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Yama Capital LLC v. Canon Inc.

United States District Court, Second Circuit

December 13, 2013

CANON INC., et al., Defendants.



Plaintiff Yama Capital LLC ("Plaintiff") is the assignee of a patent that teaches a method of accounting for spatial noise characteristics in digital image acquisition systems. In September 2012, Plaintiff filed an action against Defendants Canon Inc. and Canon U.S.A., Inc. (collectively, "Defendants"), claiming patent infringement with respect to nine of Defendants' cameras. Pending before the Court is Defendants' motion to strike Plaintiff's revised infringement contentions. For the reasons set forth in the remainder of this Opinion, Defendants' motion is granted in part; Plaintiff's infringement contentions are struck with leave to file amended contentions.


The patent-in-suit, U.S. Patent No. 6, 069, 982 (the "982 patent"), was developed in the Polaroid Image Science Laboratory and issued by the United States Patent and Trademark Office in May 2000. The 982 patent was then acquired by Plaintiff in or around 2008 as part of the sale of Polaroid's assets during its bankruptcy. (Pl. Opp. 2-3). The patent is entitled "Estimation of Frequency Dependence and Grey-Level Dependence of Noise in an Image." (Compl. ¶ 9). According to Plaintiff, "[t]he 982 Patent generally discloses and claims technology to update default data and parameters relating to spatial noise characteristics in a digital image acquisition system." ( Id. ). "Noise, " in this context, refers to various types of distortion introduced into an image by the process of capturing it.

Plaintiff alleges that nine different cameras[2] produced by Defendants infringe claims 1, 2, and 4 of the 982 patent, set forth below:

(1) Estimating spatial noise characteristics associated with an image acquired from a digital image acquisition device having unknown spatial noise characteristics, by a method comprising the steps of:
Providing predetermined default values for the spatial noise characteristics of the digital image acquisition device; Gathering information related to the spatial noise characteristics of the digital image acquisition device; Generating replacement data in response to said gathered information; Updating said predetermined default spatial noise characteristics associated with the digital image acquisition device with said replacement data.
(2) The method of claim 1 wherein the step of gathering information comprises gathering user information related to the spatial noise characteristics of the digital image acquisition device.
(4) The method of claim 1 wherein the step of gathering information comprises gathering, from the acquired image, image data related to the spatial noise characteristics of the digital image acquisition device.

(Dkt. #37, Ex. 1). Dependent claims 2 and 4 differentiate from independent claim 1 only in specifying alternative forms of the "gathering" limitation. See generally Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989) ("[A] dependent claim includes all the limitations of the claim from which it depends....").

On June 7, 2012, Plaintiff's licensing counsel sent a copy of the 982 patent to Defendants' United States office, indicating Plaintiff's belief that Defendants infringed claims of the patent and inviting Defendants to enter into licensing negotiations. (Compl. ¶ 14). On June 12, Defendants responded, confirming receipt of the 982 patent. ( Id. ).

Having received no further response, on September 21, 2012, Plaintiff filed the Complaint in this action, alleging that nine of Defendants' cameras infringe the 982 Patent. (Compl. ¶¶ 10-12). The case was designated for inclusion in the Pilot Project Regarding Case Management Techniques for Complex Civil Cases in the Southern District of New York. (Dkt. #2). As part of that Project, on January 25, 2013, the Court adopted Patent Disclosure Rules 1-1(b) and 1-1(c) (the "Rules") at the parties' request; the Rules tracked the Northern District of California's Patent Local Rules 3-1(b) and 3-1(c). (Dkt. #21).

Pursuant to the Rules, Plaintiff served its Preliminary Infringement Contentions, supporting Claim Charts, and related documents on April 1, 2013. (Pl. Opp. 2). Defendants disputed the adequacy of these contentions via correspondence exchanged with Plaintiff on April 12, 2013, and April 19, 2013. ( Id. ). Plaintiff thereupon agreed to submit revised contentions and the parties agreed to stay all other deadlines in the case. (Dkt. #26).

On May 22, 2013, Plaintiff submitted its Revised Preliminary Infringement Contentions. ( See Dkt. #37, Ex. 3). Defendants, by letter dated June 27, 2013, then sought a pre-motion conference with the Court preparatory to moving to strike the revised contentions. ( Id. ). A pre-motion conference was held on July 24, 2013, during which the Court set a briefing schedule for the motion. (Dkt. #32).

On August 12, 2013, Defendants filed their motion to strike Plaintiff's Revised Preliminary Infringement Contentions and supporting Claim Charts (Dkt. #35), a memorandum of law in its support (Dkt. #36), and an attorney declaration with supporting exhibits (Dkt. #37). Plaintiff responded on September 3, 2013, with a memorandum of law opposing Defendants' motion (Dkt. #38), and an attorney declaration with supporting exhibits (Dkt #39). Defendants filed a reply memorandum in further support of their motion on September 9, 2013. (Dkt. #40).


A. Applicable Law

Patent Disclosure Rule 1-1(b) requires a litigant claiming infringement to provide:

Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process.

(Dkt. #21, Att. A).

Patent Disclosure Rule 1-1(c) further requires a litigant claiming infringement to provide:

A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed

function.[3] ( Id. ).

Patent disclosure rules are "a discovery device that set forth the standards for disclosing asserted claims and infringement contentions." Infineon Techs. v. Volterra Semiconductor, No. C-11-6239 (MMC) (DMR), 2013 WL 322570, at *3 (N.D. Cal. Jan. 28, 2013).[4] Infringement Contentions submitted under the Rules "take[] the place of a series of interrogatories that defendants would likely have propounded had the patent local rules not provided for streamlined discovery.'" InterTrust Techs. Corp. v. Microsoft Corp., No. C-01-1640 (SBA), 2003 WL 23120174, at *1 (N.D. Cal. Dec. 1, 2003) (quoting Network Caching Tech., LLC v. Novell, Inc., No. C-01-2079 (VRW), 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13, 2002)). "Taken together, [the Patent Disclosure Rules] mandate[] that a plaintiff's infringement contentions must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a reasonable chance of proving infringement' and to raise a reasonable inference that all accused products infringe.'" Infineon, 2013 WL 322570, at *3 (quoting Shared Memory Graphics, LLC v. Apple Inc., No. C-10-2475 (MMC) (JSC), 2011 WL 3878388, at *4 (N.D. Cal. Sept. 2, 2011)).

The Rules "require[] plaintiffs to disclose their preliminary infringement contentions before discovery has even begun, " American Video Graphics, L.P. v. Electronic Arts, Inc., 359 F.Supp.2d 558, 560 (E.D. Tex. 2005). As such, a plaintiff "must provide particular theories of infringement with sufficient specificity to provide defendants with notice of infringement beyond that which is provided by the mere language of the patent rules themselves.'" Linex Techs., Inc. v. Belkin Int'l, Inc., 628 F.Supp.2d 703, 713 (E.D. Tex. 2008) (quoting STMicroelectronics, Inc. v. Motorola, Inc., 308 F.Supp.2d 754, 755 (E.D. Tex. 2004)).

Infringement contentions "are not meant to provide a forum for litigation of the substantive issues; they are merely designed to streamline the discovery process.'" STMicroelectronics, 308 F.Supp.2d at 755 (quoting Network Caching, 2003 WL 21699799, at *4-5). At this stage, the issue is not "the merits of Plaintiff's contentions, " but only "whether Plaintiff's Infringement Contentions fulfill the particular requirements of" the Patent Disclosure Rules "by disclosing sufficiently detailed information." Linex Technologies, 628 F.Supp.2d at 713. It is not enough, however, to "recite[] language from the claims at issue and provide[] corresponding images with some textual explanations." H-W Tech., L.C. v. Apple, Inc., No. 3:11-CV-0651-G, 2012 WL 3650597, at *5 (N.D. Tex. Aug. 2, 2012), report and recommendation adopted sub nom. H-W Tech., L.C. v., Inc., No. 3:11-CV-0651-G (BH), 2012 WL 3656293 (N.D. Tex. Aug. 27, 2012). "The purpose of [the Rules] is in fact to be nit picky, to require a plaintiff to crystallize its theory of the case and patent claims." InterTrust, 2003 WL 23120174, at *3. "Plaintiff has the burden of providing infringement contentions that identify specifically and in detail where each claim element is found in the accused products, so that the Court can make a principled decision on whether discovery will proceed.'" Id. at *5 (quoting Bender v. Maxim Integrated Prods., Inc., No. C-09-1152 (SI), 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010)).

Where Infringement Contentions are found inadequate, courts can dismiss the case entirely if they prove inadequate beyond a plaintiff's capacity to cure, or may impose "[l]esser discovery sanctions, including an order to amend" the infringement contentions; the latter may be "a more appropriate resolution to what is, essentially, a discovery dispute." Samsung SDI Co., Ltd. v. Matsushita Elec. Indus. Co., Ltd., No. CV 05-8493 (PA) (SJHX), 2006 WL 5097360, at *1 n.1 (C.D. Cal. June 5, 2006). Even where a defendant "only moves to strike the infringement contentions, the motion may be construed as a motion to strike as well as an alternative motion to compel more detailed infringement contentions." H-W Tech, 2012 WL 3650597, at *8 n.4 (citing Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09-C-4348, 2010 WL 3781254, at *1 (N.D. Ill. Sept. 22, 2010)).

B. Application

Though Plaintiff employs different modalities (with varying degrees of detail) to identify its infringement contentions, it nonetheless fails to satisfy the Rules in several ways. First, Plaintiff cannot find infringement in isolated claim limitations, taken out of context, that are unrelated to other limitations that together (and only together) constitute the claimed method. This is because the Rules require the identification not merely of claim limitations, but also of those limitations as part of an infringing process. See Linex Technologies, 628 F.Supp.2d at 713 n.9 ("Plaintiff is required to explain how each Accused Product infringes each asserted claim....").

Second, Plaintiff cannot rely on an unspecified matrix of combinations of "primary features, " each allegedly infringing in their own right, with "secondary features" whose infringement arises only as a function of the combination. This attempt to identify a "combination" infringement contention is ambiguous and inadequately specific.

Third, Plaintiff's fails in its efforts to identify "primary features" that allegedly infringe the asserted claims. In this regard, Plaintiff's Infringement Contentions rely on the ISO and High ISO Noise Reduction features, while its Claim Charts rely on the Long Exposure Noise Reduction and Chromatic Aberration Correction features.[5] As to none of these four features does Plaintiff identify, with adequate specificity, the "providing" or the "generating" limitations of claim 1 of the 982 patent. Inasmuch as the ...

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