DCT

0:19-cv-01486

Max BLU Tech LLC v. Microboards Technology LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:19-cv-01486, D. Minn., 06/06/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Minnesota because Defendant is incorporated in Minnesota, maintains a regular and established place of business in the district, and has allegedly committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s Blu-ray™ recordable media and Blu-ray™ duplicators infringe five U.S. patents related to the methods for manufacturing high-density optical discs and the resulting disc structures.
  • Technical Context: The technology concerns a "reverse optical mastering" process designed to create high-density optical discs (like Blu-ray) with wide, flat lands for reliable data storage and deep grooves for accurate tracking.
  • Key Procedural History: The patents-in-suit originate from a common application filed in 1998 and share a detailed prosecution history involving multiple continuation, divisional, and continuation-in-part applications, as well as a reissued patent. This complex lineage may present issues of claim scope and prosecution history estoppel. The complaint also notes that a Certificate of Correction was issued for U.S. Patent No. 7,352,685.

Case Timeline

Date Event
1998-04-06 Earliest Priority Date for all Patents-in-Suit (via '825 Application)
2008-04-01 Issue Date: U.S. Patent No. 7,352,685
2010-09-21 Issue Date: U.S. Patent No. 7,801,016
2013-11-26 Issue Date: U.S. Patent No. 8,593,931
2013-12-10 Issue Date: U.S. Reissued Patent No. RE44633
2014-04-22 Issue Date: U.S. Patent No. 8,705,334
2019-06-06 Complaint Filing Date

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. 7,352,685, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," issued April 1, 2008. (Compl. ¶23).

The Invention Explained

  • Problem Addressed: The patent describes a problem in conventional optical disc manufacturing where achieving deep grooves for reliable laser tracking necessarily results in narrow and rough "lands" (the areas between grooves), which compromises data storage capacity and readback quality, especially at the smaller track pitches required for high-density media (’685 Patent, col. 2:50-col. 3:29).
  • The Patented Solution: The invention proposes a method where the grooves on a master disk are formed by exposing a photosensitive layer all the way down to a smooth, underlying master substrate (e.g., polished glass) ('685 Patent, Abstract; col. 4:5-14). This creates a master with wide, flat-bottomed grooves defined by the substrate's smoothness. When this master is used in a multi-generation inverse stamping process, it produces a final replica disk with wide, flat, and smooth lands, decoupling the land width and quality from the groove depth ('685 Patent, col. 4:36-50).
  • Technical Importance: This approach allows for the independent optimization of groove depth (for tracking) and land width/quality (for data recording), enabling the production of higher-density optical media formats ('685 Patent, col. 3:30-34).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 7, 13, 19, and 29, as well as various dependent claims (Compl. ¶26).
  • Independent Claim 1, a product-by-process claim, includes the following essential elements:
    • A replica disk made from a specific replication process involving a master disk, a first-generation stamper, and a second-generation stamper.
    • The disk has a surface relief pattern of lands and grooves with a track pitch less than 425 nanometers.
    • The grooves extend 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. 7,801,016, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," issued September 21, 2010. (Compl. ¶33).

The Invention Explained

  • Problem Addressed: As a continuation derived from the same application family, this patent addresses the identical technical problem as the ’685 Patent: the trade-off between groove depth and land quality in conventional optical disc mastering (’016 Patent, col. 2:51-col. 3:29).
  • The Patented Solution: The patent discloses the same solution as the ’685 Patent, centered on a mastering process that forms grooves down to the master substrate to create superior replica disk lands through an inverse stamping process (’016 Patent, col. 4:36-50).
  • Technical Importance: The technical importance is identical to that of the ’685 Patent, as described above.

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 3 (Compl. ¶35).
  • Independent Claim 1, a product claim, includes the following essential elements:
    • A replica disk with a surface pattern of lands and interrupted grooves.
    • A track pitch less than 425 nanometers.
    • Land tops with widths between 25 percent of the track pitch and 140 nanometers.
    • Grooves with depths between 20 and 120 nanometers.

Multi-Patent Capsule: U.S. Patent No. 8,593,931 - “REPLICA DISK FOR DATA STORAGE”

  • Patent Identification: U.S. Patent No. 8,593,931, "REPLICA DISK FOR DATA STORAGE," issued November 26, 2013 (Compl. ¶42).
  • Technology Synopsis: Belonging to the same patent family, the ’931 Patent claims a replica disk with specific structural dimensions. The invention solves the problem of manufacturing high-density optical media by claiming a final product structure (e.g., track pitch, land widths, groove depths) that is enabled by the reverse mastering process described in the specification ('931 Patent, Abstract; col. 4:36-50).
  • Asserted Claims: The complaint asserts at least independent claims 1 and 11 (Compl. ¶44).
  • Accused Features: The complaint alleges that the physical characteristics of Defendant's "Media Accused Products" (Blu-ray™ recordable media) meet the limitations of the asserted claims (Compl. ¶44).

Multi-Patent Capsule: U.S. Reissued Patent No. RE44,633 - “REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS”

  • Patent Identification: U.S. Reissued Patent No. RE44,633, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," issued December 10, 2013 (Compl. ¶51).
  • Technology Synopsis: This reissue patent shares the same specification and discloses the same reverse optical mastering technology as the other patents-in-suit. It addresses the manufacturing trade-offs in high-density optical media by enabling the creation of disks with specific, optimized land and groove structures (RE'633 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶53).
  • Accused Features: The complaint alleges that Blu-ray™ media created by Defendant's "Duplicator Accused Products" infringes the claims. The complaint includes a footnote stating that, based on an analysis of a representative disk, the "Media Accused Products" themselves do not directly infringe any claims of this patent (Compl. ¶53 & fn. 4).

Multi-Patent Capsule: U.S. Patent No. 8,705,334 - “REPLICA DISK FOR DATA STORAGE”

  • Patent Identification: U.S. Patent No. 8,705,334, "REPLICA DISK FOR DATA STORAGE," issued April 22, 2014 (Compl. ¶59).
  • Technology Synopsis: Also from the same patent family, the ’334 Patent claims a data storage disk with a surface defined by lands and pits of specific dimensions (track pitch and pit depth). This structure is designed for high-density formats and is produced using the reverse mastering techniques described in the specification ('334 Patent, Abstract; col. 4:36-50).
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶61).
  • Accused Features: The complaint alleges infringement by Blu-ray™ media created by the "Duplicator Accused Products." An apparent copy-and-paste error in the complaint's footnote 6 seems to disclaim infringement by the "Media Accused Products," similar to the disclaimer for the RE'633 patent (Compl. ¶61 & fn. 6).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies two categories of accused products:
    1. "Media Accused Products": Blu-ray™ recordable and re-writable media sold under the Microboards brand (Compl. ¶¶ 8, 18).
    2. "Duplicator Accused Products": Blu-ray™ duplicators, such as the "Microboards CopyWriter Pro" and "Microboards QD Series," used for making copies of Blu-ray™ media (Compl. ¶¶ 9, 20).

Functionality and Market Context

  • The Media Accused Products are standard optical discs that function as data storage media. The infringement allegations against them are based on their specific physical structure, such as track pitch and land/groove dimensions (Compl. ¶¶ 26, 35, 44).
  • The Duplicator Accused Products are machines that create copies of optical discs. They are not accused of directly infringing the product claims themselves, but rather of enabling customers to create infringing copies of Blu-ray™ media (Compl. ¶¶ 27, 53, 61).
  • The complaint alleges these products are advertised and sold on Defendant's website, "www.microboards.com" (Compl. ¶21).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,352,685 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 alleges infringement by Defendant's Media Accused Products but does not provide specific facts regarding the manufacturing process used by Defendant or its suppliers. ¶26 col. 14:43-48
...the first major surface including a surface relief pattern defined by adjacent lands and grooves, the surface relief pattern having a track pitch less than 425 nanometers... The complaint alleges the accused Blu-ray™ media possesses the claimed physical characteristics, referencing an analysis in Exhibit I (not provided). ¶26; ¶19 col. 14:50-54
...wherein the grooves extend down into the replica substrate, the grooves including groove bottoms and the lands including land tops... The complaint alleges the accused Blu-ray™ media possesses the claimed physical characteristics. ¶26 col. 14:55-57
...wherein the land tops are wider than the groove bottoms. The complaint alleges the accused Blu-ray™ media possesses the claimed physical characteristics. ¶26 col. 14:58-59

U.S. Patent No. 7,801,016 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 complaint alleges the accused Blu-ray™ media is a replica disk with the claimed surface pattern, referencing an analysis in Exhibit I (not provided). ¶35; ¶19 col. 14:2-5
...wherein the surface pattern defines a track pitch that is less than 425 nanometers... The accused Blu-ray™ media allegedly has a track pitch of less than 425 nanometers. ¶35 col. 14:6-8
...wherein tops of the lands define widths between 25 percent of the track pitch and 140 nanometers... The accused Blu-ray™ media allegedly has land tops with widths within the claimed range. ¶35 col. 14:9-11
...and wherein the grooves define depths between 20 and 120 nanometers. The accused Blu-ray™ media allegedly has grooves with depths within the claimed range. ¶35 col. 14:12-14
  • Identified Points of Contention:
    • Process vs. Product Proof: A primary point of contention for claims like Claim 1 of the '685 patent, which recites manufacturing steps, will be evidentiary. Does the complaint provide, or can Plaintiff obtain, evidence that Defendant's accused discs are made using the specific "second-generation stamper" process required by the claim? The complaint currently lacks such allegations.
    • Factual Dimensions: For the pure product claims (e.g., Claim 1 of the '016 patent), the dispute will likely focus on factual measurements. Do the accused discs actually meet the specific nanometer-level dimensional limitations for track pitch, land width, and groove depth? The analysis in the complaint's Exhibit I, which is not provided, would be central to this question.
    • Contributory/Induced Infringement Theory: For the duplicators, infringement is alleged indirectly. This raises the question of whether selling a standard duplicator constitutes specific intent to induce infringement of these particular patents, especially where Plaintiff admits that not all media created would be infringing (Compl. ¶53, fn. 4).

V. Key Claim Terms for Construction

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

  • Context and Importance: This is product-by-process language. Its construction is critical because it determines whether Plaintiff must prove Defendant uses the recited manufacturing steps to show infringement. If the process steps are treated as definitive limitations, the absence of factual allegations in the complaint about Defendant's manufacturing methods may present a significant hurdle for the Plaintiff.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party might argue the process steps merely define the resulting product's structure, pointing to the patent's focus on the final disk's unique properties, such as having "wide, flat smooth lands" which are the object of the invention (e.g., '685 Patent, col. 8:39-42).
    • Evidence for a Narrower Interpretation: A party will argue that process terms in a product-by-process claim are limitations that must be met for infringement. The claim explicitly recites the "creation of a first-generation stamper" and a "second-generation stamper," and the specification details this multi-generation process as a key aspect of creating the desired replica disk orientation ('685 Patent, Fig. 19; col. 11:6-38).

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

  • Context and Importance: This term describes the features that store data. Its definition will determine whether the physical marks on the accused Blu-ray™ discs fall within the claim scope. Practitioners may focus on this term because a narrow definition could exclude the accused products.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification explicitly equates this term with "pits," a common term in the art, stating "pits (i.e., interrupted grooves)" ('016 Patent, col. 2:40-41). This suggests the patentee intended the term to be understood broadly.
    • Evidence for a Narrower Interpretation: A party could argue that the specific context of the invention requires a more limited meaning, perhaps tied to the specific shapes or formation methods described, although the specification provides limited basis for such a distinction.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe for all five patents. The allegations state that Defendant encourages and instructs its customers to use the Media and Duplicator products in an infringing manner by marketing them as "Blu-ray™ compliant" and providing them for the purpose of creating Blu-ray formatted media (e.g., Compl. ¶¶ 28, 37, 46, 54, 62).
  • Willful Infringement: The complaint does not contain allegations of pre-suit knowledge or willfulness. It does, however, plead post-filing knowledge, stating that "Despite knowledge of the ['XXX] Patent as early as the date of service of the Original Complaint in this action, Defendant continues to encourage, instruct, enable, and otherwise cause its customers to use its systems" in an infringing manner (e.g., Compl. ¶28). This forms a basis for seeking enhanced damages for any infringement occurring after the complaint was served.

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

  • A central issue will be one of evidentiary proof for process claims: For product-by-process claims like those in the ’685 patent, can the Plaintiff demonstrate that the accused discs were made using the recited multi-generation stamping process, or will the absence of such evidence render those claims difficult to enforce against the Defendant?
  • A key factual question will be one of dimensional compliance: For the pure product claims, the case will hinge on whether the accused Microboards Blu-ray™ discs, upon technical analysis, actually exhibit the specific sub-425 nanometer track pitches and precise land/groove dimensions required by the patent claims.
  • A dispositive question for the duplicator-based allegations will be one of specific intent: Does marketing a general-purpose Blu-ray™ duplicator as "compliant" with the Blu-ray™ standard, without more, establish the specific intent required to induce infringement of these particular patents, especially in light of the Plaintiff's own admission that a representative Blu-ray™ disc did not infringe the claims asserted against the duplicators?