Ippv Enterprises v. Echostar Communications Corp.
| Decision Date | 28 July 2000 |
| Docket Number | No. Civ.A. 99-577-RRM.,Civ.A. 99-577-RRM. |
| Citation | 106 F.Supp.2d 595 |
| Parties | IPPV ENTERPRISES, LLC, and MAAST, Inc., Plaintiffs, v. ECHOSTAR COMMUNICATIONS CORP.; Nagravision, S.A.; and Nagrastar, L.L.C., Defendants, and Irdeto BV, Non-Party. |
| Court | U.S. District Court — District of Delaware |
James D. Heisman, Connolly, Bove, Lodge & Hutz LLP, Wilmington, DE, Frederick G. Michaud, Jr., David M. Schlitz, S. Lloyd Smith, and Mark R. Kresloff, Burns, Doane, Swecker & Mathis, L.L.P., Alexandria, VA, for plaintiffs.
Donald F. Parsons, Jr., Rodger D. Smith, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, Philip L. Cohan, Piper Marbury Rudnick & Wolfe LLP, Washington, DC, for defendants.
Andrew W. Cohen, Squire, Sanders & Dempsey L.L.P., Washington, DC, for Non-Party Irdeto BV.
This is a patent case. Plaintiff IPPV Enterprises, LLC is a Nevada limited liability corporation with its principal place of business in Reno, Nevada. IPPV owns U.S.Patent Nos. 4,163,254 (the '254 patent); 4,225,884 (the '884 patent); 4,528,589 (the '589 patent); and 4,484,217 (the '217 patent). Plaintiff MAAST, Inc. is a Delaware corporation with its principal place of business in Sparks, Nevada. MAAST owns U.S.Patent No. 4,600,942 (the '942 patent). Defendant Echostar Communications Corp. is a Nevada corporation with its principal place of business in Littleton, Colorado. Defendant Nagravision, S.A. is a Swiss corporation with its principal place of business in Cheseaux, Switzerland. Defendant NagraStar is a Colorado corporation with its principal place of business in Englewood, Colorado.
On August 26, 1999, IPPV and MAAST (collectively, "IPPV") filed the complaint in this case, alleging that defendants (collectively, "Echostar") have infringed, or have induced infringement of, one or more claims of the '254 patent, the '884 patent, the '589 patent, the '217 patent, and the '942 patent.
On December 28, 1999, Echostar answered the complaint, denying infringement, and asserting the affirmative defenses that plaintiffs have failed to state a claim upon which relief can be granted; that the patents in suit are invalid for failing to satisfy 35 U.S.C. §§ 102, 103, and 112; that plaintiffs are equitably estopped from asserting their claims; that the patents in suit are invalid because the Patent and Trademark Office ("PTO") failed to duly investigate relevant prior art; and that plaintiffs failed to mark their patented articles. Echostar seeks a judgment declaring the patents invalid and unenforceable and an award of costs and fees.
On March 16, 2000, the court held a teleconference during which IPPV sought an order compelling production of a third-party document held by Echostar pursuant to a confidentiality agreement. The document purportedly discloses a secret encryption algorithm owned by Irdeto BV and licensed to Echostar. On April 4, 2000, Irdeto moved for a protective order to prevent production of the document disclosing the encryption algorithm. On May 4, 2000, the court held a teleconference in which the parties acknowledged that the relevance of the Irdeto document depends on the scope of claim 21 of the '942 patent, and in particular, whether the '942 patent may be construed to cover encryption of digital television signals.
On June 13, 2000, the court held a trial in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), to construe claim 21 of the '942 patent.
This is the court's construction of claim 21 of the '942 patent.
The court draws the following facts from the file history of the '942 patent and the affidavits submitted by the parties.
The technology at issue in this case relates to pay-per-view television broadcasting. Broadcasters of such programming employ various methods to encrypt and decrypt their television signals so that only paying subscribers may view the transmitted programs. By 1984, the year of the claimed invention, broadcasters determined that they could encrypt the signals by modulating the video programming signal by a sine wave signal such that the different phases of the programming signal could not be recognized by a normal television receiver. Broadcasters found, however, that this encryption system could be defeated by means that were readily available to average consumers.
By 1984, broadcasters also had developed technology for inverting lines or fields of the video signal on some basis that could be reproduced at a subscriber's home. While this technique satisfactorily prevented unauthorized viewing of the signals, viewers found that the reconstituted signal was frequently distorted.
A third method used by broadcasters was to encode the video signal by delaying parts of the signal relative to other parts in a determinable manner such that the signal could be reconstituted by a paying subscriber. This method was disclosed in U.S.Patent No. 4,405,942, issued to Robert Block on September 20, 1983. Block disclosed that an analog television signal can be converted into digital samples, which are then scrambled, and subsequently reconverted into analog form for broadcasting. Broadcasters found, however, that the hardware necessary to carry out the analog-to-digital conversion of the signal was relatively expensive. Broadcasters found, moreover, that the Block method could only encrypt the video component of a programming signal, and that other components of the signal, such as the synchronization portion, could not be encrypted.
Robert W. Field, Clarence D. Perr, and Ronald R. Gerlach were employed by Telease, Inc. in 1984. The challenge they faced was to develop a secure, cost-effective method of encryption that yields an undistorted picture. The inventors sought to improve upon the Block method by developing technology to scramble the video signal while it still is in analog format, to forego the expenses associated with digitizing the signal for encryption and reconverting it to analog form for transmission. The inventors also sought to ensure a high degree of security for the encrypted television signal to prevent unauthorized viewing.
On November 27, 1984, the inventors submitted a patent application to the PTO. In the application, the inventors explained that television signals are comprised of several components, including a "blanking interval," which stores synchronization information, and a "video interval," which stores the picture. The diagram below is a simplified version of Figure 3A of the patent, which provides a schematic of the preferred embodiment of the claimed encryption mechanism. An input signal, which comprises a blanking interval and a video interval, is sent to a "code insertion unit," in which several codes are embedded in the signal's blanking interval. The composite video signal then passes to a "cyclic encoder," wherein the video signal is scrambled by means of a pseudo-random binary sequence generated by the "encoder control unit." The encoded output signal is then transmitted. NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The patent application discloses a similar mechanism for use by a subscriber, in which the encoded signal is received, the codes are read, and a pseudo-random binary sequence is generated based on the codes received. The pseudo-random binary sequence decrypts the video signal.
In the section of the application entitled "Background of the Invention," the inventors recited a number of objectives of the disclosed technology, including: (1) to provide a novel method for encoding and decoding the television signal "while the signal is still in an analog format;" (2) "to provide a novel system for controlling the encoding and decoding of a television signal with a pseudo-random control signal that is not transmitted with the television signal;" and (3) "to provide a highly secure system for controlling the encoding and decoding of a television signal with a code that is generated independently at both the transmitting and receiving ends of a television system in accordance with a control word that is transmitted in an encrypted form with the television signal."
The application then recites a detailed description of the invention, in which it provides a series of diagrams including: illustrations of the components of color television signals "of the type employed in the United States;" illustrations of scrambled and unscrambled analog signals; schematics of the claimed encoding mechanism; and circuit diagrams of the encoder control units. The detailed description of the invention exclusively discusses the encryption of analog television signals.
The original patent application contained 35 claims, with independent claim 1 and dependent claims 10 and 11 reciting the use of "analog delay elements."
On November 15, 1983, the examiner rejected claim 13 under 35 U.S.C. § 102 in light of the Block patent and in light of U.S.Patent No. 4,070,693 issued to Harold Shutterly et al. on January 24, 1978. The examiner stated that "Block et al teaches the delay of the video signal in analog form," and that "[c]laim 13 does not require analog delay so that the teachings of Shutterly are also applicable as they relate to digital delays."
On March 15, 1984, the applicant filed a proposed amendment with the PTO. The applicant proposed deleting the word "analog" from claims 1, 11, and 12. The applicant distinguished the claimed invention from the Block patent as follows:
It is respectfully submitted, however, that the distinctions between the rejected claims and the Block patent do not lie merely in the differences between analog and digital types of delays, as might be implied from the rejection. Rather, the rejected claims are directed to a different type of encoding technique than that which is disclosed in the Block patent.
The applicant...
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Ippv Enterprises v. Echostar Communications
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