EON Corp. IP Holdings LLC v. FLO TV Incorporated et al

Filing 907

MEMORANDUM OPINION regarding 645 MOTION for Summary Judgment of Invalidity. Signed by Judge Richard G. Andrews on 3/4/2014. Associated Cases: 1:10-cv-00812-RGA, 1:13-cv-00910-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

EON CORP. IP HOLDINGS, LLC,
Plaintiff,
Civil Action No. 10-812-RGA

v.
FLO TV INCORPORATED, eta/.,
Defendants.

EON CORP. IP HOLDINGS, LLC,
Plaintiff,
Civil Action No. 13-91 0-RGA

v.
AT&T MOBILITY LLC,
Defendant.

MEMORANDUM OPINION

Gregory B. Williams, Esq., FOX ROTHSCHILD LLP, Wilmington, DE; Daniel R. Scardino,
Esq. (argued), REED & SCARDINO LLP, Austin, TX; Steven P. Tepera, Esq. (argued), REED
& SCARDINO LLP, Austin, TX; John L. Hendricks, Esq. (argued), REED & SCARDINO LLP,
Austin, TX.
Attorneys for Plaintiff EON Corp. IP Holdings, LLC.
Karen Jacobs Louden, Esq. (argued), MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE; Jennifer Ying, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE; Megan E. Dellinger, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE; Heidi Keefe, Esq., COOLEY LLP, Palo Alto, CA.
Attorneys for Defendant HTC America, Inc.
Michael J. Farnan, Esq., FARNAN LLP, Wilmington, DE; Laura E. Miller, Esq., DURIE
TANGRI LLP, San Francisco, CA.

Attorneys for Defendant MobiTV, Inc.
Jack B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
Frederick L. Whitmer, Esq. (argued), KILPATRICK TOWNSEND & STOCKTON LLP, New
York, NY; Carl E. Sanders, Esq., KILPATRICK TOWNSEND & STOCKTON LLP, WinstonSalem, NC.
Attorneys for Defendant Motorola Mobility LLC.
Karen Jacobs Louden, Esq. (argued), MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE; Jennifer Ying, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE; Megan E. Dellinger, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE.
Attorneys for Defendants Sprint and Simplexity.
Jack B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
Diana M. Sangalli, Esq. (argued), DUANE MORRIS LLP, Houston, TX; Joseph A. Powers,
Esq., DUANE MORRIS LLP, Philadelphia, PA.
Attorneys for Defendant AT&T Mobility LLC.
Richard L. Horwitz, Esq., POTTER, ANDERSON & CORROON LLP, Wilmington, DE;
Harrison J. (Buzz) Frahn IV, Esq. (argued), SIMPSON THACHER & BARTLETT LLP, Palo
Alto, CA; Victor Cole, Esq., SIMPSON THACHER & BARTLETT LLP, New York, NY.
Attorneys for Defendants FLO TV, Inc. and Qualcomm, Inc.
Steven J. Fineman, Esq., RICHARDS, LAYTON & FINGER, PA, Wilmington, DE.
Attorney for Defendant U.S. Cellular Corporation.
Nitika Gupta, Esq., FISH & RICHARDSON P.C., Wilmington, DE.
Attorney for Defendant LG Electronics MobileComm USA, Inc.

Marchi, 2014

2

~4-~ISTRICT

JUDGE:

On September 23,2010, EON Corp. IP Holdings, LLC filed suit against FLO TV
Incorporated, GoTV Networks, Inc., HTC America, Inc., Kyocera Communications Inc., LG
Electronics MobileComm USA, Inc., LetsTalk.com, Inc., MobiTV, Inc., Motorola, Inc., Palm,
Inc., Qualcomm, Inc., Research in Motion Corporation, SPB Software, Inc., Samsung
Telecommunications America LLC, Sprint Nextel Corporation, U.S. Cellular Corporation,
Verizon Communications Inc., and Wirefly, Corp. (collectively, "FLO TV Defendants") alleging
infringement ofU.S. Pat. No. 5,663,757 ("the '757 patent"). (1 :10-cv-812 D.I. 1). EON also
claimed infringement ofthe '757 patent by AT&T Mobility, LLC ("AT&T"), 1 AT&T Mobility
Puerto Rico, Inc., Puerto Rico Telephone Company, Inc., Telecomunicaciones de Puerto Rico,
Inc., Telefonica de Puerto Rico, Inc., and Claro, Inc. in a suit filed in the U.S. District Court for
the District ofPuerto Rico on June 14,2011. (1:13-cv-910 D.I. 1). Judge Carreiio-Coll severed
all claims between EON and AT&T relating to the '757 patent from the Puerto Rico case and
transferred them to the District ofDelaware. (1:13-cv-910 D.I. 326). The Court then
consolidated the cases for purposes of claim construction on August 7, 2013. (1: 10-cv-812 D.I.
559).
Eight terms from the '757 patent are computer-implemented means-plus-function claims,
and they have been singled out for construction in this memorandum opinion. (1: 13-cv-91 0 D.I.
423 at 14).2 The Court has considered the parties' claim construction briefing (D.I. 383-1 to
383-6; 1:10-cv-812 D.I. 400), appendix (1:10-cv-812 D.I. 401), oral argument on January 8,
2013 regarding claim construction (D.I. 419, 420), an evidentiary hearing on claim construction

1
2

AT&T and the FLO TV defendants will be collectively referred to as "the Defendants."
Unless otherwise noted, all subsequent citations are to the 1: 13-cv-91 0 docket.

3

on February 5, 2013 (D.I. 423), and post-hearing briefing (1:10-cv-812 D.I. 891, 892, 896 &
897).

I. LEGAL STANDARD
"It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude." Phillips v. A WH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "'[T]here is no magic formula or
catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
Soft View LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324). When construing patent claims, a matter oflaw, a court considers the literal
language of the claim, the patent specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
(1996). Ofthese sources, "the specification is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."
Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, ''the words of a claim are generally given their ordinary and customary
meaning ... [which is] the meaning that the term would have to a person of ordinary skill in the
art in question at the time ofthe invention, i.e., as of the effective filing date of the patent
application." Phillips, 415 F .3d at 1312-13 (internal citations and quotation marks omitted).
"[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the
entire patent." !d. at 1321 (internal quotation marks omitted). "In some cases, the ordinary
meaning of claim language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than the application

4

of the widely accepted meaning of commonly understood words." I d. at 1314 (internal citations
omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises," in order to assist the court in understanding the underlying technology, the meaning of
terms to one skilled in the art and how the invention works. Id. at 131 7-19 (internal quotation
marks and citations omitted). However, extrinsic evidence is less reliable and less useful in
claim construction than the patent and its prosecution history. Id.
Moreover, "[a] claim construction is persuasive, not because it follows a certain rule, but
because it defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa'

per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int 'I

Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation
omitted).
An additional set of principles governs the construction of means-plus-function terms.

The Federal Circuit has recognized a presumption in favor of applying 35 U.S.C. § 112, ~ 6 3
whenever the word "means" is used in the claim language to describe a limitation. See Net

MoneyiN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366 (Fed. Cir. 2008) ("A claim element that
contains the word 'means' and recites a function is presumed to be drafted in means-plusfunction format under 35 U.S.C. § 112 ~ 6."). The presumption can be overcome "where the
claim, in addition to the functional language, recites structure sufficient to perform the claimed
function in its entirety." Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003).

3

Now§ 112(f).

5

In order for there to be sufficient structure, the claim language must specify "the exact structure
that performs the functions in question without need to resort to other portions ofthe
specification or extrinsic evidence for an adequate understanding of the structure." TriMed, Inc.

v. Stryker Corp., 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
Once it has been determined that the term is written as a means-plus-function limitation,
courts employ a two-part test to construe the term. First, the court is required to determine the
claimed function. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.
Cir. 2006). The second step is to "identify the corresponding structure in the written description
of the patent that performs that function." I d. The identified structure is required to "permit one
of ordinary skill in the art to 'know and understand what structure corresponds to the means
limitation."' Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (quoting

Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007)). Otherwise, the
term is invalid. Id.

In the special case where the corresponding structure is a computer, the patent must
disclose an algorithm for performing the claimed function. "[S]imply disclosing a computer as
the structure designated to perform a particular function" is insufficient to limit the scope of the
claim under§ 112, ~ 6 because "a general purpose computer programmed to carry out a
particular algorithm creates a 'new machine' .... " Aristocrat Techs. Austl. Pty Ltd. v. Int'l

Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) ("[A] general purpose computer 'in effect
becomes a special purpose computer once it is programmed to perform particular functions
pursuant to instructions from program software."' (quoting WMS Gaming, Inc. v. Int 'l Game

Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999)).

6

The Federal Circuit carved out an exception to this rule, holding that it is "not necessary
to disclose more structure than the general purpose processor" when the claimed functions "can
be achieved by any general purpose computer without special programming." In re Katz

Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). This exception
is a "narrow" one, and an algorithm need not be disclosed "only in the rare circumstances where
any general-purpose computer without any special programming can perform the function."

Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364-65 (Fed. Cir. 2012).
Examples of functions that can be carried out by a general purpose computer without special
programming include: processing, receiving, and storing. See In re Katz, 639 F.3d at 1316
("Katz has not claimed a specific function performed by a special purpose computer, but has
simply recited the claimed functions of 'processing,' 'receiving,' and 'storing.'"). By contrast,
any function that involves "more than merely plugging in a general-purpose computer" requires
special programming. Ergo Licensing, LLC, 673 F.3d at 1365 (finding claim language reciting
function of"controlling the adjusting means" to require special programming).
Several recent decisions have addressed the functional capabilities of a general purpose
computer. The U.S. District Court for the District of Colorado held that a multi-tasking
processing means for "coordinating data transfer" could be accomplished by a general purpose
computer without special programming. EdiSync Sys., Inc. v. Centra Software, Inc., 2012 WL
2196047, at *15-17 (D. Colo. June 15, 2012). I previously held that a general purpose computer
without special programming could perform the function of displaying an icon. United Video

Props., Inc. v. Amazon.com, Inc., 2012 WL 2370318, at *11 (D. Del. June 22, 2012)
("'[D]isplaying' an icon is a common function that can be achieved by any general purpose
computer without special programming."); see also Soft View LLC v. Apple Inc., 2013 WL

7

4758195, at *11 (D. Del. Sept. 4, 2013) (finding no algorithm required for "processing means"
claim element because that function could be achieved by a general purpose computer without
special programming).
II. CONSTRUCTION OF DISPUTED TERMS

A. The '757 Patent
There are eight computer-implemented claim terms that the Court has been asked to
construe. Claim 8 is representative and recites:

A local subscriber's data processing station for a wireless television
program communication network coupling together a set of interactive subscriber
television receiver stations, comprising in combination,
an operation control system in said data processing station for controlling
video signals, system operating modes and interactive communications available to
the subscriber,
a television receiver with a video display screen, program control means
and television program channel selection means,
a plurality of sources of video text and television program channels
available from.said network for individual presentation on said display screen in
response to operator control by way of paid [sic] operation control system,
[six additional limitations],
means responsive to said self contained software for establishing a mode of
operation for selection of one of a plurality of authorized television program
channels wherein a channel selection menu identifying authorized channels is
displayed automatically on said video screen,
means establishing a first menu directed to different interactively selectable
program theme subsets available from said authorized television program channels
and means for causing selected themes to automatically display a second menu
displaying available television programs relating to that selected theme, means
responsive to said subscriber manual control means for selecting a preferred theme
from said different themes presented when said first menu is displayed on said
screen, and means in said control system for identifying on said second menu said
television programs available relating to the selected theme, and
means controlled by replaceable software means operable with said
operation control system for reconfiguring the operating modes by adding or
changing features and introducing new menus.

8

'757 patent, claim 8. 4 Each of the disputed terms contains the word "means," and thus a
presumption exists in favor of applying § 112, ,-r 6. See Net MoneyIN, Inc., 545 F .3d at 1366.
EON only disputes the application of§ 112, ,-r 6 with respect to terms 2 and 3. The presumption
has not been overcome for either of those terms because the claim language does not recite
"structure sufficient to perform the claimed function in its entirety." Altiris, Inc., 318 F.3d at
1375. Therefore, § 112, ,-r 6 applies to all eight terms.
1. "Means under control of said replaceable software means for indicating
acknowledging of shipment of an order from a remote station" (claim 7)
a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed
function: "indicating acknowledging of shipment of an order from a remote station"; proposed
structure: "messages displayed on viewing screen 11 in FIGS. 2, 3, and 5."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "indicating acknowledging of shipment of an order from a remote
station"; proposed structure: "Indefinite. No structure is disclosed in the specification."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "indicating acknowledging of shipment of an order from a remote station"; proposed
structure: "None. Indefinite."
d. Court's construction: "Indefinite."
The parties agree this is a means-plus-function term with the function of"indicating
acknowledging of shipment of an order from a remote station." The dispute is whether the
patent discloses sufficient corresponding structure, i.e., whether a general purpose computer

4

Independent claims 1 and 7-10 were amended during reexamination, and dependent claims 2-6 were found to be
patentable after amendment to claim 1. The Reexamination Certificate with the amended claims was issued August
14,2012. A second reexamination certificate, issued October 21,2013, did not include any amendments.

9

without special programming in 1991 could perform the claimed function. 5 EON contends that
the structure is "messages displayed on viewing screen 11 in FIGS. 2, 3, and 5."6 The
Defendants allege that the patent does not disclose any structure and that the term is indefinite. 7
As described in more detail below, EON's proffered structure is legally insufficient to sustain the
term's validity because a general purpose computer in 1991 could not, without special
programming, perform the claimed function and no algorithm was disclosed.
Dr. Sauer, EON's expert witness, testified at the evidentiary hearing that the function of
"indicating acknowledging of shipment of an order from a remote station" could not be
performed by a computer purchased "off-the-shelf." (D.I. 423 at 33 (Q. "It's true, sir, is it not,
that you don't know of any general-purpose computer in 1991, that off-the-shelf could perform
any of the functions of the computer-implemented terms? A. Off-the-shelf, with the exception of
Claim Term [2], all of the computer-implemented terms would require some additional
programming.")). The Defendant's expert, Dr. Grimes, agreed that no general purpose computer
could perform any of the claimed functions, including "indicating acknowledging of shipment of
an order from a remote station." (!d. at 63 ("Q. Looking at the functions of the computerimplemented terms in this case, did a general-purpose computer in 1991, perform any of them?
A. No. I've examined the terms, as they have been agreed to by the parties in this exhibit that

5

Because all eight terms at issue here are computer-implemented means-plus-function terms, the experts largely
discussed the terms together without focusing on any particular term's function or structure. Therefore, the analysis
regarding whether a general purpose computer with no algorithm constitutes sufficient structure under§ 112, ~ 6 is
equally applicable to each of the subsequent terms. The parties also agree on the function for each term except one,
and that term is addressed individually later in this opinion. (1:10-cv-812 D.l. 900 Plaintiffs Exhibit 4; Defendant's
Exhibit 4).
6 EON's structure is insufficient because there is no explanation in the specification as to how the displayed
messages are generated, other than by a "microprocessor." '757 patent, Figs. 3 and 5; see also Ibormeith IP, LLC v.
Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013).
7 The Defendants modified the proposed structure for this term after Dr. Sauer, EON's expert, wrote his declaration
in support of EON's claim construction. EON contends this caused prejudice because it was too late for Dr. Sauer
"to address their argument with respect to the computer-implement[ed] style argument they had changed it to." (D.l.
420 at 59). The prejudice that EON suffered, if any, was cured by the evidentiary hearing where both experts had
the opportunity to provide their opinions based on the parties' most up-to-date constructions.

10

we've been referring to earlier, and for those functions, none of those functions were available
on a general-purpose computer.")).
Not only could a general purpose computer bought off-the-shelf in 1991 not perform the
function in question, but the experts agree that off-the-shelf software in 1991 would not have
been capable of performing the claimed function either. (!d. at 38-39 ("Q. Well, [Dr. Sauer], are
you aware of any off-the-shelf software applications that a person could have purchased in 1991,
to perform without additional software programming, any of the computer-implemented
functions of the patent? A. Off-the-shelf software by itself would not be able to implement
these computer-implemented terms without additional programming. Q. So the answer is no?
A. Ifl understand the question, the answer is no." (objection omitted)); id. at 63 ("Q. And, [Dr.

Grimes], let[] me ask you the second question, the big question that I asked Dr. Sauer, were
there any commercially-available software applications in 1991, that a consumer could purchase
off-the-shelf to perform any of the functions ofthe computer-implemented terms? A. Not-not
that I'm aware of. I mentioned the hardware and software that my company produced, but I'm
not aware of anything besides that. Q. And that hardware and software, so that didn't actually
perform any ofthe functions that we're talking about today for Mr. Morales' patent, did it? A.
That's correct.")). Instead, special code would have to be written in order to accomplish the
claimed functionality. (!d. at 40 ("Q. I want to ask you now, [Dr. Sauer], ifthe function of the
computer-implemented terms were not going in the general-purpose computer, and they were not
performable by off-the-shelf software applications in 1991, it's true that someone would have to

11

write a computer program to accomplish those functions, correct? A. Someone would have to
write a computer program to accomplish the functions of the claim terms.")). 8
The fact that neither a store-bought computer nor a store-bought computer with storebought software could achieve the claimed function places this case outside of the Katz
exception. As stated above, in order to take advantage of the means-plus-function framework,
the patentee must disclose the corresponding structure. In the case of a computer-implemented
term, that structure is the algorithm. A narrow exception exists, thereby exempting the patentee
from the algorithm requirement, if the function could be performed by a general purpose
computer without "special programming." The exception's application turns on the meaning of
"special" programming-same programming must be permissible, but not special programming.
If that were not the case, the Federal Circuit's use of"special" to describe programming would
be rendered superfluous.
In my view, the proper distinction between "special programming" and "programming" is
whether the programming in question is commercially available at the time of the invention. If
the programming required to perform the claimed function can be purchased off-the-shelf, then it
is ordinary programming and no algorithm is required to comply with§ 112, ~ 6's structure
requirement. A general purpose computer is sufficient structure in this situation. If, however, a
store-bought computer combined with off-the-shelf programming cannot perform the claimed
function, then there is a need for special programming, and § 112, ~ 6 therefore mandates the
disclosure of an algorithm. See Ergo Licensing, LLC, 673 F .3d at 1365 ("A specially adapted
computer is not a general-purpose computer."); Aristocrat Techs. Austl. Pty Ltd., 521 F.3d at

8

Mr. Morales, the inventor, also gave deposition testimony suggesting that one or more engineers were required to
complete the necessary programming. (1:10-cv-812 D.I. 649-5 at 5 ("Q. If you didn't personally write that
software, who would have been the one to write it? A We have hundreds of engineers, you cannot imagine.")).

12

1333 (noting that a "new machine" is created when "a general purpose computer [is]
programmed to carry out a particular algorithm"). This framework is consistent with the
Constitution's stated purpose of"promot[ing] the progress of science and useful arts" in
exchange for a limited, government-sanctioned monopoly. U.S. CONST. art. I,§ 8. If the
required programming is more sophisticated than what can be readily purchased by a consumer,
then the algorithm must be disclosed as the quid pro quo for receiving patent protection.
Processing, receiving, storing, and displaying an icon are functions that any general
purpose computer purchased off-the-shelf is capable of performing, which is why no algorithm is
required. See Katz, 639 F.3d at 1316; United Video Props., Inc., 2012 WL 2370318, at *11. 9
The function at issue here, "indicating acknowledging of shipment of an order from a remote
station," is more complicated. EON implicitly conceded as much when its expert stated that no
store-bought software installed on a general purpose computer in 1991 could achieve it without
additional programming by the user. (D.I. 423 at 40 ("Someone would have to write a computer
program to accomplish the functions of the claim terms.")). Without disclosing the algorithm,
the public is left without any knowledge of how to carry out the performed function. This is
particularly true when there are numerous ways to write even the most simple of computer
programs. (Id. at 44 ("Q. Sir, [is it] true that not every programmer is going to write a computer
program the same way? A. Different programmers have different styles of how they want to do
things. Every person has their own probably fairly unique style for exactly how they write a
program.")). Dr. Sauer believed that the lack of disclosure was not fatal to EON's case because a

9

The claim construction in United Video Properties is currently on appeal. Nonetheless, I felt competent as a
computer user to conclude based on personal experience that for a long time general purpose computers with no
special programming could display icons. I thought the input of experts was necessary here to resolve the dispute
about the capabilities of a computer in 1991. Both experts, I thought, were well-qualified and credible. On the
important points, I thought they essentially agreed with each other.

13

"person of relatively elementary skill in the art" could write the code that would perform the
function at issue. (!d. at 41 ). But that is inconsequential to the current inquiry. The test is not
whether a PHOSITA could write the necessary computer program, but whether the patentee
taught the public how to accomplish the claimed function in the specification by disclosing the
algorithm. The patentee is required to disclose this expertise in exchange for patent protection.
Without it the claim term cannot stand.
In sum, the claimed function of "indicating acknowledging of shipment of an order from
a remote station" is indefinite. Pursuant to§ 112, ~ 6's structure requirement, the patentee must
disclose an algorithm for carrying out the claimed function unless it could be accomplished by a
general purpose computer without special programming-the Katz exception. 10 In this case,
special programming is needed because off-the-shelf software, when installed on a general
purpose computer, cannot perform the claimed function. The Katz exception does not apply in
this situation, so the algorithm must be disclosed. The patentee here failed to disclose an
algorithm, relying instead on a general purpose computer to satisfy the structure requirement.
This is insufficient, and the claim term is indefinite as a result.
2. "Means controlled by replaceable software means operable with said operation control
system for reconfiguring the operating modes by adding or changing features and introducing
new menus" (claims 1-6, 8-1 0)
a. Plaintiff's proposed construction: No construction necessary. Alternatively, if
this is a means-plus-function limitation, the function is "reconfiguring the operating modes by

10

I do not think the Federal Circuit's recent decision, Elcommerce.com, Inc. v. SAP AG, 2014 WL 685622 (Fed. Cir.
Feb. 24, 2014), is relevant to the dispute in this case. Elcommerce did not involve the application of the Katz
exception.

14

adding or changing features and introducing new menus," and the structure is "software
controlled programmable microprocessor data processing system 27."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "reconfiguring the operating modes by adding or changing
features and introducing new menus"; proposed structure: "Indefinite. Structure is
microprocessor but no algorithm disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "reconfiguring the operating modes by adding or changing features and introducing
new menus"; proposed structure: "microprocessor 35 and external software 8' (FIG. 4), and
statutory equivalents."
d. Court's construction: "Indefinite."
As discussed above, EON failed to overcome the presumption that § 112, ~ 6 does not
apply to this term. The parties are in agreement over the function. The only issue left for
determination is whether the term is indefinite for failing to disclose sufficient structure. During
his testimony, Dr. Sauer distinguished this term from the other seven, explaining that he did not
believe "reconfiguring the operating modes by adding or changing features and introducing new
menus" required any programming to accomplish. (Id. at 33 ("Q. It's true, sir, is it not, that you
don't know of any general-purpose computer in 1991, that off-the-shelf could perform any of the
functions ofthe computer-implemented terms? A. Off-the-shelf, with the exception of Claim
Term [2], all of the computer-implemented terms would require some additional programming. I
believe Claim Term [2] could be implemented without additional programming.")). It is Dr.
Sauer's opinion that the operating system, by itself, is capable of providing this functionality.
(Id. at 23 ("A. I would assume that an ordinary user would select a program to be executed,

15

alternate programs from one that is currently running. That [is] something that would be done
routinely with the operating system software that is provided. Q. So, in other words, no
additional programming at all? A. No additional programming.")). When questioned on crossexamination, however, Dr. Sauer conceded that additional programming by someone would be
required to perform the function of this claim term:

Q. Just so we're clear, sir, it is your opinion that a person of ordinary skill
in the art would have to program a 1991 general-purpose computer, as you have
used that term, to perform the menu functions from Term [2]?
A. Perform[ing] the menu functions from Term [2] would require eitherwould require additional programming by someone. It might be provided by an
off-the-shelf application, which is why my original interpretation of Claim [2-]
Q. All right. Just so we're clearA. Someone would do that programming.
Q. Programming to accomplish the agreed function of Claim Term [2]
requires additional programming, we've agreed on that?
A. To introduce the menus requires additional programming.
Q. And the reason that you need additional programming for the computerimplemented terms is because the functions that they perform were not going [to
be] part ofthe operating system on a general-purpose computer?
A. An operating system would not provide the function in these claim
terms.
Q. In fact, the specific capabilities of these claim terms were not
performable by any of the operating systems that came loaded or could be loaded
onto a general-purpose computer; is that correct?
A. The operating systems, by themselves, as they came loaded or purchased
off-the-shelf to be installed, would not provide the functions of these claim terms.
Q. And that's why you needed additional programming?
A. That's why additional programming is needed.

(!d. at 36-37). Dr. Grimes testified that additional programming was required. (Id. at 75-76 ("Q.
Again, back in 1991, was there a commercially-available software that would perform this
function for an interactive TV system? A. No, there was not. The interactive TV aspect of it
was really not available off-the-shelf and certainly wasn't present in the standard generalpurpose computers ofthe day. Q. So, if it wasn't available off-the-shelf in an application for a

16

general-purpose computer, what would you have to do? A. Well, you would have to write the
software and add the hardware, in some cases, to be able to implement these functions. In this
case this function of [term 2].")). 11 Because additional programming would be required, this
term is indistinguishable from the other disputed terms for purposes of claim construction. For
the reasons stated in section II.A.l, supra, a general purpose computer without special
programming in 1991 could not perform the claimed function. This renders the Katz exception
inapplicable. In order to avoid a finding of indefiniteness, therefore, the '757 patent must
disclose an algorithm to accomplish the function. It does not, and the term is indefinite as a
result.
3. "Means responsive to said self contained software for establishing a mode of
operation for selection of one of a plurality of authorized television program channels" (claim 8)
a. Plaintiff's proposed construction: No construction necessary. Alternatively, if
this is a means-plus-function limitation, the function is: "establishing a mode of operation for
selection of one of a plurality of authorized television program channels," and the structure is:
"microprocessor 35 and menus shown in Figs. 3-5 and statutory equivalents."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "establishing a mode of operation for selection of one of a
plurality of authorized television program channels"; proposed structure: "Indefinite. Structure
is microprocessor but no algorithm disclosed."

11

To the extent there is a factual dispute between the experts on this point, Dr. Sauer's tentative testimony that the
functionality "might" be provided in an off-the-shelf application is less persuasive than Dr. Grimes's unequivocal
statement that store-bought software was insufficient to perform term 2's function. I find that the evidence is clear
and convincing that in 1991 store-bought software was insufficient to perform the identified function.

17

c. AT&T's proposed construction: Proposed function: "establishing a mode of
operation for selection of one of a plurality of authorized television program channels"; proposed
structure: "microprocessor 35 and menus shown in Figs. 3-5 and statutory equivalents."
d. Court's construction: "Indefinite."
As discussed above, EON failed to overcome the presumption that§ 112, ~ 6 does not
apply to this term. The parties agree on the function. The only issue left for determination is
whether the term is indefinite for failing to disclose sufficient structure. For the reasons stated in
section II.A.l, supra, a general purpose computer without special programming in 1991 could
not perform the claimed function. This renders the Katz exception inapplicable. In order to
avoid a finding of indefiniteness, therefore, the '757 patent must disclose an algorithm to
accomplish the function. It does not, and the term is indefinite as a result.
4. "Means establishing a first menu directed to different interactively selectable program
theme subsets available from said authorized television program channels" (claim 8)
a. Plaintiff's proposed construction: Not governed by 35 U.S.C. § 112, ~ 6.
Alternatively, if this is a means-plus-function limitation, the function is "establishing a first
menu directed to different interactively selectable program theme subsets," and the structure is
"microprocessor 35 and program control software."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "establishing a first menu directed to different interactively
selectable program theme subsets available from said authorized program channels"; proposed
structure: "Indefinite. Structure is microprocessor but no algorithm disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "establishing a first menu directed to different interactively selectable program theme

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subsets available from said authorized television channels"; proposed structure: "indefinite" or
"text generator NTSC format 25, modulator 26, microprocessor 35, menu 11 ', stored information
as described at 6:4-8 and external software 8', and statutory equivalents."
d. Court's construction: "Indefinite."
The parties disagree over both the function and the corresponding structure, although the
Defendants allege that the term is indefinite regardless of which proposed function is correct.
(1: 10-cv-812 D.I. 400 at 89 ("[W]hether that function is construed as 'establishing a first menu
directed to different interactively selectable program theme subsets,' as EON proposes, or also
includes the language 'available from said authorized television program channels,' as the law
requires, Lockheed, 324 F.3d at 1319, the outcome is the same: neither function can be
performed by simply plugging in a general purpose computer.")). The Court agrees that both
proposed functions would require additional programming and adopts EON's construction. (D.I.
423 at 37 ("The operating systems, by themselves, as they came loaded or purchased off-theshelf to be installed, would not provide the functions of [the computer-implemented] claim
terms.")). For the reasons stated in section II.A.1, supra, a general purpose computer without
special programming in 1991 could not perform the claimed function. This renders the Katz
exception inapplicable. In order to avoid a finding of indefiniteness, therefore, the '757 patent
must disclose an algorithm to accomplish the function. It does not, and the term is indefinite as a
result.

19

5. "Means for causing selected themes to automatically display a second menu" (claim
8)
a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed
function: "causing selected themes to automatically display a second menu"; proposed structure:
"microprocessor 35 and program control software (Figs. 3-5)."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "causing selected themes to automatically display a second
menu"; proposed structure: "Indefinite. Structure is microprocessor but no algorithm disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "causing selected themes to automatically display a second menu"; proposed structure:
"indefinite" or "text generator NTSC format 25, modulator 26, microprocessor 35, menu 11 ',
stored information as described at 6:8-14 and external software 8', and statutory equivalents."
d. Court's construction: "Indefinite."
The parties agree on the function. For the reasons stated in section II.A.1, supra, a
general purpose computer without special programming in 1991 could not perform the claimed
function. This renders the Katz exception inapplicable. In order to avoid a finding of
indefiniteness, therefore, the '757 patent must disclose an algorithm to accomplish the function.
It does not, and the term is indefinite as a result.
6. "Means controlled by replaceable software means operable with said operation control
system for establishing and controlling a mode of operation that records historical operating data
of the local subscriber's data processing station" (claim 9)
a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed
function: "establishing and controlling a mode of operation that records historical operating data

20

of the local subscriber's data processing station"; proposed structure: "microprocessor 35 and
system control 8 (FIG. 3)."
b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "establishing and controlling a mode of operation that records
historical operating data ofthe local subscriber's data processing station"; proposed structure:
"Indefinite. Structure is microprocessor but no algorithm disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "establishing and controlling a mode of operation that records historical operating data
of the local subscriber's data processing station"; proposed structure: "indefinite" or
"microprocessor 35, external read only memory software storage unit 7 as described at 5:40-43,
and statutory equivalents."
d. Court's construction: "Indefinite."
The parties agree on the function. For the reasons stated in section II.A.1, supra, a
general purpose computer without special programming in 1991 could not perform the claimed
function. This renders the Katz exception inapplicable. In order to avoid a finding of
indefiniteness, therefore, the '757 patent must disclose an algorithm to accomplish the function.
It does not, and the term is indefinite as a result.

7. "Means controlled by replaceable software means operable with said operation control
system for establishing and controlling fiscal transactions with a further local station" (claim 10)
a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed
function: "establishing and controlling fiscal transactions with a further local station"; proposed
structure: "microprocessor 35 and system control 8 (FIG. 3)."

21

b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "establishing and controlling fiscal transactions with a further
local station"; proposed structure: "Indefinite. Structure is microprocessor but no algorithm
disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "establishing and controlling fiscal transactions with a further local station"; proposed
structure: "indefinite" or "microprocessor 35, external read only memory software storage unit 7
as described at 5:43-47, PROM (subscriber ID) 31 as described at 3:56-60 & 5:32-34, and
statutory equivalents."
d. Court's construction: "Indefinite."
The parties agree on the function. For the reasons stated in section II.A.1, supra, a
general purpose computer without special programming in 1991 could not perform the claimed
function. This renders the Katz exception inapplicable. In order to avoid a finding of
indefiniteness, therefore, the '757 patent must disclose an algorithm to accomplish the function.
It does not, and the term is indefinite as a result.

8. "Means for establishing an accounting mode of operation for maintaining and
reporting fiscal transactions incurred in the operation ofthe local subscriber's data processing
station" (claim 10)
a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed
function: "establishing an accounting mode of operation for maintaining and reporting fiscal
transactions incurred in the operation of the local subscriber's data processing station"; proposed
structure: "microprocessor 35 and system control 8 (FIG. 3)."

22

b. FLO TV Defendants' proposed construction: A means-plus-function
limitation. Proposed function: "establishing an accounting mode of operation for maintaining
and reporting fiscal transactions incurred in the operation of the local subscriber's data
processing station"; proposed structure: "Indefinite. Structure is microprocessor but no
algorithm disclosed."
c. AT&T's proposed construction: A means-plus-function limitation. Proposed
function: "establishing an accounting mode of operation for maintaining and reporting fiscal
transactions incurred in the operation of the local subscriber's data processing station"; proposed
structure: "indefinite" or "microprocessor 35, RF beep transmitter 30, external read only memory
software storage unit 7 as described at 5:40-43, PROM (subscriber ID) 31 as described at 3:5660 & 5:32-34, external software 8', and statutory equivalents."
d. Court's construction: "Indefinite."
The parties agree on the function. For the reasons stated in section II.A.1, supra, a
general purpose computer without special programming in 1991 could not perform the claimed
function. This renders the Katz exception inapplicable. In order to avoid a finding of
indefiniteness, therefore, the '757 patent must disclose an algorithm to accomplish the function.
It does not, and the term is indefinite as a result.

III. CONCLUSION
For the reasons set forth above, the eight computer-implemented means-plus-function
terms are indefinite. An appropriate order will follow.

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