Discovision Associates v. Disc Mfg., Inc., Civil Action No. 95-21-SLR.

CourtUnited States District Courts. 3th Circuit. United States District Court (Delaware)
Writing for the CourtSue L. Robinson
Citation25 F.Supp.2d 301
Docket NumberCivil Action No. 95-21-SLR.
Decision Date26 October 1998
PartiesDISCOVISION ASSOCIATES, Plaintiff, v. DISC MANUFACTURING, INC., a Delaware Corporation, Defendant.
25 F.Supp.2d 301
DISCOVISION ASSOCIATES, Plaintiff,
v.
DISC MANUFACTURING, INC., a Delaware Corporation, Defendant.
Civil Action No. 95-21-SLR.
United States District Court, D. Delaware.
October 26, 1998.

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Edward M. McNally, Peter A. Pietra, Morris, James, Hitch (Thomas J. Nolan, John S. Schuster, Christopher A. Mathews, Ben M. Davidson, of Howery & Simon, Los Angeles, California, Anthony C. Roth, D. Michael Underhill, Penelope M. Lister, Robert Gaybrick, Richard S. Meyer, Nathan W. McCutcheon, of Morgan, Lewis & Bockius LLP, Washington, DC, Frederick S. Frei, Stephen L. Sulzer, Stuart Huang, and Gary J. Rinkerman, of Steptoe & Johnson LLP, Washington, D.C., of counsel), for plaintiff.

R.H. Richards, III, of Richards, Layton & Finger, Wilmington, Delaware (James R. Blanchard, Joel W. Benson, Allan J. Sternstein, Harold V. Johnson, Thomas J. Filarski, Gustavo Siller, Jr., George I. Lee, Christopher M. Cavan, Steven G. Steger, and Ajay K. Gambhir, of Brinks, Hofer, Gilson & Lione, Chicago, Illinois, Michael Chertoff, Robert J. Gunther, Jr., John T. Brennan, of Latham & Watkins, Newark, New Jersey, of counsel), for defendant.

OPINION

SUE L. ROBINSON, District Judge.


I. INTRODUCTION

Plaintiff DiscoVision Associates ("DiscoVision") filed this action against defendant Disc Manufacturing, Inc. ("DMI") on January 17, 1995, alleging infringement of six DiscoVision patents relating to optical disc technology. (D.I.1) On September 20, 1995, DiscoVision

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filed an amended complaint which alleged that DMI infringed ten patents relating to optical disc technology. (D.I.63, 484) During discovery, DiscoVision voluntarily agreed to drop several of its patent claims.1 (D.I. 287 at 14; D.I. 299 at 2; D.I. 308 at 2; D.I. 323 at 3) Prior to trial, DiscoVision further reduced its case to the following six patents: (1) U.S. Patent No. 4,819,223 ("the '223 patent"); (2) U.S. Patent No. 4,893,297 ("the '297 patent"); (3) U.S. Patent No. 4,228,326 ("the '326 patent"); (4) U.S. Patent No. 4,190,860 ("the '860 patent"); (5) U.S. Patent No. 4,337,538 ("the '538 patent"); and (6) U.S. Patent No. 5,373,490 ("the '490 patent").

The parties tried this matter to the court from October 6, 1997 to October 16, 1997. As a result of this court's claim construction order (D.I.558), DiscoVision did not present evidence of infringement with respect to the '538 and '223 patents and further reduced the number of claims it alleged DMI had infringed.2 At trial, DiscoVision presented evidence of infringement on the following four patents and their respective claims: (1) DMI's compact discs ("CDs") and stampers infringe claims 1, 10, and 13 of the '297 patent; (2) DMI's version one mastering machine infringes claims 2 and 8 of the '326 patent; (3) DMI's version two mastering machine infringes claims 1, 16, and 21 of the '860 patent; (4) DMI's Philips mastering machine infringes claims 16 and 21 of the '860 patent; and (5) DMI's CDs, stampers, and master discs infringe claims 6 and 11 of the '490 patent. DiscoVision's infringement case is based on both literal infringement and infringement under the doctrine of equivalents.

DMI asserted the defenses of noninfringement and invalidity. More specifically, DMI proffered evidence that the '297 patent is: (1) invalid as anticipated under 35 U.S.C. § 102(b); (2) obvious under 35 U.S.C. § 103; and (3) invalid under 35 U.S.C. § 112 because of (a) lack of enablement, (b) insufficient written description, and (c) failure to disclose the best mode. With respect to the remaining patents, DMI presented evidence of invalidity under § 103.

The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a). The following constitutes the court's findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).

II. FINDINGS OF FACT

A. Introduction

1. DMI is a Delaware corporation that engaged in the manufacture and sale of CDs during the time relevant to the issues of the complaint.3 DMI operated CD manufacturing plants in Anaheim, California and Huntsville, Alabama. DMI's operations and CD manufacturing plants were sold to Cinram, Inc. on March 27, 1997. (D.I. 564, Ex. A at 1; D.I. 633)

2. DiscoVision is a California partnership with its principal place of business in Irvine, California. (D.I. 564, Ex. A at 1; D.I. 633) DiscoVision is the owner, by assignment, of the four patents at issue.

3. A CD is a type of optical disc. It stores encoded information or data that can be accessed by CD players which contain optical reading devices. During the relevant period, DMI manufactured and sold at least two types of CDs: (1) "CD-Audio," which contains music; and (2) "CD-ROM," which contains computer software and computer data. (D.I. 564, Ex. A at 1; D.I. 633 at 2) Industry standards for CDs are found in the "Rainbow Books" promulgated by Sony and Philips. (D.I. 606 at 1412-18; PX 77; PX 247 at 7; PX 984) The Rainbow Books include the "Red Book" (PX 72), which is the industry standard for CD-Audio, and the "Yellow Book" (PX 2123), which is the industry

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standard for CD-ROM. (D.I. 604 at 1410; PX 984 at 3) Compliance with these standards results in CDs which can be played on commercially available CD players. DMI's CDs are manufactured to comply with these industry standards. (D.I. 604 at 1409-18)

B. The Gregg Invention: Optical Discs and the '297 Patent

(1) The Development of Information Storage Technology

4. After World War II, there was a "strong felt need" for new "high-density" information storage technologies. (D.I. 607 at 2037-38) This need resulted in increased research activities during the 1950s through the 1970s. (D.I. 607 at 2038) One of the first major developments was the announcement in 1957 of a new magnetic video recording process. (D.I. 607 at 2038-39) This invention was widely recognized by those of ordinary skill in the art as the only efficient way of recording video. (D.I. 607 at 2039) During this same time period, however, scientists sought to invent a competitor to magnetic video recording. (D.I. 607 at 2040-47)

5. One of the technologies scientists explored was electrostatic recording. (D.I. 607 at 2041) In an electrostatic recording, information is represented by the presence or absence of electrical charges in a storage medium. (D.I. 607 at 2041) Electrostatic recording eventually failed because it did not have adequate storage density. (D.I. 607 at 2041)

6. Scientists also explored thermoplastic recording, which utilizes electrostatic techniques. (D.I. 607 at 2041) In a thermoplastic recording, plastic in the recording medium is turned into a fluid when it is heated to a high temperature. (D.I. 607 at 2042) The plastic is then deformed by the force of electrical charges and cooled to retain the deformities. (D.I. 607 at 2042) Information is represented by the presence or absence of these deformities in the record medium. (D.I. 607 at 2042-43) This technology was not successful because: (1) the process required a vacuum; (2) the deformities were irregular and could not be contained in an information track; and (3) the recording was difficult to replicate. (D.I. 607 at 2042-43)

7. A third type of recording technique involves burning holes in a recording medium. Information is represented by the absence or presence of a hole. (D.I. 607 at 2044) Many different attempts at perfecting the hole burning technique were tried during the 1960s. (D.I. 607 at 2044) The hole burning technique was never commercialized, however, because it was difficult to control the size, shape, and location of the holes. (D.I. 607 at 2044)

8. Photographic recordings were also explored during this period. (D.I. 607 at 2045) This type of recording utilizes two-dimensional features to represent information. (D.I. 607 at 2045) In seeking to develop high-density storage capabilities, scientists encountered problems in perfecting the replication of photographic recordings since information is represented by two-dimensional features. (D.I. 607 at 2045)

9. Capacitive recordings were explored. (D.I. 607 at 2045-46) Similar to photographic recordings, replication problems were encountered in capacitive recording technology since these recordings involve two-dimensional features. (D.I. 607 at 2046)

10. Finally, the optical disc emerged as a viable competitor to magnetic recordings. (D.I. 607 at 2047) Optical disc technology was a significant development because information can be stored at a density more than one hundred times greater than was possible through magnetic recording. (D.I. 607 at 2048)

11. Gregg's Initial Ideas. In the late 1950s, David Paul Gregg, the inventor of the '297 patent, started to develop ideas about an optical disc. (Defendant's Exhibit ("DX") 464, Gregg 12/9/97 at 22-23)4 At that time he called his idea a "videodisk" system. (DX 464, Gregg 12/9/97 at 23) He envisioned combining his knowledge of video recording, optical recording, and "phonograph disc art"

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to invent a "video, optical disc." (DX 464, Gregg 12/9/97 at 23) Gregg knew that his videodisk system would have to be integrated seamlessly into the entertainment industry if it was to be a consumer product. (DX 464, Gregg 12/9/97 at 29) Accordingly, Gregg's "videodisk" system included ideas about the process of making master videodisks, the replication of videodisks, and the playback system. (DX 464, Gregg 12/9/97 at 31)

12. In 1964, Gregg and a partner founded Gauss Electrophysics to develop further his ideas about a videodisk system. (DX 464, Gregg 2/4/97 at 516-19) After forming this company, Gregg began to look for additional financing for his ideas from large corporations. (DX 464, Gregg 2/5/97 at 648-49) As early as 1965, Gregg documented his ideas in proposal form as part of his efforts to...

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4 practice notes
  • In re Omeprazole Patent Litigation, No. M-21-81 (BSJ),
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 31, 2007
    ...the best mode, whether accidental or intentional, is a violation of the best mode requirement." Disco Vision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301, 347 94. Dr. Pilbrant testified during his deposition, in relevant part, as follows: Q: Why did you choose that particular [2.5 m2/g] par......
  • Rowe Intern. Corp. v. Ecast, Inc., No. 06 C 2703.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • August 25, 2008
    ...support his obviousness opinions—does not support application of the Rule 37(c)(1) sanction. In Discovision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301 (D.Del.1998), the court rejected the patentee's motion to strike a "surprise" invalidity argument, despite defendant's undisputed failure ......
  • Wesley Jessen Corp. v. Bausch & Lomb, Inc., No. CIV.A. 01-294-RRM.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • June 26, 2002
    ...of whether the accused product contains additional elements above and beyond those claimed. See DiscoVision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301, 334 (D.Del.1998) ("Infringement may not be avoided by simply adding features or components not required by the claims."). Both literal in......
  • Mycogen Plant Science, Inc. v. Monsanto Co., No. CIV.A.96-505-RRM.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • September 8, 1999
    ...(Fed.Cir.), cert. denied, 469 U.S. 831, 105 S.Ct. 119, 83 L.Ed.2d 62 (1984); see also Discovision Assoc. v. Disc Page 257 Mfg., Inc., 25 F.Supp.2d 301 334 (D.Del. 1998) ("Infringement may not be avoided simply by adding features or components not required by the claims."). The absence in th......
4 cases
  • In re Omeprazole Patent Litigation, No. M-21-81 (BSJ),
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 31, 2007
    ...the best mode, whether accidental or intentional, is a violation of the best mode requirement." Disco Vision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301, 347 94. Dr. Pilbrant testified during his deposition, in relevant part, as follows: Q: Why did you choose that particular [2.5 m2/g] par......
  • Rowe Intern. Corp. v. Ecast, Inc., No. 06 C 2703.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • August 25, 2008
    ...support his obviousness opinions—does not support application of the Rule 37(c)(1) sanction. In Discovision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301 (D.Del.1998), the court rejected the patentee's motion to strike a "surprise" invalidity argument, despite defendant's undisputed failure ......
  • Wesley Jessen Corp. v. Bausch & Lomb, Inc., No. CIV.A. 01-294-RRM.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • June 26, 2002
    ...of whether the accused product contains additional elements above and beyond those claimed. See DiscoVision Assocs. v. Disc Mfg., Inc., 25 F.Supp.2d 301, 334 (D.Del.1998) ("Infringement may not be avoided by simply adding features or components not required by the claims."). Both literal in......
  • Mycogen Plant Science, Inc. v. Monsanto Co., No. CIV.A.96-505-RRM.
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • September 8, 1999
    ...(Fed.Cir.), cert. denied, 469 U.S. 831, 105 S.Ct. 119, 83 L.Ed.2d 62 (1984); see also Discovision Assoc. v. Disc Page 257 Mfg., Inc., 25 F.Supp.2d 301 334 (D.Del. 1998) ("Infringement may not be avoided simply by adding features or components not required by the claims."). The absence in th......

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