OpenTV, Inc. et al v. Apple, Inc.

Filing 173

CLAIM CONSTRUCTION ORDER. Signed by Judge Haywood S. Gilliam, Jr. on 6/5/2015. (ndrS, COURT STAFF) (Filed on 6/5/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OPENTV, INC., et al.,

Case No. 14-cv-01622-HSG

Plaintiffs,
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CLAIM CONSTRUCTION ORDER

v.

Re: Dkt. Nos. 95, 107, 111, 119

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APPLE, INC.,
Defendant.

United States District Court
Northern District of California

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Plaintiffs OpenTV, Inc. and Nagravision, S.A. filed this patent infringement action against

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Defendant Apple, Inc. The parties seek construction of eight claim terms found in three of the

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asserted patents: Patent Nos. 5,884,033 (“the ’033 Patent”), 7,900,229 (“the ’229 Patent”), and

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5,566,287 (“the ’287 Patent”). This order follows claim construction briefing, a technology

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tutorial, and a claim construction hearing.

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I.

CLAIM CONSTRUCTION ANALYSIS

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A.

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Claim construction is a question of law to be determined by the Court. See Markman v.

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Westview Instruments, Inc., 517 U.S. 370, 391 (1996). Generally, claim terms should be given

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their ordinary and customary meaning—i.e., the meaning that the terms would have to a person of

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ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–

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13 (Fed. Cir. 2005) (en banc). There are only two circumstances where a claim is not entitled to

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its plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own

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lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the

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specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,

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1365 (Fed. Cir. 2012).

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Legal Standard

When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic

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evidence such as the language of the claims themselves, the specification, and the prosecution

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history. Phillips, 415 F.3d at 1312–17. The claim language can “provide substantial guidance as

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to the meaning of particular claim terms,” both through the context in which the claim terms are

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used and by considering other claims in the same patent. Id. at 1314. The specification is likewise

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a crucial source of information. Although it is improper to read limitations from the specification

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into the claims, the specification is “the single best guide to the meaning of a disputed term.” Id.

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at 1315 (“[T]he specification is always highly relevant to the claim construction analysis. Usually,

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it is dispositive.” (internal quotation marks omitted)); see also Merck & Co. v. Teva Pharms. USA,

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Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (“[C]laims must be construed so as to be consistent

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United States District Court
Northern District of California

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with the specification.”).
Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—

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technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help

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construe the claims. Phillips, 415 F.3d at 1317–18. However, extrinsic evidence is “less

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significant than the intrinsic record in determining the legally operative meaning of claim

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language.” Id. at 1317 (internal quotation marks omitted).
’033 Patent

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B.

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The ’033 Patent, titled “Internet Filtering System for Filtering Data Transferred Over the

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Internet Utilizing Immediate and Deferred Filtering Actions,” claims a system and method that

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allows users to filter Internet transmissions containing objectionable material. The parties dispute

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the scope of two claim terms related to the filtering mechanism of the invention.

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1. “filters specifying immediate action” & “filters specifying deferred action”

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Term

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filters specifying
immediate action

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filters specifying
deferred action

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United States District Court
Northern District of California

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Plaintiffs’ Proposed
Construction
filters specifying whether to
allow or block a transmission
immediately and operate
between the presentation and
application levels of the
seven-level ISO protocol
model
filters specifying whether to
allow or block a transmission
conditionally and operate
between the presentation and
application levels of the
seven-level ISO protocol
model

Defendant’s Proposed
Construction
filters specifying whether
transmission of the message
should be unconditionally
allowed or blocked based on a
port number or network
address specified in the
message
filters specifying whether
transmission of the message
should be allowed or blocked
based on information in the
message other than a port
number or network address

The ’033 Patent claims describe two types of filters that are used to determine whether a

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transmission should be allowed or blocked: “filters specifying immediate action” and “filters

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specifying deferred action.” For example, claim 1 describes:

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1. A method for communicating with servers over the Internet to
prevent or allow access to Internet sites, the method comprising
computer-implemented steps of:
(a) opening a data stream to send a message through an interface
to an Internet server;
(b) maintaining a database of filtering information comprising a
table of filters, said table comprising
(1) filters specifying immediate action, and
(2) filters specifying deferred action;
(c) comparing information in the message to filtering
information in at least one of said filters specifying
immediate action and said filters specifying deferred
action; and
(d) determining whether to prevent or allow the outgoing
transmission of the message based on the comparison.
The parties dispute 1) on what basis the two types of filters are distinguishable and 2)

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whether the filters operate only “between the presentation and application levels of the seven-level

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ISO protocol model.”

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i. Distinguishing “immediate action” filters from “deferred action” filters

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The parties do not dispute that there must be some distinction between these two types of

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filters. Based on the ordinary meaning of the claim language, the immediate action filters operate

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immediately, while the deferred action filters operate on a deferred basis. The specification

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elaborates upon this distinction and explains that immediate action filters, when triggered,

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immediately and unconditionally indicate whether a transmission should be allowed or blocked,

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whereas deferred action filters, when triggered, delay specifying whether to block or allow a

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transmission until additional conditions are satisfied. The specification gives the following

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example:

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United States District Court
Northern District of California

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In a preferred embodiment, the system compares an interface port
and an IP address to a stored list of ports and addresses. If a match
is found, the system can allow the message to be transmitted or
block the message prior to transmission [i.e., immediately and
unconditionally indicate whether the transmission should be allowed
or blocked]. The system can defer the decision whether to allow or
block, and then monitor transmissions to search for a particular
command and a particular filter pattern [i.e., defer the allow/block
decision until additional conditions are satisfied].

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’033 Patent 1:41-47. What distinguishes the filters is whether, once the filters are retrieved, the

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decision to allow or block the transmission is made immediately and unconditionally or delayed

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until additional conditions are satisfied.

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The specification further describes the filters as follows:
Each filter entry in the filter database also has a field for specifying
an action to be taken by the client if that filter were retrieved. These
actions are essentially divided into two groups, direct action or
deferred action. Direct actions indicate that the system should
unconditionally allow or unconditionally block the transmission.
When filter entries are retrieved, they are first scanned for entries
that require direct action; if there are any, these actions are carried
out immediately.

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Id. at 4:12-20. Additionally, the patentee uses “i.e.” to define “immediate action” as

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“unconditional allowing or blocking.” Id. at 4:49-50; see Edwards Lifesciences LLC v. Cook Inc.,

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582 F.3d 1322, 1334 (Fed. Cir. 2009) (holding that a patentee’s use of “i.e.” “signals an intent to

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define the word to which it refers”).

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In the ’033 Patent prosecution history, the patentee distinguished the invention from prior
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art partly on the basis of the ’033 Patent’s use of two types of filters. In contrast to the prior art,

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“[t]he presence of [the deferred action filters that include conditional fields] together with the

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direct action filters allows the type of highly selective filtering that is characteristic of Applicants’

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invention.” Dkt. No. 107-13 at 8.
Defendant contends that the two filters must be distinguished on the basis of the

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information used by the filters to make the allow/block decision. Defendant argues that

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“[m]atching a port number or network address . . . is the only characteristic that differentiates

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filters ‘specifying immediate action’ from those ‘specifying deferred action.’” Dkt. No. 111

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(“Opp.”) at 9. But the specification does not expressly distinguish the filters based on the content

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of the information used to indicate whether a transmission should be allowed or blocked. Rather,

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Northern District of California

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as described above, the specification teaches that the filters differ as to whether they immediately

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and unconditionally block a transmission once they are triggered, or whether they defer the

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allow/block decision until additional conditions are satisfied.

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Indeed, the very example cited in Defendant’s opposition brief suggests that Defendant’s
construction cannot be correct:
As an example of blocking an HTTP transmission, assume that the
user requests “http://www.domain/test.html.” The client transmits
the URL request and the domain name server returns an IP address,
e.g. 1.2.3.4, corresponding to the domain name. The client tries to
open a TCP/IP connection with that IP address and typically with
port 80. If that IP address and port 80 . . . are together in a[n
immediate action filter that specifies unconditional blocking], the
system prevents the data stream from opening.
Rather than specifying blocking at this time, a filter can indicate a
deferred action. In this example, the filter searches for a GET
command as the keyword in an outgoing data stream, and for
“test.html” as the filter pattern in the transmission. When the client
sends a transmission with a GET command to get information under
the directory test.html, the host server will respond with data for that
directory. But if there is a blocking filter for test.html, the system
can block the incoming data by discarding it or replacing it.

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’033 Patent at 6:10-27. In this example, both types of filters are triggered by the user’s URL

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request. The immediate action filter specifies whether to allow or block the transmission

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immediately and unconditionally based solely on the port number and the IP address returned

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from the domain name server in response to the URL request. The deferred action filter, also
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activated by the user’s URL request, defers the allow/block decision until an additional condition

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is satisfied—namely, the user’s attempt to retrieve information under the test.html directory. The

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additional condition on which the deferred action filter bases its allow/block decision is whether a

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given keyword—test.html—matches information contained in the URL address associated with

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the user’s request. The Court finds that this example, in which a deferred action filter is triggered

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by a user’s URL request and applied using information derived from the directory portion of a

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URL address, is not consistent with Defendant’s construction of the deferred action filter as a

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“filter specifying whether transmission of the message should be allowed or blocked based on

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information in the message other than a port number or network address,” since a URL address is
a type of network address.1 See Opp. at 8 (noting that “URLs . . . , families of URLs, sites, or

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Northern District of California

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domains” are types of network addresses). A claim construction that is inconsistent with a

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preferred embodiment is “rarely, if ever, correct.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

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1576, 1583 (Fed. Cir. 1996).
Figure 3 is also instructive. In Box 102, the embodiment depicted by Figure 3 obtains a

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list of the IP addresses associated with an opened port. “The system then checks for and retrieves

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any filters that match the particular IP address.” ’033 Patent 4:46-48 (emphasis added). The

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system then checks the “retrieved filters” and determines whether any immediate action filters are

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triggered; if they are, the decision to allow or block the transmission is made immediately. See

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’033 Patent 4:48-50; Fig. 3, Boxes 106, 108, & 110. If no immediate action must be taken at this

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step, “it is determined whether a deferred action must be taken with respect to any of the retrieved

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filter[s].” ’033 Patent at 4:65-67 (emphasis added). This written description of the illustration in

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Figure 3 teaches that a deferred action filter may be “retrieved” based on the list of IP addresses

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associated with an opened port, after which the system then delays the decision to allow or block

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In fact, the specification expressly teaches that a URL may contain a directory, among other
information. See ’033 Patent 2:67-3:10 (“To access a web site, the user enters a uniform resource
locator (URL) request with the form “http://www.name.ext”, where “http://” indicates the
protocol, and “www.name.ext” is a domain name . . . . The domain name can also be followed by
other file names or directories, with the directories separated from the domain name and from
other directories with slashes that serve as spacer characters. The directories sit below the home
page, but are individually addressable and accessible.”).
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the transmission until additional conditions are satisfied. See ’033 Patent Fig. 3, Box 116; id. Fig.

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4. Thus, the specification does not distinguish the filters on the basis of the content used to make

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the decision whether to allow or block a transmission, but rather on whether the decision is made

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immediately and unconditionally, or delayed until additional conditions are satisfied.
Defendant’s construction is also not consistent with the other ’033 Patent claims.

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Dependent claim six describes “[t]he method of claim 5, wherein the message includes a URL,

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and step (c) includes comparing a domain name in the URL to filtering information in at least one

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of said filters specifying immediate action and said filters specifying deferred action.” This claim

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plainly contemplates the application of both types of filters based on the same content: domain

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names and URLs, which are network addresses. See also ’033 Patent claim 13 (“The method of

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claim 5, wherein the message includes a URL, wherein step (c) includes comparing a command in

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the URL to at least one of said filters specifying immediate action and said filters specifying

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deferred action.”); claim 14 (“The method of claim 6, wherein step (c) include[s] comparing

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directory information in the URL to the filtering information.”).

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The Court concludes that the specification does not expressly define or limit the two types

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of filters on the basis of the content used by the filters to specify whether to allow or block a

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transmission. Indeed, the specification and the claims themselves suggest that both types of filters

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may base their allow/block decisions at least in part on “network addresses.” The Court therefore

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rejects Defendant’s proposed construction.

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Plaintiffs’ construction correctly reflects the distinguishing features of the two types of

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filters at a high level by construing the immediate action filters as operating “immediately” and the

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deferred action filters as operating “conditionally.” But the Court finds that a more precise

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construction is both more accurate and more helpful to a jury. Accordingly, the Court finds that

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“immediate action filters” are “filters that, once they are retrieved, specify whether to allow or

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block a transmission immediately and unconditionally,” and that “deferred action filters” are

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“filters that, once they are retrieved, defer the specification of whether to allow or block a

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transmission until additional conditions are satisfied.”

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ii. ISO protocol model layer limitation
It is important to consider the prosecution history of a patent when construing claim

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language, as it often demonstrates “how the inventor understood the invention and whether the

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inventor limited the invention in the course of prosecution, making the claim scope narrower than

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it would otherwise be.” Phillips, 415 F.3d at 1317. “[W]hen the patentee unequivocally and

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unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history

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disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered.”

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Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013).

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United States District Court
Northern District of California

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In the ’033 Patent prosecution history, the applicant explicitly distinguished certain prior
art by stating that
[a]s discussed during the interview, the Schwed system and
Applicants’ methods operate at different layers of the seven-level
ISO communication protocol model . . . [T]he packet filters of
Schwed operate between the network interface hardware (level 2)
and the network software (level 3). Applicants’ filtering methods,
by contrast, operate between the presentation and application levels
(layers 6 and 7, respectively) of the seven-level ISO protocol model.
Dkt. No. 107-13 at 7.

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Defendant seems to argue that this statement cannot constitute an unequivocal and

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unambiguous disclaimer because the patentee also distinguished the Schwed prior art by amending

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the ’033 Patent to require two types of filters instead of just one. However, the Court sees no

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reason a patentee cannot distinguish prior art on two independent grounds, and Defendant does not

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cite to any authority to the contrary. Similarly, Defendant also argues that there was no clear and

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unmistakable disavowal during prosecution because the patentee did not amend the claims to

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require that the filters operate at layers six and seven of the ISO protocol model. Of course, if a

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patentee were required to amend his claims in order to limit their scope, there would be no need to

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examine the prosecution history for clear and unmistakable disavowals in the first place. The

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Court finds these arguments unpersuasive.

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Finally, Defendant argues that Plaintiffs’ construction must be incorrect because it would

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exclude preferred embodiments described in the specification. Defendant contends that it is

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“nonsensical” to filter messages on the basis of an IP address, for example, at the application or
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presentation layer, because such filter could only operate at layer 3 (network layer). Opp. at 10.

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The parties’ experts disagree on this issue. See Dkt. Nos. 113, 119-2. The Court finds that

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Plaintiffs’ construction does not render the claims nonsensical. Defendant admitted at the

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technology tutorial that “[a]ll of the information . . . is available” at each layer of the model. Hr’g

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Tr. at 53 (“It’s not like the information that is in the data is now not accessible at that layer. It is.

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It’s just that the reason it’s considered a header or the reason we refer to information that’s added

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at that layer as a header is because that’s information that that layer of the protocol has decided

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I’m responsible—for example, at the IP layer, I’m responsible for making sure this message gets

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to the intended destination.”).

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The Court finds that the ’033 Patent prosecution history disclaimer that the filters operate

United States District Court
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only between layers six and seven of the seven-level ISO protocol model is “clear and

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unmistakable.” Biogen, 713 F.3d at 1096. Therefore, these terms must be construed in light of

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that disclaimer.
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The Court construes the “immediate action filter” claim phrase as “filters that, once they

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are retrieved, specify whether to allow or block a transmission immediately and unconditionally

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and operate between the presentation and application levels of the seven-level ISO protocol

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model” and the “deferred action filter” claim phrase as “filters that, once they are retrieved, defer

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the specification of whether to allow or block a transmission until additional conditions are

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satisfied and operate between the presentation and application levels of the seven-level ISO

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protocol model.”

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C.

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The ’229 Patent, titled “Convergence of Interactive Television and Wireless

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Technologies,” describes “a system and method for utilizing user profiles in an interactive

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television system.” Essentially, the invention tracks user activity within the system and stores that

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information in a user profile. The user profile is then used to customize data sent to or retrieved

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by the user.

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’229 Patent

Defendant argues that the entire ’229 Patent is invalid because the terms “activity related to
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television viewing” and “activity unrelated to television viewing,” on which all of the claims

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depend, are indefinite. The parties further dispute the scope of two components of the system: the

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“set-top box” and the “broadcast station.”

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1. “activity [related / unrelated] to television viewing”

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United States District Court
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Plaintiffs’ Proposed Construction
activity [related / unrelated] to
watching television programming

The ’229 Patent uses this term in each of its independent claims to describe the types of
user activity information collected and assembled by the different components of the system. For
example, claim 1 describes:
1. A method for utilizing a user profile in an interactive television
system, the method comprising:
updating a user profile responsive to a first user activity, the first
user activity being initiated via a first device;
initiating a second user activity, the second user activity being
initiated via a second device which is different from the first device,
wherein either
(i) the first user activity is related to television viewing
and the second user activity is unrelated to television
viewing, or
(ii) the first user activity is unrelated to television viewing
and the second user activity is related to television
viewing;

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Defendant’s Proposed Construction
indefinite

accessing the user profile in response to the second user activity;
and
transmitting data to a user responsive to the second user activity,
wherein the transmitted data is based at least in part on the user
profile, and wherein the first user activity affects a content of said
data transmitted to the user responsive to the second user activity.
The Supreme Court recently clarified the standard courts must use to determine whether

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patent claims are invalid for indefiniteness under § 112 of the Patent Act. In Nautilus, Inc. v.

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Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court held “that a patent is invalid

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for indefiniteness if its claims, read in light of the specification delineating the patent, and the

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prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
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scope of the invention.” 134 S. Ct. at 2124. That definiteness standard “mandates clarity, while

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recognizing that absolute precision is unattainable.” Id. at 2129. The Federal Circuit has since

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interpreted the Nautilus holding to require that the intrinsic evidence “provide objective

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boundaries” on the scope of the claim meaning. Interval Licensing LLC v. AOL, Inc., 766 F.3d

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1364, 1371 (2014).

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Defendant argues that “activity [unrelated / related] to television viewing” is indefinite

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because the intrinsic evidence does not provide objective distinctions between the two types of

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activities, and therefore the infringement determination is left to subjective opinion. But the cases

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cited by Defendant dealt with “purely subjective” claim phrases. Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005) (holding that the phrase “aesthetically

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Northern District of California

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pleasing” was indefinite because the scope of that phrase’s meaning “depend[s] solely on the

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unrestrained, subjective opinion of a particular individual purportedly practicing the invention”);

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see also Interval Licensing, 766 F.3d at 1374 (holding that the term “in an unobtrusive manner”

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did not satisfy the Nautilus standard because it “is highly subjective” and the intrinsic evidence did

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not provide an “objective boundary” on its scope). Unlike the terms at issue in Datamize or

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Interval Licensing, the “television viewing” terms contain an inherent objective distinction

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between the two types of activities: whether or not a given activity is related to television viewing

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is a determination that can be made without resort to subjective opinion.

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Whatever ambiguity may be introduced by the language of the claims is clarified by the

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prosecution history. These terms were added during prosecution to distinguish the invention

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described by the ’229 Patent from prior art that did not teach or suggest “that a television program

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guide and any number of non-program-guide applications may share a common user profile,

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exchange data, or affect each other’s operation in any way.” Dkt. No. 107-21, at

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OPENTV0002726. In other words, the ’229 Patent improved upon the prior art by allowing an

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interactive television system to incorporate user activity information gleaned from activities not

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related to the actual viewing of television into a user profile also populated with information

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sourced from activities related to television viewing. The prosecution history contains several

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examples of activities related to television viewing and disclosed by the prior art, such as remotely
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accessing program listings, scheduling program reminders, adjusting parental control settings,

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accessing interactive television program guide functionality related to preferences or “favorites”

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settings, and scheduling recordings of television programs. Id. at OPENTV0002724-25. These

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examples suffice to “inform, with reasonable certainty, those skilled in the art about the scope of

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the invention.” Nautilus, 134 S. Ct. at 2124; see also Interval Licensing, 766 F.3d at 1373 (“[A]

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patent which defines a claim phrase through examples may satisfy the definiteness requirement.”);

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Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (finding that claim

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phrase “not interfering substantially” was not indefinite because the prosecution history listed

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eight specific examples of things that did not interfere substantially). That some gray area
regarding the scope of these terms may remain does not doom them as indefinite; as Nautilus

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Northern District of California

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recognizes, “absolute precision is unattainable.” 134 S. Ct. at 2129. 2
Plaintiff argues that its construction reflects that the user activities contemplated by the

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’229 Patent relate to watching television programming rather than generically viewing a physical

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television—theoretically, a television could be used to engage in activities unrelated to watching

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television programming, such as browsing the internet. The Court agrees that the intrinsic

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evidence supports Plaintiff’s construction and accordingly adopts it.
2. “set-top box”

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OpenTV Proposed Construction
a device that receives a
programming signal and outputs
audio and video signals for
presentation on display

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Apple Proposed Construction
device that decodes and tunes
television signals

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Plaintiff also asserts that Defendant waived its indefiniteness argument by failing to allege that
the ’229 Patent is invalid as indefinite in its invalidity contentions. The Court finds this argument
meritless. In its invalidity contentions, Defendant identified “grounds of invalidity [of the ’229
Patent] based on (1) lack of written description . . . (2) lack of enablement . . . and (3)
indefiniteness under 35 U.S.C. § 112, second paragraph.” Dkt. No. 107-24 at 55. Defendant then
stated that “[t]o the extent the following limitations are even definite (under 35 U.S.C. § 112,
second paragraph), the ’229 Patent fails to sufficiently describe them,” and listed the “activity
[unrelated / related] to television viewing” term. Id. In all of its subsequent representations to
Plaintiff, Defendant asserted its indefiniteness argument regarding this term. The Court finds that
Defendant provided more than adequate notice to Plaintiff of its contention that this term is invalid
as indefinite, and therefore did not waive this argument.
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This term describes a component of the claimed invention that may be used to conduct and

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transmit user activity, and store a user profile based on that activity. See ’229 Patent claims 6, 11,

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Defendant limits the term “set-top box” to a device that is capable of “decod[ing] and

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tun[ing] television signals” based on the specification’s disclosure that the set-top box may receive

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“television programming” signals. See ’229 Patent at 6:44-45. But the words “decode” and

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“tune” do not appear anywhere in the specification. Furthermore, the specification also discloses

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that signals sent and received by the set-top box “may encompass a wide variety of data

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exchanges,” including “analog or digital signals,” “signals for high-definition television,” and
“internet communications.” Id. at 6:42-52. Defendant’s construction suggests that the set-top box

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must be capable of decoding and tuning television signals. There is no indication in the

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specification that the invention excludes set-top boxes that are not capable of processing such

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signals, and the Court declines to read such a limitation into the patent. Plaintiffs’ construction, on

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the other hand, properly encompasses all of the data exchanges disclosed by the specification.

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Defendant further argues that Plaintiffs’ construction fails to distinguish between set-top

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boxes and the “remote units” also included in the system, because cell phones and laptops, which

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are embodiments of the remote units, are equally capable of receiving a programming signal and

18

outputting audio and video signals for presentation on a display. However, nothing in the ’229

19

Patent indicates that the set-top box and the remote unit cannot be embodied by two of the same

20

type of device—e.g., two different laptop computers. The Court finds that the intrinsic evidence

21

does not require these two components to be embodied by mutually exclusive devices.

22

The Court adopts Plaintiffs’ proposed construction, as it best reflects the meaning of this

23

term in light of the intrinsic evidence.

24

3. “broadcast station”

25
26
27

OpenTV Proposed Construction
station configured to deliver
programming to multiple devices

Apple Proposed Construction
station configured to deliver
programming to all network
destinations simultaneously

28
13

1
2
3

This term describes a component of the claimed invention that may be used to store the
user profile and “convey a programming signal to the set-top box.” See ’229 Patent claims 11, 14.
The specification discloses that content transmitted by the broadcast station within the

4

system “may be ‘pushed’ to the mobile unit (i.e. sent without a user request) or ‘pulled’ (sent to

5

the mobile unit based on a user request or other action).” Id. at 2:54-56. Thus, the broadcast

6

station must be capable of delivering content on an individualized basis, in response to a “pull”

7

request. Similarly, the specification describes embodiments by which the broadcast system allows

8

users to send and receive e-mails, which likewise would need to be transmitted on an

9

individualized basis. Id. at 6:50-51.

10

On its face, Defendant’s construction does not allow for the individualized transmission of

United States District Court
Northern District of California

11

data contemplated by the specification. Defendant argues that the “pull” data requests could be

12

accomplished by transmitting a generic signal to all users and filtering that transmission

13

individually upon receipt. There is no support in the specification for such a filtering method; that

14

the invention could be embodied in this way of course does not mean that the Court should limit it

15

to this embodiment, particularly when it is not described anywhere in the specification.

16

Defendant further argues that its construction encompasses broadcast stations that deliver

17

programming separately to multiple users, so long as the broadcast station is capable of also

18

delivering programming simultaneously to all users. But Defendant’s construction therefore

19

excludes broadcast stations that only deliver programming on an individualized basis to multiple

20

devices. The specification provides no support for such an interpretation.

21
22

The Court adopts Plaintiffs’ proposed construction, as it best reflects the meaning of this
term in light of the intrinsic evidence.
’287 Patent

23

D.

24

The ’287 Patent, titled “Method for Asynchronously Maintaining an Image on a Display

25

Device,” claims a method that “optimize[s] the perceived response of [an] application program”

26

by separating “screen updates” from “graphic object attribute changes.” ’287 Patent 9:47-53.

27

Essentially, the invention allows an application program to store and optimize a series of graphic

28

object attribute changes before actually implementing those changes by redrawing the graphic
14

1

objects on the screen. By separating the latter function, which uses a large amount of processing

2

power, from the former, the invention can be used to improve the user’s perceived response of the

3

application program. See id. at 9:33-37.

4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19

The independent method claim describes:
1. In a processing system executing an application program
displaying a plurality of graphic objects, a method for
asynchronously maintaining an image on a display device,
comprising the steps of:
receiving a drawing request from the application program;
determining a drawing area of the image in response to the
received drawing request;
inserting a new entry representing the drawing area into a list
of a plurality of entries each representing respective drawing
areas;
receiving an image update request from the application
program;
retrieving one of the plurality of entries representing drawing
areas from the list; and
requesting that respective graphic objects be redrawn if
any portion of the graphic object lies within the drawing
area represented by the retrieved entry.
The parties dispute the meaning of the three bolded claim phrases in the six-step method
described by the independent claim.
1. “drawing request”

20

22

OpenTV Proposed Construction
Apple Proposed Construction
a request to draw one or more
notification that an attribute of a
graphic objects on the display device graphical object has changed

23

This term describes the initial communication from the application program to the

21

24

processing system that implements the claimed method.

25

As a threshold matter, Defendant argues that the specification describes a single

26

embodiment as the invention, and therefore, the claims must be construed to reflect the scope of

27

that described embodiment. The specification describes Figure 1 as “a diagram . . . illustrating the

28

operation of a processing system incorporating the present invention.” ’287 Patent 2:26-28, 2:4115

43. Unlike the patents at issue in the cases cited by Defendant, the ’287 Patent does not say that

2

the Figure 1 embodiment is the present invention. See Lydall Thermal/Acoustical, Inc. v. Federal-

3

Mogul Corp., 344 F. App’x 607, 614 (Fed. Cir. 2009) (“The specification identifies a three-

4

layered batt as ‘the present invention.’”); Verizon Servs. Corp. v. Vonage Holdings Corp., 503

5

F.3d 1295, 1308 (Fed. Cir. 2007) (holding that claim must be construed in light of limitation

6

contained in specification’s description of “the present invention”); see also Honeywell Int’l, Inc.

7

v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (“On at least four occasions, the written

8

description refers to the [disputed term] as ‘this invention’ or ‘the present invention.’”). And the

9

mere fact that the specification discloses only a single embodiment does not mandate that the

10

claims be limited to that embodiment. See Phillips, 415 F.3d at 1323 (“[W]e have expressly

11
United States District Court
Northern District of California

1

rejected the contention that if a patent describes only a single embodiment, the claims of the patent

12

must be construed as being limited to that embodiment. That is not just because section 112 of the

13

Patent Act requires that the claims themselves set forth the limits of the patent grant, but also

14

because persons of ordinary skill in the art rarely would confine their definitions of terms to the

15

exact representations depicted in the embodiments.”). The Court finds that the specification does

16

not explicitly limit the claims to the embodiment depicted in Figure 1.

17

Even if the Court were to limit the scope of the “drawing request” term to that illustrated

18

by the embodiment depicted in Figure 1, Defendant’s construction would be problematic. The

19

plain language of the claim term and the detailed description of the specification mandate that a

20

“drawing request” be construed as a “request,” rather than a “notification.” The claims

21

consistently describe this step of the method as a “request,” and the term “notification” does not

22

appear anywhere in the claims or the specification. See ’287 Patent claims 1 (“receiving a

23

drawing request from the application program”), 5 (“the step of receiving a drawing request

24

comprises the step of receiving a request to draw a graphic object on the image”), and 7 (“the step

25

of receiving a drawing request comprises the step of receiving a request to move a graphic object

26

on the image”); see also id. 3:19-23 (referring to Figure 1 and teaching that an “application

27

program interface (API) is provided to an application programmer, in a known manner, to permit a

28

request for [a change to the attribute of a graphic object]”). Defendant’s only argument in support
16

1

of its construction of the term as a “notification” is that “[t]he arrow connecting boxes 302 and

2

342 in Figure 1 demonstrates that the application notifies the display manager whenever a graphic

3

attribute changes.” Opp. at 21. The Court is not persuaded that an arrow necessarily symbolizes a

4

“notification” rather than a “request.” Accordingly, the Court construes a “drawing request” as a

5

request, not a notification.

6

Exactly what is being requested by the drawing request is another matter. While Plaintiffs

7

argue that the plain language of the claims and the specification support its construction that it is a

8

request to “draw,” the intrinsic evidence makes clear that no actual drawing occurs as a result of

9

the drawing request. See ’287 Patent 5:18-19 (“The screen is not redrawn at this point.”). Indeed,
actually drawing graphic objects in response to a drawing request would defeat the very purpose

11
United States District Court
Northern District of California

10

of the invention, which is to “mak[e] screen updates asynchronous from graphic object attribute

12

changes.” ’287 Patent 9:47-48. The Court therefore finds that Plaintiffs’ construction is not

13

tenable in light of the intrinsic evidence.

14

Plaintiffs argue that Defendant’s construction is likewise untenable because it would

15

exclude certain types of drawing requests, such as those directing that a new graphic object be

16

created or that an existing graphic object be refreshed. Neither the specification nor the claims

17

contemplate the “refreshing” of graphic objects. That aside, both the creation of a new graphic

18

object and the refreshing of an existing graphic object would involve changes to attributes of at

19

least one graphic object on the display device: the screen, on top of which all other graphic objects

20

are layered. As such, construing the term “drawing” as “changing an attribute of a graphic object”

21

best reflects what action is being requested by a drawing request.

22
23
24

The Court finds that the “drawing request” term, read in light of the intrinsic evidence,
should be construed to mean “a request to change an attribute of a graphic object.”
2. “image update request”

25
26
27
28

OpenTV Proposed Construction
Apple Proposed Construction
a request to redraw one or more
instruction to initiate a screen
graphic objects on the display device redraw
While the “drawing request” in step one of the claimed method initiates the storage and
17

1

optimization of graphic attribute changes, the “image update request” in the fourth step initiates

2

the process by which the optimized graphic object attribute changes are actually redrawn.

3

For the same reasons articulated above, the Court construes the image update request as a

4

“request” rather than an “instruction.” Both the claims and the specification consistently describe

5

this term as a request; the word “instruction” does not appear anywhere in the Patent. The Court

6

finds that Defendant points to no persuasive evidence that would justify construing this term as an

7

instruction. Accordingly, the Court construes the “image update request” as a request.

8

Considered in light of the specification and the other steps that comprise the claimed
method, neither of the parties’ proposed constructions adequately reflects what action is being

10

requested by the “image update request.” The last three steps of the method are: 1) receive an

11
United States District Court
Northern District of California

9

image update request from the application program; 2) retrieve one of the drawing area entries

12

from the stored list; and 3) request that graphic objects be redrawn if so indicated by the retrieved

13

entries. If the “image update request” were a “request to redraw,” as argued by Plaintiffs, then the

14

last step of the claimed method would be redundant (“requesting that respective graphic objects be

15

redrawn”). Similarly, Defendant’s construction that the image update request “initiate[s] a screen

16

redraw” is not entirely accurate, as the actual redraw is not initiated until the last step of the

17

claimed method. Rather, the image update request is exactly as it sounds: a request from the

18

application program to update the image on the display device, which update is then accomplished

19

by retrieving the drawing area entries and redrawing the graphic objects as indicated.

20
21
22
23

Accordingly, the Court construes the “image update request” term as “a request to update
the image on the display device.”
3. “requesting that respective graphic objects be redrawn if any portion of the
graphic object lies within the drawing area represented by the retrieved
entry”

24
25
26
27
28

OpenTV Proposed Construction
plain and ordinary meaning

Apple Proposed Construction
commanding every object that
overlaps the drawing area
represented by the retrieved entry to
call low level graphics routines to
redraw itself
18

1
2

This term describes the last step of the claimed method, whereby the graphic objects are
actually drawn on the display device.

3

For the same reasons articulated above, the Court construes this step of the method as a

4

“request” rather than a “command.” Both the claims and the specification consistently describe

5

this term as a request; the word “command” does not appear anywhere in the Patent. The Court

6

finds that Defendant points to no persuasive evidence that would justify construing this term as an

7

command and accordingly construes this step as a request.

8
9

Although claim terms are usually given their plain and ordinary meaning, an exception
exists where “the patentee acted as his own lexicographer and clearly set forth a definition of the
disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v.

11
United States District Court
Northern District of California

10

Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The use of “i.e.” in the specification

12

“signals an intent to define the word to which it refers.” Edwards, 582 F.3d at 1334; see also

13

Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1330 (Fed. Cir. 2003) (holding that the district

14

court “did not err by reading the patentee’s definition from the specification into the claim” where

15

the patentee “explicitly defined” a term by preceding the term with “i.e.” in the specification).

16

However, the plain definitional meaning of “i.e.” will not carry the day where such a reading

17

would exclude a preferred embodiment from the claim’s scope, or where a “contextual analysis”

18

of the patent indicates that “i.e.” is used in an exemplary rather than definitional way. See

19

Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1326 (Fed. Cir. 2012). Defendant argues that the ‘287

20

patentee acted as his own lexicographer by expressly defining the term “redraw” as “calling low

21

level graphics routines to redraw.” Plaintiffs contend that no construction is necessary, and that

22

Defendant’s construction improperly imports limitations from the specification.

23

The ’287 Patent consistently and repeatedly makes clear that the verb “redraw,” in the

24

context of the patent and as used in this sixth step of the claimed method, means “call low level

25

graphics routines to draw a graphic object”:

26
27
28



“The REDRAW method first determines if any portion of the
graphic object lies within the boundary box. If so, then that
graphic object calls low-level graphic display routines
which will redraw that graphic object. Otherwise,
nothing is done.” ’287 Patent at 5:40-44.
19

1



“The REDRAW method for an object first determines if any
portion of [the] graphic image representing that object lies
within the boundary box (from box 346 of FIG. 1). If so, the
REDRAW method calls the low level graphic routines
which draw the object represented by that node on the
display screen according to the attributes of that graphic
object.” Id. at 6:17-23.



“For example, to draw a box object, low level graphic
routines are called which will draw a box at the position
specified by the position attribute of the box object . . . .” Id.
at 6:24-26.



“As another example, to draw a text object, low level
graphic routines are called which will draw the image of
the characters in the strong attribute at the position specified
in the position attribute having the size specified in the size
attribute.” Id. at 6:30-33.



“The REDRAW method of the screen object 10 first
determines from its graphic attributes if any portion lies
within the boundary box. In this case, it does not, so no low
level graphic routines are called.” Id. at 6:65-7:2.



“Because the time text object 24 does lie within
boundary box, low level routines are called to draw
time text object, according to its attributes. I.e.
characters representing the new time are drawn on
image.” Id. at 7:25-27.



“The lower right-hand corner of the surrounding box object
31 lies within the boundary box, so it is redrawn (i.e. low
level graphic routines are called).” Id. at 7:44-46.



“The screen background lies within the OLD rectangle, so it
is redrawn (i.e. low level graphic routines are called) by
the REDRAW method for the screen object 10 as described
above.” Id. at 8:47-51.

2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21

the
the
the
the

Contrary to Plaintiffs’ argument, this is not the “mere use of ‘i.e.’” Dkt. No. 119 (“Reply”)

22

at 15. Rather, the patentee acted as his own lexicographer and explicitly defined the term

23

“redraw” as “call low level graphics routines.” The use of “i.e.” in the context of the ‘287 Patent

24

is analogous to its use in the patent at issue in Abbott, where the court was tasked with construing

25

the term “co-micronization of fenofibrate and a solid surfactant.” 323 F.3d at 1330. The district

26

court construed that phrase as the micronization of fenofibrate and solid surfactant “in the absence

27

of other excipients,” based on the patentee's use of “i.e.” to “explicitly define[]” the phrase as

28

“micronization of an intimate mixture of fenofibrate and a solid surfactant.” Id. Likewise, here,
20

1

the ‘287 patentee has used “i.e.” to explicitly define “redraw” as “call low level graphics routines.”

2

Furthermore, the patentee uses that definition throughout the specification, with and without “i.e.”

3

as a preceding term, to describe the mechanism of this sixth step of the claimed method.

4

In Dealertrack and Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012), the

5

Federal Circuit held that a patentee’s use of “i.e.” in the specification did not indicate an intent to

6

expressly define a term. But considered in context, the patentees in those cases used “i.e.”

7

differently than the phrase is used in the ‘287 Patent. In Toshiba, the Federal Circuit’s holding

8

turned on the fact that the patentee used “i.e.” to explain the meaning of a claim term within the

9

specific context of one example of the embodied invention. 681 F.3d at 1370. The court held that
“[i]t does not follow” that such definition should be imputed to the claim term “in all instances”

11
United States District Court
Northern District of California

10

based on that limited definition. Id. Here, in contrast, the patentee did not limit the definition of

12

“redraw” to a particular example. Rather, “redraw” is defined as “call low level graphic routines”

13

both in the abstract and in the specific context of all examples described in the specification.

14

In Dealertrack, the Federal Circuit held that “[t]he only way that the ‘i.e.’ in this patent

15

could be read definitionally is if it excluded from the claim scope [several] embodiments discussed

16

throughout the claim.” 674 F.3d at 1326. In contrast, reading “i.e.” definitionally in the ’287

17

Patent would not exclude any described embodiments from the claim’s scope. Furthermore, the

18

Dealertrack court held that “the most natural reading of the ‘i.e.’ here is as citing examples, which

19

. . . is the way it was used throughout the specification in other contexts.” Id. In the ’287 Patent,

20

by contrast, “i.e.” is consistently used definitionally, and the patentee used “e.g.” or “for example”

21

when he wished to list examples of a concept rather than define a particular term. See ’287 Patent

22

5:9-11 (using “i.e.” to define “the position attribute of a graphic object is changed” as “the graphic

23

object is moved from one place to another”), 1:50-52 (using “e.g.” to identify “responding to user

24

inputs” as an example of “other processing functions [that] may be more important in increasing

25

the perceived response speed than the screen drawing function”).

26

The Court finds that this claim phrase should be construed as “requesting that respective

27

graphic objects call low level graphics routines to redraw themselves if any portion of the graphic

28

object lies within the drawing area represented by the retrieved entry.”
21

1
2

II.

CONCLUSION
The Court construes the disputed terms as follows:

3
Term

4
5
6

Asserted Claims
’033 Patent

filters specifying immediate
action

1, 15, 23

filters specifying deferred
action

filters that, once they are retrieved,
specify whether to allow or block a
transmission immediately and
unconditionally and operate between
the presentation and application levels
of the seven-level ISO protocol model
filters that, once they are retrieved,
defer the specification of whether to
allow or block a transmission until
additional conditions are satisfied and
operate between the presentation and
application levels of the seven-level
ISO protocol model

1, 15, 23

7
8
9
10

United States District Court
Northern District of California

11
12
13

set-top box

14
15
16

broadcast station

17

activity [related/unrelated] to
television viewing

18

drawing request

19

image update request

20
21
22
23
24
25
26
27

Construction

requesting that respective
graphic objects be redrawn if
any portion of the graphic
object lies within the drawing
area represented by the
retrieved entry

’229 Patent
6, 11, 14, 16, 18, 20, a device that receives a programming
21, 27
signal and outputs audio and video
signals for presentation on display
11, 14, 18
station configured to deliver
programming to multiple devices
1, 5, 9, 14, 26
activity [related / unrelated] to
watching television programming
’287 Patent
1, 5, 7
a request to change an attribute of a
graphic object
1, 16
a request to update the image on the
display device
1
requesting that respective graphic
objects call low level graphics routines
to redraw themselves if any portion of
the graphic object lies within the
drawing area represented by the
retrieved entry

IT IS SO ORDERED.
Dated: June 5, 2015
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

28
22