Comcast Cable Communications, LLC v. OpenTV, Inc. et al

Filing 186

ORDER RE 149 151 PILOT MOTIONS FOR SUMMARY JUDGMENT by Judge Alsup. (whalc2, COURT STAFF) (Filed on 8/4/2017)

1
2
3
4
5
6

IN THE UNITED STATES DISTRICT COURT

7
FOR THE NORTHERN DISTRICT OF CALIFORNIA
8
9

11
For the Northern District of California

United States District Court

10

COMCAST CABLE
COMMUNICATIONS, LLC,
Plaintiff,

12
13

No. C 16-06180 WHA

v.

ORDER RE PILOT MOTIONS
FOR SUMMARY JUDGMENT

14

OPENTV, INC., and NAGRAVISION SA,

15

Defendants.
/

16
17
18

INTRODUCTION
In this patent action for declaratory judgment of non-infringement, as part of a pilot

19

procedure to more quickly and efficiently reach the merits, both sides move for summary

20

judgment on one asserted claim of one patent-in-suit. Plaintiff’s motion for summary judgment

21

is GRANTED as to non-infringement and DENIED AS MOOT as to invalidity. Defendants’ motion

22

for summary judgment of infringement is DENIED.

23
24

STATEMENT
The procedural background of this action thus far has been summarized in a prior order

25

(Dkt. No. 145 at 1–2) and need not be repeated here. In brief, plaintiff Comcast Cable

26

Communications, LLC, brought this action for declaratory judgment of non-infringement

27

against defendants and patent owners OpenTV, Inc., and Nagravision SA (collectively,

28

“OpenTV”), both subsidiaries of Kudelski SA, after OpenTV approached Comcast to negotiate
a licensing deal based on the premise that certain Comcast products infringed Kudelski’s patent

1

portfolio. After an initial case management conference, a case management order required each

2

side to bring a pilot summary judgment motion on one chosen claim — OpenTV, to set forth its

3

strongest case for infringement, and Comcast, to set forth its strongest case for non-

4

infringement or invalidity (Dkt. No. 82). The parties agreed to both cross-move for summary

5

judgment on Claim 1 of United States Patent No. 6,895,595 (“the ’595 patent”) (Dkt. No. 114).

6

The technology at issue in this case concerns the provision of interactive television

7

experiences to subscribers. As of May 1998, when the ’595 patent was filed, television

8

providers wanting to provide such experiences would typically transmit to a subscriber’s

9

television a broadcast signal that included both audio-video and interactive data. An interactive
television receiver connected to the television, known as a “set-top box,” would receive the

11
For the Northern District of California

United States District Court

10

signal and separate the audio-video data from the interactive data. The set-top box would then

12

feed the audio-video data consisting of the television program to the television and use the

13

interactive data to execute an interactive television application and generate interactive graphics

14

or audio to be displayed along with the television program (Dkt. No. 149-2 at 1:30–57).

15

This transmission method consumed expensive bandwidth and was further constrained

16

by the limited amount of memory available on set-top boxes. To alleviate these restrictions,

17

television providers would often divide applications into “modules” of data and transmit the

18

modules to all subscribers in a repeating cycle called a “carousel,” from which set-top boxes

19

could extract any needed modules (while skipping unneeded ones) and reassemble the modules

20

to run applications. The carousel method conserved set-top box memory by enabling the

21

sharing of commonly-used modules between different applications and saved bandwidth by

22

reducing the amount of data transmitted (see id. at 2:9–17; 150-11 at 28:10–19, 30:17–32:25).

23

Carousels, however, did not differentiate between different subscribers who needed

24

different applications, and the necessary components of any given application could reside in

25

different carousels or in modules available at different times. A subscriber who “missed” a

26

particular module needed to execute an application would therefore have to wait for the

27

carousel to come back around with that module (see Dkt. No. 149-2 at 2:17–20).

28

Against this technological backdrop, the ’595 patent describes and claims an improved
“system and method for managing modules” that shifts transmission of some modules to a
2

1

second signal received over a second input port while monitoring both signals for modules

2

needed for applications (see id. at 2:20–31). For example, “[t]he system may provide for

3

modules which are in greater demand among subscribers of the system to be transmitted to all

4

of the subscribers via a broadcast channel, while modules which are in less demand are

5

transmitted to individual subscribers via a modem channel” (id. at 3:4–9).

6
7
8
9

11
For the Northern District of California

United States District Court

10

12
13
14
15
16
17
18
19

Specifically, Claim 1 recites:
An interactive television receiver for retrieving modules for an
interactive television application, the receiver comprising:
a first input port configured to receive a broadcast signal;
a second input port configured to receive a second signal;
a microprocessor coupled to said first input port and said
second input port, said microprocessor being
configured to:
execute said interactive television application;
store one or more requests generated by said
interactive television application for one or
more corresponding requested interactive
television application modules;
monitor both said broadcast signal received by said
first input port and said second signal
received by said second input port for said
requested interactive television application
modules;
retrieve said requested interactive television
application modules from one or both of
said broadcast signal and said second signal;
and
store said retrieved interactive television application
modules;
a data storage device coupled to said microprocessor and
configured to store said requests and said retrieved
interactive television application modules.

20
The carousel method is not expressly mentioned in Claim 1 but is expressly and repeatedly
21
referenced in other claims and in the rest of the specification.
22
OpenTV accuses 16 models of set-top boxes, each of which runs Comcast’s Xfinity X1
23
platform, of infringing Claim 1. According to OpenTV, all 16 models work the same way with
24
respect to Claim 1 and any differences are irrelevant to non-infringement (Dkt. No. 148-3 at 4,
25
8). Each of the accused set-top boxes includes a single coaxial cable input that receives a
26
modulated composite signal from Comcast’s cable head-end. The modulated composite signal
27
contains both “linear video,” representing television programs intended for multiple subscribers,
28
and “IP data” intended for a specific subscriber. Inside the set-top box, a front-end systems-on-

3

1

chip captures and digitizes the composite signal. Tuners in the front-end filter and segregate the

2

digitized signal into a “linear video” signal and an “IP data” signal, each of which is

3

demodulated and sent to a different part of a video systems-on-chip for further processing. The

4

“linear video” signal is ultimately displayed to the subscriber as a video stream, whereas the “IP

5

data” signal is passed on to applications that use the data (see Dkt. No. 148-5 at 12–13, 38).

6

Comcast’s X1 platform, first released in 2012, uses a “cloud-based” design significantly

7

different from the technology that informed the ’595 patent in 1998. The accused set-top boxes

8

do not download or run applications, nor do they use carousels to receive modules for local

9

processing. Instead, each set-top box contains software called the Cross-Platform Runtime
Environment (“XRE”) Receiver, which serves as a display vehicle for applications executed on

11
For the Northern District of California

United States District Court

10

Comcast’s remote XRE Servers. When a set-top box receives user input, it passes that input

12

along to an XRE Server. In response, the XRE Server executes the application and issues

13

commands to the XRE Receiver on the set-top box, instructing it on what to display and how to

14

display it. This kind of cloud-based design requires low latency and high bandwidth because it

15

depends on the prompt transmission of messages going both ways between set-top boxes and

16

remote servers. It is practicable now due to modern cable network infrastructure, which has

17

significantly improved on the latency and bandwidth constraints of older networks like those

18

that existed in 1998 (see Dkt. Nos. 150-26 ¶¶ 73–74, 77; 148-3 at 7–8).

19

Comcast describes the ’595 patent as an outdated solution to an outdated problem in

20

light of modern advances in cable network infrastructure, citing its own X1 platform as the

21

proof, and moves for summary judgment of non-infringement and invalidity based on

22

obviousness. OpenTV insists that the invention described in the ’595 patent nevertheless

23

remains a core part of Comcast’s X1 platform and moves for summary judgment of

24

infringement. This order follows full briefing on each side’s motion for summary judgment

25

(i.e., three rounds of briefing per side) and oral argument.

26

ANALYSIS
LEGAL STANDARD.

27

1.

28

Summary judgment is appropriate when there is no genuine dispute of material fact and
the moving party is entitled to judgment as a matter of law. F.R.C.P. 56(a). A genuine dispute
4

1

of material fact is one that “might affect the outcome of the suit under the governing law.”

2

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986). In deciding a motion for

3

summary judgment, the court must believe the non-movant’s evidence and draw all justifiable

4

inferences in their favor. Id. at 255.

5

2.

NON-INFRINGEMENT (OR INFRINGEMENT).

6

Comcast contends it is entitled to summary judgment of non-infringement as to Claim 1

distinct signals or “monitor both” signals for requested modules (Dkt. No. 150-4 at 6–19).

9

Instead, Comcast claims, the coaxial cable connected to each set-top box is the sole input port

10

for a composite signal transmitted to the set-top box. OpenTV disagrees that this feature of the

11
For the Northern District of California

because the accused set-top boxes do not have two distinct “input ports” that receive two

8

United States District Court

7

accused set-top boxes is dispositive, and theorizes that other circuitry inside the accused set-top

12

boxes actually meets each limitation of Claim 1. To determine whether summary judgment of

13

non-infringement (or infringement) is warranted, this order must first construe Claim 1 to

14

determine its scope and then determine whether the properly-construed Claim 1 reads on

15

Comcast’s accused set-top boxes. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d

16

1298, 1304 (Fed. Cir. 1999).

17

Claim terms “are generally given their ordinary and customary meaning,” i.e., “the

18

meaning that the term would have to a person of ordinary skill in the art in question at the time

19

of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). To

20

properly construe a claim, a court must examine the claim, the rest of the specification, and, if

21

in evidence, the prosecution history. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d

22

1313, 1324 (Fed. Cir. 2003). When legal “experts” offer views on claim construction that

23

conflict with each other or with the patent itself, such conflict does not create a question of fact

24

or relieve the court of its obligation to construe the claim according to the tenor of the patent.

25

Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995).

26

To prove infringement, OpenTV must show that Comcast’s accused set-top boxes meet

27

each properly-construed limitation of Claim 1 either literally or under the doctrine of

28

equivalents. See Deering Precision Instruments, LLC v. Vector Distribution Sys., Inc., 347 F.3d
1314, 1324 (Fed. Cir. 2003). To establish literal infringement, all of the elements of the claim,
5

1

as correctly construed, must be present in the accused system. TechSearch, LLC v. Intel Corp.,

2

286 F.3d 1360, 1371 (Fed. Cir. 2002). OpenTV may also establish infringement under the

3

doctrine of equivalents by “showing that the difference between the claimed invention and the

4

accused product [is] insubstantial,” including “by showing on a limitation by limitation basis

5

that the accused product performs substantially the same function in substantially the same way

6

with substantially the same result as each claim limitation of the patented product.” Crown

7

Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009).

8
9

Here, proper construction of just one disputed term — “input port” — suffices to
warrant summary judgment of non-infringement in Comcast’s favor. Comcast contends this
term specifically means “an interface configured to receive a signal that is input to the

11
For the Northern District of California

United States District Court

10

interactive television receiver.” OpenTV contends this term broadly means “an interface for

12

receiving signals from one or more signal sources” (see Dkt. No. 148-3 at 10–11). The parties

13

dispute (a) whether a single “input port” can receive signals from multiple sources, and (b) what

14

limits, if any, restrict where an “input port” can be located.

15

The plain language of Claim 1 contemplates two distinct “input ports” — one

16

“configured to receive a broadcast signal” and another “configured to receive a second signal”

17

distinct from the broadcast signal. In support of its contrary position, OpenTV misleadingly

18

quotes a fragment of the specification for the proposition that “an ‘input port’ [i]s a port ‘for

19

receiving signals from various signal sources’” (Dkt. No. 148-3 at 11 (quoting Dkt. No. 149-2

20

at 5:18–24 with added emphasis)). Actually, the quoted portion of the specification, which

21

describes the preferred embodiment of the claimed invention as shown in Figure 2, states, “[The

22

tuner] may be replaced by other means, all collectively referred to herein as input ports, for

23

receiving signals from various signal sources” (Dkt. No. 149-2 at 5:22–24 (emphasis added)).

24

In other words, that portion of the specification refers generally to multiple input ports

25

collectively receiving multiple signals from various sources, not to any single input port

26

receiving multiple signals from various sources as OpenTV suggests.

27
28

OpenTV further contends there should be no restriction whatsoever on where an “input
port” can be located because no such restriction is explicit in the plain language of Claim 1
(Dkt. No. 161-4 at 7–8). Through this proposed construction, OpenTV attempts to validate its
6

1

infringement theory that unspecified “distinct parts” of the video systems-on-chip inside each

2

accused set-top box — rather than the single coaxial cable connected to each set-top box —

3

actually constitute the claimed first and second “input ports” because they receive filtered and

4

segregated “linear video” and “IP data” signals from the front-end (see id. at 5–6). OpenTV’s

5

proposed construction, however, is overbroad and incompatible with the rest of the specification

6

and the underlying purpose of the ’595 patent.

7

Read as a whole, the ’595 patent does not preclude the possibility that an “input port”

8

can be connected to the outside of a set-top box or housed on the inside of the set-top box. For

9

example, in describing the preferred embodiment of the invention, the specification
contemplates that a tuner inside the set-top box might serve as an “input port” for receiving a

11
For the Northern District of California

United States District Court

10

broadcast signal, as shown in Figure 2 (see Dkt. No. 149-2 at 5:19–24):

12
13
14
15
16
17
18
19
20

Both in briefing and during oral argument, OpenTV placed great emphasis on the fact that an

21

“input port” does not need to be an interface on the outside of a set-top box. This argument is

22

correct as far as it goes, but misses the point. Specifically as to Figure 2, for example, the

23

specification explains (id. at 5:19–57 (emphasis added)):

24
25
26
27
28

The broadcast signal is received and fed into tuner 31. Tuner 31
selects the channel on which the broadcast audio-video-interactive
signal is transmitted and passes the signal to processing unit 32.
(Tuner 31 may be replaced by other means, all collectively referred
to herein as input ports, for receiving signals from various signal
sources.) Processing unit 32 demultiplexes the packets from the
broadcast signal if necessary and reconstructs the television
programs and/or interactive applications embodied in the signal.
The programs and applications are then decompressed by
decompression unit 33. The audio and video information
associated with the television programs embodied in the signal is
7

1
2
3
4

then conveyed to display unit 34, which may perform further
processing and conversion of the information into a suitable
television format . . . . Applications reconstructed from the
broadcast signal are routed to random access memory (RAM) 37
and are executed by control system 35. . . . Modem 38 provides
both a return path by which viewer data can be transmitted to the
broadcast station and an alternate path by which the broadcast
station can transmit data to the set-top box.

5
In short, the preferred embodiment describes a system where two distinct “input ports”
6
receive two distinct signals that are transmitted “to the set-top box” from an external source,
7
i.e., the “broadcast station.” (To repeat, this was part of the invention to alleviate the
8
restrictions of previous systems that used only one “input port.”) This receipt unambiguously
9
occurs before further processing of the signals inside the set-top box itself, including
10
or application execution. This refutes OpenTV’s suggestion that these internal processes
For the Northern District of California

United States District Court

demultiplexing, reconstruction, decompression, and ultimate conveyance for television display
11
12
separately constitute “receipt” of distinct signals at distinct “input ports” inside the set-top box.
13
Despite its own reliance on part of the foregoing description, OpenTV protests that
14
Comcast cannot use Figure 2 to support its non-infringement argument because “a claim cannot
15
be limited to the patent’s preferred embodiment” (Dkt. No. 161-4 at 6–7). True, the mere fact
16
that the specification describes only a single embodiment, standing alone, is insufficient to limit
17
otherwise broad claim language absent a clear indication in the intrinsic record that the patentee
18
intended the claim to be so limited. E.g., Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325,
19
1342 (Fed. Cir. 2010); Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337,
20
1345 (Fed. Cir. 2008). Here, however, the specification of the ’595 patent as a whole — not
21
just Figure 2 — clearly shows that an “input port” receives a signal when it initially arrives at a
22
set-top box from an external source and before it undergoes further processing inside the set-top
23
box itself. Phillips, 415 F.3d at 1315 (“[T]he specification is always highly relevant to the
24
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
25
of a disputed term.” (quotation and citation omitted)).
26
For example, the abstract of the ’595 patent describes a “system [that] transmits modules
27
from a broadcast station to a plurality of receiving stations through various paths, such as
28
broadcast channels and modem channels.” See, e.g., Netcraft Corp. v. eBay, Inc., 549 F.3d

8

indicates that the “various paths” contemplated by the claimed invention are paths external to

3

the set-top box itself (e.g., between a transmitting “broadcast station” and receiving set-top

4

boxes), not merely “paths” that the filtered and segregated components of a signal might take

5

inside the set-top box after initial receipt and processing. Similarly, the summary of the claimed

6

invention explains that “[t]he set-top box monitors the input ports to determine whether a packet

7

received at the input port contains module data and, if so, whether the module should be

8

processed and stored in the set-top box.” The summary further notes that “[t]he various types of

9

packets are generally time multiplexed with each other,” and “[i]f the system determines that

10

the module should be stored, the packets corresponding to the module are extracted from the

11
For the Northern District of California

1394, 1398–99 (Fed. Cir. 2008) (considering abstract in affirming claim construction). This

2

United States District Court

1

interactive television signal” before “the module is processed and made available for execution”

12

(Dkt. No. 149-2 at 2:41–51). This, too, indicates that the claimed invention requires a signal to

13

be “received at the input port” before any internal processing or storage takes place.

14

OpenTV cites another fragment of the specification, again describing the preferred

15

embodiment, for the proposition that “the two signals, or ‘module sources,’ can include

16

‘processed, e.g. reconstructed and decompressed, signals.’” Based on this fragment, OpenTV

17

contends the ’595 patent actually contemplates internal “input ports” that receive signals only

18

after they have been processed inside the set-top box (Dkt. No. 161-4 at 9). Actually, the

19

quoted portion of the specification states (Dkt. No. 149-2 at 10:4–13 (emphasis added)):

20
21
22
23
24

The module management unit monitors the various module sources
coupled to the set-top box. As described above, the module
sources may include broadcast signals, http signals, modem
communications or other means for supplying input signals to the
set-top box. (The term “module source” as used herein is broadly
interpreted to include both transmission sources, such as satellite
or modem transmissions, and inputs to the module management
unit which carry processed, e.g., reconstructed and decompressed,
signals.)

25

In an earlier description of the preferred embodiment, the specification also expressly states that

26

“[t]he signals transmitted via the broadcast and modem channels may both embody various

27

modules. Each of these two channels is therefore considered a ‘module source’ for the purposes

28

of this description” (id. at 3:61–66 (emphasis added)). This does not support OpenTV’s
suggestion that “module sources” includes circuitry inside the set-top box itself that merely
9

1

splits up a received composite signal for further processing. On the contrary, the specification

2

confirms that the only “module sources” contemplated by the ’595 patent are external sources

3

that can be “coupled to” the set-top box to “supply[] input signals to the set-top box.”

ports” would run afoul of the very purpose of the supposed invention in the ’595 patent. To

6

repeat, the module management system and method described in the ’595 patent were supposed

7

to alleviate bandwidth, memory, and timing restrictions by shifting transmission of some

8

modules to a second signal received over a second input port. Prior art predating this supposed

9

invention could already use a single input port to receive a composite signal and then split that

10

composite signal, as received, into its various components for further separate processing. The

11
For the Northern District of California

Finally, Comcast correctly points out that OpenTV’s proposed construction of “input

5

United States District Court

4

supposed invention relieved some of the restrictions associated with these prior systems (e.g.,

12

bandwidth restrictions) by adding a separate, second input for some of the transmitted data.

13

Now, OpenTV wants to claim ownership over the use of even a single input port to

14

receive a composite signal merely because the received signal is then separated into its various

15

components. This sleight of hand is firmly rejected. In short, the basic purpose and focus of the

16

’595 patent refute OpenTV’s proposed construction. See Gemalto S.A. v. HTC Corp., 754 F.3d

17

1364, 1368–69 (Fed. Cir. 2014) (considering “entire purpose of the invention,” as demonstrated

18

by the specification, in construing a disputed claim); On Demand Machine Corp. v. Ingram

19

Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006) (“[T]he role of the specification is to describe

20

and enable the invention. In turn, the claims cannot be of broader scope than the invention that

21

is set forth in the specification.”). The correct construction of “input port” adopted herein is an

22

interface that receives a signal when it initially arrives at a set-top box from an external source

23

and before it undergoes further processing inside the set-top box itself. This construction is

24

clear from the patent itself and consistent with the prosecution history evidence in the record, to

25

the extent that said evidence touches on the subject of “input ports” (see, e.g., Dkt. No. 159-3 at

26

23–24 (discussing prosecution history evidence concerning the “monitor both” limitation)).

27
28

Properly construed, the “first input port configured to receive a broadcast signal” and
“second input port configured to receive a second signal” limitations of Claim 1 are simply not
met by Comcast’s accused set-top boxes. OpenTV makes no argument that, under this order’s
10

1

construction of the “input ports” requirement, the accused set-top boxes infringe either literally

2

or under the doctrine of equivalents. Indeed, in response to Comcast’s non-infringement

3

arguments, OpenTV expressly abandoned its prior theory that the “two sets of tuner banks on

4

the front-end [systems-on-chip]” of Comcast’s accused set-top boxes constitute the first and

5

second “input ports” required by Claim 1 (Dkt. No. 161-4 at 5 n.2, 8 n.4). OpenTV’s sole

6

remaining infringement theory as to the “input ports” requirement is based on the video

7

systems-on-chip. As explained, this theory is unavailing. Moreover, inasmuch as Comcast’s

8

accused set-top boxes do not have the required “input ports,” they also cannot meet the

9

limitation of “a microprocessor coupled to said first input port and said second input port, said
microprocessor being configured to . . . monitor both said broadcast signal received by said

11
For the Northern District of California

United States District Court

10

first input port and said second signal received by said second input port for said requested

12

interactive television application modules” (emphasis added). Comcast is entitled to summary

13

judgment of non-infringement on this basis alone. Accordingly, this order does not reach the

14

parties’ additional non-infringement (or infringement) or invalidity arguments.

15
16

CONCLUSION
For the foregoing reasons, plaintiff’s motion for summary judgment is GRANTED as to

17

non-infringement and DENIED AS MOOT as to invalidity. The patent owners’ motion for

18

summary judgment of infringement is DENIED.

19

Because Claim 1 was the patent owners’ best shot at proving infringement, this outcome

20

bodes poorly for the remainder of their case. For the time being, no more motions may be filed

21

until further order of the Court. The sole exception is that plaintiff may, within FOURTEEN

22

CALENDAR DAYS,

23

owners’ wrongful assertion of Claim 1 of the ’595 patent. Any such motion must establish both

24

entitlement to and the amount of the fees sought.

bring a motion for attorney’s fees under the Patent Act based on the patent

25
26

IT IS SO ORDERED.

27
28

Dated: August 4, 2017.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
11