SRI Intern. v. Matsushita Elec. Corp. of America

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Citation227 USPQ 577,775 F.2d 1107
Docket NumberNo. 84-1637,84-1637
Parties, 227 U.S.P.Q. 577 SRI INTERNATIONAL, Appellant, v. MATSUSHITA ELECTRIC CORPORATION OF AMERICA and Matsushita Electric Industrial Co., Ltd., Appellees. Appeal
Decision Date16 October 1985

Edward B. Gregg, Gregg, Caplan & Higgins, Menlo Park, Cal., argued for appellant.

Daniel Ebenstein, Amster, Rothstein & Engelberg, New York City, argued for appellees. With him on brief were Morton Amster and Anthony F. LoCicero, New York City.


MARKEY, Chief Judge.

SRI International (SRI) appeals from a final judgment of the United States District Court for the Northern District of California granting summary judgment of non-infringement to Matshushita Electric Corporation (MEI). 591 F.Supp. 464, 224 USPQ 70 (1984). We reverse.


Familiarity with the district court's opinion being assumed, only those factors necessary to an understanding of this court's decision will be discussed here.

The district court's opinion contains an excellent explication of the technology involved, reflecting a clear recognition of the undisputed fact that the filter and camera embodiment described in the specification of SRI's United States Patent No. 3,378,633 (the '633 patent) issued to SRI as assignee of the inventor Dr. Albert Macovski on April 16, 1968, operate somewhat differently from the MEI filter and camera accused of infringement.

The Claims

Each claim charged to have been infringed is drawn to a structure. Because of its central role as the broadest, claim 1 is set forth:

1. A spatial filter for affording a monochrome recording from which upon subsequent scanning, information for reproducing an image in color of the object photographed may be derived, said filter comprising a first grid of parallel spaced lines having the color of a subtractive primary, a second grid relatively angularly superimposed over all of the said first grid, said second grid having parallel spaced lines having the color of another subtractive primary, each grid having the same line density.

Claim 2 depends from claim 1, adding only "the relative angle between the first and second grids is 45?." Claim 7 and dependent claim 8 are drawn to a camera in combination with the filter of claim 1. Claim 9 and dependent claim 10 are drawn to "apparatus for generating the color representative electrical signals required for a color television receiver to reproduce a scene in color," and include the filter of claim 1.

Claim 3 was not charged to have been infringed. It is set forth because it affects the question of claim interpretation:

3. In a camera of the type wherein light from a scene being photographed is focused by a lens on black and white, monochromatic sensitive film, the improvement for affording a recording of the color information in the scene being photographed on said film in a manner so that said color information may be electronically derived therefrom comprising a filter adjacent said film, said filter having a first grid of vertical spaced lines which are colored cyan, and superimposed over all of said first grid a second grid having its lines at a 45? angle to the lines of the first grid, said second grid lines being yellow in color, both said grids having the same line density. [Emphasis added.]


The district court's Memorandum Opinion included helpful illustrations, that of SRI's filter being based on Figure 1 of the '633 patent drawings. Figure 1 shows an embodiment of the invention set forth in claim 1, in which one grid is superimposed over all of the other grid, the equi-width stripes of one are vertical and those of the other are angled to the vertical. In the operation of that embodiment, the horizontal distance travelled by the scanning beam in a single pass ("scan line") across and between angularly disposed stripes is greater than that across and between vertical stripes. Thus, the frequency range generated by interruptions in a single pass across the angular grid is lower than that across the vertical grid, and two basically discrete (red and blue) carrier frequency ranges are generated at that point. The frequencies are then decoded by low and band pass filters.

In the MEI filter, one grid is superimposed over all of the other grid and both grids have equi-width stripes, but the stripes of the two grids are at equal and opposite angles to the vertical. In operation, the horizontal distance travelled by the scanning beam in a single pass across and between stripes of both grids is the same, and the red and blue carrier frequency ranges thereby generated are the same at that point. However, the phase difference between successive, timed scanning passes produces a concentration of red and blue components at alternating, overlapping, or interleaved frequencies. To delay successive passes and decode the interleaved frequencies, MEI employs a 1-Hertz (1-H) delay comb line filter. 1

District Court Proceedings
(a) Preliminaries

On July 19, 1982, SRI filed a complaint and jury demand, alleging MEI's willful infringement of claims 1, 2, and 7-10 and seeking treble damages, costs, attorney fees, and an injunction. That same day, the district court scheduled a status conference for October 22, 1982. On September 29, 1982, MEI filed answer, alleging invalidity, unenforceability, and non-infringement, and a counterclaim for declaratory judgment of invalidity and non-infringement.

In April, 1983, the parties filed extensive briefs.

On October 19, 1983, the district court issued a comprehensive Second Order for Pretrial Preparation, setting April 30, 1984 for "Trial before the Jury".

The October 19, 1983 order required the filing of exhibits, witness lists, summaries of all proposed testimony, statements of experts' theories with conclusions and bases therefor, experts' curriculum vitae, and reports prepared for testimony. The order form also contained a requirement applicable "In non-jury cases", i.e., the filing of a written narrative statement of the proposed direct testimony of each witness.

The October 19, 1983 order also required the filing of objections to testimony or exhibits, with the ground for each objection. 2 Pursuant to another order of the same date, the parties were required to prepare statements of fact which each party contends should be submitted to a jury for determination.

In response, on January 20, 1984, counsel for SRI wrote the court, listing among the issues for the jury the question of whether MEI's filter is "so far changed in principle" that SRI's and MEI's filters are different inventions (MEI's position) or different versions of the same invention (SRI's position), quoting Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568, 18 S.Ct. 707, 722, 42 L.Ed. 1136 (1898).

On February 2, 1984, counsel for MEI wrote the court, saying that: no issue required jury determination; the issue is whether the claims can cover MEI's filter; that issue is one of claim language scope and a matter of law; and whether MEI's camera functions in a basically different manner is a legal question, citing Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 781 (Fed.Cir.1983).

(b) February 10, 1984 Pretrial Conference

A February 10, 1984 pretrial conference to narrow the issues began with a late attempt by MEI's counsel to bar the inventor (Dr. Macovski) as an expert witness because of his financial interest in the outcome of the litigation. MEI's counsel said they had originally considered objecting on the ground that "[t]he subject matters [sic] as to which Dr. Macovski is going to testify is so far outside of anyone's real world experience that it's almost impossible to evaluate without appropriate technical The court then turned to the purpose of the conference, i.e., determining "whether there are any issues here involving conflicts of facts." Having read the papers then on file, the court concluded:

                background and credentials," and was therefore not appropriate "to go to a jury." 3   That objection was not made.  The court overruled the objection with respect to financial interest on the ground that SRI would be prejudiced if denied its witness on the eve of trial

It seems to me, under the particular recent decisions under the Federal Circuit, it's a pure question of deriving ultimate facts from undisputed evidence which is properly done by the judge. Mr. Gregg, I have read your papers carefully, but I don't see any factual issues that would be proper for a jury.

SRI's counsel then said: "That if there are no evidentiary facts in dispute, this is a case that is ripe for summary judgment. And I would suggest under those circumstances and with your Honor's consent, that the defendants bring a motion for summary judgment." When the judge asked whether SRI wished also to bring a summary judgment motion, SRI's counsel said it did not because counsel believed there were factual disputes present.

Asked to identify the disputes, SRI's counsel responded:

The dispute with respect to infringement largely evolves around this: There is no question but what the words of the claim, as we say, "read on," cover, define, not only the structure in the 633 patent, which is in suit here, but the structure which the defendants used.

And in accordance with the Supreme Court's decision in Graver vs. Linde, you look to the words of the claim, and do you determine whether or not they cover what the accused device is; and if it does, infringement is made out, and that is the end of it.

But there is another side of the coin, and the other side of the coin is this: That if the invention, if whatever the defendant has, if his device is so utterly different in principle from the device which is described in the patent, then regardless of the wording of the claims, the claims have not validly covered it....

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