Infringement Contentions Stricken, with Leave to Amend, by Judge Failla

Yama Capital LLC v. Canon Inc. et al.

Case Number: 1:12-cv-07159-KPF (Dkt. 43)

Judge Failla granted Canon’s motion to strike Yama Capital’s Revised Preliminary Infringement Contentions, served pursuant to the SDNY’s Patent Disclosure Rules 1–1(b) (requiring identification of accused instrumentalities) and 1–1(c) (requiring claim charts “identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality”). The court gave plaintiff until January 17, 2014 to make new disclosures.

Plaintiff alleged that nine Canon cameras infringe claims of U.S. Patent No. 6,0069,683 (entitled “Estimation of frequency dependence and grey-level dependence of noise in an image”), a patent Yama acquired from Polaroid Image Science Laboratory through a bankruptcy sale of Polaroid’s assets.

The court found Yama’s disclosures inadequate in several ways. Yama’s analysis was directed to the accused camera’s software, rather than “demonstrate[ing] that each limitation is found ‘within’ the Accused Instrumentality at some specific place,” was inadequate. Yama’s failure was due to its analysis of “isolated claim limitations, taken out of context, that are unrelated to other limitations that together (and only together) constitute the claimed method.”

Second, Plaintiff advanced an inadequate “combination theory” of infringement. The theory relied on “an unspecified matrix of combinations of ‘primary features,’ each allegedly infringing in their own right, with ‘secondary features’ whose infringement arises only as a function of the combination.” The court said that the theory was ambiguous and inadequately specific, “permit[s] neither Defendants nor the Court to understand [it], and thus fails to satisfy the specificity requirement of the Rules.”

Third, the court said that Yama failed to make particularized allegations in regard to two claim limitations with adequate specificity. The court characterized plaintiff’s position as this:

  1. A processor in the accused cameras performs noise reduction
  2. Noise reduction “has some relationship to the setting of” the cameras’ features
  3. Therefore, cameras using the processor must infringe.

This argument failed, as “the purpose of the Infringement Contentions is to avoid allowing such conclusory allegations to serve as a basis for discovery. Plaintiff must explain the reasonable basis for its belief that each limitation of the claims at issue is infringed. . . . It has not.” 

The court noted that “the Court can strike the Infringement Contentions with prejudice,” but, noting that to do so “would in effect announce an end to this litigation,” and gave Yama leave to file revised contentions and claim charts.

The articles on our Website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice.