767 F. Supp. 2d 1
D.D.C.2011Background
- Papst asserts two patents ('399, '449) against digital camera manufacturers in a District of Columbia MDL; Papst and HP had a joint proposed judgment stating HP devices do not infringe under the court's construction, which Papst later disputes; the court had narrowed infringement contentions through Sixth Practice and Procedure Order requiring precise Final Asserted Claims and Infringement Contentions; Papst filed Final Asserted Claims (Oct 13, 2010) and revised (Jan 21, 2011); HP moves to strike contentions against HP products and to stay as to HP as a seller of Canon/Samsung cameras; Papst sought to add Palm devices and other HP products; court focused on whether Papst was bound by prior admissions and whether new product categories could be added; court emphasized that adding Palm and other new products would require leave to amend and would prejudice HP; court also applied customer-suit doctrine to stay claims against HP as a seller of Canon/Samsung cameras; the court ultimately granted in part and denied in part HP’s motion to strike.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Papst is bound by its prior admissions of noninfringement against HP devices | Papst argues its stipulation was not formally entered, so estoppel does not apply. | HP relies on Papst’s repeated, factual statements that HP devices do not infringe under the Court's construction. | Yes; Papst is bound by its statements and cannot rely on new theories to recharacterize infringement against HP devices. |
| Whether Papst may amend to add Palm products | Papst should be allowed to amend as necessary to reflect ongoing assertions. | Amendment would violate the Sixth Practice Order and impose undue prejudice on HP; adding Palm would require new discovery. | Palm products assertions are stricken; amendments to add Palm require leave of court and were not granted. |
| Whether Papst may add Canon/Samsung digital cameras as HP-seller claims and related discovery | Papst contends Canon/Samsung claims fall within existing posture and discovery. | Customer-suit doctrine stays claims against HP as seller; discovery should not proceed against HP for Canon/Samsung. | Claims against HP as seller of Canon/Samsung cameras stayed pending further order; discovery stay imposed. |
Key Cases Cited
- Oscanyan v. Arms Co., 103 U.S. 261 (1880) (admissions by counsel are binding in court proceedings)
- Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) (noninfringement tools do not convert a noninfringing device into an infringing one)
- Hap Corp. v. Heyman Mfg. Co., 311 F.2d 839 (1st Cir. 1962) (scope of claims and intended use; prior acts do not establish infringement by itself)
- High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551 (Fed. Cir. 1995) (device could be used in an infringing manner; not infringing by mere possibility)
- Katz v. Lear Siegler, 909 F.2d 1459 (Fed. Cir. 1990) (customer-suit doctrine; stay when manufacturer is sued for infringement)