RCA Corp. v. Data General Corp.

• Decision Date: 15 July 1988
• Docket Number: Civ. A. No. 84-270-JJF.
• Parties: RCA CORPORATION, Plaintiff, v. DATA GENERAL CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

701 F. Supp. 456

8 USPQ 2d 1305

RCA CORPORATION, Plaintiff, v. DATA GENERAL CORPORATION, Defendant.

Civ. A. No. 84-270-JJF.

United States District Court, D. Delaware.

July 15, 1988.

COPYRIGHT MATERIAL OMITTED

William J. Gilbreth, Norman H. Beamer and Robert Morgan of Fish & Neave, New York City, William J. Wade of Richards, Layton & Finger, Wilmington, Del., for plaintiff.

Douglas E. Whitney, Jack B. Blumenfeld, and Mary B. Graham of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., for defendant.

OPINION

FARNAN, District Judge.

In this action, RCA Corporation ("RCA") charged Data General Corporation ("Data General") with willful and deliberate infringement of U.S. Patent No. 3,345,458 ("the Cole patent"). RCA also accused Data General of having willfully breached a licensing agreement entered into under the Cole patent.¹ Data General denied infringement and asserted a panoply of legal and equitable defenses related primarily to the issues of validity, noninfringement and unenforceability. The Court has jurisdiction over the patent issues pursuant to 28 U.S.C. § 1338(a), and has pendent jurisdiction over the alleged breach of the licensing agreement.

The Court conducted a bench trial in this action and, following submission of Proposed Findings of Fact and Conclusions of Law by the parties, presided over post-trial argument. In accordance with Federal Rule of Civil Procedure 52(a), this Opinion constitutes the Court's Findings of Fact and Conclusions of Law on the issues of validity, infringement, unenforceability and damages.

I. BACKGROUND FACTS

In order to understand the nature and character of this lawsuit, it is necessary to recount the prior litigation in this district involving the Cole patent. See In re Cole Patent Litigation (hereinafter "HLA"), 558 F.Supp. 937, 959 (D.Del.1983) (Cole patent held invalid as anticipated by British Dirks patent; however, but for Cole's invalidity, it would be infringed by the accused terminals), rev'd in part, aff'd in part and remanded, RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1448 (Fed.Cir.1984) (judgment of invalidity reversed, judgment that patent not proved invalid for obviousness affirmed). In the HLA action, RCA charged Hazeltine, Lear Siegler and ADDS² with willful and deliberate infringement of the Cole patent. The HLA decision has to some extent become intertwined with the instant litigation, although not inextricably so. The earlier case bears most directly on Data General's assertion that, if not invalid, the Cole patent is unenforceable because RCA's victory in the HLA litigation was achieved through the perpetration of a fraud on the HLA court. See RCA Corporation v. Data General Corporation, No. 84-270-JJF, slip op. at 2-4 (D.Del. October 27, 1986) available on WESTLAW, 1986 WL 15684. Additionally, the HLA litigation is pivotal to RCA's argument that the Federal Circuit's decision in HLA is stare decisis on the issues of Cole patent validity, infringement, and alleged inequitable conduct before the Patent and Trademark Office ("PTO").

A. The Cole Invention.

In late 1959, RCA engineers Cole, Corson, and Stocker first conceived of the Cole invention. At that time, Cole was working on a display in connection with an RCA proposal to sell a display for a NORAD military command post installation in Wyoming. Cole, a systems engineer experienced in digital electronics and familiar with character generation techniques, contacted Corson, a member of RCA's Advanced Development Display Group, and Stocker, the leader of that same group, in connection with designing a display for the NORAD project. The group sought a fast, accurate, reliable, low maintenance system capable of displaying computer messages on a television-type display. Corson testified that the only digital way then known to the inventors to convert the data output of a computer for displays was a Wang Generator used in the Gordon patent.³

As to the actual invention of the Cole patent, neither Stocker nor Corson recalls the precise details of its conception. Stocker, however, did recall one turning point in the inventive process: "Cole came up with the amazing fact ... that alphanumeric video signals don't have to have halftones like the video gradation of brightness in a photograph. Its quite true, and I had known it, but I had never realized this. This opens a whole new field of binary systems in handling alpha-numeric symbology." This realization signalled the inventor's move toward digital technology. According to Stocker, this was the "concept of digital video which had come to them" that the video beam can be "turned ... on or off at definite times." In short, the inventors realized that characters could be formed on the screen by sending appropriately timed signals to the electron beam of the tube, turning it on and off at the correct instant. This insight was combined with the inventors' recognition that the timing and synchronization of the display of a television raster could be analyzed in terms of three variables: the code of the character to be displayed ("character code"); the scan line then being traced across the face of the tube ("scan line count"); and the horizontal position of the electron beam scanning across the face of the television tube ("position count").

While still at the conception stage, the inventors were dispersed. Corson was transferred to the west coast in late 1959, Cole was transferred to a facility in the Boston area shortly thereafter, and Stocker, the senior inventor, remained in Moorestown, New Jersey. With the consent of his fellow inventors, Stocker disclosed the Cole invention to RCA's patent department in March, 1960.

The basic Cole invention, which displays letters and numbers in fixed positions, was disclosed in terms of the embodiment illustrated in Figure 1 (see Appendix A) of the Cole patent disclosure. Figure 2 (see Appendix B) illustrates a more complicated embodiment of the Cole invention. It illustrates a system in which characters may be positioned randomly on the screen — so long as they are not overlapping. This embodiment was later dropped from the Cole patent. Stocker later admitted that the core matrix shown in Figure 1, which he described in the patent disclosure as the "heart" of the video generator, "illustrated the use of the Wang Generator for the digital generation of a video signal, but in the format of a line scan raster as used in television."

Thereafter, the Cole patent disclosure was the catalyst for feasibility studies conducted by an RCA display group located in Van Nuys, California. The object of the feasibility study conducted in Van Nuys was to "determine if there was a feasible system for utilizing digital methods to generate video for a display." In a section captioned "Summary," the authors noted that two methods for generating color video by digital techniques had been developed. In the technique called "computer generation of video (CGV) system, video is generated, one television line at a time, as a series of `ones' and `zeros' by a digital computer and accumulated in a buffer storage until the display is completed. Then the buffer storage repeats the video lines in a flicker-free raster scan." In the second system, entitled real time generation of video (RTGV) system, the display information is stored in a data store. The information is read from the data store at such a rate that it may be converted by a high speed character generator to video and presented to the display console as a flicker free display. With the RTGV system, the engineers sought to devise a system that would operate with the normal deflection mechanism of the display and generate randomly placed characters. The RTGV system differed from the system described in the Cole patent disclosure in that the latter was designed to display characters in fixed positions as on this page of text.

B. The Cole Patent.

Claims 1 through 3 of the Cole patent, the claims in suit, are as follows:

1. A display system for generating character patterns for display on a display device that exhibits a television raster scan-line pattern, each character pattern being displayed in one character space,

means responsive to a certain character code for applying to a certain selected lead an output signal having a duration substantially equal to the scanning time in said scan-line direction through one character space,

means for generating scan-line select counts in synchronism with the scan lines of said raster, each scan-line count having a duration substantially equal to that of a raster scan-line,

means for generating position counts which occur successively during a scan along a scan-line through a character space, and

means for causing said output signal appearing on said selected lead, said scan-line counts and said position counts to supply to said display device a selected character pattern.

2. In a system for displaying a message comprising certain character patterns on a display device that exhibits a television raster scan-line pattern, wherein each different character pattern is manifested by a digitally coded data signal corresponding thereto, the improvement comprising generating means responsive to the data signal forming said message applied thereto for digitally generating a video signal for use in displaying said message on said display device, and means for applying said data signals forming said message to said generating means.

3. The improvement defined in claim 1, wherein said generating means include first means for producing as said video signal a signal which selectively has either a first level or a second level for the entire duration of each respective one of successive elemental time intervals all of which have the same predetermined duration, the duration of each television raster scan line being an integral multiple of said predetermined duration, and second means coupled to said first means for...