Superguide Corp. v. Directv Enterprises, Inc.
| Decision Date | 02 July 2002 |
| Docket Number | No. CIV. 1:00CV144.,CIV. 1:00CV144. |
| Citation | 211 F.Supp.2d 725 |
| Court | U.S. District Court — Western District of North Carolina |
| Parties | SUPERGUIDE CORPORATION, a North Carolina Corporation, Plaintiff, v. DIRECTV ENTERPRISES, INC., a Delaware Corporation; DirecTV, Inc., a California Corporation; DirecTV Operations, Inc., a California Corporation; Hughes Electronics Corporation, a Delaware Corporation; Thomson Consumer Electronics, Inc., a Delaware Corporation; EchoStar Communications Corporation, a Nevada Corporation; EchoStar Satellite Corporation; a Colorado Corporation; and EchoStar Technologies Corporation, a Texas Corporation, Defendants/Third Party Plaintiffs, v. Gemstar Development Corporation, Third-Party Defendant. |
A. Ward McKeithen, Everett J. Bowman, Robinson, Bradshaw & Hinson, P.A., Charlotte, NC, John J. Barnhardt, III, Richard M. McDermott, Alston & Bird, LLP, Charlotte, NC, for SuperGuide Corp.
Michael E. Ray, Charles A. Burke, Womble, Carlyle, Sandridge & Rice, Winston-Salem, NC, Darryl E. Towell, Jones Day Reavis & Pogue, Irvine, CA, Michael J. Newton, Jones Day Reavis & Pogue, Dallas, TX, Victor G. Savikas, Michael J. Newton, Kevin G. McBride, Jones Day Reavis, & Pogue, Los Angeles, CA, for DirecTV Enterprises, Inc., DirecTV, Inc., DirecTV Operations, Inc., Hughes Electronics Corp.
Wyatt S. Stevens, Roberts & Stevens, P.A., Asheville, NC, Harold J. McElhinny, Paul J. Riley, Morrison & Foerster LLP, San Francisco, CA, John P. Corrado, Charles C. Carson, Morrison & Foerster LLP, McLean, VA, for Thomson Consumer Electronics, Inc.
Larry McDevitt, Van Winkle, Buck, Wall, Starnes & Davis, P.A., Asheville, NC, Dixie T. Wells, Smith Moore LLP Greensboro, NC, J. Donald Cowan, Jr., Smith Moore LLP, Raleigh, NC, Lawrence K. Nodine, Nagendra Setty, Mitchell G. Weatherly, William F. Long, Needle & Rosenberg, P.C., Atlanta, GA, for EchoStar Communications, Corp., EchoStar Satellite Corp., EchoStar Technologies Corp.
THIS MATTER is before the Court on the Defendants' motions for summary judgment and the motion of Third-Party Defendant Gemstar Development Corporation (Gemstar) for summary judgment against certain Defendants. Although a request for a hearing on these motions has been made, the undersigned finds no hearing is necessary.1
In June 2000, SuperGuide Corporation (SuperGuide) brought this action seeking declaratory and injunctive relief against the Defendants for infringement of their patents U.S. Patent No. 4,751,578 to Reiter, et al. (Reiter '578), U.S. Patent No. 5,038,211 to Hallenbeck (Hallenbeck '211) and U.S. Patent No. 5,293,357 to Hallenbeck (Hallenbeck '357), for interactive television programming guides. Each Defendant answered and asserted counterclaims for a declaration of non-infringement and invalidity.
In April 2001, Defendants DirecTV Enterprises, Inc., DirecTV, Inc., DirecTV Operations, Inc. (DirecTV) and Hughes Electronics Corporation (Hughes) obtained permission to implead Gemstar, the licensee of SuperGuide's patents. In the third-party complaint, DirecTV and Hughes also sought a declaration of non-infringement and invalidity as well as a declaration of ownership of the patents. Gemstar asserted crossclaims against SuperGuide for breach of contract and declaratory relief. SuperGuide counterclaimed against Gemstar for a declaration of the field of use reserved in the license agreement between the two.
On October 25, 2001, the undersigned construed certain claim language used in Reiter '578, Hallenbeck '211 and Hallenbeck '357. SuperGuide Corp. v. DirecTV Enter., Inc., 169 F.Supp.2d 492 (W.D.N.C. 2001) (the Markman decision)2. Based on the claim construction rendered therein, the Defendants have moved for summary judgment and Third-Party Defendant Gemstar has cross-moved for summary judgment.
SuperGuide alleges the Defendants have infringed its patents both literally and pursuant to the doctrine of equivalents.
A determination of infringement requires a two-step analysis. First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process. In order for a court to find infringement, the plaintiff must show the presence of every `[limitation]' or its substantial equivalent in the accused device. Claim construction is an issue of law .... The determination of infringement whether literal or under the doctrine of equivalents, is a question of fact.
Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1364 (Fed.Cir.2001) (internal citations and quotations omitted). The issue, then, is whether a determination of infringement can be resolved by this Court without a jury.
[A grant of] summary judgment [is appropriate] when the record shows [there are] no genuine issues of material fact and entitlement to judgment as a matter of law [is proper] for the moving party. [In reviewing the record, the] court draws reasonable inferences from the evidence in favor of the non-movant, [SuperGuide]. Moreover an asserted issue of material fact is not "genuine" in the sense of Fed.R.Civ.P. Rule 56 if a reasonable jury could only resolve the question for the moving party. In assessing issues of material fact to determine whether a "reasonable jury" could disagree on them, [the] court identifies facts posing a potential dispute and then examines those facts in the context of the legal criteria by which a fact finder would resolve the dispute.... Infringement under the doctrine of equivalents requires an intensely factual inquiry. And, [the] court is well aware of the difficulty of granting summary judgment motions on issues requiring delicate balancing of many factual components. Ultimately [the] court may [grant] summary judgment of non-infringement under the doctrine of equivalents, where that doctrine is legally applicable, only if it discerns no genuine issues of material fact and that no reasonable jury could find equivalence.... In this review, [the] court must examine the record for genuine issues of material fact and must determine that no reasonable jury could reach a different conclusion.
Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed.Cir.2000) (internal citations omitted).
In 1988, the Reiter patent was issued for an interactive programming guide (IPG) which allowed a television viewer to select specific programs for viewing. The invention involved a digital to analog conversion of the signal containing television programming information and the mixing of that signal with another analog signal containing video information. The distinction between analog and digital signals was addressed in the Markman decision: "analog" means an electrical signal which is continuous and analogous to its source; whereas "digital," while also referring to an electrical signal, is not continuous because the data is converted into a series of binary numbers which represent a sampling of the data at regular, closely spaced intervals. SuperGuide, 169 F.Supp.2d at 497-98.
Television signals carrying the information for television programs are typically transmitted or broadcast over the airwaves by conventional terrestrial antenna or via satellite or transmitted by means of a cable network. In each method, the television signal, which may be analog or digital, must be modulated onto, i.e., carried on, an (sic) RF [radio frequency] carrier wave. This is due to the fact that unmodulated television signals cannot be broadcast any appreciable distance.
. . . . .
In broadcast systems using transmission from radio towers, the frequencies of the carrier waves correspond to the frequencies of the various television stations or channels. When transmission is received via antenna by a television set, a "tuner" is used to isolate the carrier wave carrying the desired television signal, i.e., to tune to the desired channel. The television signal is then demodulated, i.e., separated, from the carrier wave to obtain only the television signal (referred to as the "baseband video" or "television signal") and the associated audio, which are then used to present the television program. In the case of terrestrial broadcast systems, until the deployment of digital television (DTV) over the past few years, the television signals were all analog signals.
Cable and satellite systems follow a similar approach, i.e., modulating the television signal onto a carrier wave and broadcasting the signal, along with other similar signals, to the homeowner via cable network or satellite transponder. Originally, all television signals were analog signals. In the mid-1990's, various system providers began transmitting digital television signals. To be transmitted, such digital television signals are still modulated onto analog RF carrier waves.
In many cable and all satellite systems, the modulated television signals cannot be received directly by a typical television set and used to display a television program. Rather, such systems typically include a "set top box" to convert the signal to a format that can be displayed on the television.
. . . . .
[I]n 1985 ... television signals modulated onto carrier waves included those that could be displayed directly by a conventional television set (e.g., without the need for an intervening cable or satellite set top box) as well as those that required conversion to another form before being displayed by the television set. In 1985, conventional television sets included sets that were "cable ready" (i.e., which could present non-scrambled television programs broadcast via cable without the need of a cable set top box) and those that were not. Examples of conventional signals that required some sort of conversion before they could be displayed included cable and satellite transmission...
To continue reading
Request your trial
-
Superguide Corp. v. Directv Enterprises, Inc.
...Nos. 4,751,578 ("the '578 patent"), 5,038,211 ("the '211 patent") and 5,293,357 ("the '357 patent"). SuperGuide Corp. v. DirecTV Enters., Inc., 211 F.Supp.2d 725 (W.D.N.C.2002). Because the district court erred in construing certain of the claims upon which its non-infringement judgment was......