Max BLU Tech LLC v. AVIC Umedisc US Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Max Blu Technologies, LLC (Texas)
  • Defendant: AVIC Umedisc (US) Inc. (California)
  • Plaintiff’s Counsel: Insight, PLC; Heninger Garrison Davis, LLC
• Case Identification: 5:18-cv-02431, C.D. Cal., 11/16/2018
• Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant AVIC is a California corporation that resides and has its principal place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Blu-ray™ recordable and re-writable media infringe patents related to the manufacturing process and resulting physical structure of high-density optical disks.
• Technical Context: The patents address methods for manufacturing optical storage media, such as Blu-ray discs, aiming to overcome physical limitations in creating high-density data tracks to allow for greater storage capacity.
• Key Procedural History: The patents-in-suit claim priority from a chain of applications dating back to 1998. The complaint notes that the originally-filed U.S. Patent No. 7,352,685 was subject to a Certificate of Correction in 2010.

Case Timeline

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: Conventional methods for mastering high-density optical disks face a trade-off: creating grooves deep enough for reliable laser tracking often erodes the width of the adjacent "lands" (the data-carrying surfaces), compromising data integrity. This "mandatory link between land width and groove depth" limits the ability to increase data density on the disk ('685 Patent, col. 3:17-24).
• The Patented Solution: The invention describes a mastering process that decouples groove depth from land width. This is achieved by using a photosensitive layer whose thickness pre-determines the final groove depth and by controlling the laser exposure to fully remove the photosensitive material in the groove areas down to the smooth underlying master substrate ('685 Patent, col. 3:52-61). This method creates a master disk with wide, flat-bottomed grooves, which, through an inverse stamping process, produces a final replica disk with wide, flat lands suitable for high-density recording ('685 Patent, Fig. 6; col. 7:35-44).
• Technical Importance: This approach allows for the independent specification of key geometric parameters (land width and groove depth), enabling the production of higher-density optical media that might not be manufacturable with conventional techniques ('685 Patent, col. 10:40-50).

Key Claims at a Glance

• The complaint asserts at least Claims 1, 2, 4, and 19-35 (Compl. ¶24). Independent claim 1 is representative of the asserted product-by-process claims.
• Independent Claim 1 requires:
  • A replica disk made from a specific multi-step replication process involving first and second-generation stampers.
  • The disk must have a surface relief pattern of lands and grooves with a track pitch less than 425 nanometers.
  • The grooves extend down into the replica substrate.
  • Critically, the "land tops are wider than the groove bottoms."
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶24).

U.S. Patent No. 8,593,931 - “Replica Disk for Data Storage,” issued November 26, 2013

The Invention Explained

• Problem Addressed: As a continuation of the same technology family as the '685 Patent, the '931 Patent addresses the same fundamental problem of manufacturing high-density optical disks where conventional processes create a difficult trade-off between groove depth and land width ('931 Patent, col. 3:13-32).
• The Patented Solution: The '931 Patent claims the resulting replica disk product, focusing on its specific physical dimensions rather than the process of its creation. The patent describes a replica disk with a fine track pitch and a defined groove depth, features which are enabled by the underlying mastering technology described in the specification ('931 Patent, col. 4:51-64; col. 7:35-42).
• Technical Importance: The patent aims to protect the physical embodiment of an optical disk with specific structural characteristics (e.g., track pitch and groove depth) that allow for high-density data storage ('931 Patent, col. 4:51-54).

Key Claims at a Glance

• The complaint asserts at least Claims 1, 2, 6-7, and 9 (Compl. ¶32). Independent claim 1 is a representative product claim.
• Independent Claim 1 requires:
  • A replica disk with a surface pattern of lands and grooves.
  • The surface pattern has a track pitch less than 425 nanometers.
  • The grooves have depths less than 120 nanometers.
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶32).

III. The Accused Instrumentality

• Product Identification: The accused products are Blu-ray™ recordable and re-writable media that Defendant AVIC "ships, distributes, makes, uses, offers for sale, sells, and/or advertises" (Compl. ¶3, ¶8, ¶16).
• Functionality and Market Context: The complaint alleges these are standard optical storage discs, including recordable (BD-R) and rewritable (BD-RE) formats (Compl. ¶3). Plaintiff alleges these products are available for sale through retailers in the district and nationally (Compl. ¶24). The complaint relies on visual evidence to connect the accused products to the infringement allegations, including Exhibit D, described as a picture of representative packaging for the accused Blu-ray™ media (Compl. ¶17), and Exhibit C, an offer for sale of the media (Compl. ¶19). Crucially, the infringement allegations for both patents rely on Exhibit E, which is described as a representative analysis of the physical characteristics of an accused Blu-ray™ disc (Compl. ¶18, ¶24, ¶32).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart but alleges that the Accused Products have the physical characteristics claimed in the patents, citing an analysis in its Exhibit E (Compl. ¶24, ¶32).

'685 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central issue will be the product-by-process language in Claim 1. The court will need to determine if infringement can be proven solely by the structure of the final disk (i.e., land tops wider than groove bottoms) or if Plaintiff must also provide evidence related to Defendant's specific manufacturing process.
• Technical Questions: The case will likely depend heavily on factual evidence. Does the "analysis of a Blu-ray™ recordable disc" (Compl. ¶18) referenced as Exhibit E factually demonstrate that the defendant's products have land tops that are measurably "wider than the groove bottoms" as required by the claim?

'931 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: Infringement of the '931 Patent appears to be a purely factual question of measurement. Does the analysis in Exhibit E confirm that the accused Blu-ray™ discs simultaneously have a track pitch under 425 nm and a groove depth under 120 nm? The Blu-ray standard track pitch is ~320 nm and recordable media groove depth is typically well under 120 nm, which may support the plaintiff's allegations.

V. Key Claim Terms for Construction

• The Term: "land tops are wider than the groove bottoms" ('685 Patent, Claim 1)

  • Context and Importance: This is the central structural feature distinguishing the invention from the prior art discussed in the patent. The entire infringement case for the '685 patent hinges on whether the accused products meet this geometric limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is a straightforward geometric comparison. A party could argue it simply requires a measurement showing the width of the flat top of the land exceeds the width of the flat bottom of the groove, regardless of how that geometry is achieved.
    • Evidence for a Narrower Interpretation: The specification repeatedly links this structure to the outcome of a specific mastering process where grooves are formed down to a "wide, flat master groove bottom defined by the disk substrate" ('685 Patent, col. 5:21-23). A party could argue the term implies a specific, relatively flat-topped and flat-bottomed geometry as depicted in Figure 6, not just any configuration where one measurement is larger than another.

• The Term: The preamble of Claim 1 of the '685 Patent ("A replica disk made from a replication process that includes...")

  • Context and Importance: Practitioners may focus on this term because its interpretation as either limiting or non-limiting is critical. If the preamble is limiting, Plaintiff may need to prove something about Defendant's manufacturing method. If it is not limiting, only the final product's structure matters.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Limiting Interpretation: The preamble provides essential context for the claimed structure. The specification explains that the unique structure ("land tops wider than groove bottoms") is a direct result of the "reverse mastering/inverse stamping process" ('685 Patent, col. 7:25-28). This suggests the process is integral to defining the invention.
    • Evidence for a Non-Limiting Interpretation: A party could argue the body of the claim fully defines the structure of the disk with objective, measurable parameters, and the preamble merely states an intended use or method of making, without adding structural limitations to the final product itself.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for both patents. The factual basis alleged is that AVIC provides and supports the accused products under the "Blu-ray™" brand, which encourages and enables customers and vendors to use and sell the products in an infringing manner (Compl. ¶25, ¶33).
• Willful Infringement: The complaint alleges willfulness based on post-suit conduct. It asserts that Defendant's continued infringement after receiving notice of the patents via the complaint constitutes willful infringement (Compl. ¶25, ¶33).

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

1. A central issue will be one of claim scope and proof: For the '685 patent, is the "product-by-process" preamble limiting? If so, what level of evidence regarding the defendant's actual manufacturing method will be required, or can the process be inferred entirely from the structure of the final product?
2. The case will turn on a key evidentiary question: Does the physical analysis of the accused Blu-ray™ discs, which the complaint references as Exhibit E, factually demonstrate that the products meet the specific dimensional limitations of the asserted claims, most notably the '685 patent's requirement that "land tops are wider than the groove bottoms"?
3. A secondary question will be one of infringement theory: Can the plaintiff's boilerplate allegations of inducement, based on the sale of a standard-compliant product, survive a motion to dismiss, or will more specific facts showing active steps to encourage infringement of the particular patented features be required?