The opinion of the court was delivered by: Sweet, District Judge.
Plaintiff pro se Albert DePaul ("DePaul"), brought this action for
patent infringement against defendant General Instrument Corporation
("GI") seeking injunctive and monetary relief. GI now moves to dismiss
and for summary judgment pursuant to Rules 12(b)(6) and 56, Fed.R.Civ.P.
For the reasons set forth below, GI's motions are denied.
DePaul is the inventor and owner of U.S. Patent No. 4,783,699 entitled
"Apparatus and Method for Transmitting Information by Modulated Video
Signal," issued on November 8, 1988 (the "`699 Patent"). GI manufactures
and sells television signal origination, distribution, and receiving
On March 20, 1991, DePaul filed a complaint against GI alleging
infringement of the `699 Patent. On April 2, 1991, this court dismissed
the complaint as too conclusory and granted leave to replead, 1991 WL
51139. DePaul filed an amended complaint on May 7, 1991.
GI filed this motion to dismiss and for summary judgment which was
heard and considered fully submitted as of June 4, 1991.
Facts and Claims of the Parties
It is undisputed that DePaul is the inventor and owner of the `699
Patent. For a television signal to the developed into a viewable
picture, special constituents in the television receiver, called
"horizontal synchronizing pulses," are required to lock the television
set with the incoming signal. The `699 Patent relates to a method and
apparatus for encoding additional electronic signals into the horizontal
synchronizing portion of a television video signal, by "amplitude
modulating," or "piggybacking," the additional signal onto the existent
horizontal synchronizing pulses of the television. The invention thus
enables the utilization of television transmission links as a medium for
transporting additional electronic signals simultaneously with the
television video signal without increasing bandwidth. The invention is
novel because of the method and location within the video signal for data
insertion, Prior to the `699 Patent, the horizontal synchronizing pulse
of the video signal had never contained any information other than
horizontal synchronization. Any intelligence added to the video signal
had been inserted within the
vertical blanking period and not during the active picture scan.
Alleged Infringement by GI
DePaul accuses GI of infringing the `699 Patent with its VideoCipher II
encryption technology ("VC II"). In support of his claim, he has offered
a trade magazine article reporting that because the VC II "data stream
uses up the entire horizontal and vertical interval-time spectrum . . .
picture synchronization and piggyback data services are transmitted within
the [normal] bandwidth." GI's VC II Encryption: Accepted, If Not Loved,
Electronic Engineering Times, Dec. 14, 1987, at 20. He has also submitted
excerpts from the Video Cipher II Technical Manual ("VC II Manual"),
which explain that "video information is inverted between sync pulses"
and "[t]he audio . . . is mixed with other bits of digital data and
inserted into the horizontal sync pulse, then transmitted with the video
signal." VC II Manual at 1 (emphasis added).
GI denies DePaul's accusation that the VC II infringes the `699
Patent. According to GI, all of the claims of the `699 Patent require the
use of existent horizontal synchronizing pulses and amplitude modulation
of data pulses. GI maintains that the VC II transmits no horizontal
synchronizing pulses but rather removes synchronizing pulses and inserts
data in their place. GI has referred the court to a different part of the
VC II Manual, which states that "[t]he two audio channels, along with the
addressing and control information and the auxiliary data channel, are
digitally transmitted in place of the horizontal sync pulse in each video
line. . . . Video security is provided by the complete absence of all
normal sync information (both vertical and horizontal)." VC II Manual at
4 (emphasis added).
Depaul contests GI's assertion that the VC II does not use horizontal
synchronizing information as a case of mere semantics. He maintains that
in order for the VC II to accomplish its result it must use amplitude
modulation of the horizontal synchronization ...