DCT

3:06-cv-00462

Ricoh Co Ltd v. Quanta Computer Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:06-cv-00462, W.D. Wis., 12/29/2006
  • Venue Allegations: Venue is based on a stream of commerce theory, alleging that Defendants manufactured products in Taiwan or China and placed them into a distribution channel that purposefully targeted the United States, with sales occurring in the Western District of Wisconsin.
  • Core Dispute: Plaintiff alleges that Defendants' optical storage drives infringe four U.S. patents related to fundamental optical disc technologies, including variable speed control, background disc formatting, high-speed write strategies, and efficient recording methods.
  • Technical Context: The technologies at issue concern methods for improving the speed, data density, and user experience of recordable and rewritable optical disc drives (e.g., CD-RW, DVD-RW), which were foundational components for data storage and software distribution in the personal computer market.
  • Key Procedural History: The complaint alleges that Plaintiff made pre-suit demands on the Defendants to pay a royalty or cease infringement, which were refused, potentially forming a basis for allegations of willful infringement.

Case Timeline

Date Event
1988-07-06 U.S. Patent No. 5,063,552 Priority Date
1991-11-05 U.S. Patent No. 5,063,552 Issued
1996-08-06 U.S. Patent No. 6,661,755 Priority Date
1997-08-25 U.S. Patent No. 6,172,955 Priority Date
2000-03-03 U.S. Patent No. 6,631,109 Priority Date
2001-01-09 U.S. Patent No. 6,172,955 Issued
2003-10-07 U.S. Patent No. 6,631,109 Issued
2003-12-09 U.S. Patent No. 6,661,755 Issued
2006-12-29 Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,063,552 - "Optical disk apparatus with data transfer rate and rotational speed variable by annular zones," issued November 5, 1991

The Invention Explained

  • Problem Addressed: The patent describes a conflict between two conventional methods for controlling optical disc rotation. Constant Angular Velocity (CAV) is simple but results in lower data density on the disc's outer tracks. Constant Linear Velocity (CLV) maximizes data density but requires the disc to make large, rapid changes in rotational speed, necessitating a large, power-hungry motor. (’552 Patent, col. 1:24-38, col. 2:6-35).
  • The Patented Solution: The invention proposes a hybrid system where the disc is divided into concentric "annular zones" or blocks. Within each zone, the data transfer rate is held constant, but it changes in steps between zones. The drive motor's rotational speed is then finely adjusted in response to the track being accessed to maintain a constant recording density across the entire disc. This approach, often called Zoned CLV (Z-CLV), avoids the large motor speed changes required by pure CLV systems. (’552 Patent, Abstract; col. 3:12-28; Fig. 2).
  • Technical Importance: This technique provided a practical engineering compromise, enabling higher storage capacity than CAV systems while using smaller, more energy-efficient motors than CLV systems, facilitating the development of more compact optical drives. (’552 Patent, col. 4:1-9).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims. The broadest independent claims are Claim 1 (method) and Claim 9 (apparatus).
  • The essential elements of independent apparatus Claim 9 include:
    • A "dividing means" for dividing the disc tracks into concentric annular blocks.
    • A "first changing means" for changing the information recording/reproduction speed ("f") such that it is constant within a block but different between blocks.
    • A "second changing means" for changing the disc's rotation speed ("n") so that the relationship "f/(n·r)" remains constant, where "r" is the track radius.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,172,955 - "Optical disc recording and reproducing apparatus for performing a formatting process as a background process and a method for formatting an optical disc by a background process," issued January 9, 2001

The Invention Explained

  • Problem Addressed: Rewritable optical discs (like CD-RW) that support random data access require a lengthy initial formatting process to fill the disc with blank data packets. This can take up to 40 minutes, during which the user cannot access the drive for recording or reading data. (’955 Patent, col. 2:21-40).
  • The Patented Solution: The invention allows the formatting process to run in the "background." Immediately after a new disc is inserted and formatting begins, the drive notifies the host system that the process is complete, making the drive available for use. The drive continues to format the disc in the background. If the user initiates an action (e.g., a data write request), the background formatting is interrupted, the user's task is executed, and the formatting process then resumes where it left off. (’955 Patent, Abstract; col. 3:5-26; Fig. 5).
  • Technical Importance: This invention significantly improved the usability of rewritable optical media by eliminating the mandatory waiting period for initial formatting, providing a "format-on-the-fly" user experience. (’955 Patent, col. 2:41-51).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims. Independent Claim 1 is representative.
  • The essential elements of independent Claim 1 include:
    • "recording means" for writing data using a fixed packet write method.
    • "reproducing means" for reading data.
    • "background formatting means" for formatting the disc as a background process that can be interrupted to perform a recording or reproducing process and then resumed.
  • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsule: U.S. Patent No. 6,631,109 - "Optical recording method and apparatus, and optical storage medium," issued October 7, 2003

  • Technology Synopsis: This patent addresses the challenge of maintaining high-quality recording at increased speeds on phase-change media. The invention discloses a method for creating amorphous marks on a disc by using a specific multi-pulse laser waveform. This waveform is defined by controlling the duration and power levels of a front-end pulse, an intermediate multi-pulse portion, and a tail-end pulse to ensure the marks are formed accurately at high linear velocities. (’109 Patent, Abstract; col. 2:7-15).
  • Asserted Claims: The complaint is silent on specific asserted claims. Independent claims include 1, 4, 5, 8, 9, and 10.
  • Accused Features: The complaint alleges that the accused drives infringe by employing a "high-speed write strategy" that utilizes a "predetermined combination of laser pulses, durations, and intensity levels." (Compl. ¶24).

Multi-Patent Capsule: U.S. Patent No. 6,661,755 - "Optical disc apparatus," issued December 9, 2003

  • Technology Synopsis: This patent addresses the "buffer run" or "buffer underrun" problem, where an interruption in the data stream from the host computer during a write operation can corrupt a write-once disc. The invention provides a method to pause the write process when the drive's internal data buffer runs low and then precisely restart the write process once the buffer is refilled, ensuring data succession is maintained without error. (’755 Patent, Abstract; col. 2:7-10).
  • Asserted Claims: The complaint is silent on specific asserted claims. Independent claims include 1 and 2.
  • Accused Features: The complaint alleges the accused drives use a "method for adjusting operation of an optical disk drive to permit efficient recording on the disk," which aligns with the patent's goal of managing the recording process to prevent data loss from buffer issues. (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are various models of optical disc drives, including the ASUS DRW-0804P, ASUS CRW-5232, QSI SBW-242, and QSI SDW-082 drives. (Compl. ¶15, ¶20, ¶25, ¶30).

Functionality and Market Context

The complaint describes the accused products as "optical storage devices" capable of recording information to, and reproducing information from, optical discs. (Compl. ¶1, ¶14). The infringement allegations assert that these drives, as part of their "normal and intended operation," perform the specific functions disclosed in the patents-in-suit: zoned-based speed and data rate control, background formatting, high-speed write pulse strategies, and efficient recording management. (Compl. ¶15(a), ¶20(a), ¶25(a), ¶30(a)). The complaint alleges that Defendants manufacture, import, and sell these devices in the United States, deriving financial gain from such sales. (Compl. ¶10-11).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'552 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
a dividing means for dividing said tracks into a plurality of concentric annular blocks which are different in radius from each other; The drive operates with a "rotational speed variable by annular zones," implying a controller that logically divides the disc into zones. ¶14 col. 6:55-58
a first changing means for changing said information recording and/or reproduction speed "f" in accordance with a radius of said track in such a manner that said speed "f" is constant within a block but is different as between different blocks and depends on the radii of the blocks; and The drive operates with a "data transfer rate...variable by annular zones." ¶14 col. 5:12-23
a second changing means for changing said rotation speed "n" of said optical disk in such a manner that f/(n·r) is constant, where "r" is the radius of said track to be accessed. The drive adjusts its rotational speed to ensure linear speeds of recording are "substantially constant within respective annular zones." ¶14 col. 6:63-65

Identified Points of Contention ('552 Patent)

  • Scope Questions: Claim 9 uses "means-plus-function" language. A primary legal question will be whether the accused drives' controller and firmware are structurally equivalent to the corresponding structure disclosed in the patent (i.e., controller 16 implementing the specific logic from Fig. 5) as required under 35 U.S.C. § 112(f).
  • Technical Questions: What evidence will be presented to show that the accused drives' control systems vary both the data rate ("f") and rotational speed ("n") in the specific manner required to keep the ratio "f/(n·r)" constant? The complaint makes a conclusory allegation of this function without providing technical data to support it.

'955 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
recording means for recording data on a rewritable optical disc by using a fixed packet write method; The accused products are optical disc drives that embody the patented system. ¶20 col. 6:1-11
reproducing means for reproducing data recorded on said optical disc by said recording means; and The accused products are optical disc drives that embody the patented system. ¶20 col. 6:55-62
background formatting means for formatting said optical disc by a formatting process performed as a background process so that when at least one of a recording process and a reproducing process is requested, the formatting process is interrupted and the...process is performed and the formatting process is resumed after the...process is ended... The drives allegedly perform a method to "format an optical storage disc as a background process while still allowing a user immediate access to recording information." ¶19 col. 7:1-12

Identified Points of Contention ('955 Patent)

  • Scope Questions: The term "background formatting means" is subject to construction under 35 U.S.C. § 112(f). The dispute will likely focus on whether the accused drives' controllers perform the identical function recited in the claim—specifically, interrupting for a user request, executing that request, and then resuming the formatting—and whether their internal structure is equivalent to the controller 9 disclosed in the patent.
  • Technical Questions: Does the complaint provide evidence that the accused drives' formatting process is actually interrupted and resumed upon user request, as opposed to simply running at a low priority? The allegation that the drives "perform the patented method" will require factual support demonstrating this specific sequence of operations.

V. Key Claim Terms for Construction

'552 Patent

  • The Term: "means for changing said rotation speed "n" ... in such a manner that f/(n·r) is constant" (from Claim 9)
  • Context and Importance: This term defines the core technical principle of the Z-CLV invention. Infringement will depend on proving that the accused drives implement this specific mathematical control scheme, not merely a generic form of variable speed control. Practitioners may focus on this term because it links the drive's behavior to a precise mathematical formula.
  • Intrinsic Evidence for a Broader Interpretation: A party might argue the term covers any controller that modulates motor speed based on track radius to approximate a constant linear density, pointing to language like "substantially constant" used in the complaint's description of the invention. (Compl. ¶14).
  • Intrinsic Evidence for a Narrower Interpretation: The specification discloses a specific algorithm for this function, including Equation (6), n(r)=f(r)/(2π·b·r), and a corresponding flowchart in Figure 5. A party would argue the scope of the "means" is limited to the controller 16 and associated components programmed to execute this specific calculation. (’552 Patent, col. 8:22-31).

'955 Patent

  • The Term: "background formatting means" (from Claim 1)
  • Context and Importance: The definition of this term is critical to determining what constitutes infringing "background formatting." The case may turn on whether the accused functionality is merely a low-priority process or if it includes the specific "interrupt and resume" capability described in the patent.
  • Intrinsic Evidence for a Broader Interpretation: The abstract describes the invention as a "formatting process performed as a background process so that another process is acceptable after a start of the formatting process," which could be argued to cover any non-blocking format operation. (’955 Patent, Abstract).
  • Intrinsic Evidence for a Narrower Interpretation: The patent's detailed description and flowcharts (e.g., Fig. 5) explicitly lay out a sequence of interrupting the format, recording user data, and then resuming the format. A party would argue the "means" is limited to a controller (like controller 9) specifically configured to perform this interrupt-and-resume sequence. (’955 Patent, col. 8:27-55).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for all asserted patents. The factual basis cited is that Defendants sell devices "knowing them to be specially adapted for practicing the patented invention" and that their "advertising and promotional materials" instruct customers on how to use the infringing features. (Compl. ¶15(c)-(d), ¶20(c)-(d), etc.).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that Ricoh demanded the defendants "pay it a royalty or else desist from their infringing use of the invention, but the defendants have failed and refused to do either," thereby putting them on notice of the patents and their alleged infringement. (Compl. ¶17, ¶22, ¶27, ¶32).

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

  1. Claim Construction of "Means-Plus-Function" Terms: A dispositive issue for at least the '552 and '955 patents will be the court's construction of the "means-plus-function" limitations. The outcome will depend on whether the controllers in the ASUS and Quanta drives are found to be structurally equivalent to the specific algorithms and structures disclosed in the Ricoh patents for performing the claimed functions.
  2. Evidentiary Proof of Technical Operation: A key factual battle will be over the actual operation of the accused drives. Can Ricoh produce technical evidence, such as from reverse engineering, to prove that the drives perform the specific functions claimed—namely, maintaining the "f/(n·r)" constant relationship ('552 patent) and employing an interrupt-and-resume background formatting scheme ('955 patent)?
  3. Scope and Willfulness: Given that Ricoh allegedly put the defendants on notice of four separate patents, a central question will be whether the general functionalities of the accused drives can be proven to map onto the specific and distinct claims of all four patents. Furthermore, the alleged refusal to license after receiving notice will be a focal point for determining whether any infringement was willful.