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Burnett v. Panasonic Corporation of North America

United States District Court, D. Maryland

November 1, 2017

CARL M. BURNETT Plaintiff,
v.
PANASONIC CORPORATION OF NORTH, AMERICA, and PANASONIC INTELLECTUAL PROPERTY CORPORATION OF AMERICA Defendants.

          MEMORANDUM OPINION

          PAULA XINIS UNITED STATES DISTRICT JUDGE

         Pending in this patent infringement suit is Panasonic Corporation of North America and Panasonic Intellectual Property Corporation of America's (“Defendants”) Motion to Dismiss for Failure to State a Claim filed March 9, 2017. ECF No. 15. Plaintiff Carl M. Burnett (“Plaintiff”) opposed the Motion on March 24, 2017 (ECF No. 17) to which Defendant replied on April 10, 2017. ECF No. 20. Given the complexity of the issues involved, Plaintiff was given leave to file a surreply, ECF No. 23, as were Defendants, ECF No. 28. The issues are fully briefed, and the Court now rules pursuant to Local Rule 105.6 because no hearing is necessary. For the reasons stated below, the Defendants' Motion to Dismiss is granted.

         I. Background

         The following facts are drawn from the Amended Complaint and taken as true for purposes of this opinion. Plaintiff is an information technologist and owner of two patented “geospatial technologies, ” U.S. Patent No. 6, 681, 231 (the “'231 Patent”) and U.S. Patent No. 7, 107, 286 (the “'286 Patent”). ECF No. 12-2 at 1-2. Since the ‘286 Patent was issued by the USPTO in September 2006, ownership of the ‘286 Patent has been transferred four or more times, but at all times both patents were retained by the Plaintiff or corporations controlled by Plaintiff as CEO and President. ECF No. 18-2 at 4. Defendants are manufacturers of electronic products, including cameras and camcorders. ECF No. 12-2 at 2.

         Plaintiff alleges that Defendants' video cameras and camcorders incorporate the use of Plaintiff's patented technology and that Panasonic's manufacture, use, and that the sale of these products infringe upon claims 1 and 9 of the ‘286 Patent. ECF No. 12-2 at 16. Plaintiff further avers that through Defendants' continued sale of products using Plaintiff's technology, Defendants are “actively inducing” continued infringement of Plaintiff's Patent. ECF 12-2 at 18.

         Although Plaintiff is the present owner of both the ‘231 Patent and the ‘286 Patent, only infringement of the ‘286 Patent is alleged. The ‘286 Patent is an “integrated system of hardware and software modules for processing visual, audio, textual, and geospatial information” and includes seventeen (17) claims. ECF No. 1-2 at 56. Plaintiff asserts patent infringement for two of these claims, claim one (1) and claim nine (9).[1] ECF No. 18-2.

         a. SMPTE Standards 330M and 373M

         The Society of Motion Picture and Television Engineers (SMPTE) is an organization that, among other responsibilities, recommends specific formats for motion-imaging content through the publication of “Recommended Practices, ” “Standards, ” and engineering guidelines for the motion picture industry. In January 2010, Plaintiff's affiliated corporation and then-owner of the ‘286 Patent, Global Findability, Inc. (GFI), discovered an intellectual property statement in an SMPTE Recommended Practice. ECF No. 18-2 at ¶ 48. The document, Recommended Practice: SMPTE RP 204-2009-Application of Unique Identifiers in Production and Broad Environments, announced that “no notice had been received by SMPTE claiming patent rights essential to the implementation of this Standard, ” but that “attention is drawn to the possibility that some of the elements of this document may be the subject of patent rights.” Id. In response, GFI filed a voluntary patent licensing declaration to license the ‘286 Patent for the technology implemented in SMPTE 330M: 2004 (“330M Standard”). Id. at ¶ 49. The 330M Standard specifies the format of Unique Material Identifiers (UMID), which are unique identifiers for picture, audio, and data material that is automatically generated or manually created and encrypted into a media file. Id. at ¶ 56. The metadata of a UMID may include date and time, spatial co-ordinates, country code, organization code, and user code. Id.

         On November 5, 2013, Geocode-LA Inc. (GLA), who acquired the ‘286 Patent in July 2013, [2] see Id. at ¶ 27, submitted an updated patent licensing declaration to cover additional SMPTE standards, including SMPTE 337M-2004 Material Exchange Format File Format Specification Standard (“337M Standard”). ECF No. 18-2 at ¶ 52. The 337M Standard defines the data structure of Material Exchange Format (MXF) for network transport and storage of audiovisual material. Id. at ¶ 57. One of the specifications of the 337M Standard includes a UMID metadata identifier. Id. On January 24, 2017, Plaintiff, now the assigned owner of Patent ‘286, notified SMPTE that Plaintiff's patents would no longer be offered for implementation of SMPTE standards, including 330M and 337M. ECF No. 18-2 at ¶ 55; see also ECF No. 1-9 at 2.

         b. Defendants' Alleged Infringement of the ‘286 Patent

         Defendants manufacture and sell media equipment that incorporates the 330M and 337M SMPTE Standards. ECF No. 18-2 at ¶¶ 58-63. By Plaintiff's approximation, twenty-seven (27) Panasonic models conform to these Standards. Id. at ¶ 83. Defendants also sell or have sold six (6) cameras or camcorders that incorporate a Global Positioning System (“GPS”) receiver and the 330M or 337M Standard, id. at ¶ 85, and five (5) models that incorporate a GPS receiver, but not the 330M or 337M Standard, id. at ¶ 86. In 2012 and 2014, the previous owner of the ‘286 patent, Geocode, Inc. notified SMPTE-compliant manufacturers, including Defendants, of the SMPTE patent licensing agreement. Id. at ¶¶ 64-66. Throughout 2012 through 2014, the respective ‘286 Patent owners[3] engaged Defendants in discussions for a potential licensing agreement for the ‘286 Patent, but the parties were unable to reach an agreement. Id. at ¶¶ 66- 82.

         Subsequently, on January 26, 2017, Plaintiff filed this Complaint alleging that Defendants' infringed on Plaintiff's patent. ECF No. 1. Plaintiff submitted an Amended Complaint, naming the present Defendants and asserting specifically that Defendants' products, by employing the 330M and 337M SMPTE standards, integrate the technology protected by Claim 1 and Claim 9 of the ‘286 Patent.[4] ECF No. 18-2 at ¶¶ 91-93. Claim 1 asserts ownership of:

1. A geospatial media recorder, comprising:
converting means for converting longitude and latitude geographic degree, minutes, and second (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discretion all-natural number[5]geographic coordinate and measurement representations; and combining means for concatenating the discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above earth's surface allowing user to geospatially reference entities or objects based on the identified geospatial positional location and point identification.

         ECF No. 1-2 at 59.

And claim 9 asserts ownership of:
9. A geospatial information processing method comprising:
converting latitude and longitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and latitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and concatenating the individual discrete all natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above ...

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