Technology Licensing Corp. v. Videotek, Inc.

Decision Date10 October 2008
Docket NumberNo. 2007-1441.,No. 2007-1463.,2007-1441.,2007-1463.
Citation545 F.3d 1316
PartiesTECHNOLOGY LICENSING CORPORATION, Plaintiff-Appellant, v. VIDEOTEK, INC., Defendant, and Gennum Corporation, Defendant-Cross Appellant.
CourtU.S. Court of Appeals — Federal Circuit

Timothy J. Vezeau, Katten Muchin Rosenman LLP, of Chicago, IL, argued for plaintiff-appellant. With him on the brief were Michael A. Dorfman, Rachel M. Vorbeck, and James A. Gromada, of Washington, DC.

J. Donald McCarthy, Duane Morris LLP, of Los Angeles, CA, argued for defendant-cross appellant. With him on the brief were Todd R. Miller, Jones Day, of Los Angeles, CA, and Gregory A. Castanias, of Washington, DC.

Before NEWMAN, PLAGER, and SCHALL, Circuit Judges.

PLAGER, Circuit Judge.

This is a patent case. It is not unusual for a patent case on appeal to turn more on a question of law or legal procedure than on the complexities of the particular technology that underlies the dispute. This is not such a case. This case has both legal issues and technical issues in roughly equal measure. There is, among other issues, a complex, though ultimately not difficult, question of allocation of the burdens of proof between the patentee and the alleged infringer when entitlement to an earlier filing date is at issue. And there is, among other issues, a complex, and rather difficult, question of whether the written description of the earlier application supports the later-claimed technology. As the reader will see, in the course of deciding the case the court had to parse the terms of the four applications that led to the two patents governing the particular aspect of video technology at issue.1

After weighing carefully the findings and judgment of the trial court, which followed from a lengthy bench trial, and the arguments of counsel for the parties regarding the several issues in contention, we affirm the trial court's judgment.

BACKGROUND
I. Technology and the Patents-in-Suit

The Technology Licensing Corporation ("TLC") patents at issue in this case relate to the separation of synchronization signals from video signals. In general, the composite video signal received by a television contains information that allows the television to reproduce pictures on its screen one line at a time. The incoming video signal includes a synchronization signal (also referred to as a "sync signal" or "sync pulse") to indicate the beginning of the information for each line. The sync signal must be extracted precisely from the composite video signal so that the television can accurately reproduce the transmitted image. This function is performed by circuits referred to as "sync separators," which have been in existence since the advent of television. Sync separators are implemented today as integrated circuits.

In an analog video signal (one that follows, for example, the National Television System Committee ("NTSC") standard used in the United States), the sync signal is a downward, or negative-going, pulse, preceded by an interval called a "front porch" and followed by an interval called a "back porch." The NTSC sync signal is said to be a two-level signal because the signal is at one voltage level during the front porch and back porch intervals and reaches a different, lower voltage level during the sync pulse. Digital video signals such as HDTV use a more complex, three-level sync signal.

The process of sync separation involves two fundamental steps. First, the "tip," or negative peak, of the pulse (known as the "sync tip") is "clamped," or held, to a known voltage level by adding current to or draining current from the signal. Second, the clamped sync pulse is "sliced" by comparing it to a "slicing voltage," typically midway between the sync tip voltage level and the back porch voltage level in a two-level signal. The following diagram (J.A. 2705) shows a sync pulse with a front porch, a back porch, and a sync tip that has been clamped to a known voltage:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The sync separator produces a logic level sync signal that is, for example, high when the video signal is below the slicing voltage, indicating the presence of a sync pulse, and low at all other times. The TLC patents in this case are directed to methods for sync separation that may be used with different types of sync signals, as required by various standards, and that minimize the effect of noise in the video signal, thereby providing reliable and precise recovery of sync signals.

The patents-in-suit issued from a chain of continuation and continuation-in-part applications.2 J. Carl Cooper, the sole inventor, filed the first patent application, Serial No. 837,323 ("the '323 application"), on February 28, 1992. On December 13, 1993, he filed a continuation application, which eventually issued as U.S. Patent No. 5,486,869 ("the '869 patent"). Before that patent issued, Cooper filed a continuation-in-part ("CIP") application, Serial No. 493,661 ("the '661 application"), on June 22, 1995. The final application, a CIP of the '661 application, was filed on December 4, 1995, and later issued as U.S. Patent No. 5,754,250 ("the '250 patent"). In sum, there are two patents-in-suit derived from four applications for patent. Cooper assigned the patents to TLC, which he formed for the purpose of licensing and asserting his patents.

The '869 patent describes, inter alia, a sync separator that involves two separate clamping operations. Claim 27 of the '869 patent is directed to the two-clamp aspect of the patented invention:

27. An apparatus for deriving a logic level version of the sync portion of a video type signal, said sync portion having a plurality of levels, one of which may be a blanking level, said apparatus including:

(a) circuitry responsive to said sync portion to clamp the sync tip thereof to a known level thereby providing a clamped sync portion and to generate at least a first logic level sync signal in response to said clamped sync portion;

(b) circuitry for clamping said sync portion to a known level to provide a second clamped sync portion; (c) circuitry for providing at least one reference signal in response to said first logic level sync signal and said second clamped sync portion;

(d) circuitry for comparing said second clamped sync portion to said reference signal to provide said logic level version.

'869 patent col. 17 ll.15-31 (emphases and paragraph lettering added).

The '869 patent also describes a sync separator that is able to recover sync signals from different types of video signals, e.g., both NTSC and HDTV signals. Claim 31 of the '869 patent relates to that aspect of the invention:

31. An apparatus for deriving a logic level version of the sync portion of a video type signal, said sync portion having a number of levels N, one of which may be a blanking level, and where N may be two or more depending on the format of said video type signal, said apparatus including:

(a) circuitry to provide a format signal changeable in response to the format of said video type signal;

(b) circuitry responsive to said sync portion to generate at least a first separated sync signal;

(c) circuitry for providing at least N-1 reference signal(s) in response to said sync portion and said first separated sync signal; and

(d) circuitry responsive to said sync portion and said format signal and said reference signal(s) for comparing said sync portion to said reference signal(s) to provide said logic level version.

'869 patent col. 17 ll.41-57 (emphasis and paragraph lettering added).

Cooper added new matter to the written description in June 1995 when he filed the '661 CIP application and again in December 1995 when he filed the CIP application that led to the '250 patent. The '250 patent contains claims that involve only a single clamp, including claim 33:

33. The method of recovering sync from a video type signal including the steps of:

(a) coupling said video type signal through a capacitor or other circuit thereby establishing a level shifted signal having a sync portion;

(b) comparing said level shifted signal to a first known reference to provide a compared signal;

(c) selectively adding a current to said level shifted signal wherein the amount and/or polarity of said current is responsive to said compared signal and the D.C. level of said level shifted signal is changed in response to said current;

(d) comparing said level shifted signal to a second known reference to provide a second compared signal, which second compared signal is a logic level representation of said sync portion.

'250 patent col.28 ll.13-29 (emphasis added and paragraph lettering modified).

When Cooper added claim 33 to the '250 patent application by amendment in December 1996, he stated that "Claim 33 element [(a)] corresponds to [capacitor] C3 of figure 2, or alternatively to [capacitor] 1603, or [resistors] 1604 and 1605 of Figure 16." J.A.2030. What this means as a technical matter is that the "capacitor" specified in step (a) necessarily corresponds to one of the two capacitors he identified—either to capacitor C3 in Figure 2 or to capacitor 1603 in Figure 16. This leaves resistors 1604 and 1605 in Figure 16 to correspond with the "other circuit" specified in step (a). Figure 16 was part of the new matter added when the CIP was filed in 1995.3 Exactly where the written description support for the phrase "other circuit" is to be found is a major point of contention in the case.

II. Procedural History

TLC filed a complaint against Videotek, Inc. ("Videotek"), alleging infringement of the '869 patent and '250 patent. Videotek filed a third-party complaint against its sync separator chip supplier, Gennum Corporation ("Gennum"), seeking a right to indemnification. Gennum then filed a third-party complaint against TLC seeking a declaratory judgment that TLC's patents were invalid, unenforceable, and not infringed. TLC filed compulsory counterclaims against...

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