standard MSC drivers do not support the change of data

   on a connected USB MSC device by anything other than the host computer,” Berg

   ¶ 17, because “data can be changed on a USB MSC device independent of an

   attached host device,” for which he references Eye-Fi memory cards. Again, the

   point is irrelevant. The Camera Manufacturers do not seek summary judgment on

   whether memory cards and/or Eye-Fi cards are data transmit/receive devices.

9. Third Locke Decl. ¶ 523: Dr. Locke challenges Mr. Berg’s statement that USB

   MSC Specifications and standard MSC drivers “were based on USB MSC



                                       19
   devices, such as hard drives, which have no ability to change their stored data.”

   Berg Decl. ¶ 17. Dr. Locke complains that Mr. Berg provides no documentary

   support and “even if a typical hard drive may not be able to change its data

   independently of the host computer, other kinds of USB MSC devices can change

   their data independently of the host computer.” Again, he references only Eye-Fi

   memory cards, and again, Eye-Fi memory cards are not External Accessories and

   are not relevant to the Camera Manufacturers’ motion.

10. Third Locke Decl. ¶ 524: Dr. Locke continues the same charade. He addresses

   Berg Declaration ¶ 18, which declares, “USB MSC devices cannot allow any of

   their data to change, other than by the connected computer . . . .” Dr. Locke

   asserts that Eye-Fi cards can change their internal data, and that any loss of data

   can be “ameliorated.” Third Locke Decl. ¶ 524. Although this paragraph appears

   to dispute Mr. Berg’s Declaration, upon examination, it clearly does not. Eye-Fi

   cards are not at issue here, nor is their ability to ameliorate data loss.

11. Third Locke Decl. ¶ 526: Dr. Locke declares, “as discussed above, there are no

   ‘standard MSC drivers.’” To be precise, what was “discussed above” was Dr.

   Locke’s professed need for a definition from Mr. Berg as to what are “standard

   MSC drivers,” not that there are no such things. Dr. Locke notes that an Accused

   Camera will continue to store any data it contained before connection to a

   computer, which can “include data from sources other than the host computer,

   such as data from accessories . . . .” Id. He finishes this sentence by adding,

   “[such as data from accessories] connected to a digital camera that operates in

   MSC mode,” without specifying that such data must have been received by the



                                      20
   camera and stored in the camera’s memory before it was connected to the

   computer in MSC mode. Thus, his sentence starts out with an accurate statement

   and bends it into an untrue statement. His attempt to mislead is not overlooked.

12. Third Locke Decl. ¶ 527: Dr. Locke purports to disagree with Berg Declaration

   ¶ 19 that “[t]he only data that is capable of being transmitted from the USB MSC

   device to the computer is the data that already existed on the USB MSC device

   prior to the time the device was connected to the computer or data from the

   computer that may be subsequently transmitted to the USB MSC device.” Dr.

   Locke declares that “[t]his is incorrect . . . Eye-Fi cards can generate and store

   new data even when the device to which the cards is installed is connected to a

   host computer in mass storage mode.” Third Locke Decl. ¶ 527. Again, Eye-Fi

   cards are irrelevant to the Camera Manufacturers’ motion for summary judgment.

13. Third Locke Decl. ¶ 529: Dr. Locke opines broadly that “new data can be

   generated by accessories attached to a camera even when the camera is attached

   to a computer” and that “[t]his new data can be transferred to the computer, as

   explained in paragraph 518 of this declaration.” Paragraph 518 describes the

   operation of an Eye-Fi memory card. See id. ¶ 518 (“While connected, the Eye-

   Fi card continued to add new data and modify data previously stored in the

   memory in the card about certain card operations while the card was installed in

   the camera in mass storage mode.”). Again, Eye-Fi memory cards are not

   included among the External Accessories discussed here and are not the subject of

   the instant motion. Thus, the operation of Eye-Fi memory cards is irrelevant to

   the matter at hand, even if one read ¶ 518 to mean more than it says –– i.e., that



                                     21
   Eye-Fi memory cards can add or change data in their memories when attached to

   a camera in MSC mode that is, in turn, attached to a computer. This alleged

   “fact” does not convey a data flow from an Eye-Fi card through a camera to a

   computer nor does it otherwise contradict Mr. Berg.

14. Third Locke Decl. ¶¶ 532-537: Dr. Locke describes Mr. Berg’s bus trace

   evidence regarding a Nikon D200 camera. The Nikon D200 camera transmitted

   the beginning part of a digital photographic file, id. ¶ 535, which included

   information regarding accessories, such as information from the lens, flash, and

   GPS. Id. ¶ 536. According to Dr. Locke, this proves that “at least information

   from a lens attached to the Nikon D200 camera was transferred to the host

   computer.” Id. ¶ 537. This statement can only have been intended to confuse and

   dissemble. Dr. Locke’s Declaration itself notes that this phenomenon occurred

   before the camera was connected to the computer:

          [T]he Nikon D200 does not have a built in lens, but to operate as
          intended, requires a lens to be attached to take a picture. . . . Mr.
          Berg’s test results show that data from the attached lens, including
          data representative of at least the focal length of the attached lens,
          was communicated from the attached lens to the camera when he
          took a picture with the Nikon D200 camera. This data was then
          stored in a picture file and later transferred to [the] host computer
          during Mr. Berg’s test.

   Id. ¶ 555 (emphasis added). In other words, the photo, with lens data, was in the

   camera’s memory before the camera was connected to the computer; the camera

   stored the data and later transferred it to the computer; the lens data was not

   transferred separately from the lens to the computer.

15. Third Locke Decl. ¶ 541 complains that cameras “operate in various modes,

   including, for example, modes for diagnostics, testing, and repair. Mr. Berg does

                                    22
               not identify any of the various modes of operation in the CMs Accused Products,

               nor does he state that he tested the products in each of these modes.” In Dr.

               Locke’s opinion, this made Mr. Berg’s tests “deficient.” Id. The problem with

               Dr. Locke’s complaint is that Papst only alleged infringement in MSC and PTP

               modes and not in any other mode. The only mode relevant to the current motion

               is the MSC mode. Mr. Berg’s tests were not deficient in the least. Also, Papst

               never alleged infringement by way of any “back door” mode for diagnostics,

               testing and repair. The Camera Manufacturers do not bear the burden of proof,

               much less the burden as to a never-alleged infringement method.

           16. Third Locke Decl. ¶ 542: Dr. Locke asserts that, in his view, Mr. Berg should

               have talked to employees of the Camera Manufacturers about other modes. Dr.

               Locke’s “view” notwithstanding, Papst alleged infringement by use in MSC or

               PTP modes only.

           17. Third Locke Decl. ¶ 554: Finally, Dr. Locke complains that Mr. Berg “does not

               explain what he means by ‘MSC mode,’ why he used the ‘MSC mode,’ or

               whether the products operate in any other modes when the products would

               communicate with a connected computer using the USB Mass Storage Class

               communication protocol.” Dr. Locke’s assertion that he does not understand what

               Mr. Berg means when he refers to testing a camera operating in “MSC mode” is

               disingenuous. Dr. Locke is no neophyte. See Papst’s Notice of Filing Documents

               [Dkt. 475], Curriculum Vitae for Dr. Locke [475-3]. 15 He fully knows and



15
  Dr. Locke obtained a Ph.D. in computer science from Carnegie Mellon in 1986. Curriculum
Vitae for Dr. Locke at 4. He has worked as a consultant (1981 to the present), as an instructor
for the Air Force (1992-1995), and as a scientist at Lockheed Martin (1996-2000). Id. at 2-3.
                                                23
               understands the USB Mass Storage Class communication protocol, as he notes in

               his Declaration that “USB MSC devices communicate with computers as if they

               were hard disk drives using SCSI command sets . . . .” Third Locke Decl. ¶ 505.

               Obviously, Mr. Berg focused on MSC mode, as that was the subject of the

               Camera Manufacturers’ investigation for the purpose of this motion. Dr. Locke’s

               pretense (that Mr. Berg’s statements are unclear) is an attempt to obfuscate the

               issues.

               In sum, Dr. Locke’s challenge to the Berg Declaration on MSC USB devices and

the operation of the Accused Cameras is full of irrelevancies, hidden agreements with Mr. Berg,

and acknowledgement that he fully understands what he contended was unclear. The Third

Locke Declaration does not present any genuine dispute on any material fact. It offers nothing to

the disposition of the motion for summary judgment.

               While Papst disagrees with Mr. Berg’s conclusion that External Accessories

cannot transmit data to a computer when attached to an Accused Camera operating in MSC

mode, Papst fails to raise any genuine issue of material fact. The only allegedly contrary

evidence that Papst provides is the bus trace of lens data and the Nikon D200. But Dr. Locke

expressly concedes this evidence shows only that the lens transferred data to the camera before

the camera was connected to the computer. See Third Locke Decl. ¶ 555.




Dr. Locke has an “extensive background in areas such as software performance, real-time
architecture, design, implementation, and deployment, standards, software engineering maturity,
and software organization.” Id. at 1. He has written numerous articles, mostly regarding real-
time systems. Id. at 4-6. Further, “[w]hile he has concentrated more on software and systems
design and implementation, his understanding of hardware, including communication protocols,
interface mechanisms, and control mechanisms has proven to be critical to the success of many
major systems.” Id.

                                                24
               3. New Theory of Infringement

               Papst attempts to ward off summary judgment in various other ways, to no avail.

Papst asserts a new theory of infringement, arguing that some of the Accused Cameras have a

“back door” mode of operation that is used for diagnostics, testing, and repair and that when

operated in this mode, the Accused Cameras can take pictures and operate accessories while

connected to a computer. See Opp’n at 8-9. Papst also seeks more discovery regarding the

“back door” mode of operation. Id. at 9; see also Mot. for 56(d) Disc. [Dkt. 479] at 17-19.

Papst failed, however, to allege infringement based on this “back door” theory in its Final

Infringement Contentions. It is too late to do so now. The Court ordered Papst to file final

infringement contentions in compliance with detailed requirements. See Mot. for Sanctions

[Dkt. 388], Ex. A (Tr. of Aug. 31, 2010 Hearing); Sixth Prac. & Pro. Order (Sixth PPO) [Dkt.

372]. Because Papst filed Final Infringement Contentions that failed to comply with Court’s

orders, the Court barred Papst from advancing any arguments for infringement (or against claims

of noninfringement) that either (1) are not based solely on this Court’s constructions of the

Patents or (2) are not already set forth specifically and explicitly in Papst’s Final Infringement

Contentions. See Sanctions Op. [Dkt. 429] at 13; Sanctions Order [Dkt. 430] at 2. Accordingly,

Papst is barred from asserting this new theory of infringement.

               4. “Real Time” Data Transmission

               Additionally, Papst mischaracterizes the Camera Manufacturers’ motion as

interpreting the Patents to require simultaneous physical connection and communication of live

“real time” data (i.e., data streaming). See Opp’n at 19 (Papst asserts that the Camera

Manufacturers’ argument is “built on the questionable premise that the accused products never

transmit live data from external accessories to an attached host computer . . . , that delayed data



                                                 25
transmissions are noninfringing, and that only real-time, ‘active’ transmissions would be

infringing.”). Papst blatantly errs in so advertising the Camera Manufacturers’ motion. The

Claims and the specifications do not require that all transfers of data from a data transmit/receive

device be “real time” transfers, and the Camera Manufacturers do not contend that they do. 16

               Papst explains that the Patents cannot possibly require live data streaming,

because to construe them this way would nullify Claims concerning “virtual files.” 17 The Court

construed the term “virtual files” to mean “files that appear to be but are not physically stored;

rather, they are constructed or derived from existing data when their contents are requested by an

application program so that they appear to exist as files from the point of view of the host

device.” Claims Constr. Op. at 67. Because virtual files are derived from “existing data,” Papst

reasons that they are not derived from live incoming data. Opp’n at 21. 18 Papst’s warning that

agreement with the Camera Manufacturers would invalidate claims dealing with “virtual files” is


16
   Papst protests that “[n]o claim language requires the ‘second connecting device’ to be actively
receiving live data from a [data transmit/receive device] at the same time that data is being
provided to the host via the ‘first connecting device.’” Opp’n at 3. The Court did not adopt “real
time” data transmission as a Claim limitation. The Patents refer to “real time” data transfer only
as a preferred embodiment. See 399 Patent 9:24-27 (in the preferred embodiment of the
invention, “the digital signal processor implements a fast Fourier transformation (FFT) in real
time and also optional data compression of the data to be transferred from the data
transmit/receive device to the host device”); 449 Patent 8:24-27 (same). While this point is
accurate, it is not argued by the Camera Manufacturers.
17
   Papst refers particularly to dependent Claim 7, which claims an interface device according to
Claim 2 and “which further comprises a root directory and virtual files which are present on the
signaled hard disk drive and which can be accessed from the host device.” 399 Patent 13:33-36
(emphasis added).
18
   “Existing data” may reside in the interface device. See 399 Patent, Claim 8, 13:38-39 (“virtual
files comprise a configuration file in text format which are stored in the memory means” of the
interface device); id., Claim 9, 13:43-47 (virtual files may “comprise batch files or executable
files for the microprocessor means which are stored on the interface device to perform data
processing, independently of the host device, of data received via the second connecting
device”).

                                                 26
based wholly on the incorrect assertion that the Camera Manufacturers interpret the Patents as

requiring “real time” data streaming. The Camera Manufacturers do not assert that the Patents

require “real time” data transmission; their motion is based on the Court’s definition of “data

transmit/receive device” and the fact that External Accessories do not meet the definition

because they cannot transmit data to a computer when they are attached to the Accused Cameras

operating in MSC mode. This is the case regardless of the timing of data transmission.

                5. Papst’s Request for Reconsideration

                 Papst also opposes summary judgment by asking the Court to reconsider its

construction of the “data transmit/receive device” claim limitation. This is Papst’s third motion

to obtain reconsideration of claims construction. In its first motion, Papst sought reconsideration

of the “data transmit/receive device” claim limitation, arguing that a data transmit receive/device

could engage in one-way or in two-way communication, that is, it could send data to the

interface device or it could send data to and receive data from the interface device. Mot. Recons.

[Dkt. 321]. The Court granted that motion. See Claims Constr. Op. at 2, 27-31 (modifying prior

Op. [Dkt. 312]). Papst’s second motion for reconsideration sought reconsideration of other claim

limitations. 19 See Mot. Recons. [Dkt. 339]. It was denied. See Order [Dkt. 343] (finding that

Papst did not present a valid basis for reconsideration and that Papst’s piecemeal approach to

litigation was not justified).

                 Papst now asks the Court to reconsider its determination that a “data

transmit/receive device” is a device capable of data transmission when connected to a computer

by the invented interface device. See Claims Const. Op. at 31. Papst presents two arguments.



19
  Less formal efforts to achieve reconsideration of various Patent terms construed by the Court
have peppered Papst’s filings.

                                                27
               First, Papst contends that the “data transmit/receive device” is not a claim

limitation at all and should not be treated as limiting the scope of the Patents. Papst made this

argument already, and the Court addressed it as follows:

               Mr. Tasler did not invent a data transmit/receive device, and Papst
               objects to any construction of the term. Tr. 1:136 (Papst) (“So our
               first position, of course, is that we shouldn’t be defining this as part
               of the claimed invention.”). While Papst asserts that the term “data
               transmit/receive device” is not a claim limitation, Papst concedes
               that the term may be construed “for context” as “a device that
               receives input and provides data to the interface device.” Papst=s
               App. at 2. The Court agrees that it should not define the nature of
               a data transmit/receive device. What is at issue, however, is the
               communication capability between the invented interface device
               and a data transmit/receive device, which is very much part of
               construing the Claims, and the Court construes “data
               transmit/receive device” in this context.

Claims Constr. Op. at 27. Papst reads this portion of the Claims Construction Opinion too

broadly. While the Court agreed that Mr. Tasler did not invent a data transmit/receive device

and agreed that the precise nature of the data transmit/receive device should not be defined, the

Court determined that it was necessary to define the “communication capability” of the data

transmit/receive device. Id. The Court proceeded to define the term, in accordance with its

“communication capability,” as “a device that is capable of either (a) transmitting data to or (b)

transmitting data to and receiving data from the host device when connected to the host device

by the interface device.” Id. at 27, 31. In addition, the Court held that the preamble, which

describes the invention as “an interface device for communication between a host device . . . and

a data transmit/receive device,” 399 Patent 12:42-46 & 449 Patent 11:45-49, operated as a claims

limitation. See Claims Constr. Op. at 18-23. Thus, the data transmit/receive device, per the

definition provided by the Court, is in fact a claims limitation.

               Second, Papst argues that the Court should redefine “data transmit/receive

device” to mean “a device that is capable of either (a) transmitting data to or (b) transmitting data
                                                 28
to and receiving data from the host device regardless of whether it is connected to the host

device by the interface device.” Papst argues that the word “connected” does not mean

“attached” or physically connected. Instead, Papst argues that the word should be accorded a

looser meaning and that “connected” should be interpreted to mean joined by communication, as

people are “connected” when they communicate by letter or email. See Opp’n at 19-21.

               The Court declines the invitation to construe yet again the term “data

transmit/receive device.” The Court already ruled, and Papst fails to meet the standard for

reconsideration. Singh v. George Wash. Univ., 383 F. Supp. 2d 99, 101 (D.D.C. 2005)

(reconsideration may be permitted when a court has patently misunderstood a party, has made a

decision outside the adversarial issues presented to the court by the parties, has made an error not

of reasoning but of apprehension, or where a controlling or significant change in the law or facts

has occurred since the submission of the issue to the court.) There has been no controlling or

significant change in the law or the facts, and Papst fails to show that the Court patently

misunderstood a party, made a decision outside the adversarial issues presented, or made an error

of apprehension. As described in detail above, the Court’s definition of “data transmit/receive

device” is well-grounded in the language of the Patents:

               (1) Data does not begin to be sent from the data transmit/receive
               device to the interface device until the computer and the interface
               device have established communication. Claims Constr. Op. at 44;
               see also 399 Patent 6:64-67 & 449 Patent 5:64-67.

               (2) The specification describes communication between a
               computer and a data transmit receive device when they are both
               connected to the interface device. See 399 Patent 5:67 & 6:1-15
               (communication begins “[w]hen the host device system with which
               the interface device according to the present invention is connected
               is booted and a data transmit/receive device is also attached to the
               interface device.”); 449 Patent 5:2-6 (same).

               (3) The title of the Patents, “Flexible Interface for Communication
               Between a Host and an Analog I/O Device Connected to the

                                                 29
               Interface Regardless of the Type of the I/O Device,” describes the
               invention as a device for communication between the computer
               and a data transmit/receive device when the three are “connected.”
               See 399 Patent, Title; 449 Patent, Title.

The Court will deny Papst’s request for reconsideration.

               Because the External Accessories cannot transmit data to a computer when

connected to a computer by an Accused Camera operating in MSC mode, the External

Accessories do not meet the “data transmit/receive device” claim limitation. Because Papst has

failed to demonstrate any genuine issue of material fact regarding this motion, the motion for

summary judgment of noninfringement will be granted in favor of the Camera Manufacturers.

               B. Doctrine of Equivalents

               Papst also objects to summary judgment, asserting that the Accused Cameras

infringe under the doctrine of equivalents. This doctrine is inapplicable here. The essential

inquiry in a determination under the doctrine of equivalents is whether “the accused product or

process contains elements identical or equivalent to each claimed element of the patented

invention.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1338 (Fed. Cir. 2011)

(quoting Warner-Jenkinson, 520 U.S. at 40). An element in an accused product is deemed to be

equivalent to a claim limitation if the difference between the two is “insubstantial” to a person of

ordinary skill in the art. Wavetronix v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1360 (Fed. Cir.

2009). In order to assess insubstantiality, a court considers whether an element of the accused

product “performs substantially the same function in substantially the same way to obtain the

same result” as the patented invention. Am. Calcar, 651 F.3d at 1338. This is often referred to

as the “function/way/result test.” Id. A patentee alleging infringement under the doctrine of

equivalents must submit particularized evidence of equivalence and must explain specifically




                                                 30
why the difference between what the claims literally require and what the accused products

actually do is “insubstantial.” Id.

               The Final Infringement Contentions fail to assert specific claims that the External

Accessories meet the “data transmit/receive device” claim limitation under the doctrine of

equivalence with the precision that the Court required. See Mot. for Sanctions, Ex. A (Tr. of

Aug. 31, 2010 Hearing); Sixth Prac. & Pro. Order (Sixth PPO). Papst is barred from now

making a more explicit claim. See Sanctions Op. at 13 (as a sanction for its misconduct, Papst

may not advance any claim for infringement not already set forth specifically and explicitly in

the FICs); Sanctions Order at 2 (same).

               C. Papst’s Request for Additional Discovery

               Papst filed a motion for Rule 56(d) discovery, claiming that it needs further fact

discovery to oppose summary judgment. See Mot. for 56(d) Disc. [Dkt. 479]; Reply [Dkt. 515].

Federal Rule of Civil Procedure 56(d) provides:

               If a nonmovant shows by affidavit or declaration that, for specified
               reasons, it cannot present facts essential to justify its opposition,
               the court may:

               (1) defer considering the motion or deny it;

               (2) allow time to obtain affidavits or declarations or to take
               discovery; or

               (3) issue any other appropriate order.

Fed. R. Civ. P. 56(d). “The nonmoving party bears the burden of identifying the facts to be

discovered that would create a triable issue and the reasons why the party cannot produce those

facts in opposition to the motion. The nonmoving party must show a reasonable basis to suggest

that discovery would reveal triable issues of fact.” Scott-Blanton v. Universal City Studios

Prods. LLP, 246 F.R.D. 344, 347 (D.D.C. 2007), aff=d 308 F. App=x 452 (D.C. Cir. 2009). A

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generalized, speculative request for more discovery is insufficient; a request for more discovery

must show that “further specific discovery will defeat a summary judgment motion.” Estate of

Parsons v. Palestinian Auth., 715 F. Supp. 2d 27, 35 (D.D.C. 2010), aff=d, No. 10-7085, 2011

WL 3528749 (D.C. Cir. Aug. 12, 2011).

               Papst seeks information regarding “real time” operation and “back door”

connection. See generally Mot. for Rule 56(d) Disc. at 15-19; Reply at 3-6. Further, Papst wants

to depose Mr. Berg regarding “various secret back door modes of operation.” Reply at 5. Papst

fails to show, however, how such discovery would reveal triable issues of fact. As explained

above, the Camera Manufacturers do not contend that the Court’s construction of the “data

transmit/receive device” claim limitation requires “real time” communication. Also, Papst’s

Final Infringement Contentions do not include any allegations of infringement by devices

operating in a “back door” mode. “Real time” operation and “back door” connection are not at

issue here.

               Accordingly, the Camera Manufacturers have met their burden on summary

judgment (1) by pointing to the readily observable fact that External Accessories cannot transfer

data to a computer when attached to an Accused Camera operating in MSC mode and (2) by

submitting Mr. Berg’s Declaration. As the party opposing summary judgment, Papst then bore

the burden of demonstrating a genuine issue of material fact requiring trial. It failed to do so

with Dr. Locke’s Declaration or in any other way.

                                       IV. CONCLUSION

               The Camera Manufacturers’ motion for summary judgment of noninfringement

with respect to the “data transmit/receive device” claim limitation [Dkt. 451] will be granted. 20


20
  Papst moved to file a surreply in opposition to the Camera Manufacturers’ motion for
summary judgment with respect to the “data transmit/receive device” limitation. See Mot. for
                                                 32
When operating in MSC mode, the Accused Cameras (identified in Tables 12 and 13 of the Final

Infringement Contentions) do not infringe the 399 Patent or the 449 Patent (either literally or

under the doctrine of equivalents) based on the External Accessories because such External

Accessories do not meet the “data transmit/receive device” claim limitation. The External

Accessories, identified in Tables 1-4 and 6 of the Final Infringement Contentions, are audio

sources, audio/video sources, flashes, external data devices (including GPs units, bar code

scanner units, and remote control devices), lenses, and printers. Papst’s motion for Rule 56(d)

discovery [Dkt. 479] is denied with regard to that portion of the motion dealing with the “data

transmit/receive device” claim limitation. A memorializing Order accompanies this Opinion.



Date: May 8, 2013                                           /s/
                                              ROSEMARY M. COLLYER
                                              United States District Judge




Leave to File Surreply [Dkt. 516]. Because surreplies are disfavored in this District and because
the Camera Manufacturers’ Reply did not raise new issues, Papst’s motion to file a surreply will
be denied. See Crummey v. Social Security Admin., 794 F. Supp. 2d 46, 62 (D.D.C. 2011).

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