Wycoff v. Motorola, Inc.
| Decision Date | 25 August 1980 |
| Docket Number | No. 74 C 2661.,74 C 2661. |
| Citation | 502 F. Supp. 77 |
| Parties | Keith H. WYCOFF and Reach Electronics, Inc., Plaintiffs, v. MOTOROLA, INC., Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
COPYRIGHT MATERIAL OMITTED
Harold V. Stotland, J. Terry Stratman, Vogel, Dithmar, Stotland, Stratman & Levy, Chicago, Ill., for plaintiffs.
Howard W. Clement, Robert L. Harmon, Jerold A. Jacover, Hume, Clement, Brinks, William & Olds, Ltd., Chicago, Ill., for defendant.
This action was commenced in September, 1974 by Wycoff and Reach charging Motorola with infringement of four U. S. patents owned by Wycoff, including the Original patent. After issuance of the Reissue patent, the Reissue patent was substituted for the Original patent.2 As a result of a partial settlement, only claims 19 and 20 of the Reissue patent remain in issue.3 For the reasons herein stated, this court finds in favor of plaintiffs.
Plaintiff Reach Electronics, Inc. ("Reach") is a Nebraska corporation headquartered in Lexington, Nebraska. Plaintiff Keith H. Wycoff ("Wycoff") lives in Lexington, Nebraska and is the president of Reach.
Defendant Motorola, Inc. ("Motorola") is a Delaware corporation with its place of business in Schaumburg, Illinois.
Wycoff is the named inventor and owner of the U. S. Reissue patent in suit, No. Re. 28,222 ("the Reissue patent"), which issued November 5, 1974. Reach is the exclusive licensee of the Reissue patent.
The Reissue patent is a reissue of U. S. Patent No. 3,651,413 ("the Original patent"), which issued March 21, 1972 on an application filed September 29, 1969. The application for the Reissue patent was filed June 6, 1973 and the Original patent was duly surrendered.
Motorola has stipulated that claims 19 and 20 of the Reissue patent, if valid, read on, and are infringed by, certain pager models made and sold by Motorola and described in Motorola manuals in evidence as PX-10, 17, 120, 121, 152A-C, 158A-B and 159. Thus, infringement is not at issue. The only questions presented for decision here concern the validity and enforceability of claims 19 and 20 of the Reissue patent.
Plaintiffs maintain that Motorola has infringed claims 19 and 20 of the Reissue patent by reason of its manufacture and sale of certain models of its portable paging equipment: specifically, certain tone-only versions of its PAGEBOY II, METRO-PAGEBOY and METRX paging receivers which incorporate a "batter-saving" feature. The accused devices are described in various Motorola manuals.
Motorola contends that claims 19 and 20 of the Reissue patent are invalid under 35 U.S.C. §§ 102(a), (b) and (g),4 and are unpatentable under 35 U.S.C. § 103,5 in view of Motorola's QRR-11 development,6 and are invalid under 35 U.S.C. §§ 102(a) and (b) and 35 U.S.C. § 103 in view of United States Patent No. 2,912,574 to Gensel.
In support of its contentions, defendant has proffered a demolition device known as the QRR-11 receiver developed by Motorola for the United States Government under a classified government contract, and the Gensel Patent, No. 2,912,574, as prior art and the primary basis for invalidating the claims in issue.
Additionally, Motorola contends that claims 19 and 20 are unenforceable because plaintiffs failed, during the prosecution of the Original patent, to bring certain pertinent British references to the attention of the Patent and Trademark Office and, during the prosecution of the Reissue patent, actively misled the Office with respect to the date those references were discovered.
The reissue patent deals with a battery-saving circuit for a communication receiver of the portable, battery operated variety. The claimed invention in this case is particularly applicable to portable paging devices of the type marketed by both plaintiff Reach and defendant Motorola.
By way of background, radio communications are accomplished by generating a "carrier" wave of radio frequency (thousands or millions of cycles per second), and then "modulating" that carrier wave so that it carries the desired information, which can be a simple tone, a voice, music or even a television picture. Modulation can be accomplished in several different ways, two of the most common being the familiar AM (amplitude modulation) and FM (frequency modulation) systems used in present day radio broadcasting. The modulated carrier wave is then transmitted, or radiated from the antenna of the transmitter, and is ultimately received, or intercepted, by the antenna of a receiver. The receiver processes the modulated carrier wave to extract the information and convert it to usable form as, for example, a voice on a loudspeaker or a picture on a TV tube. Consider, for example, the simple case of transmitting a single tone such as middle C. A carrier wave of a given radio frequency, say 1,000,000 cycles per second, is modulated by impressing upon it a signal corresponding to the frequency of middle C. The modulated carrier is then transmitted, and is received by any receiver within range which is tuned to receive carrier waves of 1,000,000 cycles per second. The receiver circuitry then processes the modulated carrier and extracts the middle C tone. The tone might then be used in any of several different ways. It could simply be amplified and fed directly to a loudspeaker, where it would be heard as middle C. Or, it could be used to activate other circuitry which would generate other tones or more complex sounds from the speaker (such as the familiar "beep-beep" emitted by a pager). Or, it could be used to operate a switch, which would cause a lamp to light or a buzzer to sound.
Pagers are small, portable, battery-operated radio receivers designed to be carried on the person of the user, usually in his pocket or clipped to his belt. A typical user might be a doctor or delivery man. The Reissue patent covers improvements in "battery-saver" circuitry for portable communications receivers, such as pagers.
The technique used in paging systems, whereby a transmission intended for a particular receiver will cause a response only in that receiver, is referred to as "selective calling."
The selective calling capability is achieved by assigning to each receiver or pager a unique address code modulated on the carrier wave. Each receiver includes a decoding portion which is designed to respond only to the address code assigned to that receiver. If that particular address code is detected, the receiver is activated. None of the other receivers in the communication system will be activated by the transmission. In other words, a selective-call communication receiver is maintained non-responsive except in the presence of an address code which is intended for that specific receiver.
The selective-call communication system may be tone only or tone and voice. In the former type, the transmitted intelligence corresponding to the address code for a particular receiver will cause that receiver to be activated and cause its associated lamp to go on or its speaker to produce an audible tone. In a tone-and-voice system, the intelligence is the address code and the ensuing voice message. The address code causes a particular receiver to become activated and produce an audible or visible warning of the ensuing message, the voice message follows.
Because paging receivers are portable, they are battery-operated. There are two types of batteries used in paging receivers: throwaway batteries and rechargeable batteries. Rechargeable batteries are expensive and must be taken out of service about every twelve hours. Throwaway batteries have longer life, but are expensive because they must be replaced often.
In selective-call communication systems, each receiver must be continuously maintained in condition to analyze address codes, so that if a carrier wave modulated by its address code is transmitted, it is activated. Typically, a receiver in such a system is so activated fewer than ten times per day. The average time of activation is very short, so that each receiver is activated for only a small fraction of the day. But, if the receiver circuits are maintained continuously operative, there is a constant drain on the batteries.
A "battery-saving" circuit increases battery life. Generally, battery-saving circuitry operates to turn the receiver alternately on and off during the standby periods when it is waiting to receive a message. Each "off" interval is much longer than each "on" interval, so that during standby the receiver draws current from the battery a small percentage of the time.
The invention of the Reissue patent relates to a selective-call communication receiver including battery-saving circuitry. More specifically, the battery-saving circuit of the Reissue patent alternately switches the receiver on and off during standby, but will not respond to the presence of just the carrier wave. Rather, the batter-saving circuit will remain in its switching, standby mode until the particular address code for that receiver is received.
The Reissue patent suggests that the processing circuit be on for 15 milliseconds (a millisecond being one one-thousandth of a second) and off for 360 milliseconds. Thus, out of each 375 milliseconds the receiver is fully powered for only 15 milliseconds, or 4 percent of the time.
The communication receiver of claims 19 and 20 is adapted to receive a carrier wave modulated by intelligence including a particular kind of address code, namely "a series of control tones." A series of control tones is a plurality of tones that do not overlap in time. In other words, each tone begins when the preceding tone ends.
The communication receiver of claims 19 and 20 has a "processing circuit" or "receiving circuit." Such processing circuit separates intelligence from the carrier wave.
Power for the "processing circuit" of claims 19 and 20 is supplied by a "pulser circuit" which forms a part of the battery...
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