DCT
2:09-cv-00219
Collins v. Western Digital Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Carl B. Collins and Farzin Davanloo (Texas)
- Defendant: Western Digital Technologies, Inc. (Delaware); Hitachi, Ltd. (Japan); Toshiba Corporation (Japan); and numerous other manufacturers and retailers.
- Plaintiff’s Counsel: Jackson Walker LLP; Capshaw Derieux, L.L.P.
- Case Identification: 2:09-cv-00219, E.D. Tex., 03/31/2011
- Venue Allegations: Venue is alleged based on one plaintiff's residence in the district, the development of the patented technology within the district, and the defendants' alleged acts of infringement and business transactions within the district.
- Core Dispute: Plaintiff alleges that Defendants’ hard drives, which incorporate diamond-like coatings, infringe two patents related to the composition and manufacturing of nanophase diamond films.
- Technical Context: The technology concerns ultra-hard, low-friction, nanostructured carbon films used as protective coatings on surfaces, particularly in the electronics industry where components like hard drive platters are subject to wear.
- Key Procedural History: The complaint notes that the claims of the patents-in-suit were previously construed by the same court in a prior case, Collins et al. v. The Gillette Co., a fact which may streamline or influence claim construction proceedings in the current matter.
Case Timeline
| Date | Event |
|---|---|
| 1988-04-18 | Earliest Priority Date for ’797 and ’650 Patents |
| 1995-05-02 | U.S. Patent No. 5,411,797 Issues |
| 1995-12-26 | U.S. Patent No. 5,478,650 Issues |
| 2011-03-31 | Plaintiffs' First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,411,797 - "Nanophase Diamond Films" (issued May 2, 1995)
The Invention Explained
- Problem Addressed: The patent's background section describes the significant challenges in producing high-quality, diamond-like carbon films for industrial use. Prior art methods were often slow, expensive, or yielded films with undesirable properties such as high internal stress, contamination, or poor adhesion to the substrate ( ’797 Patent, col. 2:48-68).
- The Patented Solution: The invention claims a novel type of amorphous carbon film, termed "nanophase diamond," and a method for its creation. The film is composed of nanometer-sized "nodules" of carbon atoms predominantly bonded in a diamond-like (sp³) configuration, and is substantially free of hydrogen and graphite (’797 Patent, Abstract). The described manufacturing process involves using a high-energy laser to ablate a pure graphite target in a vacuum, creating a plasma plume of carbon ions that are then deposited onto a substrate (’797 Patent, col. 5:48-64).
- Technical Importance: This technology aimed to provide a method for producing films with the beneficial properties of natural diamond (e.g., hardness, low friction) at commercially practical deposition rates and with superior optical quality compared to prior techniques (’797 Patent, col. 3:17-24).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the patent without specifying them (Compl. ¶51). Independent claim 1, a product claim, is central to the allegations against the accused hard drives.
- Independent Claim 1 recites:
- A nanophase diamond film, comprising nodules of carbon bonded predominantly in three dimensional sp³ bonds,
- said film comprising less than about 20% hydrogen,
- having an imaginary index of refraction less than 0.5 for a light wavelength of about 632.8 nm,
- and said nodules having a diameter of less than about 500 angstroms.
U.S. Patent No. 5,478,650 - "Nanophase Diamond Films" (issued Dec. 26, 1995)
The Invention Explained
- Problem Addressed: As a divisional of the application leading to the ’797 Patent, the ’650 Patent addresses the same technical problem: the difficulty of producing high-quality, durable, diamond-like carbon films suitable for commercial applications (’650 Patent, col. 2:40-62).
- The Patented Solution: The patented solution is materially identical to that of the ’797 Patent, describing a film made of sp³-bonded carbon nodules created via a laser-ablation process (’650 Patent, Abstract). The key distinction in the asserted claims of this patent is the explicit requirement that the film be "chemically bonded" to the underlying substrate, which improves adhesion and durability (’650 Patent, col. 15:33-40).
- Technical Importance: The invention's focus on achieving a chemical bond addresses the critical industrial problem of coating delamination, aiming to create a more robust and reliable protective layer for high-wear applications (’650 Patent, col. 15:33-35).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the patent (Compl. ¶51). Independent claim 1 is a product claim that builds upon the technology of the parent patent.
- Independent Claim 1 recites:
- A nanophase diamond film, comprising nodules of carbon bonded predominantly in three dimensional sp³ bonds,
- said film comprising less than about 20% hydrogen,
- having an imaginary index of refraction less than 0.5 for a light wavelength of about 632.8 nm,
- and said nodules having a diameter of less than about 500 angstroms,
- wherein said film is chemically bonded with a substrate.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are hard disk drives and computer products containing hard disk drives that are manufactured, sold, or offered for sale by the numerous named defendants (Compl. ¶¶38-48).
Functionality and Market Context
- The complaint alleges on "information and belief" that all of the accused hard drives contain a "diamond like coating ('DLC')" that is "central to the operation of the hard drives" (Compl. ¶38). This coating is alleged to provide a smooth, abrasion-resistant surface necessary for products enduring high friction (Compl. ¶28). The complaint further alleges that Defendants Western Digital and Hitachi are the "top two highest selling manufacturers of hard disk drives in the U.S." (Compl. ¶24).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed claim chart or specific evidence mapping the accused products to the claim limitations, making its allegations on "information and belief." The following tables summarize the infringement theory as can be constructed from the general allegations.
’797 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A nanophase diamond film, comprising nodules of carbon bonded predominantly in three dimensional sp³ bonds... | The complaint alleges the "diamond like coating ('DLC')" on Defendants' hard drives is a nanophase diamond film with these properties. | ¶38 | col. 4:26-29 |
| said film comprising less than about 20% hydrogen... | The complaint alleges the accused DLC meets this hydrogen content limitation. | ¶38 | col. 15:47-49 |
| having an imaginary index of refraction less than 0.5 for a light wavelength of about 632.8 nm... | The complaint alleges the accused DLC possesses this specific optical property. | ¶38 | col. 4:65-68 |
| and said nodules having a diameter of less than about 500 angstroms. | The complaint alleges the microstructure of the accused DLC comprises nodules of this specified size. | ¶38 | col. 15:50-51 |
’650 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A nanophase diamond film... [first four elements as above] | The complaint alleges the "diamond like coating ('DLC')" on Defendants' hard drives is a nanophase diamond film with these properties. | ¶39 | col. 4:26-29; col. 15:42-46 |
| wherein said film is chemically bonded with a substrate. | The complaint alleges the DLC is "central to the operation of the hard drives," which implies a durable bond to the hard drive components. | ¶39 | col. 15:33-40 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's infringement allegations are made "upon information and belief" and lack specific factual support. A central point of contention will be whether discovery yields evidence that the accused "DLC" products actually possess the specific, quantitative physical and chemical properties required by the claims, such as the nanometer-scale nodule structure, sp³ bonding percentage, hydrogen content, and imaginary index of refraction.
- Technical Questions: A key technical question is whether the defendants' manufacturing processes for their DLCs are related to the laser-ablation method detailed in the patents. While the asserted claims are for a product, not a process, significant differences in manufacturing could lead to structural or chemical distinctions relevant to infringement.
V. Key Claim Terms for Construction
The Term: "nodules of carbon"
Context and Importance: This term defines the fundamental microstructure of the claimed invention. The infringement analysis will depend on whether the physical structure of the accused DLCs can be characterized as being composed of these discrete "nodules" as opposed to being a more uniform amorphous film. Practitioners may focus on this term because its definition is critical to distinguishing the invention from other types of amorphous carbon films.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the nodule as the "basic unit of construction" of the film, which could support a reading that encompasses any film built from such granular units, regardless of their precise shape or arrangement (’797 Patent, col. 4:26-29).
- Evidence for a Narrower Interpretation: The patent provides a specific TEM photograph (Fig. 6) showing the nodules' appearance and gives a diameter range (e.g., "less than about 500 angstroms"), which could be used to argue for a more constrained definition tied to a specific size and visual morphology (’797 Patent, col. 15:50-51; Fig. 6).
The Term: "chemically bonded with a substrate" (’650 Patent, Claim 1)
Context and Importance: This limitation is a key differentiator for the ’650 Patent's claims. Proving infringement will require showing a chemical bond, which is distinct from mere physical adhesion. The case may turn on the evidence required to prove such a bond exists between the DLC and the hard drive surface.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, not specifying the type of chemical bond. This may support an interpretation that includes a range of chemical interactions.
- Evidence for a Narrower Interpretation: The specification provides specific examples of how this bond is formed, describing an "interfacial layer" and, in some cases, an "alloyed layer" between the film and the substrate. This could support a narrower construction requiring a specific type of bonding interface (’650 Patent, col. 15:33-40; col. 16:1-3).
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of induced and contributory infringement, stating that defendants' acts of making and selling the accused products cause and induce others (e.g., retailers, end-users) to infringe (Compl. ¶¶51, 53). The allegations lack specific details regarding affirmative acts of inducement, such as providing instructions on an infringing use.
- Willful Infringement: The complaint does not contain an explicit count for willful infringement or allege that defendants had pre-suit knowledge of the patents. However, the prayer for relief requests attorneys' fees and costs pursuant to 35 U.S.C. §§ 284 and 285, which are available in cases of willful or exceptional infringement (Compl., Prayer for Relief ¶F).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can the plaintiffs, through discovery, develop technical evidence to demonstrate that the accused commercial "Diamond-Like Coatings" actually meet the specific, quantitative limitations of the patent claims regarding nodule size, sp³ bonding, hydrogen content, and optical properties, which are currently alleged only on "information and belief"?
- A key legal and technical question will be one of definitional scope: Will the term "nanophase diamond film" be construed broadly to cover any film meeting the claimed physical properties, or will its meaning be narrowed by the detailed laser-ablation manufacturing process described in the specification, potentially creating a non-infringement defense if defendants use a different method?
- A critical procedural question will be the impact of prior litigation: To what extent will the claim constructions from the earlier Collins v. Gillette case be adopted by the court, and how will those established definitions shape the infringement and validity disputes in this matter?