DCT

2:17-cv-08210

Max BLU Tech LLC v. Smart Buy Corp

Log In
Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-08210, C.D. Cal., 11/10/2017
  • Venue Allegations: Venue is based on Defendant's U.S. branch office being located in Irwindale, California, within the Central District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s Blu-ray™ recordable and re-writable optical media infringe four patents related to a manufacturing process for creating high-density data storage disks.
  • Technical Context: The technology concerns the manufacturing of optical disks, specifically the creation of a surface relief pattern of lands and grooves that enables both reliable data tracking and high-capacity data storage.
  • Key Procedural History: The patents-in-suit descend from a common priority application filed in 1998. The family has an extensive prosecution history, involving multiple continuation and divisional applications. One of the asserted patents, RE44,633, is a reissued patent, and another, the ’685 patent, was the subject of a Certificate of Correction. This history suggests a protracted and complex examination process at the USPTO.

Case Timeline

Date Event
1998-04-06 Earliest Priority Date for all Patents-in-Suit ('825 Application filing)
2008-04-01 U.S. Patent No. 7,352,685 Issues
2010-02-16 Certificate of Correction for '685 Patent Issues
2010-09-21 U.S. Patent No. 7,801,016 Issues
2013-11-26 U.S. Patent No. 8,593,931 Issues
2013-12-10 U.S. Reissued Patent No. RE44,633 Issues
2017-11-10 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,352,685 - "Reverse Optical Mastering for Data Storage Disk Replicas"

Issued April 1, 2008.

The Invention Explained

  • Problem Addressed: The patent describes a problem in conventional optical disk manufacturing where a trade-off exists between groove depth and land width. For high-density disks with small track pitches, making grooves deep enough for reliable tracking signals can erode the adjacent lands, reducing the area available for data storage. This constrains the design, as the designer cannot independently specify both parameters (’685 Patent, col. 3:1-28).
  • The Patented Solution: The invention proposes a method where master grooves are formed by exposing a photosensitive layer on a master substrate so deeply that the grooves extend all the way down to the substrate itself (’685 Patent, col. 4:56-61). The flat, smooth surface of the master substrate thereby defines the bottom of the master grooves. In a multi-stage replication process, these wide, flat-bottomed master grooves become wide, flat-topped replica lands on the final product, while the remaining photosensitive material on the master becomes the replica grooves. This process decouples groove depth from land width, allowing for both deep grooves and wide lands (’685 Patent, Abstract; Fig. 6).
  • Technical Importance: This approach enabled the production of higher-density optical disks with improved characteristics for both tracking and data recording, a key challenge for next-generation formats at the time (’685 Patent, col. 2:50-58).

Key Claims at a Glance

  • The complaint asserts independent claim 19 and a number of dependent claims (Compl. ¶23).
  • The essential elements of independent claim 19, which claims a "replica disk," include:
    • a replica substrate with a surface pattern of lands and grooves defining a track pitch less than approximately 700 nanometers
    • groove depths are less than approximately 120 nanometers deep
    • land tops are less than approximately 200 nanometers wide
  • The complaint reserves the right to assert additional claims, including Claims 1, 2-4, 7, 9, 10, and 20-35 (Compl. ¶23).

U.S. Patent No. 7,801,016 - "Reverse Optical Mastering for Data Storage Disk Replicas"

Issued September 21, 2010.

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the '685 patent, the ’016 patent addresses the same technical problem of the trade-off between groove depth and land width in conventional optical disk mastering (’016 Patent, col. 3:1-28).
  • The Patented Solution: The '016 patent describes the same solution, where master grooves are created by developing a photosensitive layer down to the master substrate, thereby allowing for the independent design of replica land width and groove depth (’016 Patent, Abstract; col. 4:51-61).
  • Technical Importance: The technical importance is identical to that of the '685 patent, as it relates to enabling higher-density optical media with superior physical characteristics (’016 Patent, col. 2:50-58).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 2 (Compl. ¶31).
  • The essential elements of independent claim 1, which claims a "replica disk," include:
    • a replica substrate with a surface pattern of lands and interrupted grooves defining a track pitch less than 425 nanometers
    • tops of the lands define widths between 25 percent of the track pitch and 140 nanometers
    • grooves define depths between 20 and 120 nanometers
  • The complaint reserves the right to assert other claims (Compl. ¶31).

U.S. Patent No. 8,593,931 - "Replica Disk for Data Storage"

Issued November 26, 2013.

  • Technology Synopsis: As part of the same patent family, the ’931 patent addresses the same technical problem as the '685 and '016 patents. It discloses the manufacturing process that allows for creating optical disks with wide, flat lands for data storage and deep grooves for tracking, particularly for media with a very small track pitch (’931 Patent, col. 1:25-col. 2:14).
  • Asserted Claims: The complaint asserts at least independent claim 1 and dependent claims 2-5, 7, 8-10, 11, 12, and 14 (Compl. ¶39).
  • Accused Features: The complaint alleges that the physical characteristics of Defendant's Blu-ray™ recordable media infringe the claims (Compl. ¶39).

U.S. Reissued Patent No. RE44,633 - "Reverse Optical Mastering for Data Storage Disk Replicas"

Issued December 10, 2013.

  • Technology Synopsis: This is a reissue of U.S. Patent No. 7,952,986, which is also in the same family. It describes the same reverse optical mastering technology to solve the land-width-versus-groove-depth problem in high-density optical media (RE44,633 Patent, col. 1:28-col. 2:18).
  • Asserted Claims: The complaint asserts at least independent claims 1 and dependent claims 2-13, and 15-20 (Compl. ¶47).
  • Accused Features: The complaint alleges that the physical characteristics of Defendant's Blu-ray™ recordable media, as detailed in an analysis exhibit, infringe the claims (Compl. ¶47).

III. The Accused Instrumentality

Product Identification

  • The accused products are Defendant's "Blu-ray™ recordable media, including, but not limited to, recordable and re-writable discs in Blu-ray™ format" (the "Accused Products") (Compl. ¶¶ 8, 15).

Functionality and Market Context

  • The complaint alleges the Accused Products are optical storage discs that are sold, distributed, and advertised through various retailers and websites, including www.SmartBuyDisc.com and www.SmartBuy-Depot.com (Compl. ¶¶ 15, 18, 25).
  • The complaint includes a picture of representative product packaging as Exhibit F, which shows branding for "Smart-Blu" Blu-ray discs (Compl. ¶16).
  • The core of the infringement allegation is that these discs possess the specific physical structures—such as land widths, groove depths, and track pitches—recited in the patents-in-suit (Compl. ¶¶ 23, 31, 39, 47).
  • The complaint references an "analysis of a Blu-ray™ recordable disc" in Exhibit G as evidence of these infringing physical characteristics (Compl. ¶17).

IV. Analysis of Infringement Allegations

’685 Patent Infringement Allegations

Claim Element (from Independent Claim 19) Alleged Infringing Functionality Complaint Citation Patent Citation
A replica disk comprising: a replica substrate having a first major surface and a second major surface, the first major surface including a surface pattern defined by lands and grooves... The Accused Products are alleged to be replica disks with a substrate having a surface pattern of lands and grooves (Compl. ¶23). ¶23 col. 14:55-64
...the surface relief pattern defining a track pitch less than approximately 700 nanometers, The complaint alleges the Accused Products are Blu-ray™ media, which by standard have a track pitch well below 700 nanometers. The physical characteristics are alleged to be claimed in the patent (Compl. ¶23, Ex. G). ¶23 col. 14:65-67
wherein groove depths of the grooves are less than approximately 120 nanometers deep, and The complaint alleges the Accused Products have the physical characteristics claimed in the '685 Patent, which would include the specified groove depths. This allegation is supported by reference to Exhibit G (Compl. ¶¶ 17, 23). ¶23 col. 18:60-62
wherein land tops of the lands are less than approximately 200 nanometers wide. The complaint alleges the Accused Products have the physical characteristics claimed in the '685 Patent, which would include the specified land top widths. This allegation is supported by reference to Exhibit G (Compl. ¶¶ 17, 23). The representative analysis in Exhibit F shows packaging for Blu-ray media, which are the subject of the analysis in Exhibit G (Compl. ¶¶ 16, 17). ¶¶16, 17, 23 col. 18:63-65

’016 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A replica disk comprising: a replica substrate including a first major surface and a second major surface, the first major surface including a surface pattern defined by lands and interrupted grooves... The Accused Products are alleged to be replica disks, specifically Blu-ray™ recordable media, which contain lands and grooves for data storage (Compl. ¶31). ¶31 col. 14:1-5
...wherein the surface pattern defines a track pitch that is less than 425 nanometers, The Accused Products are alleged to have the physical characteristics claimed in the '016 patent, including the specified track pitch, as evidenced by Exhibit G (Compl. ¶¶ 17, 31). ¶31 col. 14:6-8
wherein tops of the lands define widths between 25 percent of the track pitch and 140 nanometers, and The complaint alleges the Accused Products meet the claimed dimensional requirements for land top width, citing the analysis in Exhibit G (Compl. ¶¶ 17, 31). ¶31 col. 14:9-11
wherein the grooves define depths between 20 and 120 nanometers. The complaint alleges the Accused Products meet the claimed dimensional requirements for groove depth, citing the analysis in Exhibit G (Compl. ¶¶ 17, 31). ¶31 col. 14:12-14

Identified Points of Contention

  • Evidentiary Questions: The complaint's infringement theory rests almost entirely on conclusory statements that the Accused Products have the "physical characteristics as claimed," with repeated references to an "analysis" in Exhibit G, which is not attached to the pleading (Compl. ¶¶ 17, 23, 31, 39, 47). A central point of contention will be whether Plaintiff's analysis, when produced, actually demonstrates that the Accused Products meet the specific dimensional limitations (e.g., land widths, groove depths, track pitches) of the asserted claims.
  • Scope Questions: The claims are directed to a "replica disk" with specific structural features. A question for the court may be whether the term "replica substrate" as used in the claims, which are based on a specification describing a multi-stage mastering and replication process, carries any limitations tied to that specific manufacturing method.

V. Key Claim Terms for Construction

The Term: "replica substrate"

(e.g., ’685 Patent, cl. 19)

  • Context and Importance: This term defines the fundamental article of manufacture being claimed. Its construction is critical because infringement depends on the physical characteristics of this element. Practitioners may focus on this term to determine if it is limited to a substrate produced by the specific "reverse optical mastering" process described in the specification or if it covers any disk substrate meeting the structural limitations, regardless of manufacturing method.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the substrate to one made by a particular method. It is a product claim, which is typically infringed by any product that has the recited structure.
    • Evidence for a Narrower Interpretation: The specification heavily details a specific mastering process involving a "master substrate" made of polished glass and a photosensitive layer (’685 Patent, col. 7:60-65). The invention is consistently framed as a solution to a problem in conventional mastering processes. A defendant may argue that "replica substrate" should be understood in the context of being a replica of a master created by this specific process.

The Term: "grooves extend down into the replica substrate"

(e.g., ’685 Patent, cl. 7)

  • Context and Importance: This limitation describes a key structural feature that allegedly results from the patented manufacturing method. The infringement analysis hinges on whether the physical structure of the accused Blu-ray discs meets this description. The dispute will likely focus on the physical meaning of "extend down into" for a final molded product.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: This could be read simply to mean that the grooves are depressions formed in the surface of the substrate, a feature of all optical disks.
    • Evidence for a Narrower Interpretation: The specification explains that the master grooves are formed by developing a photosensitive layer completely away, such that the grooves "extend[] down to a substrate interface" (’685 Patent, col. 4:56-61). A party could argue that for the replica disk, "extend down into the replica substrate" implies a specific geometry (e.g., sharp corners, flat bottoms) that is the inverse of the master, and is distinguishable from grooves formed by other methods.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Defendant induces infringement by encouraging and instructing customers to use the Accused Products in an infringing manner (Compl. ¶¶ 24, 32, 40, 48). The factual basis alleged is Defendant's sale of the products, marketing them as "Blu-ray™ compliant," and providing them under its brand, which allegedly specifically intends for customers to purchase and use the infringing media (Compl. ¶¶ 24, 32, 40, 48).

Willful Infringement

  • The complaint alleges knowledge of the patents "as early as the date of service of the Original Complaint" (Compl. ¶¶ 24, 32, 40, 48). This supports a claim for post-suit willfulness. The complaint also contains a general allegation that Defendant "knew that its actions...would induce...infringement," but does not plead specific facts indicating pre-suit knowledge of the patents (Compl. ¶¶ 24, 32, 40, 48).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of evidentiary proof: Does the physical analysis of Defendant's Blu-ray™ media, which Plaintiff relies upon but did not attach to the complaint, factually demonstrate that the products meet the specific and narrow dimensional limitations (e.g., land widths in nanometers, track pitches as a percentage of land width) recited in the various independent claims?
  • A second key issue will be one of claim construction: Can the term "replica substrate," as used in the product claims, be interpreted to cover any optical disc with the recited dimensions, or is its meaning limited by the detailed "reverse optical mastering" manufacturing process that constitutes the entirety of the patents' technical disclosure?
  • A final question will be the viability of indirect infringement: Given that the asserted claims are directed to the physical structure of the disk itself (an apparatus), not a method of use, can Plaintiff establish the required intent for induced infringement based on allegations that Defendant simply sold a standard-compliant product for its intended purpose?