both a disrupt function and a bypass function, the former performed by an electro-mechanical relay, and the latter achieved through the use of an energized diode.
1. Function and Structure of the '899 Patent
The '899 patent is a means plus function patent. At column 10, lines 4-10, the video record player signal path is designated as the first signal path, and at lines 11-17, the signal path between the antenna and the television receiver is referred to as the second signal path. See Roberge Cert. Ex. A at col. 10 lines 4-10 and 11-17.
When the video player's power supply is on, each of the signal paths is affected simultaneously. First, the second signal path from the antenna to the television is disrupted through a high series of impedance caused by the opening of the electro-mechanical relay, designated as relay (50) in the patent. See id. Ex. A, Fig. 1 ("App. 1.").
At the same time in the second signal path, diode (66) is energized and rendered conductive to permit a substantial portion of the antenna signal to be bypassed away from the antenna/television receiver signal path and sent to ground. See id. In the first signal path, video player RF signals, generated by transmitter (30), are sent through conductive diode (62) to the television receiver. Thus, when the video player power is on, the television receives only a signal from the video player, and the broadcast RF signals from the antenna are prevented from being transmitted to the television receiver. Also, because relay (50) is open, the video player RF signals are prevented from being transmitted to the antenna.
When the video player switch is in the off position, no RF signal is transmitted, diodes (62) and (66) are non-conductive, and relay (50) is closed. By this process, broadcast signals are transmitted from the antenna to the television receiver without disruption (nor are they bypassed to ground), while the first signal path between the video player and the television receiver is disrupted.
2. Nintendo's Denial of Infringement and Claim of Invalidity
Nintendo denies that its Nintendo Entertainment System ("NES") and Super Nintendo Entertainment System ("SNES") are covered by Claims 12-14 of the '899 patent. It asserts that these Nintendo systems employ an RF switch that is covered by Nintendo's U.S. Patent No. 4,745,478 (the "'478 patent") which is entitled "RF Switch" and was issued by the Patent Office on May 17, 1988. The '899 patent was not a cited reference in the '478 patent.
At the very outset, Nintendo contends that its switch does not contain a disrupt function and therefore cannot infringe the '899 patent literally or through the doctrine of equivalents. Moreover, Nintendo insists, the structure of its bypass function with respect to the antenna/television receiver path is significantly different. Apart from function and structure, Nintendo argues that its NES and SNES systems are not video record players and fall outside the claims of the '899 patent.
a. Nintendo's RF Switch
The RF switch used by Nintendo in its NES and SNES video game systems is the RF switch described in the '478 patent. Not unlike the '899 patent, the purpose of the RF switch in the '478 patent is to inhibit the antenna input of a television receiver when the television receiver is used as a monitor for a picture processing system, such as a personal computer, a video game system, or the like. See Roberge Cert. Ex. G, col. 1, lines 7-12; col. 1, lines 29-44. While the '899 patent speaks of first and second signal paths, the '478 patent describes the signal as a first television signal and a second television signal.
The Nintendo RF switch employs a system that primarily utilizes three-stage high-pass filters and three switching transistors. See id. Ex. G, Fig. 2 ("App. 2") (denoting three-stage high-pass filters as 50a, 50b and 50c and three switching transistors as 52a, 52b and 52c).
When the television receiver is used as a television receiver and not as a monitor, the first television signal from the television antenna is transmitted through the active three-stage filters to the television receiver. Under this scenario, the switching transistors remain off and the respective filters are not disabled. This electronic architecture permits the television signal from the television antenna to go to the receiver without interference.
Conversely, when the power switch to a game apparatus is turned on, the second television signal, also termed the "TV game signal," is applied to the television receiver which is used as a monitor. When this occurs, the first television signal is grounded and thereby automatically disabled. This happens because switching transistors 52a-52c are turned on and high-pass filters 50a-50c are disabled. Nintendo describes this as a "bypass" function with respect to the antenna/television path. Nintendo's Br. at 9.
Because Nintendo's RF switch does not place any disrupting component, such as an electro-mechanical relay, in the signal path between the antenna and the television receiver, Nintendo contends that the disrupt function of the '899 patent is lacking.
b. Nintendo's Arguments in Support of the Lack of Equivalency Between the Function and Structure of the '899 Patent as Compared to the '478 Patent
Distinct from its lack of disruption non-infringement argument, Nintendo contends that Claim 12 of the '899 patent is a video record player apparatus containing an RF switch. Therefore, because of the "video record player" claim limitation, Nintendo reasons that its NES and SNES, characterized as video game systems, are not covered. Nintendo bottoms its argument by pointed references contained in the '899 patent. In column 1, lines 9-10, the video record player is described as an "apparatus for playback of a recording of picture representative video signals." Roberge Cert. Ex. A. An illustrative example of such a player system is a "video disc player" found at column 1, lines 15-16. Id. Moreover, Nintendo's expert, James K. Roberge, through his certification informs that a video disc player is completely passive in its operation; it does not generate any information itself and it does not alter the information contained in any of the signals it receives. See id. P 43. Rather, it simply converts those signals to a format compatible with a television monitor. See id.
Noteworthy in Nintendo's analysis is the functional dissimilarity between Nintendo's video game systems and the video record player referenced in the '899 patent. Nintendo characterizes its systems as an "interactive" system, as opposed to a passive system, that solely retrieves stored information. By use of the term "interactive," Nintendo describes a system where the user is provided real time control over the images that are created. See id.
Another consideration advanced by Nintendo to contrast the '899 RF switch and the '478 RF switch is the latter's portability. Because Nintendo's RF switch can be moved away from the television and located with the user, it is free of the constraints that are inherent to the '899 RF switch, which is designed to be internal to the video record player. The '899 switch was designed for use with a stationary device that would sit atop or adjacent to the television monitor. Indeed, the inventor of the '899 RF switch, John Yu, never considered the portability of the switch or locating the switch outside the video record player. See Mascaro Cert. Ex. 3 at 29-30 and 60-65.
c. Nintendo's Invalidity Claim: Anticipation of the '899 Patent
Nintendo's invalidity claim is grounded on the theory that the '899 patent was anticipated by a Japanese patent application published more than one year prior to the filing date of the '899 patent application. More particularly, Nintendo asserts that a prior art reference filed with the Japanese Patent Office on behalf of Sharp Corporation, Patent Application SHO 49-7211 ("Sharp II") disclosed a switching operation that would have enabled one skilled in the art to produce the RF switch disclosed in the '899 patent.
Because the claimed invention described in Sharp II preceded the '899 patent and was published more than one year in advance of the '899 patent's date of application for patent in the United States, Nintendo asserts that Sharp II anticipated, and therefore invalidates, the '899 patent.
3. GE's Reply to Nintendo's Non-Infringement and Claim Construction Analysis
GE alleges both literal infringement and infringement through the doctrine of equivalents. Central to GE's argument is the premise that the '899 patent is a novel combination of RF switch and RF modulation. GE reasons that, under the '899 patent, when the power supply to the video record player is on, a "quieting feature" silences the television receiver's sound channel and turns the screen into a solid color. Conversely, when the video record player power supply is off, the television receives the broadcast RF signals directly from the antenna, a function which serves to improve the television receiver's broadcast picture quality. GE further asserts that the disruption and bypass function of the '899 patent also solves the problem of signal leakage and eliminates interference with broadcast signals received by neighboring antennae. Lastly, GE disputes the narrow claim construction proffered by Nintendo that its NES and SNES entertainment systems are not video record players.
GE argues that the NES and SNES video game systems are, in fact, video record players. It disavows that use of the phrase "video record player," as set forth in the preamble to Claim 12, is a term of limitation. Similar to Nintendo, GE points to references in the patent description that it terms as the environment for the invention. GE maintains that the phrases "other video information services" found at column 1, lines 6-7, and "playback apparatus" used at column 2, line 30, are examples that demonstrate the breadth of the claim beyond a video record player. Lastly, GE portrays the NES and SNES systems as an apparatus for playback of a recording of picture representative signals. It avers that video and audio signals begin playing in a prearranged format as soon as the power to the NES or SNES system is turned on, not unlike the function of the '899 video record player. The Nintendo system is therefore passive, and becomes interactive only when the game controls are used; when the game controls are inactive, one could sit and watch the screen play prerecorded, changing scenes and pictures, including moving characters and background. See GE's Br. in Opp. at 28.
4. Expert Testimony
a. Kurt Wallace for GE
Kurt Wallace ("Wallace") styles himself as a practicing engineer in the field of television-related electronics for more than thirty-five years. See Wallace Decl. P 1. During this period of practice he has designed, developed and researched video recording and broadcast television equipment. See id. P 2. After an examination of the '899 patent and its file history, the NES and SNES systems, and the '478 patent, Wallace concludes that the two Nintendo systems incorporate each of the elements of Claims 12, 13 and 14 of the '899 patent. See id. P 4. Moreover, he concludes that neither the Sharp I nor the Sharp II patent applications anticipated the '899 patent. See id. P 5.
The first thirty paragraphs of the Wallace declaration explain the operation of the switching circuit disclosed in the '899 patent. This operation is defined in terms of impedance to ground, a relative concept whose application depends upon the presence or absence of a developed power supply voltage. In paragraph 31, Wallace summarizes the invention as follows:
When power supply voltage is not developed, the impedance between an antenna and the TV is low relative to the impedance to ground. Hence, the broadcast RF signals from the antenna are transmitted to the TV rather than to ground. When power supply voltage is developed, the impedance between the player and the TV is low relative to the impedance to ground. Also, the impedance between the antenna and television is high relative to the impedance to ground. As a result, the RF signals from the player are transmitted to the TV and the broadcast RF signals from the antenna are passed to ground.