DCT
2:17-cv-00341
Max BLU Tech LLC v. HP Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Max Blu Technologies, LLC (Texas)
- Defendant: HP Inc. (Delaware)
- Plaintiff’s Counsel: The Davis Firm P.C.; Heninger Garrison Davis, LLC
- Case Identification: 2:17-cv-00341, E.D. Tex., 04/21/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant conducts substantial business in the district, including selling the accused products to resident customers.
- Core Dispute: Plaintiff alleges that Defendant’s Blu-ray recordable and re-writable media infringe four patents related to methods for manufacturing high-density optical disks and the resulting disk structures.
- Technical Context: The technology concerns the manufacturing of optical storage media, where precisely formed microscopic lands and grooves on the disk surface are essential for high-capacity data storage and reliable tracking.
- Key Procedural History: The patents-in-suit belong to a large family sharing a 1998 priority date. U.S. Patent No. 7,352,685 was subject to a Certificate of Correction in 2010. U.S. Patent No. RE44,633 is a reissued patent that resulted from a reexamination of a related patent, suggesting a prior proceeding that may have refined the scope of the patent claims.
Case Timeline
| Date | Event |
|---|---|
| 1998-04-06 | Earliest Priority Date for all Patents-in-Suit |
| 2008-04-01 | U.S. Patent No. 7,352,685 Issued |
| 2010-02-16 | Certificate of Correction Issued for ’685 Patent |
| 2010-09-21 | U.S. Patent No. 7,801,016 Issued |
| 2013-11-26 | U.S. Patent No. 8,593,931 Issued |
| 2013-12-10 | U.S. Reissued Patent No. RE44,633 Issued |
| 2017-04-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,352,685
- Patent Identification: U.S. Patent No. 7,352,685, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," Issued April 1, 2008. (Compl. ¶17).
- The Invention Explained:
- Problem Addressed: The patent describes a problem in conventional optical disk manufacturing where, for high-density formats with small track pitches, creating deep grooves for tracking signals undesirably erodes the adjacent lands, compromising the space available for data recording. (’685 Patent, col. 3:1-8).
- The Patented Solution: The invention is a "reverse" mastering process where a photosensitive layer on a master disk is exposed and developed in a controlled manner to form grooves that extend completely down to the smooth master substrate. (’685 Patent, col. 4:56-62). This technique makes the resulting groove bottoms on the master disk flat and wide, which in turn creates wide, flat, and smooth lands on the final replica disk after an inverse stamping process, thereby decoupling the trade-off between groove depth and land width. (’685 Patent, col. 8:36-44).
- Technical Importance: This process enables the mass production of high-density optical disks with improved geometries for both tracking (deep grooves) and data storage (wide, flat lands), which is a key requirement for formats like Blu-ray. (’685 Patent, col. 2:51-58).
- Key Claims at a Glance:
- The complaint asserts independent claims 1, 7, 13, 19, and 29, among others. (Compl. ¶20).
- Representative independent claim 1 recites:
- A replica disk made from a replication process involving a master disk and first- and second-generation stampers.
- The disk comprises a substrate with a surface relief pattern of adjacent lands and grooves.
- The track pitch is less than 425 nanometers.
- The land tops are wider than the groove bottoms.
- The complaint reserves the right to assert infringement of other claims, including dependent claims. (Compl. ¶20).
U.S. Patent No. 7,801,016
- Patent Identification: U.S. Patent No. 7,801,016, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," Issued September 21, 2010. (Compl. ¶26).
- The Invention Explained:
- Problem Addressed: As a continuation of the same patent family, the ’016 Patent addresses the same fundamental challenge of manufacturing high-density optical disks with optimal surface geometry for both data storage and tracking. (’016 Patent, col. 3:9-24).
- The Patented Solution: The patent claims a replica disk with specific, measurable structural characteristics that result from the reverse mastering process. Rather than claiming the process, it claims the resulting product defined by specific dimensional ranges for its surface features. (’016 Patent, Abstract; col. 4:40-61).
- Technical Importance: By claiming specific quantitative parameters for the final disk structure, the invention provides a clear standard for producing reliable, high-performance, high-density optical media.
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1. (Compl. ¶28).
- Independent claim 1 recites:
- A replica disk with a substrate including a surface pattern of lands and interrupted grooves.
- The track pitch is 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.
Multi-Patent Capsule: U.S. Patent No. 8,593,931
- Patent Identification: U.S. Patent No. 8,593,931, "REPLICA DISK FOR DATA STORAGE," Issued November 26, 2013. (Compl. ¶34).
- Technology Synopsis: Continuing the same technological focus, this patent claims a replica data storage disk defined by its physical structure. The claims are directed to a disk with a track pitch under 425 nanometers and specific constraints on groove depth and land width, further delineating the specific geometric attributes of a high-density optical disc. (’931 Patent, Abstract; Claim 1).
- Asserted Claims: Independent claims 1 and 11, among other dependent claims. (Compl. ¶36).
- Accused Features: The physical characteristics and surface geometry of Defendant's Blu-ray Disks are alleged to meet the claimed dimensional limitations. (Compl. ¶36).
Multi-Patent Capsule: U.S. Reissued Patent No. RE44,633
- Patent Identification: U.S. Reissued Patent No. RE44,633, "REVERSE OPTICAL MASTERING FOR DATA STORAGE DISK REPLICAS," Issued December 10, 2013. (Compl. ¶42).
- Technology Synopsis: This reissued patent refines the claims of a predecessor patent in the same family, again focusing on the structure of the final replica disk. It claims a replica disk with a track pitch less than 425 nanometers, where the land tops have widths between 100 and 200 nanometers and the grooves have depths less than 120 nanometers. (’633 Patent, Abstract; Claim 1).
- Asserted Claims: Independent claim 1, among other dependent claims. (Compl. ¶44).
- Accused Features: The physical dimensions of the lands and grooves on Defendant's Blu-ray Disks are alleged to infringe. (Compl. ¶44).
III. The Accused Instrumentality
- Product Identification: Defendant’s Blu-ray recordable and re-writable discs (the "Accused Products"). (Compl. ¶7, ¶13).
- Functionality and Market Context: The Accused Products are optical media designed for high-density data storage. The complaint alleges these disks possess a specific physical structure, including a surface relief pattern of lands and grooves with dimensions that fall within the scope of the asserted patent claims. (Compl. ¶20, ¶28, ¶36, ¶44). The complaint states that a representative analysis of these physical characteristics is provided in an exhibit. (Compl. ¶15). This analysis, described in the complaint as Exhibit H, is presented as the primary technical evidence of infringement. (Compl. ¶15).
IV. Analysis of Infringement Allegations
’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...and creation of a second-generation stamper... | The HP Blu-ray Disks are replica disks whose allegedly infringing physical structure is the result of such a manufacturing process. | ¶20 | col. 14:45-48 |
| a replica substrate having a first major surface...including a surface relief pattern defined by adjacent lands and grooves... | The Accused Products are composed of a substrate with a surface pattern of lands and grooves for data storage and tracking. | ¶20, Ex. H | col. 14:48-53 |
| the surface relief pattern having a track pitch less than 425 nanometers... | An analysis of the Accused Products allegedly shows that the track pitch meets this dimensional requirement. | ¶20, Ex. H | col. 14:9-11 |
| wherein the land tops are wider than the groove bottoms. | An analysis of the Accused Products allegedly shows that the land top dimensions are wider than the groove bottom dimensions. | ¶20, Ex. H | col. 14:55-56 |
’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...a surface pattern defined by lands and interrupted grooves... | The Accused Products are replica disks containing a substrate with a surface pattern of lands and grooves. | ¶28, Ex. H | col. 14:1-5 |
| wherein the surface pattern defines a track pitch that is less than 425 nanometers... | The analysis of the Accused Products allegedly demonstrates a track pitch of less than 425 nanometers. | ¶28, Ex. H | col. 14:6-7 |
| wherein tops of the lands define widths between 25 percent of the track pitch and 140 nanometers... | The analysis of the Accused Products allegedly shows that the land top widths fall within this specified dimensional range. | ¶28, E.g., Ex. H | col. 14:8-11 |
| and wherein the grooves define depths between 20 and 120 nanometers. | The analysis of the Accused Products allegedly shows that the groove depths fall within this specified dimensional range. | ¶28, E.g., Ex. H | col. 14:11-12 |
- Identified Points of Contention:
- Evidentiary Questions: The infringement allegations for all asserted patents depend heavily on the physical measurements of the Accused Products. The complaint's primary support is its reference to "a representative analysis of the physical characteristics of the Accused Products" in Exhibit H (Compl. ¶15). A central point of contention will be whether this analysis, once produced in discovery, is accurate and proves that HP's products meet the specific dimensional limitations required by each asserted claim.
- Scope Questions: For the ’685 Patent, the product-by-process nature of claim 1 raises the question of how the process steps ("creation of a...second-generation stamper") might inform the construction of the structural limitations, even if they do not directly limit the claim's scope for infringement. For the ’016 Patent, the interpretation of "interrupted grooves" will be critical and raises the question of whether a continuous pre-groove containing discrete data marks, as is typical in recordable Blu-ray discs, meets this definition.
V. Key Claim Terms for Construction
Term 1: "land tops are wider than the groove bottoms" (’685 Patent, Claim 1)
- Context and Importance: This relative dimension is a central feature of the claimed product structure, which Plaintiff will argue is a direct result of the patented manufacturing method. The dispute will likely focus on the precise measurement points for "width" on potentially sloped or rounded features and whether the Accused Products meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification repeatedly emphasizes the goal of creating "wide, flat lands" for improved data recording, suggesting a functional interpretation could be advanced. (’685 Patent, col. 3:51-53).
- Evidence for a Narrower Interpretation: The specification and figures suggest a specific geometry resulting from the "reverse mastering" process, where the master groove bottom (which becomes the replica land top) is defined by the flat substrate. (’685 Patent, col. 8:5-6, Fig. 6). A party could argue the term requires the sharp, well-defined flat-topped structure depicted, not merely any structure where one feature is wider than another.
Term 2: "interrupted grooves" (’016 Patent, Claim 1)
- Context and Importance: The construction of this term is critical to determining if the structure of a standard Blu-ray recordable disc infringes. Practitioners may focus on this term because recordable media typically feature a continuous "pre-groove" for tracking, onto which data is written as pits or marks, rather than having grooves that are physically discontinuous.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s background section states that surface relief patterns can include "pits (i.e., interrupted grooves)," which may support an argument that features written into a groove can be considered interruptions. (’016 Patent, col. 2:42-43).
- Evidence for a Narrower Interpretation: A party could argue that the term, in the context of a patent focused on mastering, refers to grooves that are created as physically discontinuous segments in the master disk itself, a structure distinct from a continuous groove that is later modified by a user recording data.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by encouraging and instructing customers to use the Accused Products through promotional materials and website information. (Compl. ¶21, ¶29, ¶37, ¶45). The infringement allegations are for product claims, which are typically infringed by the making, using, or selling of the product itself, raising a question about what subsequent acts by a customer could constitute the induced infringement of a claim to the disk's physical structure.
- Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents "as early as the date of service of the Original Complaint." (Compl. ¶21). This establishes a basis for potential post-filing willfulness, as the complaint does not allege any pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual proof: does a physical analysis of HP’s Blu-ray Disks demonstrate that their surface features—specifically track pitch, land-to-groove width ratios, and groove depths—conclusively meet the precise numerical limitations recited in the asserted claims?
- A key legal question will be one of claim construction: can the term "interrupted grooves," which the patent family equates to "pits," be construed to cover the structure of a standard recordable Blu-ray disc, which typically features a continuous pre-groove into which data marks are written?
- A threshold legal question concerns the viability of the inducement theory: given that the asserted claims are directed to the physical structure of the disk itself, what specific infringing acts by end-users does the complaint contemplate that HP has allegedly induced?