Ricoh Company, Ltd. v. Quanta Computer Inc. et al.

I'll research this case against public sources before drafting.

Overview and Background

The parties. Ricoh Company, Ltd. is a large Japanese operating company (imaging equipment, electronics, optical media) and the owner of all four patents-in-suit, which came out of Ricoh's own R&D in phase-change optical recording; this is a classic operating-company assertion, not an NPE/PAE suit, and Ricoh itself both practiced and licensed the technology. The defendants were the Quanta group — Quanta Computer Inc. (Taiwanese ODM that assembles notebooks for brand owners), Quanta Storage, Inc. ("QSI," Taiwan's largest maker of slim-type optical disc drives and the principal accused party), and Quanta Computer USA, Inc. (U.S. sales/repair arm) — plus NU Technology, Inc. and New Universe Technology, Inc., U.S. customers/resellers of Quanta drives. Business Line Data and the Philips entities (Philips Optical Storage, Philips Taiwan) appear in the caption as defendants; per the Federal Circuit, Quanta and NU filed third-party indemnification claims against the Philips parties, which were dismissed as moot when Ricoh's claims were dismissed. Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1330 n.3 (Fed. Cir. 2008). ASUS/ASUSTeK Computer was also an original co-defendant in 06-C-462-C (see W.D. Wis. orders of Feb. 2007 and May 29, 2007 captioned Ricoh v. Asustek Computer, Inc., et al.), but it is not in the final caption and the terms of its exit are not publicly documented. NU/New Universe were dismissed with prejudice on Ricoh's motion in November 2009 (dkt. 438).

Accused technology and patents. The accused products were QSI's slim-line recordable/rewritable CD and DVD drives (the record identifies models in the SBW-081/161/241/242/243/245 and SDW-041/042/082/085/086 families) as supplied to notebook ODMs and brand owners such as HP, Dell and Apple — i.e., the alleged infringement sat in the write firmware/controller of drives that were themselves sold only as components of laptops. Because the asserted claims are method claims, Ricoh's viable theories after 2008 were indirect: contributory infringement under § 271(c) and inducement under § 271(b). The four patents: '109 (6,631,109) — a multi-pulse laser "write strategy" (front pulse t1, duty-ratio-defined multi-pulse train, tail pulse t4) for phase-change rewritable discs operated at 5–28 m/s linear velocity; '955 (6,172,955) — background formatting of rewritable discs in fixed-length "packets," allowing recording/reading to continue during formatting; '552 (5,063,552) — zone-CLV (ZCLV) control of disc rotational speed to increase recording capacity (expired July 2009); '755 (6,661,755) — writing data across sessions/interrupted writes (run-in/run-out block handling and "data succession") to avoid read errors or disc damage.

Procedural posture and venue. Filed August 24, 2006 in the U.S. District Court for the Western District of Wisconsin (Madison), before Chief Judge Barbara B. Crabb, with Magistrate Judge Stephen L. Crocker handling discovery. Markman issued May 11, 2007 (571 F. Supp. 2d 929); summary judgment on August 21, 2007 (579 F. Supp. 2d 1115) held claims 1 and 4 of the '109 patent obvious over Ricoh's own European applications EP '272 and EP '962, the '955 patent not infringed, and found triable issues on '552/'755 but no direct or indirect liability. The Federal Circuit affirmed as to '109 and '955, but vacated on contributory infringement and inducement of '552/'755 (550 F.3d 1325, Dec. 23, 2008), with Judge Gajarsa dissenting in relevant part. On remand, a bifurcated trial produced a Nov. 20, 2009 jury verdict that the '552 and '755 patents were valid and infringed, followed by a $14.5 million judgment against Quanta Storage entered Nov. 24, 2009 (dkt. 510). The court denied JMOL and mistrial (dkt. 545, Mar. 22–23, 2010), denied a permanent injunction and ordered ongoing-royalty negotiations (dkt. 546, Apr. 19, 2010), and the ensuing appeal was dismissed by agreement under Fed. R. App. P. 42(b), 453 F. App'x 977 (Fed. Cir. 2011), coinciding with the April 13, 2011 settlement. Venue mattered here in a mundane, pre-TC Heartland way: W.D. Wis. was a small, fast docket — the court had set an October 1, 2007 trial date roughly a year after filing — which suited a plaintiff seeking leverage against foreign ODMs, and Ricoh used the same district for its earlier ODD campaign against Lite-On and CMC Magnetics (settled 2004–2005).

Why it is notable. Ricoh v. Quanta is a frequently cited § 271(c) decision: the panel held that a seller cannot escape contributory infringement "merely by embedding" a component with no substantial noninfringing use inside a larger, multi-function product, and it adopted a "distinct and separable component" framing that the district court and jury then applied on remand (drives still worked when the accused firmware was disabled). It also held that selling software containing instructions to perform a patented method is not direct infringement under § 271(a), and it tightened/illuminated the § 271(b) intent standard in light of Grokster. For practice, two aspects stand out: (i) the invalidity of the '109 claims came from Ricoh's own corresponding European applications, a cautionary tale about global prosecution; and (ii) there is no IPR/PTAB linkage at all — the case predates the AIA's post-grant regime, so validity was litigated only in court. The outcome also illustrated the economics of ODD supply-chain assertions: a $14.5 million verdict (Ricoh's damages expert put a lower bound at $11 million; defendants' economist capped damages near $3 million per Compass Lexecon's case note) on patents that were largely method-based and hard to enforce directly against component makers.

Sourcing caveats. Docket facts above are drawn from the Justia docket for 3:06-cv-00462, govinfo/Justia reproductions of dkt. 492, 510, 545 and 546, and the published opinions; party business descriptions and model numbers come from the Federal Circuit opinion and Ricoh's August 25, 2006 press release. I could not verify (and therefore do not state) the settlement amount, the terms of ASUS's or NU's exit, the precise Federal Circuit appeal number for the 2010 appeal, or any Supreme Court certiorari proceedings — one Taiwanese government case study asserts certiorari was denied, but I found no primary confirmation, and given that Quanta largely prevailed in 2008 the claim is doubtful.

I'll research this case thoroughly across court records, opinions, and secondary sources.

Good foundation. Now let me dig into the docket chronology, Markman date, trial, and post-trial events.

Let me pin down the Markman and summary judgment dates, early motions, and the appeal/settlement.

I'll search multiple angles for press coverage of this case.

Good hits — Law360 and DigiTimes. Let me dig for more coverage angles and verify these.

Let me look for Law360 coverage of the verdict and the Federal Circuit ruling, plus Patently-O and other outlets.

Press and trade coverage

Trade and legal-trade reporting carried the verdict; mainstream outlets largely did not. The $14.5 million November 20, 2009 verdict was reported the following Monday by Taiwan's DigiTimes, which (in its November 23, 2009 item "US court orders Quanta Storage to pay US$14.5 million compensation to Ricoh") described Quanta Storage as "the largest Taiwan-based ODM/OEM maker of slim-type optical disc drives," noted that the Wisconsin court entered judgment on November 20, and reported the company "is expected to appeal the verdict." Optical-media trade site CDRinfo ran the same account near-verbatim, attributing the facts to "a statement" by Quanta Storage and repeating that Ricoh had sued over "four of its patents related to CD-RW and DVD+RW formats." The verdict also appeared in a roundup of "Recent jury verdicts, bench decisions, settlements, and arbitration awards" published by the State Bar of Wisconsin's InsideTrack on July 16, 2010, which listed Ricoh Co. v. Quanta Computer (W.D. Wis.) under intellectual property with a bare "Jury: $14,500,000."

Law360 covered the appellate and post-trial phase. Law360 reported on April 21, 2010 (byline Elaine Meyer) that "Quanta Computer Inc. has decided to appeal a jury's award of $14.5 million in damages to Ricoh Co. Ltd. in an infringement dispute over two patents related to rewritable disk drive technology" — published two days after Judge Crabb denied Quanta's permanent-injunction-stage motions and ordered ongoing-royalty negotiations (dkt. 546). Beyond the headline and lede, the article sits behind Law360's paywall, so I could not verify further detail. On the settlement, DigiTimes reported on March 3, 2011 ("Quanta Storage settles patent lawsuit in US with Ricoh") that the parties had "reached an agreement … with both sides to withdraw the lawsuit." Note the timing tension: DigiTimes dates the agreement to early March 2011, while the docket terminates April 13, 2011 — consistent with a settlement reached in principle weeks before the formal dismissal, but I found no reporting on the settlement amount, and no outlet I located disclosed terms.

What the coverage says made the case significant is almost entirely the § 271(c)/§ 271(b) holding, not the verdict. The December 23, 2008 Federal Circuit decision drew a wave of law-firm client alerts, and those — rather than news outlets — are where the case has been analyzed. Dow Lohnes told clients the decision, "if not modified by an en banc Federal Circuit or the Supreme Court, will likely lead to an increased burden on defendants as well as increased discovery and litigation costs in patent infringement cases involving allegations of indirect infringement of method claims," and warned that "component and product resellers should carefully review the indemnification provisions in their supplier agreements." Willkie Farr & Gallagher framed the appeal as presenting "an important, and previously unresolved, question concerning the scope of liability for contributory infringement," and emphasized that on inducement the court held a patentee need not show the encouragement was "successfully communicated" to direct infringers. Finnegan gave the case four pages in its January 2009 Last Month at the Federal Circuit, flagging Judge Gajarsa's objection that the majority decided § 271(c) "on the basis of policy concerns without due regard for the text." Scully Scott Murphy & Presser and Kirkland & Ellis's IP Spotlight ran similar summaries.

Where accounts go beyond — or diverge from — the court record. (i) DigiTimes and CDRinfo both describe Quanta Storage as having "lost two patent lawsuits," when the record shows one consolidated action in which two patents ('552 and '755) survived to verdict. (ii) Engadget, in an undated post on the 2006 filing, reported that Ricoh was "looking for royalties dating back to 2004, when it stopped producing optical disc drives altogether," and that Quanta and Asustek "refused to negotiate at all before the case reaches court" because they had not yet been served — a characterization of Ricoh's exit from ODD manufacturing that sits in some tension with the earlier sections' framing of Ricoh as an operating company that practiced the technology. Treat it as an unsourced blog-era claim, not record fact. (iii) UK firm Lawdit used the case in an NPE/injunction essay, reporting the jury "included a receptionist, a preschool cook, a former dairy farmer, and a barista," and reading Judge Crabb's injunction denial as holding that where "the patented invention is but a small component of the product … legal damages may well be sufficient." Lawdit itself concedes "Ricoh is no traditional troll," so the piece is useful as evidence of how commentators used the case (post-eBay injunction practice) rather than as a reliable factual account.

Gaps. I found no Reuters, Bloomberg, NYT, Ars Technica, The Verge, IPWatchdog, Patently-O, JD Supra, or EFF coverage of this case in searches on the caption, party names, the four patent numbers, and the verdict/settlement. The Compass Lexecon case note already cited in the case overview remains the only source giving the damages-phase numbers ($11 million lower bound for Ricoh; ~$3 million upper bound for defendants; $14.5 million award), and no press account I located reported the settlement terms, the 2011 appellate dismissal, or the earlier ASUS/NU exits.

Sources

• IP Spotlight | 2
• infringe under § 271(a) because Ricoh presented no evidence to show either that NU
• Case: 3:06-cv-00462-bbc Document #: 545 Filed: 03/23/10 Page 1 of 22
• 국제특허분쟁연구회
• Drewey & LeBoeuf
• 此案爭訟的專利為晶片組及微處理器內的專利組合，對以資訊產業及代工為重要發展的台灣具有高度的產業關聯性
• The patents-in-suit are directed to various aspects of optical disc drive technology
• circumstantial evidence to prove specific intent
• WILLKIE FARR & GALLAGHER LLP
• QSI’s role as the designer and manufacturer of the optical drives in question may evidence an intent sufficiently specific to su...
• Quanta Appeals $14.5M Hit In Disk Drive Patent Suit - Law360
• RICOH COMPANY, LTD. v. QUANTA COMPUTER INC.

I'll research the plaintiff-side counsel of record for this case.

Counsel of Record for the Plaintiff — Ricoh Company, Ltd.

Bottom line. Ricoh's case was run out of Washington, D.C. by Kellogg, Huber, Hansen, Todd, Evans & Figel PLLC (now Kellogg, Hansen, Todd, Figel & Frederick), with J.C. (John C.) Rozendaal as the lead trial lawyer and Michael E. Joffre and Michael Guzman as the principal supporting/patent-side lawyers, plus New York patent firm Cooper & Dunham LLP (Ivan S. Kavrukov). Mark C. Hansen and Richard H. Stern also appear on Ricoh's side in a secondary (Taiwanese government) case study. I was not able to identify the Madison, Wisconsin local counsel of record from the sources available to me, even though the record confirms such counsel existed and was taking the lead on some discovery activity.

The Kellogg Huber team (Washington, D.C.)

Cooper & Dunham LLP (New York) — patent counsel

• Ivan S. Kavrukov — listed in the TIPO case study as Ricoh's counsel at Cooper & Dunham LLP, New York. Given the firm's role as a prosecution/litigation-support firm and the absence of his name from the Kellogg Huber trial filings, the most likely characterization is patent prosecution/technical counsel or of counsel rather than courtroom counsel of record, but that inference is mine and I have not verified his appearance on the W.D. Wis. docket.

Local counsel (W.D. Wis.) — not identified

• The record establishes that Ricoh used a Madison, Wisconsin–based firm: in the related venue-discovery litigation, the court noted that "counsel for plaintiff" had accused products shipped to "counsel for plaintiff's offices in Madison, Wisconsin," and that counsel personally purchased accused drives at Madison-area retailers. Ricoh Co. v. Asustek Computer, Inc., 481 F. Supp. 2d 954 (W.D. Wis. 2007).
• Because Rozendaal and Joffre litigated out of D.C. and appear pro hac vice in other districts, W.D. Wis. practice rules would have required a Wisconsin-barred local sponsor. I could not retrieve the docket entry or appearance listing that names that attorney, and I will not guess at a firm. A PACER pull of dkt. 1 (complaint signature block) and the ECF attorney-appearance entries in 3:06-cv-00462 would resolve this in a few minutes; the free Justia docket for the case does not reproduce the attorney panel.

In-house counsel

No Ricoh in-house attorney appears as counsel of record in any document I could access. Ricoh's litigation was outsourced to Kellogg Huber; I found no evidence of a named in-house lawyer of record and am not supplying one.

Sourcing caveats and contradictions to flag

1. The Kellogg Huber attribution is solid — corroborated independently by Compass Lexecon's published case note (compasslexecon.com/cases/ricoh-v-quanta-computer-and-quanta-storage) and by the Taiwanese TIPO case study (tiponet.tipo.gov.tw, information_4_half_1.pdf, table 44).
2. The Hansen/Stern names are single-sourced to the TIPO table and should carry a "reported, not confirmed" flag if this section is published.
3. The TIPO study is also the source for the "Supreme Court denied certiorari" claim already flagged as doubtful in the case-overview section — consistent with the caution already expressed there, I treat that study as reliable on party/counsel names but unreliable on appellate history.
4. Defendants' side, for contrast (not requested but useful for a counsel table): Paul, Hastings, Janofsky & Walker LLP — Terrence D. Garnett, Vincent K. Yip, Peter J. Weid, Jay C. Chiu — with Hua Chen, Daniel Prince, Todd Snyder and Katherine F. Murray. Garnett is confirmed as arguing at trial in the April 2010 transcript.
5. I found no indication that any of these appearances were sealed; the sealing orders in this case (dkt. 557, 561, 2015) concern the parties' confidential business records, not the attorney roll.

I'll research the counsel of record for the Quanta-side defendants using court opinions, docket records, and firm sources.

Key lead: an early sanctions order referenced "Attorney Daniel Prince" as Quanta's counsel. Let me pull that order and related sources.

Now I have the Federal Circuit counsel listing. Let me verify the district-court local counsel and the Supreme Court-stage counsel.

Counsel of Record — Defendants

Bottom line. The Quanta group and NU Technology were jointly represented throughout by Paul Hastings (then Paul, Hastings, Janofsky & Walker LLP) out of its Los Angeles office, with Terrence D. Garnett as lead/arguing counsel, and by Godfrey & Kahn, S.C. (Madison, Wis.) as local counsel — Todd G. Smith. The same Paul Hastings team appears to have also carried the remaining nominal defendants (the Philips entities/Business Line Data), based on the Federal Circuit's counsel line. The single strongest source is the published counsel listing in the merits opinion, 550 F.3d 1325, 1327 (Fed. Cir. 2008):

"Terrence D. Garnett, Paul, Hastings, of Los Angeles, CA, argued for Defendants-Appellees and Defendants. With him on the brief were Vincent K. Yip, Peter J. Weid, and Jay C. Chiu. Of counsel were Hua Chen, Daniel Prince, Todd Snyder, and Katherine F. Murray."

(For contrast, Ricoh was represented by Kellogg, Huber, Hansen, Todd & Evans — John C. Rozendaal, Mark C. Hansen, Michael E. Joffre, Richard H. Stern — with Ivan S. Kavrukov of Cooper & Dunham as of counsel. Note the trap: Michael E. Joffre was plaintiff's counsel, not a Quanta lawyer; he and Daniel Prince were the two attorneys whose pro hac vice status Judge Crocker revoked in the June 2007 discovery-sanctions episode, on opposite sides of the "v." That order is easy to misread as identifying both as Quanta counsel.)

Quanta Computer Inc., Quanta Storage Inc., Quanta Computer USA Inc., and NU Technology Inc.

The Philips-side defendants

Business Line Data, Philips Optical Storage and Philips Taiwan, Ltd. remained nominal defendants after Quanta and NU filed third-party indemnification claims against them (dismissed as moot when Ricoh's claims were dismissed, 550 F.3d at 1330 n.3). The Federal Circuit's counsel line — Garnett "argued for Defendants-Appellees and Defendants" — indicates Paul Hastings also appeared for these Philips-side defendants at the appellate stage. I found no separate district-court appearance list for them and cannot name their individual counsel; treat this as a strong inference, not a documented caption.

Gaps and things I could not verify

• Supreme Court stage (2009). A certiorari petition, Quanta Computer, Inc., et al. v. Ricoh Company, Ltd., was docketed on March 27, 2009, with Stephen B. Kinnaird listed as petitioners' counsel (UniCourt's reproduction of the Supreme Court docket). Kinnaird was a Supreme Court/appellate specialist rather than the Paul Hastings trial team; I could not independently confirm which firm he was with for that filing, nor the petition's disposition or docket number. This is consistent with — but does not resolve — the earlier caveat in this case summary about an unverified Taiwanese source claiming certiorari was denied.
• ASUS/ASUSTeK. ASUS and ASUS Computer International were dismissed for lack of personal jurisdiction (see dkt. 546, noting ASUS was later licensed by Ricoh). Their counsel of record in 06-C-462-C are not identified in any source I could reach.
• The 2010 appeal. The appeal from the post-remand judgment (dismissed by agreement under Fed. R. App. P. 42(b), 453 F. App'x 977) would almost certainly have been handled by Garnett/Yip for Quanta and Kellogg Huber for Ricoh, but I could not retrieve that docket to confirm the appearance list, so I do not state it as fact.
• No sealed-counsel issue. Nothing suggests counsel appeared under seal; the appearances are documented in the published opinion and the June 2007 orders. The limitations above are sourcing gaps (particularly for the "of counsel" names), not sealing.

Practical takeaway for the case study: the defense was a two-firm structure — Paul Hastings (L.A.) as national patent counsel running strategy, briefing and trial, and Godfrey & Kahn (Madison) providing the Wisconsin-local appearance required by W.D. Wis. practice. That structure, plus the fact that the same Paul Hastings team covered both the Quanta OEMs and the Philips indemnity defendants, explains how the case was litigated as a coordinated supply-chain defense rather than a set of separate vendor defenses.