DCT

1:18-cv-00002

Max BLU Tech LLC v. Verbatim Americas LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00002, D. Del., 01/02/2018
  • Venue Allegations: Venue is asserted in the District of Delaware based on Defendant's incorporation in Delaware, which establishes residency for venue purposes.
  • Core Dispute: Plaintiff alleges that Defendant’s Blu-ray™ recordable optical discs infringe four patents related to the methods of manufacturing and the specific physical structures of high-density data storage media.
  • Technical Context: The lawsuit concerns the manufacturing and design of optical storage media, a field critical for high-capacity formats like Blu-ray that require precise, microscopic land and groove structures for reliable data tracking and storage.
  • Key Procedural History: The complaint indicates that all four patents-in-suit descend from a common priority application filed in 1998, suggesting a long-prosecuted and interrelated patent portfolio. One of the asserted patents, the '633 Patent, is a reissue of an earlier patent, and another, the '685 Patent, was subject to a Certificate of Correction, events that can affect the scope and interpretation of the patent claims.

Case Timeline

Date Event
1998-04-06 Patent Priority Date for all Patents-in-Suit
2008-04-01 U.S. Patent 7,352,685 Issues
2010-09-21 U.S. Patent 7,801,016 Issues
2013-11-26 U.S. Patent 8,593,931 Issues
2013-12-10 U.S. Reissued Patent RE44,633 Issues
2018-01-02 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"

  • Patent Identification: U.S. Patent No. 7352685, issued April 1, 2008.

The Invention Explained

  • Problem Addressed: The patent describes a limitation in conventional optical disc mastering where creating deep grooves for good tracking signals results in undesirably narrow and rounded "lands" (the areas between grooves) due to "overlap exposure from adjacent tracks." This trade-off compromises the data density and read/write quality of the resulting discs (’685 Patent, col. 3:1-8).
  • The Patented Solution: The invention discloses a "reverse" mastering process where, instead of partially developing a photoresist layer, the process completely removes the photoresist in the groove areas down to the smooth, underlying master substrate (e.g., polished glass). The final groove depth is determined by the initial thickness of the photoresist layer, not the development time. This method decouples the relationship between groove depth and land width, enabling the creation of discs with deep grooves, wide flat lands, and sharp corners, which is critical for high-density formats (’685 Patent, col. 4:42-61, FIG. 6).
  • Technical Importance: This approach allows for the independent optimization of land and groove dimensions, enabling the manufacture of higher-density optical discs with superior tracking performance and data integrity (’685 Patent, col. 8:30-38).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1, 2-4, 7, 9, and 19-35 (Compl. ¶24). Independent claim 1 is a product-by-process claim.
  • Independent Claim 1, Essential Elements:
    • A replica disk made from a specific replication process that includes creating a master disk, a first-generation stamper, and a second-generation stamper.
    • The replica disk has a substrate with a surface relief pattern of adjacent lands and grooves.
    • The track pitch is less than 425 nanometers.
    • The grooves extend down into the replica substrate.
    • The land tops are wider than the groove bottoms.

U.S. Patent No. 7,801,016 - "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS"

  • Patent Identification: U.S. Patent No. 7801016, issued September 21, 2010.

The Invention Explained

  • Problem Addressed: As a continuation of the '685 Patent, this patent addresses the same technical problem of optimizing land and groove geometry in high-density optical media to overcome the limitations of conventional mastering techniques (’016 Patent, col. 3:1-19).
  • The Patented Solution: The invention is a replica disk with specific physical characteristics that result from the reverse mastering process. Unlike the product-by-process claim of the ’685 Patent, the claims of the ’016 Patent define the invention by its final structural dimensions, including specific ranges for land width and groove depth, and explicitly cover structures with "interrupted grooves" (pits for storing data) (’016 Patent, col. 14:1-12; col. 2:40-42).
  • Technical Importance: By claiming the specific dimensional results, the patent aims to protect the advantageous physical structure of the high-density disc itself, regardless of the precise manufacturing steps used to achieve it.

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 1 (Compl. ¶32).
  • Independent Claim 1, Essential Elements:
    • A replica disk with a substrate having a surface pattern of lands and "interrupted grooves."
    • The surface pattern defines a track pitch less than 425 nanometers.
    • The tops of the lands have widths between 25 percent of the track pitch and 140 nanometers.
    • The grooves have depths between 20 and 120 nanometers.

U.S. Patent No. 8,593,931 - "REPLICA DISK FOR DATA STORAGE"

  • Patent Identification: U.S. Patent No. 8593931, issued November 26, 2013.
  • Technology Synopsis: This patent, also part of the same family, claims a replica optical disk defined by specific dimensional parameters. It addresses the need for high-density data storage by claiming particular ranges for track pitch, groove depth, and land width, seeking to protect the physical embodiment of a disc optimized for reliable performance (’931 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of claims 1, 2-4, 7, 9-11, and 14, with claim 1 being independent (Compl. ¶40).
  • Accused Features: The physical dimensions and surface structure of Defendant's Blu-ray™ recordable media are alleged to meet the claimed parameters (Compl. ¶40).

U.S. Reissued Patent No. RE44,633 - "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS"

  • Patent Identification: U.S. Reissued Patent No. RE44,633, issued December 10, 2013.
  • Technology Synopsis: This reissued patent further refines the claims related to the physical structure of high-density optical disks. The reissue process allows a patentee to correct errors in an original patent, and here it appears to have been used to hone the definitions of the claimed disk structure, focusing on specific width and depth ranges for the lands and grooves to cover commercial high-density formats (’633 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of claims 1, 2-4, 15, 16, 18, and 19, with claim 1 being independent (Compl. ¶48).
  • Accused Features: Defendant's Blu-ray™ recordable media are alleged to possess the physical characteristics and dimensional ranges specified in the reissued claims (Compl. ¶48).

III. The Accused Instrumentality

  • Product Identification: The accused products are Verbatim's "Blu-ray™ recordable media," including recordable and re-writable discs (Compl. ¶7, 15).
  • Functionality and Market Context: The accused products are optical storage discs designed according to the Blu-ray standard for high-density data storage and high-definition video. The complaint alleges that the key infringing functionality resides in the physical structure of the discs—specifically, the dimensions and arrangement of their microscopic lands and grooves, which are essential for a Blu-ray drive to write and read data (Compl. ¶24, 32). The products are allegedly advertised and sold through Defendant’s websites and retail partners (Compl. ¶18, 19). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide claim charts or detailed technical analysis, instead alleging that an analysis in the unattached "Exhibit G" shows the accused products have the requisite "physical characteristics" (Compl. ¶17, 24, 32, 40, 48).

'685 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A replica disk made from a replication process that includes creation of a master disk, creation of a first-generation stamper from the master disk and creation of a second-generation stamper from the first-generation stamper... The complaint does not specify Defendant's manufacturing process but alleges the resulting products infringe. ¶24 col. 11:6-45
...a replica substrate having a first major surface...including a surface relief pattern defined by adjacent lands and grooves... The accused Blu-ray™ discs are alleged to be substrates with a surface relief pattern of lands and grooves. ¶24 col. 8:1-7
...the surface relief pattern having a track pitch less than 425 nanometers... The physical characteristics of the accused Blu-ray™ discs are alleged to include a track pitch of less than 425 nm. ¶24 col. 14:52-54
...the land tops are wider than the groove bottoms. The physical characteristics of the accused Blu-ray™ discs are alleged to include lands with tops wider than the bottoms of the grooves. ¶24 col. 14:55-57

'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...including a surface pattern defined by lands and interrupted grooves... The accused Blu-ray™ discs are alleged to be substrates with a surface pattern containing lands and interrupted grooves (pits). ¶32 col. 2:40-42
...the surface pattern defines a track pitch that is less than 425 nanometers... The accused Blu-ray™ discs are alleged to have a track pitch of less than 425 nm. ¶32 col. 14:5-7
...tops of the lands define widths between 25 percent of the track pitch and 140 nanometers... The physical dimensions of the accused Blu-ray™ discs are alleged to include land top widths within the claimed range. ¶32 col. 14:8-10
...the grooves define depths between 20 and 120 nanometers. The physical dimensions of the accused Blu-ray™ discs are alleged to include groove depths within the claimed range. ¶32 col. 14:10-12
  • Identified Points of Contention:
    • Evidentiary Questions: The central factual dispute will be whether the accused Blu-ray™ discs actually possess the physical dimensions required by the patent claims. As the complaint relies on an unprovided analysis (Exhibit G), this question will turn entirely on evidence developed during discovery, likely through expert analysis using techniques like atomic force microscopy.
    • Scope Questions ('685 Patent): A primary legal question for the ’685 Patent will be the interpretation of its "product-by-process" claim. Infringement may require the plaintiff to prove not only that the final disc has the claimed structure but also that it was made by the recited multi-generational stamper process. The complaint makes no allegations regarding Verbatim’s specific manufacturing methods, suggesting a potential gap in its infringement theory that will be a focus of litigation.

V. Key Claim Terms for Construction

  • The Term: "A replica disk made from a replication process that includes creation of a master disk, creation of a first-generation stamper... and creation of a second-generation stamper..." (’685 Patent, Claim 1)

    • Context and Importance: This "product-by-process" language is the foundation of Claim 1 of the ’685 Patent. Its construction is critical because it determines whether the claim is limited to only those disks made by the specific three-step manufacturing chain. Practitioners may focus on this term because the plaintiff's ability to prove Verbatim uses this exact process will be a key hurdle.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A plaintiff might argue that the process steps merely define a novel and unobvious product structure, and any product exhibiting that structure should infringe, regardless of the process used.
      • Evidence for a Narrower Interpretation: The specification provides significant detail on the multi-generational stamper process, including a dedicated figure (’685 Patent, FIG. 19, col. 11:6-45). A defendant will argue this detailed recitation imposes a strict limitation, meaning the claim only covers discs made by that exact method.

  • The Term: "interrupted grooves" (’016 Patent, Claim 1)

    • Context and Importance: This term is crucial for mapping the claim onto the structure of a Blu-ray disc, which contains both continuous guide grooves and discrete pits for storing data. The case may hinge on whether the pits on Verbatim's discs qualify as "interrupted grooves" as the patent defines them.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification of the parent '685 patent explicitly defines "pits" as "(i.e., interrupted grooves)" (’685 Patent, col. 2:40-42), directly linking the claim term to a standard feature of optical discs.
      • Evidence for a Narrower Interpretation: A defendant could argue that the specific context of the invention requires a particular type or configuration of "interrupted groove" that is distinct from the pits found on a standard Blu-ray disc, attempting to distinguish the accused product on a technical basis.

VI. Other Allegations

  • Indirect Infringement: For all asserted patents, the complaint alleges induced infringement. The factual basis is that Defendant provides the accused Blu-ray™ media to customers and, by marking them as "Blu-ray™ compliant" and providing support, specifically intends for and instructs customers to use them in an infringing manner (e.g., Compl. ¶25, 33, 41, 49).
  • Willful Infringement: The complaint alleges knowledge of the patents "as early as the date of service of the Original Complaint" (e.g., Compl. ¶25). This allegation supports a claim for post-suit willful infringement and induced infringement, but does not assert pre-suit knowledge.

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

  • A central legal issue will be one of claim scope: for the '685 patent, must the plaintiff prove that Verbatim's discs are manufactured using the specific multi-generational stamper process recited in the product-by-process claim, or is the final structure of the disc sufficient to show infringement?
  • A key evidentiary question will be one of factual proof: can the plaintiff produce expert evidence, such as atomic force microscopy data, sufficient to prove that the physical dimensions of Verbatim’s commercially available Blu-ray™ discs fall within the specific nanometer-scale ranges required by the asserted product claims of the '016, '931, and '633 patents?
  • The resolution of the dispute may also depend on a question of definitional precision: how will the court construe terms like "land tops" and "groove bottoms" for the purpose of measurement, as the precise methodology used to define these microscopic features will determine whether the accused products meet the claimed limitations.