RCA Corp. v. Applied Digital Data Systems, Inc.

• Decision Date: 20 March 1984
• Docket Number: Nos. 83-782,83-827,s. 83-782
• Citation: 730 F.2d 1440,221 USPQ 385
• Parties: RCA CORP., Appellant, v. APPLIED DIGITAL DATA SYSTEMS, INC., Hazeltine Corp., and Lear Siegler, Inc., Appellees. LEAR SIEGLER, INC., Appellee/Cross-Appellant, v. RCA CORP., Appellant/Cross-Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1440

730 F.2d 1440

221 U.S.P.Q. 385

RCA CORP., Appellant, v. APPLIED DIGITAL DATA SYSTEMS, INC., Hazeltine Corp., and Lear Siegler, Inc., Appellees.

LEAR SIEGLER, INC., Appellee/Cross-Appellant, v. RCA CORP., Appellant/Cross-Appellee.

Appeal Nos. 83-782, 83-827.

United States Court of Appeals, Federal Circuit.

March 20, 1984.

William J. Gilbreth (argued), John Farley, Robert C. Morgan, Thomas L. Giannetti, Norman H. Beamer, Richard A. Inz, Douglas J. Gilbert, Fish & Neave, New York City, A. Russinoff, Princeton, N.J., for RCA Corp.

Charles W. Bradley (argued), Steven D. Glazer, Davis, Hoxie, Faithfull & Hapgood, New York City, J. T. Cavender, Dayton Ohio, for Applied Digital Data Systems, Inc.

Dana M. Raymond (argued), James J. Maune, Brumbaugh, Graves, Donohue & Raymond, New York City, for Hazeltine Corp.

Edwin L. Hartz (argued), Leo J. Young, Christie, Parker & Hale, Pasadena, Cal., Steven D. Natcher, Santa Monica, Cal., for Lear Siegler, Inc.

Before MARKEY, Chief Judge, and KASHIWA, and NIES, Circuit Judges.

NIES, Circuit Judge.

Appeal No. 83-782 is from the final judgment of the United States District Court for the District of Delaware (Stapleton, J.) holding U.S. Patent No. 3,345,458 to Cole et al. (the "Cole" patent) invalid as anticipated under 35 U.S.C. Sec. 102. ¹

Appellant RCA Corp., the owner of the subject patent, sued its former licensees, Hazeltine Corp. and Applied Digital Data Systems, Inc., for patent infringement. Lear Siegler, Inc., filed a declaratory judgment action in California to have the Cole patent declared invalid. The California suit was consolidated with proceedings before the Delaware court. These parties are collectively identified as HLA in this opinion.

The principal issue in Appeal No. 83-782 is whether the district court correctly found that claims 1, 2, and 3 of RCA's patent, covering a digital video character generator, are anticipated by the disclosure in the "Dirks" patents. We reverse the holding of invalidity in view of Dirks alone.

HLA asserts that the district court erred in failing to hold the Cole claims invalid for obviousness under 35 U.S.C. Sec. 103 in view of a number of prior art references. We affirm the district court's holding that these references would not have rendered the subject invention obvious. The case is remanded for consideration, if appropriate, of the counts which were not tried.

Appeal No. 83-827, in which Lear Siegler seeks reversal of the part of the judgment denying it a refund of royalties, is dismissed as moot.

Our jurisdiction over these appeals is provided by 28 U.S.C. Sec. 1295(a)(1).

I

The Cole patent discloses a system for decoding digital symbol codes representing a message and converting them into video control signals for display of the message on a television screen.

A picture is ordinarily formed on a television set by an electron beam which illuminates various points on the screen or cathode ray tube (CRT) of the television as it scans across the screen. The beam scans one horizontal line at a time, starting with the line at the top of the screen and moving sequentially down the screen. This pattern of scan is referred to as a television raster scan. By means of a digital video signal to appropriately control the points at which the beam illuminates the screen during its scan, the beam can be used to form a message or image. Since the beam traverses the entire screen in a fraction of a second (the "refresh" rate), the movement of the beam is not noticeable.

The district court opinion sets out in detail a description of the Cole patent specification and the pertinent prior art devices and should be consulted for a thorough discourse on the technology involved.

The Cole device is designed to operate with a standard television monitor. In Cole, each character is formed slice by slice, in a character space on the screen consisting of a matrix of dots. Since a number of characters are represented across the screen, the beam traces the top slice of each of the characters in a row of character spaces as it traverses the initial scan line, then proceeds to trace the second slice of each of the characters in the next scan line, and so on.

As the beam tracing the television raster moves across the screen in a scan line, the binary codes for each of the characters to be written in a row across the screen are sequentially provided to a "digital-to-video generator." Vertical and horizontal synch pulses from a television synch generator are used to drive the television monitor and to provide the digital-to-video generator with information identifying the scan line (vertical) position of the beam and the instantaneous dot (horizontal) position of the beam on that line. Based on this information, the digital-to-video generator decodes the binary character codes into a character pattern of 1's and 0's which, when applied to the television monitor, are transformed to a display of "on" and "off" dots, respectively. This direct translation of character codes into television video display signals, without any intermediate storage, is commonly referred to as "real time" or "on the fly" operation.

Claims 1 through 3 of the Cole patent, the claims in suit, are reproduced below:

1. A display system for generating character patterns for display on a display device that exhibits a television raster-scan 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 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 , wherein said generating means includes 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 selecting which of said first and second levels, respectively, exists during each respective one of said successive elemental time intervals in accordance with the data signals forming said message.

The emphasized portions are the key to our decision.

II

As an initial matter, we note that it is incumbent on a district court to indicate on whom the burden of persuasion was placed and what quantum of proof was required to establish disputed facts. An error in either respect may require reversal. In this case, the answers to these questions are difficult to discern. Clearly, however, an error of law was made in one important aspect of this matter. The statutory presumption of validity imposes the burden of persuasion on one who attacks the validity of a patent. 35 U.S.C. Sec. 282. In this case the district court applied the view of some circuits that, where art more relevant than that considered by the examiner is made of record, the presumption of validity is destroyed. This court has squarely rejected that view. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1566, 220 USPQ 97, 100 (Fed.Cir.1983); SSIH Equipment S.A. v. U.S. Int'l Trade Com'n, 718 F.2d 365, 375, 218 USPQ 678, 687 (Fed.Cir.1983).

Attention is directed to the recent opinion of Judge Rich in American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350 at 1358-60 (Fed.Cir.1984), for a comprehensive discussion of the statutory presumption and its effect. In sum, the position of this court is that the burden of persuasion on invalidity must, under the statute, remain at all times on the party asserting invalidity, although that burden may be carried more easily by evidence consisting of more pertinent prior art than that considered by the examiner. Id. Further, the facts establishing anticipation and/or obviousness must be proven by clear and convincing evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 at 1517 (Fed.Cir.1984).

III

Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.Cir.1983). Furthermore, with an element expressed in terms of a means plus function, "absent structure [in a prior art reference] which is capable of performing the functional limitation of the 'means,' [the prior art reference] does not meet the claim." In re Mott, 557 F.2d 266, 269, 194 USPQ 305, 307 (CCPA 1977).

The district court found that the Cole claims in suit read on a system disclosed in German, French, and British patents issued to Dirks between 1948 and 1957, none of which were considered by the examiner during the prosecution of the Cole patent application. The...