Discovision Associates v. Disc Manufacturing, Inc. (25 F. Supp. 2d 301, 1998)

United States District Court for the District of Delaware 1998-10-26

Citations

Full opinion text

OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Plaintiff DiscoVision Associates (“DiscoVision”) filed this action against defendant Disc Manufacturing, Inc. (“DMI”) on January 17, 1995, alleging infringement of six DiscoVision patents relating to optical disc technology. (D.I.l) On September 20, 1995, DiscoVision filed an amended complaint which alleged that DMI infringed ten patents relating to optical disc technology. (D.I.63, 484) During discovery, DiscoVision voluntarily agreed to drop several of its patent claims. (D.I. 287 at 14; D.I. 299 at 2; D.I. 308 at 2; D.I. 323 at 3) Prior to trial, DiscoVision further reduced its case to the following six patents: (1) U.S. Patent No. 4,819,223 (“the ’223 patent”); (2) U.S. Patent No. 4,893,297 (“the ’297 patent”); (3) U.S. Patent No. 4,228,326 (“the ’326 patent”); (4) U.S. Patent No. 4,190,860 (“the ’860 patent”); (5) U.S. Patent No. 4,337,538 (“the ’538 patent”); and (6) U.S. Patent No. 5,373,490 (“the ’490 patent”).

The parties tried this matter to the court from October 6, 1997 to October 16, 1997. As a result of this court’s claim construction order (D.1.558), DiscoVision did not present evidence of infringement with respect to the ’538 and ’223 patents and further reduced the number of claims it alleged DMI had infringed. At trial, DiscoVision presented evidence of infringement on the following four patents and their respective claims: (1) DMI’s compact discs (“CDs”) and stampers infringe claims 1, 10, and 13 of the ’297 patent; (2) DMI’s version one mastering machine infringes claims 2 and 8 of the ’326 patent; (3) DMI’s version two mastering machine infringes claims 1, 16, and 21 of the ’860 patent; (4) DMI’s Philips mastering machine infringes claims 16 and 21 of the ’860 patent; and (5) DMI’s CDs, stampers, and master discs infringe claims 6 and 11 of the ’490 patent. DiscoVision’s infringement case is based on both literal infringement and infringement under the doctrine of equivalents.

DMI asserted the defenses of noninfringement and invalidity. More specifically, DMI proffered evidence that the ’297 patent is: (1) invalid as anticipated under 35 U.S.C. § 102(b); (2) obvious under 35 U.S.C. § 103; and (3) invalid under 35 U.S.C. § 112 because of (a) lack of enablement, (b) insufficient written description, and (c) failure to disclose the best mode. With respect to the remaining patents, DMI presented evidence of invalidity under § 103.

The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a). The following constitutes the court’s findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).

II. FINDINGS OF FACT

A. Introduction

1. DMI is a Delaware corporation that engaged in the manufacture and sale of CDs during the time relevant to the issues of the complaint. DMI operated CD manufacturing plants in Anaheim, California and Huntsville, Alabama. DMI’s operations and CD manufacturing plants were sold to Cinram, Inc. on March 27, 1997. (D.I. 564, Ex. A at 1; D.I. 633)

2. DiscoVision is a California partnership with its principal place of business in Irvine, California. (D.I. 564, Ex. A at 1; D.I. 633) DiscoVision is the owner, by assignment, of the four patents at issue.

3. A CD is a type of optical disc. It stores encoded information or data that can be accessed by CD players which contain optical reading devices. During the relevant period, DMI manufactured and sold at least two types of CDs: (1) “CD-Audio,” which contains music; and (2) “CD-ROM,” which contains computer software and computer data. (D.I. 564, Ex. A at 1; D.I. 633 at 2) Industry standards for CDs are found in the “Rainbow Books” promulgated by Sony and Philips. (D.I. 606 at 1412-18; PX 77; PX 247 at 7; PX 984) The Rainbow Books include the “Red Book” (PX 72), which is the industry standard for CD-Audio, and the “Yellow Book” (PX 2123), which is the industry standard for CD-ROM. (D.I. 604 at 1410; PX 984 at 3) Compliance with these standards results in CDs which can be played on commercially available CD players. DMI’s CDs are manufactured to comply with these industry standards. (D.I. 604 at 1409-18)

B. The Gregg Invention: Optical Discs and the ’297 Patent

(1) The Development of Information Storage Technology

4. After World Wgr II, there was a “strong felt need” for new “high-density” information storage technologies. (D.I. 607 at 2037-38) This need resulted in increased research activities during the 1950s through the 1970s. (D.I. 607 at 2038) One of the first major developments was the announcement in 1957 of a new magnetic video recording process. (D.I. 607 at 2038-39) This invention was widely recognized by those of ordinary skill in the art as the only efficient way of recording video. (D.I. 607 at 2039) During this same time period, however, scientists sought to invent a competitor to magnetic video recording. (D.I. 607 at 2040-47)

5. One of the technologies scientists explored was electrostatic recording. (D.I. 607 at 2041) In an electrostatic recording, information is • represented by the presence or absence of electrical charges in a storage medium. (D.I. 607 at 2041) Electrostatic recording eventually failed because it did not have adequate storage density. (D.I. 607 at 2041)

6. Scientists also explored thermoplastic recording, which utilizes electrostatic techniques. (D.I. 607 at 2041) In a thermoplastic recording, plastic in the recording medium is turned into a fluid when it is heated to a high temperature. (D.I. 607 at 2042) The plastic is then deformed by the force of electrical charges and cooled to retain the deformities. (D.I. 607 at 2042) Information is represented by the presence or absence of these deformities in the record medium. (D.I. 607 at 2042-43) This technology was not successful because: (1) the process required a vacuum; (2) the deformities were irregular and could not be contained in an information track; and (3) the recording was difficult to replicate. (D.I. 607 at 2042-43)

7. A third type of recording technique involves burning holes in a recording medium. Information is represented by the absence or presence of a hole. (D.I. 607 at 2044) Many different attempts at perfecting the hole burning technique were tried during the 1960s. (D.I. 607 at 2044) The hole burning technique was never commercialized, however, because it was difficult to control the size, shape, and location of the holes. (D.I. 607 at 2044)

8. Photographic recordings were also explored during this period. (D.I. 607 at 2045) This type of recording utilizes two-dimensional features to represent information. (D.I. 607 at 2045) In seeking to develop high-density storage capabilities, scientists encountered problems in perfecting the replication of photographic recordings since information is represented by two-dimensional features. (D.I. 607 at 2045)

9. Capacitive recordings were explored. (D.I. 607 at 2045-46) Similar to photographic recordings, replication problems were encountered in capacitive recording technology since these recordings involve two-dimensional features. (D.I. 607 at 2046)

10. Finally, the optical disc emerged as a viable competitor to magnetic recordings. (D.I. 607 at 2047) Optical disc technology was a significant development because information can be stored at a density more than one hundred times greater than was possible through magnetic recording. (D.I. 607 at 2048)

11. Gregg’s Initial Ideas. In the late 1950s, David Paul Gregg, the inventor of the ’297 patent, started to develop ideas about an optical disc. (Defendant’s Exhibit (“DX”) 464, Gregg 12/9/97 at 22-23) At that time he called his idea a “videodisk” system. (DX 464, Gregg 12/9/97 at 23) He envisioned combining his knowledge of video recording, optical recording, and “phonograph disc art” to invent a “video, optical disc.” (DX 464, Gregg 12/9/97 at 23) Gregg knew that his videodisk system would have to be integrated seamlessly into the entertainment industry if it was to be a consumer product. (DX 464, Gregg 12/9/97 at 29) Accordingly, Gregg’s “videodisk” system included ideas about the process of making master videodisks, the replication of videodisks, and the playback system. (DX 464, Gregg 12/9/97 at 31)

12. In 1964, Gregg and a partner founded Gauss Electrophysics to develop further his ideas about a videodisk system. (DX 464, Gregg 2/4/97 at 516-19) After forming this company, Gregg began to look for additional financing for his ideas from large corporations. (DX 464, Gregg 2/5/97 at 648-49) As early as 1965, Gregg documented his ideas in proposal form as part of his efforts to secure additional financing. (DX 90) He knew he needed the assistance of a large corporation because his proposed videodisk system would require “millions of dollars just to get started.” (DX 464, Gregg 2/5/97 at 649)

13. Earlier Patents: The ’258 and ’966 Patents. At the same time that he was seeking financial support for his ideas, Gregg also began filing patent applications for his videodisk system. In November 1965, he filed his first patent application. This patent application eventually issued as U.S. Patent No. 3,530,258 (“the ’258 patent”) on September 22, 1970. (DX 370) The ’258 patent is entitled “Video Signal Transducer Having Servo Controlled Flexible Fiber Optic Track Centering.” (DX 370, col. 1, Ins. 1-4)

14. The abstract of the ’258 patent provides:

A video signal reproducer pick-up head is provided for deriving video signals from a track on an optical recording medium; the pick-up head includes a movable support which is suspended over the recording medium, and means on the support for sensing the video signals recorded on the medium, the transducer being capable of generating control signals which are applied to a servo control system which, in turn, controls the position of the support and thereby serves to maintain the sensing means in proper registry with the traek on the recording medium.

(DX 370, col. 1, Ins. 14-25) The recording medium disclosed in the ’258 patent specification is identified as a “video recording disc having optical recordings of a video signal in a spiral track thereon which extends from the outer to the inner limits of the disc.” (DX 370, col. 2, Ins. 45-48) The specification includes a drawing of transparent disc 10 with surface indicia in a spiral track that represent optical recordings of a video signal. (DX 370, fig. 2)

15. The ’258 patent discloses a “transmissive / nontransmissive” system for reading an optical video disc. (DX 370; D.I. 605 at 1535-39; D.I. 609 at 15) In a “transmissive” system, the plastic record disc has optical recordings that modulate a light beam when the disc is rotated. (DX 370, cols. 3-4; D.I. 605 at 1536) Information is recovered in a transmissive system by shining a beam of light on the spiral recording track while the disc rotates. The beam of light is modulated when it passes through the recording track, creating a pattern of optical contrast. The pattern of optical contrast is received by an objective lens on the other side of the disc and translated into an electronic signal that is used to reproduce the information stored on the disc. (DX 370; D.I. 600 at 234-40; PX 1983; D.I. 605 at 1537-46)

16. On April 3, 1967, Gregg filed another patent application relating to his videodisk system. This application issued on March 4, 1969 as U.S. Patent No. 3,430,966 (“the ’966 patent”), entitled “Transparent Recording Disc.” (DX 88) The ’966 patent discloses “an improved record disc having signals optically recorded thereon, which is particularly adapted for use in conjunction with the transducer head and system described” in the ’258 patent. (DX 88, col. 1, Ins. 45-49) The record disc in the ’966 patent is described as a “transparent plastic” disc with recordings formed in spiral grooves. (DX 88, col. 1, Ins. 16-17) The ’966 patent specification explains that video signals “are recorded in a spiral track on the record disc described in [the ’258 patent] by means of a modulated electromagnetic beam, such as an electron beam or laser ray, and this track is sensed by the transducer head during the reproduction operation.” (DX 88, col. 1, Ins. 34-38)

17. One of the improvements disclosed in the ’966 patent concerns the “construction” of the record disc to “proteet[ ]” the recordings from “rough usage.” (DX 88, col. 1, Ins. 49-53) The record disc described as the preferred embodiment utilizes the transmissive system disclosed in the ’258 patent. (DX 88, cols. 2-3; D.I. 605 at 1540-46) The ’966 patent specification explains the manner in which information is retrieved as follows:

When the record disc 10 is rotated in the turntable 11, and as described in detail in [the ’258 patent], a light source is moved under the disc ... with a transducer head ... moved over the disc. The relationship between the light source and transducer head is such that the light from the light source passes through the optical recordings on the spiral track to be modulated thereby. The transducer head responds to the resulting modulated light beam to convert the same into corresponding video, or other signals, as described in [the ’258 patent].

(DX 88, col. 2, Ins. 24-34)

18. The record disc of the ’966 patent is a transparent plastic disc with a “metallic deposit” that “interrupts the transparency of the disc in a particular pattern, so that a spiral optical recording track is formed on the disc.” (DX 88, col. 2, Ins. 18-21) The metallic deposits are formed only on the surface of the disc, while the “grooves and channels” on the disc “remain transparent.” (DX 88, col. 3, Ins. 13-15) The improved construction of this disc involves a transparent plastic coating over the side of the disc with the metallic deposits and transparent grooves and channels “so that [the record disc] cannot be corroded by handling, or the like, and to prevent it from becoming impaired by normal rough usage of the disc.” (DX 88, col. 3, Ins. 17-25) The ’966 patent explains that the layer of transparent plastic has “the same index of refraction as the disc.” (DX 88, col. 3, Ins. 17-18) The ’966 patent specification notes that “[although the recording medium of the present invention has been described in conjunction with the recording of video signals, it is apparent that audio or other signals may be recorded on the disc, if so desired.” (DX 88, col. 3, Ins. 31-34)

(2) The ’297 Patent

19. On June 6, 1968, Gregg filed a third patent application, which ultimately issued as the ’297 patent on January 9, 1990. (PX 30) The ’297 patent is entitled “Disc-shaped Member.” (PX 30) Since January 9, 1990, DiscoVision has been and still is the owner of the ’297 patent. (D.I. 633 at 3) The ’297 patent concerns the plastic record disc described in the ’966 patent and a duplication process in which a multiplicity of such plastic discs may be formed. (PX 30, col. 1, Ins. 15-34) The ’297 patent specification explains that this invention is “related to” both the ’258 and ’966 patents. In particular, the ’297 patent specification refers to the ’966 patent in describing the “background of the invention”:

A transparent plastic disc is described in the copending application Ser. No. 627,701, now U.S. Pat. No. 3,430,966 issued Mar. 4, 1969, in which picture information in the form of video signals is recorded on one or both sides of the disc.

(PX 30, col. 1, Ins. 16-21)

20. Claims 1, 10, and 13 are at issue with respect to the ’297 patent. Claim 1 of the ’297 patent describes the structure of a claimed “disc-shaped member” as comprising in part:

[A] major surface area having a planar surface area and a plurality of spaced-apart, elongated, discrete surface indicia integral with said planar surface area and extending away from the plane of said planar surface, wherein:

said discrete surface indicia are sequentially arranged in a plurality of substantially parallel information tracks; adjacent surface indicia along each track are separated by interval portions of said planar surface area;

said parallel information tracks are separated by intertrack portions of said planar surface area;

said intertrack portions and said interval portions together define said planar surface; said discrete surface indicia have substantially uniform widths defining the width of said information tracks; ... said discrete surface indicia have variable lengths to represent stored information.

(PX 30, col. 5, Ins. 28-49) Claim 10 of the ’297 patent provides: “The disc-shaped member as set forth in claim 1, wherein said member is adapted for transferring surface indicia to a body of disc material.” (PX 30, col. 6, Ins. 16-18) Claim 13 of the ’297 patent provides: “The disc-shaped member as set forth in claim 1, wherein said member comprises an information storage medium.” (PX 30, col. 6, Ins. 26-28; D.I. 607 at 2192-97)

21.The ’297 specification contains a written description and drawings of one embodiment of the claimed disc. The written description does not use the term “surface indicia.” Instead, the written description uses the term “discontinuous microgrooves.” (PX 30, col. 3, In. 10) The plastic disc is described as a laminated structure composed of three layers: (1) a relatively hard transparent plastic base; (2) a relatively soft transparent plastic layer; and (3) a partial metal or opaque mask. (PX 30, col. 3, Ins. 34-37) The microgrooves are formed in the soft transparent layer and arranged in spiral-shaped tracks. (PX 30, col. 3, Ins. 1-3, 38) The microgrooves are illustrated as elongated, rectangular-shaped “pits” or depressions in the surface of the disc separated by “lands” or interval portions. (PX 30, fig. 2) They are described as having “constant widths and constant depths and variable lengths representative of the recorded video signals.” (PX 30, col. 3, Ins. 11-13) The spiral-shaped information tracks are referred to in the specification as “recording track[s].” (PX 30, col. 3, Ins. 2-8) These recording tracks are separated by “inter-track” portions that are “coplanar” with the interval portions. (PX 30, fig. 2 and col. 3, Ins. 13-20; D.I. 600 at 183-84) The specification indicates that these recording tracks “may have a width, for example, of the order of 1 micron, and the spacing between the adjacent convolutions of the disc may be of the order of 1 micron.” (PX 30, col. 3, Ins. 4-7)

22. The written description and drawings of the ’297 patent refer to the “transmissive” system of recovering stored information on the disc as disclosed in the ’258 patent. (PX 30, col. 1, Ins. 21-30; D.I. 605 at 1593) As described, a metal coating is applied to the planar surface of a disc in order to increase the “optical contrast” between the planar surface and the bottoms of the microgrooves. (PX 30, col. 8, Ins. 4-10) The bottoms of the mierogrooves are not coated with any metal, leaving them transparent. (PX 30, col. 5, Ins. 9-10) The ’297 patent specification explains that “[i]n a finished disc, the surface has, arranged in a concentric spiral, deformities or discontinuities which are out of the plane of the surface and which deformities or discontinuities modulate impinging radiant energy to apply the information recorded on the disc to the radiant energy.” (PX 30, col. 5, Ins. 17-22) The ’297 patent specification does not mention the protective coating of transparent plastic disclosed in the ’966 patent. Gregg, however, considered the use of the protective coating to be the best way to make the videodisk. (DX 464, Gregg 1/8/97 at 424) Finally, although the ’297 patent specification discloses “a particular structure and process,” it notes that “modifications may be made.” (PX 30, col. 5, Ins. 23-24)

23. Elements of Claim 1 of the ’297 Patent. There are eight elements of claim 1 relevant to the ease at bar. First, information must be represented by three-dimensional, “discrete surface indicia.” (PX 30, col. 5, Ins. 29-30) Second, the discrete surface indicia must be sequentially arranged to form “a plurality of substantially parallel information tracks.” (PX 30, col. 5, Ins. 33-35) Third, “interval portions” must exist that separate the surface indicia. (PX 30, col. 5, Ins. 37-39) Fourth, the information tracks must be separated by “intertrack portions.” (PX 30, col. 5, Ins. 39-40) Fifth, the inter-track portions and the interval portions must form the planar surface area of the record disc. (PX 30, col. 5, Ins. 41-42) Sixth and seventh, the discrete surface indicia must have “substantially uniform widths” that define the widths of the information tracks. (PX 30, col. 5, Ins. 43^17) Finally, information must be represented by variable length surface indicia. (PX 30, col. 5, Ins. 48-49)

(3) The Prior Art

24.The Philips-Miller Article. In April 1936, an article entitled “The Philips-Miller System of Sound Recording” was published (“The Philips-Miller article”). (DX 203) The article discloses a system of recording that avoids certain “disadvantages of mechanical reproduction as well as those of photographic recording” because “reproduction is effected by optical means and registration on the film by mechanical means.” (DX 203 at 111) In the Philips-Miller system, sound is recorded by mechanical means using a cutter “or stylus shaped like an obtuse wedge.” (DX 203 at 108) During the recording process, the cutter is used to remove a shaving from an opaque layer in the film tape. (DX 203 at 108; D.I. 607 at 2074-76; PX 1985) If the cutter is brought deeper into the film, a wider groove will be produced. (DX 203 at 108; D.I. 605 at 1626; D.I. 607 at 2074-76; PX 1985) The Philips-Miller article explains that as the cutter “moves up and down in synchronism with the sound vibrations to be recorded (perpendicular to the tape), a transparent track on an opaque background will be produced on the moving tape whose width will vary in synchronism with the sound vibrations (fig.3).” (DX 203 at 108) The optical reproduction of this sound track is achieved when “the fluctuations in light, i.e.[,] the modulation of the track width on the [film tape], are converted directly into voltage fluctuations.” (DX 203 at 111) In other words, the cutter peels away an opaque layer producing a variable-width groove so that varying amounts of light are transmitted through the film. (D.I. 607 at 2073; DX 1985)

25. The Scope of the Philips-Miller Article. The Philips-Miller article teaches an “analog” recording in which louder sound is represented by wider grooves. (DX 203, figs. 2 and 3; D.I. 606 at 1626, 1780-81) When there is no sound or modulation signal, the cutter continues to make a narrow groove. (DX 203, fig. 2; D.I. 606 at 1781, 1786; D.I. 207 at 2076-79; PX 1886; PX 1985; PX 1994) Accordingly, the Philips-Miller article does not teach a recording system where sound is represented by discrete surface indicia. (D.I. 606 at 1782; D.I. 607 at 2072, 2315-16)

26. In the Philips-Miller system, sound is represented by three-dimensional features since the grooves vary not only in width, but also in depth. (D.I. 607 at 2072) Nevertheless, this system is considered two-dimensional because it is “a variable-width recording]” system. (D.I. 606 at 1626; 607 at 2072-73) The Philips Miller article also does not teach three-dimensional replication techniques. (DX 203 at 113) Instead, it only refers to a two-dimensional (i.e., photographic) replication method. (DX 203 at 113; D.I. 606 at 1787-88)

27. The Boswell Patent. United Kingdom Patent No. 644,432 (“the Boswell patent”) was published on October 11, 1950, and is entitled “Improvements in Recording and Reproducing Systems.” (DX 201) The Boswell invention involves the combination of “pulse modulation” signals with magnetic, wire, optical, and capacitive recording devices. (DX 201 at 1, In. 97 - 2, In. 3; D.I. 607 at 2069-71) The Boswell patent describes this invention as “recording and reproducing systems in which the time function of the phenomena to be recorded is translated into variations of the physical or chemical properties of a carrier material and retained thereby as a function of position.” (DX 201 at 1, Ins. 9-15) In particular, the recording system has the following specific features relating to how sound is represented on a recording path:

[A] certain property or certain properties of the medium carrying the modulation are switched between one or the other of two extreme conditions, the two conditions of the carrier medium alternating in rapid succession along the direction of the recording. The modulation in accordance with this invention is contained in the relative intervals between the transitions from one extreme condition of the carrier properties to the other....

According to a further feature of the invention, the sound to be recorded is caused to produce a pulse modulated signal and the pulses are recorded on one or more carrier material record blanks.

The record thus produced may be played back on [a] suitable apparatus and it may also be used for producing duplicate records.

(DX 201 at 1, Ins. 68-97) The Boswell patent specification explains that the recording path may be linear in shape if the recording is on “a tape, strip or wire-like member.” (DX 201 at 3, In. 130 - 4, In. 2) If the recording medium is a disc, then the recording path is shaped “spirally.” (DX 201 at 4, In. 2)

28. The Boswell pulse-modulation method for recording and reproducing sound “may be applied [ ] to photographic recording, magnetic recording or capacitive recording.” (DX 201 at 1, In. 98 - 2, In. 3) The Boswell patent specification explains that “a photographic form of record may be produced mechanically as by the Philips-Muller system.” (DX 201 at 4, Ins. 3-17)

29. The Boswell patent describes several different “pulse-modulating systems” and the resultant record of the waveform. (DX 201 at 4, Ins. 34-37) In one of the systems, a “pulse-width modulated waveform” is described as “eompris[ing] a series of pulses p occurring at regular intervals /[,] i.e.[,] at a constant pulse repetition frequency and of constant amplitude but whose individual width is determined by the amplitude of the controlling waveform a at the instant of sampling, i.e.[,] at the related interval/.” (DX 201 at 4, Ins. 45-53, fig. 2(b)) The resultant record of this waveform has “alternating] black and white sections x and y [that] represent the alternating different conditions of the record medium, e.g.[,] transparent and opaque sections of a photographic record .... ” (DX 201 at 4, Ins. 53-58, fig. 2(c)) The Boswell patent also describes “pulse-spacing modulation,” “pulse-frequency modulation,” and “pulse-code modulation.” (DX 201 at 4, Ins. 76, 111-12, 130 - 5, In. 1, fig. 2(e) — (j))

30.Boswell Patent Claims Relevant to the ’297 Patent. Claims 1 through 6 of the Boswell patent are relevant to the instant case and are reproduced below:

1. A method of recording sound or other transitory phenomena wherein a certain property or certain properties of a recording medium are changed alternately from one to the other of two different conditions along the direction of recording, the relative spacing intervals between the respective transitions from one condition to the other being varied in accordance with the variations of the phenomena to be recorded.

2. A method of recording sound as claimed in claim 1 wherein the sound to be recorded is translated into a pulsed signal form of modulation involving variation between two chosen signal levels only and then recording such signal pulses on a record blank.

3. A method of recording as claimed in claim 1 or 2 wherein the sound or other phenomena to be recorded is translated into a signal of the pulse-width modulated form.

4. A method of recording as claimed in claim 1 or 2 wherein the sound or other phenomena to be recorded is translated into a signal of the pulse-spacing modulated form.

5. A method of recording as claimed in claim 1 or 2 wherein the sound or other phenomena to be recorded is translated into a signal of the pulse-frequency modulated form.

6. A method of recording as claimed in any of the preceding claims wherein the signal pulses are recorded as variations of the light transmitting properties of the record.

(DX 201 at 5, Ins. 76-113)

31. The Scope of the Boswell Patent. The Boswell patent teaches a recording system that converts analog signals into a series of variable length pulses. (D.I. 605 at 1614; D.I. 607 at 2086, 2105-06, 2313) The Boswell patent teaches that sound may be recorded as the variation between two different physical states or conditions. (D.I. 607 at 2105-06, 2313) Accordingly, the Boswell patent does not teach that sound is recorded as the variation of three physical states or conditions. (D.I. 607 at 2313)

32. The Boswell patent teaches a pulse-length modulation recording in which the recording is represented by “alternating spaces [i.e., two different physical conditions] [ ] hav[ing] variable lengths.” (D.I. 607 at 2105) The recording path is comprised of these alternating physical states and “relative intervals between the transitions from one” physical state to another. (D.I. 607 at 2105)

33. As is apparent from its claims, the Boswell patent discloses a method of recording rather than a specific structure. In this regard, none of the Boswell patent claims contains a description of a particular structure. Some of the claims, however, cover a method using a specific recording medium. In particular, claim 6 covers a pulse-modulation method of recording involving a recording medium with “light transmitting properties.” (DX 201 at 5, Ins. 109-13) Based on the specification, the Boswell patent teaches that such a recording medium may be disc-shaped. Furthermore, the Boswell patent teaches that a disc-shaped record would have a spiral recording path. (DX 201 at 4, Ins. 1-2)

34. The Boswell invention does not specifically teach three-dimensional structures as features of the recording path. (D.I. 605 at 1617-22; D.I. 607 at 2071-73) The Boswell patent also does not teach three-dimensional replication techniques. (D.I. 605 at 1804-05) The only reference to three-dimensional recording features is the reference to a mechanical method of recording called the “Philips-Muller” system. (DX 201 at 4, Ins. 15-17; D.I. 605 at 1805)

35. The Boswell Patent and One of Ordinary Skill. One of ordinary skill in the art in the 1950s and 1960s would have assumed that Boswell’s reference to “Philips-Muller” was really a reference to the Philips-Miller system of recording. (D.I. 607 at 2078, 2302-03)

36. This hypothetical person would have had to make several modifications to the Philips-Miller cutter in order to create discrete three-dimensional surface indicia on a disc-shaped recording medium. (D.I. 605 at 1627) In particular, a person of ordinary skill in the art would have had to (1) “lift the cutting element above the [recording medium] and [ ] pulse it down a finite depth” (D.I. 605 at 1630; D.I. 606 at 1782); (2) change the angle of the cutter (D.I. 605 at 1628); and (3) make “a blunt end in the middle” of the cutter. (D.I. 605 at 1628; D.I. 606 at 1782) The hypothetical person would have had the knowledge and ability to mechanically cut three-dimensional features of constant width in a recording medium to represent information. (D.I. 607 at 2318-20) This person also would have known how to make the appropriate changes to the angle and shape of a Philips-Miller cutter. (D.I. 607 at 2307)

37. However, this person would have had to make significant modifications to pulse modulate the Philips-Miller cutter in order to create “discrete” surface indicia with constant widths. (D.I. 607 at 2314-15) Although the record indicates that a person of ordinary skill would have been able to cut three-dimensional features of constant width, there is no suggestion or teaching in the Philips-Miller article or the Boswell patent to create discrete surface indicia with constant widths. (D.I. 606 at 1782-84, 1786-89; D.I. 607 at 2076-79, 2314-17) Accordingly, there was no incentive for one of ordinary skill in the 1960s to make a recording using discrete, variable length surface indicia with constant widths. (D.I. 607 at 2316-17)

38. The Dove Patent. U.S. Patent No. 3,226,696 (“the Dove patent”) issued on December 28, 1965, and is entitled “Data Storage and Retrieval System.” (DX 11) The Dove invention “relates to high density and high speed data recording, storage, readout, and display methods and apparatus.” (DX 11, col. 1, Ins. 7-9) The Dove invention utilizes a “hole burning” technique to store information on a disc or other recording medium, such as a thin metallic film. (DX 11, col. 2, Ins. 36-41, col. 3, Ins. 5-11, 56-68) The Dove patent also teaches that information may be stored by removing a “thin layer” or using a “chemical substance” or an “anti-etchant.” (DX 11, col. 3, In. 60-col. 4, In. 10) The invention stores information by changing the physical properties of the recording medium. (DX 11, col. 3, In. 66; D.I. 606 at 1632-34)

39. In particular, the Dove patent teaches the use of micron-sized holes or partial holes drilled into a recording medium by an electron or laser beam to represent stored information. (DX 11, col. 2, Ins. 42-47, col. 4, Ins. 24-31; D.I. 605 at 1634) The recording medium in which the holes are drilled has an opaque coating (e.g., a thin metallic film or “anti-echant”). (DX 11, col. 3, Ins. 5-10, col. 4, Ins. 1-11; D.I. 605 at 1632-33; D.I. 607 at 2051) The Dove Patent specification indicates that the recording medium may take the form of a “stack of discs.” (DX 11, col. 4, Ins. 12-14, figs. 5 and 6)

40. The Scope of the Dove Invention. The Dove invention covers a high-speed information storage and retrieval system that uses, among other things, a stack of disc-shaped records to store information. (DX 11, figs. 5 and 6) One of the objects of the Dove invention is “to provide an ultra-high density storage and readout method and apparatus which will increase storage densities and access time by several orders of magnitude over presently existing devices.” (DX 11, col. 1, Ins. 27-31) Another object of the Dove invention is to “provide an ultra-high density, ultra-high speed recording and reproducing system that can display the information contained therein by means of a static reproduction system.” (DX 11, col. 1, Ins. 34-38) This recording and reproducing system is designed so that “a variety of recording media can be used, and in which a highly flexible system of recording and reproducing may be employed.” (DX 11, col. 1, Ins. 54-57)

41. The Dove patent teaches that information may be represented on disc-shaped records as a series of micron-sized “holes” or “partial holes” that are spaced at regular intervals. (DX 11, col. 2, Ins. 35-40, col. 3, Ins. 60-72; D.I. 605 at 1634; D.I. 607 at 2052) The micron-sized holes may be produced by an electron beam, lasers, or “Maser.” (DX 11, col. 2, Ins. 24-25, 49-51, col. 3, Ins. 42-50, col. 4, Ins. 24-31; D.I. 606 at 1798) In the ease of electron beam recording, there is “a tolerance of plus or minus 50 percent” in the size of the holes. (DX 11, col. 3, Ins. 45-47; D.I. 607 at 2053)

42. The Dove invention teaches that these holes may be of uniform depth. (D.I. 607 at 2322) In the Dove invention, information is represented simply by the presence or absence of a hole. (D.I. 606 at 1801-02; D.I. 607 at 2043-45) There is no further disclosure of how information is represented by the holes. (D.I. 606 at 1902) The precise-shape, size, and location of the hole is not disclosed by the patent specification. (D.I. 606 at 1801-02; D.I. 607 at 2043-45, 2052-53)

43. The Dove patent does not teach or suggest that information can be represented by holes of constant width and variable (elongated) length. (D.I. 607 at 2057-59, 2085-86) Furthermore, there is no teaching that the recording can be replicated using a stamping or embossing method. (D.I. 607 at 2064)

(4) The Level of Ordinary Skill in the Art in the 1960s

44. One of ordinary skill in the art during the 1960s would have known that a spiral recording track on a disc can be formed such that each loop of the spiral is substantially parallel to the next loop. (D.I. 607 at 2113) This hypothetical person, however, would not necessarily have made the spaces between the loops substantially parallel. (D.I. 607 at 2113-14)

45. The Dove patent specification’s reference to the use of an “anti-echant” as the opaque coating does not suggest to one of ordinary skill in the art in the 1960s to use “photoresist.” (D.I. 607 at 2061-62) one of ordinary skill in the art would have considered the “anti-echant” reference in the Dove patent to suggest the use of wax or paint since the specification refers to the “removal” of the anti-echant by an electron beam. (DX 11, col. 4, Ins. 5-7) In contrast, the removal of photoresist would involve “exposure” and subsequent “development.” (D.I. 607 at 2061-62)

46. One of ordinary sldll in the pertinent art during the 1960s would have known that phase interference principles can be used to read stored information on a transparent disc. (D.I. 605 at 1703-05; D.I. 607 at 2131-32, 2165-66, 2205) In particular, this hypothetical person would have known that phase interference effects are necessary to generate a signal from a transmissive disc with micron-sized, three-dimensional features. (D.I. 607 at 2200-04, 2156) This person would have known that an interferometer coupled to an objective lens can be used to read the disc-shaped member disclosed in the ’297 patent. (D.I. 600 at 209)

47. This person also would have known that phase interference principles can be used to read information reflectively off a record disc. (D.I. 605 at 1704; D.I. 607 at 2159) During the 1960s, it was well known that phase interference effects involve the pit depth of surface indicia. (D.I. 607 at 2132-33, 2205-06) It also was well known that, for phase interference purposes, the required pit depth differed depending on whether a disc was to be read reflectively as opposed to transmissively. (D.I. 605 at 1703-05) Accordingly, one of ordinary skill in the 1960s would have known how to vary a reading system to read discs either reflectively or transmissively. (D.I. 600 at 239-40; D.I. 607 at 2165-67)

48. One of ordinary skill in the 1960s would have known about photolithography techniques. (D.I. 607 at 2160) This person would have known how to create very small structures on a disc using lasers and photore-sist. (D.I. 607 at 2162) Although designing the prototype disc would not have taken a long time, making one would have taken one of ordinary skill in the 1960s several months to a year. (D.I. 607 at 2163) Most of this time would have been spent on learning to operate and run the necessary equipment. (D.I. 607 at 2163) This type of work would have been considered “routine and straightforward.” (D.I. 607 at 2163)

49. Using photolithography techniques, one of ordinary skill in the 1960s also could have made a master disc. (D.1.2161) From the master disc, this person could have made a stamper disc, which is used to produce CDs in high volume. (D.I. 600 at 175; D.I. 607 at 2161)

C. DMI’s CDs and Stampers

50. DMI’s CDs store information on a disc in a series of “pits” and “lands” (i.e., interval portions) arranged in a spiral-shaped track. (PX 969A; PX 969B; PX 969F; D.I. 600 at 113-19; D.I. 558 at 5,10-11) In DMI’s CDs, the pits and lands are formed in the planar surface of a plastic disc-shaped substrate. (D.I. 600 at 118, 148-49,156-58; D.I. 558 at 10-11) The side of the CD substrate containing the pits and lands is coated with a thin layer of reflective aluminum. (D.I. 600 at 119,149) A protective layer of plastic coats the aluminum layer. (D.I. 600 at 119, 149) DMI’s CDs store information in a digital format in which the pits and lands are of discretely variable lengths. (D.I. 600 at 165; D.I. 558 at 16)

51. The pits and lands of DMI’s CDs are sequentially arranged in a plurality of substantially parallel information tracks. (D.I. 600 at 164; PX 969A; PX 969B) The information tracks on DMI’s CDs are separated by intertrack portions of the planar surface area. (D.I. 600 at 165) The pits on DMI’s CDs have the same width or substantially the same width. (D.I. 600 at 165; PX 969A; PX 969B) The intertrack portions of DMI’s CDs have substantially the same width. (D.I. 600 at 165; PX 969A)

52. The widths of the information tracks on DMI’s CDs are defined by the widths of the pits and lands. (D.I. 600 at 171-72; D.I. 601 at 367-88; PX 969A; PX 969B; PX 1981) In DMI’s CDs, information is stored in the lengths of the pits and lands (i.e., surface indicia and interval portions). (D.I. 600 at 172-74) The intertrack portions of DMI’s CD substrates contain no information. (D.I. 600 at 160,174-42; D.I. 606 at 1765-66)

53. DMI’s CDs were designed to be read on conventional CD players using reflective phase interference principles. (D.I. 604 at 1376-79) In a phase interference system, a laser beam that is wider than the width of a pit is used to read information from the CD. (D.I. 604 at 1384-86, 1399) DMI spent several years optimizing the pit geometry in order to produce a “higher quality” product because the market for CDs is “very competitive.” (D.I. 604 at 1387, 1399) After experimenting with different pit geometries, DMI determined that the optimal pit width for its CDs was one-third the width of the scanning spot and the optimal pit depth was 0.125 microns. (D.I. 604 at 1389, 1394) DMI also determined that pits with sloped walls produced “very good tracking signals.” (D.I. 604 at 1394) The sloped walls also allowed DMI to produce the CDs faster than CDs with straight walled pits. (D.I. 604 at 1395)

54. The method of reading a CD does not substantially change the CD’s structure. (D.I. 600 at 204-18; PX 1981) The substrate under the protective coating and aluminum layer of a DMI CD has the same underlying structure as a disc that is played in a transmissive system. (D.I. 600 at 164-66)

55. DMI’s stampers are disc-shaped members that have all the same features as DMI’s CDs. (D.I. 600 at 167-69) DMI’s stampers’ surface indicia are complementary to the surface indicia of DMI’s CD substrates. (D.I. 600 at 167-69) Information can be retrieved from DMI’s CD stampers. (D.I. 600 at 170)

D. The Constant Linear Velocity Patents

(1) Overview of the Technology

56. A mastering machine is used to record information in the form of sequentially arranged pits and lands in a spiral track on a disc. (D.I. 601 at 410) In particular, a mastering machine utilizes a laser (or transducer) to form the pits and lands in the photore-sist layer of a glass master disc. (¶¶ 45, 48-49) In order to record information on a disc effectively, two mechanical problems must be resolved: (1) the master disc must rotate in a precise and known manner; and (2) the disc must move relative to the laser in order to create a spiral track of pits and lands. (D.I. 601 at 410)

57. “Servo” systems are used to resolve these two problems. (D.I. 601 at 411) A servo system is a system designed to control some measure. (D.I. 601 at 396) In a mastering machine, servo systems are used to control the rotation of the disc and the translation of either the laser or the disc relative to the other. (D.I. 601 at 411)

58. The speed at which a disc rotates is called “angular velocity” and can be expressed as revolutions per second (i.e., frequency). (D.I. 601 at 413-16) “Linear velocity” is the speed at which a particular distance is traversed and may be expressed as millimeters per second. (D.I. 601 at 416) With respect to a rotating disc, the linear velocity is measured at a specific radius. If the angular velocity of a disc is constant, the linear velocity increases as the radius increases. (D.I. 601 at 421-22) Accordingly, in order to'maintain a constant linear velocity (“CLV”), the angular velocity must decrease as the radius increases. (D.I. 601 at 422-25)

59. By utilizing CLV in the mastering process, the recording density of discs may be increased. (D.I. 601 at 426-31) To produce a CLV recording, the mastering machine must be capable of performing two tasks: (1) the disc must rotate more slowly as the recording moves from the inner region of the disc to the outer region of the disc; and (2) the radial speed of the laser relative to the disc must slow down as the recording radius increases in order to maintain uniform spacing between tracks. (D.I. 601 at 434-35)

(2) The ’326 Patent

60. U.S. Patent No. 4,228,326 (“the ’326 patent”) is entitled “System for Recording Information on a Rotatable Storage Disc in a Substantially Uniform Recording Density.” (PX 2) The inventors of the ’326 patent are listed as Wayne R. Dakin and Ludwig Cesh-kovsky. (PX 2) It was issued on October 14, 1980. (PX 2) DiscoVision has been and still is the owner by assignment of all rights, title, and interests in, to, and under the ’326 patent. (D.I. 633 at 3)

61. The ’326 patent discloses a system for recording information on a disc using CLV to increase the recording density. (D.I. 601 at 435-38) The ’326 abstract provides the following description of the invention:

Method and apparatus for controllably rotating an information storage disc relative to a radially movable optical transducer, whereby information is recorded on the disc in a series of substantially circular and concentrically arranged information tracks. The angular velocity of the disc and the radial velocity of the transducer are cont-rollably adjusted to be inversely proportional to the radius of the particular information track being recorded, whereby the track is moved at a constant linear velocity relative to the transducer and the successive tracks are equally spaced with respect to each other, and whereby a uniform information recording density over the surface of the disc is achieved.

(PX 2) The ’326 patent specification explains that “the present invention is embodied in an improved apparatus, and a related method, for controlling the angular velocity of an information storage disc” having substantially parallel, spiral-shaped information tracks. (PX 2, col. 2, Ins. 7-9) The patent specification describes the apparatus as having a “lens” (transducer), which is attached to a carriage that is “radially moveable relative to the disc.” (PX 2, col. 2, Ins. 42-44) The circuitry that produces the velocity signal is described as follows:

The means for producing a measure of radius includes a potentiometer coupled to a moveable lens carriage and appropriately connected to produce an analog voltage signal that varies inversely with the radius of the selected track. This analog voltage signal is applied to a voltage controlled oscillator (VCO) to produce a velocity signal having a frequency substantially inversely proportional to the radius of the selected track.

The velocity signal produced by the VCO is applied to a spindle motor servo for synchronising the angular velocity of the spindle motor that rotates the disc with the instantaneous frequency of the velocity signal, whereby the disc is moved at a substantially constant linear velocity relative to the transducer.

(PX 2, col. 2, Ins. 45-59) The circuitry is considered a “closed-loop system” because “as the transducer moves, it affects the potentiometer, which changes the input to the VCO, which changes the frequency” signal. (D.I. 601 at 620)

62. The preferred embodiment of the ’326 patent is an apparatus in which an “optical transducer 15” and “lens carriage 17” move in a radial direction while a disc rotates about its central axis at a precisely controlled angular velocity. (PX 2, col. 3, Ins. 25-37, fig. 1; PX 2040) The apparatus includes a “lens carriage driver 37 ... for moving the lens carriage 17 radially relative to the disc.” (PX 2, col. 3, Ins. 58-60) The lens carriage driver is connected to a “lead screw 19” which moves the “lens carriage 17” and the transducer radially. (PX 2, col. 3, Ins. 35-39)

63. The apparatus also includes a means for producing a velocity signal with a frequency “inversely proportional to the radius of the information track being recorded.” (PX 2, col. 4, Ins. 25-27). Specifically, the velocity signal is produced by the VCO, “predominantly an analog device.” (PX 2, col. 4, In. 28, fig. 1; D.I. 601 at 611) The VCO receives a voltage control signal that is inversely proportional with the radius of the information track being recorded. (PX 2, col. 4, Ins. 30-35, fig. 1) An “amplifier circuit 43” connects the voltage control signal with the “lead screw 19.” (PX 2, col. 4, Ins. 30-35) The amplifier circuit is made up of analog components. (D.I. 601 at 610-12, 617-18) The components are: (1) a “conventional operational amplifier 47;” (2) a “fixed resistor 49;” and (3) a “potentiometer 45.” (PX.2, col.4, lns.40^15) The potentiometer 45 is connected to the lead screw. (D.I. 601 at 614) The connection is such that the voltage control signal 41 changes depending on the physical location of the transducer 17. (D.I. 601 at 614; PX 2, fig. 1) Thus, for each radial position of the transducer, there is a unique voltage input to the VCO. (D.I. 601 at 613-14)

64. The apparatus also includes a “spindle motor servo 25” that controls the rotation speed of the disc. (D.I. 601 at 445-47; PX 2040; PX 2, col. 4, In. 51 — col. 5, In. 2, fig. 1) In particular, the “spindle motor 51” provides the impetus for disc rotation. (D.I. 601 at 445; PX 2040) An “AC tachometer 53” is coupled to the spindle motor and produces “a tachometer signal having the frequency proportional” to the rotational speed of the spindle motor. (D.I. 601 at 446; PX 2, col. 3, Ins. 55-59) A “phase detector 55” compares the tachometer signal with the “velocity signal” from the VCO and produces a “control signal proportional to the phase difference.” (PX 2, col. 4, Ins. 60-65; D.I. 601 at 446-47) The control signal is transmitted to a “phase and amplitude compensator 63” and “an amplifier 67.” (PX 2, col. 4, Ins. 65-68) “The output of the amplifier is coupled ... to the spindle motor 51 to appropriately control” the speed at which the disc is rotated. (PX 2, col. 4, In. 68 - col. 5, In. 2; D.I. 601 at 446-47)

65. Claims of the ’326 Patent. Claims 2 and 8 of the ’326 patent are at issue in this case. Claim 2 covers an “[ajpparatus for recording information on an information storage disc, wherein the information is recorded in [a] plurality of substantially circular and concentrically arranged information tracks.” (PX 2, col. 6, Ins. 36-39) The claimed apparatus is described as comprising:

transducer means movable radially relative to

the disc to be positioned in a prescribed relationship relative to a selected one of the information tracks; means for producing a velocity signal having

a frequency substantially inversely proportional to the radius of the selected track;

motor means for rotating the disc;

tachometer means coupled to said motor means for producing a tachometer signal having a frequency proportional to the angular velocity of said motor means; and

phase detector means for comparing the

respective phase angles of the tachometer signal, and for producing a control signal indicative of the phase difference thereof, said control signal being coupled to said motor means to appropriately control its angular velocity, whereby the selected information track is moved at a substantially constant linear velocity relative to said transducer means and a substantially uniform information recording density is achieved.

(PX 2, col. 6, Ins. 41-61) Claim 8 is directed to

[a] method of driving a motor to controll-ably rotate an information storage disc relative to a transducer, wherein said disc has a plurality of substantially circular and concentrically arranged information tracks, and wherein said transducer is radially movable relative to said disc to be positioned in a prescribed relationship relative to a selected one of the information tracks.

(PX 2, col. 8, Ins. 30-34) The method in claim 8 comprises the following steps:

producing a velocity signal in accordance with the radial position of the transducer, said velocity signal having a frequency substantially inversely proportional to the radius of the selected information track;

producing a tachometer signal having a frequency proportional to the angular velocity of the motor; and

comparing the respective phase angles of the tachometer signal and the velocity signal, to produce a control signal for coupling to the motor, to controllably adjust the respective phase angles, whereby the selected information track is moved at a prescribed constant linear velocity relative to the transducer.

(PX 2, col. 8, Ins. 38-54)

(3) Prior Art for the ’326 Patent

66. The Bringol Patent. U.S. Patent No. 3,826,965 (“the Bringol Patent”), entitled “Constant Tangential Velocity Motor Control for a Disc Recording System,” issued on July 20, 1974, (DX 211) The Bringol patent was not cited as a prior art reference in the prosecution history of the ’326 patent. (D.I. 602 at 867) The Bringol invention concerns a disc recording system in which the transducer head maintains a “constant tangential velocity” as it moves “radially along the disc.” (DX 211, col. 1, Ins. 6-11) The Bringol patent specification notes that “[i]f the disc is maintained at a constant angular velocity” during the recording process, the “recording density is lowered ... as the [transducing] head moves radially outward from the center of the disc.” (DX 211, col. 1, Ins. 19-31) The Bringol invention claims to have solved this problem by using a “linear potentiometer” connected to the transducing head and to the “disc driving DC motor” such that the “motor drive is decreased as the head nears the outermost portion of the disc.” (DX 211, col. 1, Ins. 32-14) The Bringol invention is generally described as

a disc recording system ... including a motor control system ... as the prime mover of the recording disc. A transducer attached to a carrier movable along a radius of the disc is utilized for reading information from the disc or recording information onto the disc. A linear potentiometer is fixedly mounted along a radius of the disc and includes a moveable wiper connected for movement with the transducer carrier. The potentiometer is connected in the feedback loop of a high gain amplifier function generator which produces an output voltage that is hyperbolic with respect to the position of the wiper along the length of the linear potentiometer. This hyperbolic output voltage is applied to a DC motor for providing substantially constant tangential velocity of the portion of the disc adjacent to the transducer.

(DX 211, col. 2, Ins. 14-31)

67. The Scope of the Bringol Patent. The Bringol patent teaches a system of recording information on a disc using a transducer that is radially moveable and a motor that rotates the disc at a CLV with respect to the transducer. (D.I. 602 at 867-71, 872, 994-95) The Bringol patent also teaches that a potentiometer can be used to generate a signal that corresponds to the actual radial position of a transducer recording on an information disc. (D.I. 602 at 869-71)

68. The Bringol patent teaches a magnetic recording system in which approximately 30 seconds of information can be recorded on a disc. (D.I. 602 at 920, 954) In comparison, a CD typically can hold 74 minutes of information. (D.I. 602 at 921) The Bringol patent does not teach a CLV system that is capable of high-density information storage/recording. (D.I. 602 at 923) In particular, the Bringol patent does not teach the use of a very fine track pitch as would be needed in a high density recording, such as a CD. (D.I. 602 at 921-24)

69. The Dakin Reissue Patent. U.S. Patent No. Re. 32,431 (“the Dakin reissue patent”) is a reissue of a prior patent filed on November 16, 1978, the same day the ’326 patent was filed. (DX 210) The Dakin reissue patent is entitled “System for Rotating an Information Storage Disc at a Variable Angular Velocity to Recover Information Therefrom at a Prescribed Constant Rate.” The abstract of the Dakin reissue patent describes the invention as a “[mjethod and apparatus for recovering information at a substantially constant rate from a rotatable information storage disc.” The specification explains that

[s]ince known prior apparatus for recovering information from rotatable information storage discs operate to rotate the disc only at a constant angular velocity relative to a transducer, they are generally incapable of recovering information from discs of the type having [ ] [a CLV] recording density.

(DX 210, col. 2, Ins. 20-27) Accordingly, the Dakin reissue patent describes an apparatus and method for recovering information by rotating an information storage disc at a CLV relative to a transducer that is radially moveable. (DX 210, col. 2, Ins. 28-36, col. 3, Ins. 10-23)

70.The Dakin reissue patent specification describes the means for rotating a disc at a constant linear velocity as follows:

The coarse speed control means preferably comprises a potentiometer mechanically coupled to the transducer means, which is movable radially relative to the disc. An electrical signal produced by the potentiometer is substantially proportional to such radius and is coupled to the means for producing the composite speed control signal, which, in the preferred embodiment comprises a voltage-controlled oscillator (VCO). The composite speed control signal produced by the VCO has a frequency substantially inversely proportional to the radius of the selected track, and is coupled to a conventional servomechanism for rotating a disc at a corresponding angular velocity.

(DX 210, col. 3, Ins. 11-23) The Dakin reissue patent specification includes a figure of the means for rotating the information storage disc. (DX 210, fig. 3) The patent specification describes this figure as “a simplified block diagram of a prior art apparatus for rotating the video disc [ ] at a constant angular velocity to recover the video signal therefrom.” (DX 210, col. 4, Ins. 16-19)

71. The “conventional servo [ ] mechanism” of the Dakin reissue patent is identical to the “spindle motor servo” described in the ’326 patent. (DX 210, fig. 3) In particular, the servo mechanism of the Dakin reissue patent utilizes a phase detector and an AC tachometer in the same manner as described in the ’326 patent. (DX 210, fig. 3)

(4) The ’860 Patent

72. U.S. Patent No. 4,190,860 (“the ’860 patent”), entitled “Digital Method and Apparatus for Rotating an Information Storage Disk,” was issued on February 26, 1980. (PX 2036) The inventors of the ’860 patent are listed as Frank J. Somers and John S. Winslow. (PX 2036) Since the grant of the ’860 patent, DiseoVision has been the owner by assignment of all the rights, title, and interests in, to, and under the ’860 patent. (D.I. 633 at 3)

73. The ’860 patent discloses “an improved apparatus and method” for rotating an information storage disc about its central axis” at a CLV relative to the radial position of an optical transducer. (PX 2036, col. 2, In. 56 - col. 3, In. 2) The improvements that the ’860 patent discloses fulfill the need for a CLV system that is less susceptible to “non-linearities and drifts of various elements in the apparatus, and without necessitating substantial initial calibration procedures.” (PX 2036, col. 2, Ins. 49-54)

74. The ’860 patent discloses an apparatus that has a radially moveable transducer. (PX 2036, fig. 1) CLV is achieved in the ’860 patent by reducing the speed of the lens carriage and spindle motors as the transducer moves away from the center of the disc. (PX 2036, col. 3, Ins. 5-60, fig. 1) The ’860 invention utilizes the same spindle motor servo and a similar lens carriage drive as the ’326 invention. (PX 2102, fig 1; D.I. 601 at 470-71)

75. The differences between the ’860 and ’326 inventions relate to the means for producing the velocity signal that controls the rotatio