General Elec. Co. v. Nintendo Co., Ltd.

• Decision Date: 02 June 1999
• Docket Number: No. 98-1089,98-1089
• Citation: 50 USPQ2d 1910,179 F.3d 1350
• Parties: GENERAL ELECTRIC COMPANY, Plaintiff-Appellant, v. NINTENDO COMPANY, LTD. and Nintendo of America, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

179 F.3d 1350

GENERAL ELECTRIC COMPANY, Plaintiff-Appellant, v. NINTENDO COMPANY, LTD. and Nintendo of America, Inc. Defendants-Appellees.

No. 98-1089.

United States Court of Appeals Federal Circuit.

Decided June 2, 1999.

Appealed from: U.S. District Court for the District of New Jersey.

Matthew D. Powers, Weil, Gotshal & Manges, LLP, of Menlo Park, California, argued for plaintiff-appellant. With him on the brief were Edward R. Reines and Steven S. Cherensky.

Thomas G. Gallatin, Jr., Latham & Watkins, of New York, New York, argued for defendants-appellees. With him on the brief were John J. Kirby, Jr., Robert J. Gunther, Jr., and James S. Blank. Of counsel on the brief were Charles P. Baker, Robert H. Fischer, and Michael P. Sandonato, Fitzpatrick, Cella, Harper & Scinto, of New York, New York.

Before NEWMAN, MICHEL, and PLAGER, Circuit Judges.

MICHEL, Circuit Judge.

Plaintiff-Appellant General Electric Company ("GE"), the patent owner, appeals from the United States District Court for the District of New Jersey's grants of summary judgment to Defendants-Appellees, Nintendo Company, Ltd. and Nintendo of America, Inc. (collectively "Nintendo"), the accused infringers, terminating GE's infringement action. See General Elec. Co. v. Nintendo Co., 983 F.Supp. 512 (D.N.J.1997). GE is the assignee of three patents: United States Patent No. 4,097,899 ("the '899 patent"), United States Patent No. 4,169,659 ("the '659 patent"), and United States Patent No. 4,279,125 ("the '125 patent"). All three of these patents are directed to television control circuitry. GE brought the instant action before the district court, claiming infringement of all three patents by three systems manufactured and sold by Nintendo. Nintendo counterclaimed that the '899 patent was invalid as anticipated, or at least rendered obvious, by a previously published Japanese patent application. The district court granted summary judgment for Nintendo of no infringement of any of the three GE patents and of invalidity for anticipation of the '899 patent. The appeal was submitted for our decision following oral argument on October 8, 1998. We affirm the grant of summary judgment of no infringement, literal or equivalent, of any of GE's three patents by any of Nintendo's three accused systems. We reverse the judgment of invalidity for anticipation as legally incorrect.

BACKGROUND

GE filed this patent infringement action in the district court on March 17, 1995 alleging infringement of the '899 patent, the '659 patent and the '125 patent by Nintendo's video game systems (specifically the Nintendo Entertainment System ("NES"), the Super Nintendo Entertainment System ("SNES"), and the Gameboy). The '899, '659 and '125 patents pertain generally to electronic control circuitry used in connection with television systems. The '899 patent describes a switch to allow users of a television to switch between a signal from a television antenna, and a signal from a video record player, a video cassette recorder ("VCR"), or the like. The '659 patent is directed to a synchronization signal generator for use in video source equipment such as television cameras and video record players. The '125 patent is directed to devices for retrieving stored picture information from the memory of a computer and displaying that information on a standard television screen or other display device, e.g., a monitor. The NES and SNES systems are video game systems that display their games on television monitors. The Gameboy is a hand-held video game system with a built-in screen display.

Nintendo filed summary judgment motions asserting non-infringement by each of its products of the three patents-in-suit and further asserting that Claims 12 through 14 of the '899 patent, all the asserted claims, were invalid. The district court examined the claim language, the written description, the prosecution history, and extensive written submissions, including depositions and affidavits in arriving at its decision. No oral evidence was submitted and no hearing occurred. In a 153-page opinion issued on October 6, 1997, the trial court granted Nintendo each of the summary judgments it sought. See General Elec. Co. v. Nintendo Co., 983 F.Supp. 512 (D.N.J.1997). The court also granted summary judgment of invalidity for anticipation of the '899 patent, but did not rule on a related counterclaim for a declaratory judgment of invalidity for obviousness. For a detailed account of the facts, the reader is referred to the district court opinion. Only those facts material to our decision are discussed in this opinion. GE timely appealed from all aspects of that judgment in the instant case. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

We review a district court's grant of summary judgment de novo. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315, 47 USPQ2d 1272, 1275 (Fed.Cir.1998). Summary judgment is properly granted when "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307, 46 USPQ2d 1752, 1755 (Fed.Cir.1998).

Infringement is a factual inquiry. See Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1582, 34 USPQ2d 1120, 1126 (Fed.Cir.1995) ("[I]nfringement ... is a question of fact."). Invalidity for anticipation, likewise, is a factual inquiry. See Hoover Group, Inc. v. Custom Metal Craft, Inc., 66 F.3d 299, 302, 36 USPQ2d 1101, 1103 (Fed.Cir.1995) ("Anticipation is a question of fact."). Despite being issues of fact, infringement and anticipation may still be decided on summary judgment. To review the several summary judgments of no infringement and of invalidity for anticipation, however, we need to determine de novo whether the evidence in the record raises any genuine disputes about material facts. An evidentiary dispute is genuine if a jury could decide the issue either way, and its verdict would survive a motion for judgment as a matter of law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1985) ("[S]ummary judgment will not lie if the dispute about a material fact is 'genuine,' that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.").

We discuss the issues concerning each patent in turn.

I. United States Patent No. 4,097,899

A. Infringement Background

The '899 patent is directed towards a switch which allows the user of a television monitor to switch between video information received from an antenna and other sources of video information, for example, a video record player, when the user turns on or off the power to the alternative source. GE alleges that one or another of Nintendo's video game systems infringes each of Claims 12, 13 and 14 of the '899 patent. Claims 13 and 14 are dependent on Claim 12. Claim 12 provides:

Video record player apparatus comprising:

a player RF signal input terminal;

a player RF signal output terminal;

a player power supply developing supply potentials when selectively enabled;

means, rendered operative in response to supply potential development by said power supply, for forming a player output signal inclusive of picture carrier frequency oscillations and sound carrier frequency oscillations;

means, responsive to supply potential development by said player power supply, for establishing a first signal path between said output signal forming means and said player RF signal output terminal; first signal path being disrupted in the absence of supply potential development by said player power supply; and

means, responsive to the absence of supply potential development by said player power supply, for establishing a second signal path between said player RF signal input terminal and said player RF signal output terminal; said second signal path being disrupted in the presence of supply potential development by said player power supply.

'899 pat., col. 9-10, ll. 62-17.

Claim 12 is directed to a switch that directs RF signals (signals in the radio frequency range) from the video record player to the television receiver, while disrupting the flow of broadcast signals from the antenna to the television receiver, when the video record player is on. The patent claim recites a system with two signal paths, one between an "RF signal output terminal" (television) and an "output signal forming means" (video record player), and one between an "RF signal output terminal" (television) and a "signal input terminal" (television antenna). Each of these signal paths has a switch on it. If the switch is closed, then the signal can flow freely along the signal path. If the switch is open, then the signal path is disrupted and there is no path for the signal to travel. When the system operates as recited in the claim, one switch is open and one switch is closed. If the video record player is turned off, the switch between the video record player and the television is open, and the switch between the antenna and the television is closed, thus disrupting the signal between the video record player and the television. If the video record player is turned on, then the switches flip; the signal path between the antenna and the television is disrupted; and the switch between the television and the video record player is closed, allowing the signal to flow from the player to the television. This allows the television to display whatever the viewer wants to see--the signal from the antenna when the video record player is off, or the signal from the video record player if the video record player is on.

The dispute relates to the switch between...