IN RE: PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION - MDL 1880

Filing 528

MEMORANDUM AND OPINION regarding Camera Manufacturers' motion for summary judgment regarding the data transmit/receive device claim limitation. Signed by Judge Rosemary M. Collyer on 5/8/2013. (KD)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
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IN RE PAPST LICENSING GMBH & CO. KG )
LITIGATION
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Misc. Action No. 07-493 (RMC)
This document relates to
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MDL No. 1880
ALL CASES
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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-cv2088; 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, 08cv-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 MSCcapable 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.
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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.
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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
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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 EyeFi 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 realtime 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
31

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).
33