Rovi Corporation et al v. Amazon.Com Inc. et al

Filing 159

MEMORANDUM OPINION providing construction of the claim terms in dispute. Signed by Judge Richard G. Andrews on 6/22/2012. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

UNITED VIDEO PROPERTIES, INC.,
TV GUIDE ONLINE, LLC, and
TV GUIDE ONLINE, INC.,
Plaintiffs,
Civil Action No. 11-003-RGA

v.
AMAZON.COM, INC., and IMDB.COM,
INC.,
Defendants.

MEMORANDUM OPINION
Frederick L. Cottrell, III, Anne Shea Gaza, RICHARDS, LAYTON & FINGER, P.A.,
Wilmington, DE; Daralyn J. Durie (argued), Ragesh K. Tangri, ClementS. Roberts (argued),
Eugene Novikov (argued), DURIE TANGRI LLP, San Francisco, CA.
Attorneys for Plaintiffs United Video Properties, Inc., TV Guide Online, LLC, and TV
Guide Online, Inc.
Karen Jacobs Louden (argued), MORRIS, NICHOLS, ARSHT & TUNNELL, LLP, Wilmington,
DE; D. Michael Underhill (argued), BOIES, SCHILLER & FLEXNER LLP; Eric J. Maurer
(argued), MAURER, PLLC, Washington, DC.
Attorneys for Defendants Amazon.com, Inc. And IMDb.com, Inc.

JW1~2012

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Plaintiffs United Video Properties, Inc., TV Guide Online, LLC, and TV Guide Online,
Inc. (collectively "Plaintiffs") filed this patent infringement action against Defendants
Amazon. com, Inc. and IMDb.com, Inc. (collectively "Defendants" or "Amazon"). (D.I. 1).
Plaintiffs allege that Amazon and IMDb infringe U.S. Patent Nos. 5,988,078 ("the '078 Patent");
6,275,268 ("the '268 Patent"); 6,769,128 ("the' 128 Patent"); 7,493,643 ("the '643 Patent"); and
7,603,690 ("the '690 Patent"). (D.I. 1). Presently before the Court is the matter of claim
construction. Briefing on claim construction was completed on April 9, 2012, and the Court held
a Markman hearing on April27, 2012.

I.

CLAIM CONSTRUCTION

Claim construction is a question oflaw. Markman v. Westview Instruments, Inc., 52 F.3d
967,977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 388-90 (1996). When construing patent
claims, a court considers the literal language of the claim, the patent specification and the
prosecution history. Id at 979. Of these 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 v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005)
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). However,
"[ e]ven when the specification describes only a single embodiment, the claims of the patent will
not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim
scope using 'words or expressions of manifest exclusion or restriction.'" Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N Am. Corp.,
299 F.3d 1313, 1327 (Fed. Cir. 2002)).
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A court may consider extrinsic evidence, including expert and inventor testimony,
dictionaries and learned treatises, in order to assist it in understanding the underlying technology,
the meaning of terms to one skilled in the art and how the invention works. Phillips, 415 F.3d at
1318-19; see also Markman, 52 F.3d at 979-80. However, extrinsic evidence is considered less
reliable and less useful in claim construction than the patent and its prosecution history. Phillips,
415 F .3d at 1318-19 (discussing "flaws" inherent in extrinsic evidence and noting that extrinsic
evidence "is unlikely to result in a reliable interpretation of a patent claim scope unless
considered in the context of intrinsic evidence").
In addition to these fundamental claim construction principles, a court should also
interpret the language in a claim by applying the ordinary and accustomed meaning of the words
in the claim. Envirotech Corp. v. AI George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984). Ifthe
patent inventor clearly supplies a different meaning, however, then the claim should be
interpreted according to the meaning supplied by the inventor. Markman, 52 F.3d at 980. If
possible, claims should be construed to uphold validity. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984).
A.

Claim Terms with Agreed-Upon Claim Constructions

The parties agreed upon the constructions of various terms, and the Court accepts them as
detailed below for purposes of this litigation.

Claim Term or Phrase:

"a prerecorded video" ['268 Patent, Claims 2-4]

Agreed-Upon Construction:

a video contained on a tangible medium

Claim Term or Phrase:

"interactive" ['128 Patent, Claims 37, 47]

Agreed-Upon Construction:

capable of responding to user input

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Claim Term or Phrase:

"microcontroller" [' 128 Patent, Claims 37-39, 47]

Agreed-Upon Construction:

a hardware processor, that is part of the user equipment,
which is programmed to perform specific tasks

B.

Claims in Dispute

1.

The '078 Patent

The '078 Patent describes the use of a personal computer "to assist in the selection of
television programs to be recorded at future times and to control a video tape recorder to
implement the selected recordings." '078 Patent at [57].
a.

"viewing location" [Claims 1-7]

Plaintiffs' Proposed
Construction:

residence or other building at which a television signal
can be received

IMDb's Proposed Construction:

residence or other building where a television signal is
received from a programming source

Court's Construction:

residence or other building where a television signal is
received from a programming source

The only dispute between the parties is whether a "viewing location" is a place where a
television signal can be received or is received. The Court construes the term "viewing location"
as a "residence or other building where a television signal is received from a program source."
Claim 1 describes "a television distribution arrangement wherein a plurality of geographically
dispersed television viewing locations receive television programming from a source of such
programming." '078 Patent col. 6 11.37-40. This usage makes clear that a "viewing location"
receives television signals, which come from a programming source.
Plaintiffs assert that IMDb's construction would exclude a preferred embodiment because
the specification discloses an embodiment where "the personal computer and video recorder are
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located remotely from one another and the output signals from the personal computer are
transmitted by radio to an infrared transmitter for control of the video recorder." '078 Patent col.
2 11.58-62. Thus, Plaintiffs assert that the computer does not need to be in the same building as
the VCR that receives the television signal because the specification states that the VCR can be
located "a large distance" from the computer that receives the schedule information. Id. at col. 6

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11. 13-15. The specification, however, does not suggest that the computer could be in a different
building from the VCR but instead gives the example of the VCR being "in another room of the

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house."
b.
Plaintiffs' Proposed
Construction:

"modem" [Claims 1, 6, and 8]
a device that converts (modulates and demodulates) a
data signal for receipt and transmission over a
communication network such as a public switched
telephone network, a wireless or cellular network, or a
cable network

IMDb's Proposed Construction:

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hardware that translates audio signals transmitted over a
telephone line into digital information for a computer
and vice versa

Court's Construction:

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hardware that translates audio signals transmitted over a
telephone line into digital information for a computer
and vice versa

The Court construes the term "modem" as "hardware that translates audio signals
transmitted over a telephone line into digital information for a computer and vice versa." This
definition is consistent with Figure 1 and the specification. Figure 1 of the '078 Patent shows a

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modem communicating over telephone lines. The specification states that "[t]he operator of the
personal computer system may communicate with the schedule source over phone lines using
modems at each end." '078 Patent col. 3 11.56-58.

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In addition, because the '078 Patent claims priority to March 9, 1992 (D.I. 86 at 30), the
correct meaning of"modem" is the one that existed at that time. See, e.g., MIT v. Abacus

Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006) (limiting the definition of"scanner" to what it
meant in 1982); see also Phillips, 415 F.3d at 1312-13. Multiple dictionaries published shortly
after 1992 confirm that a modem is a device used to convert signals for transmission over
telephone lines. See, e.g., Webster's New World Dictionary of Media and Communications 380
(1996) (defining modem as "a device that converts a digital signal to an analog signal and vice
versa, often used to communicate signals from a telephone line to a computer"); Keith Jack &
Vladimir Tsatsulin, Dictionary of Video and Television Technology 184 (2002) (defining modem
as "a device that transforms a typical two-level computer signal into a form suitable for
transmission over a telephone line"); Harry Newton, Newton's Telecom Dictionary 731 (9th ed.
1995) (defining modem as "[e]quipment which converts digital signals to analog signals and
vice-versa. Modems are used to send data signals (digital) over the telephone network, which is
usually analog."); Philip E. Margolis, Random House Personal Computer Dictionary 316 (2d ed.
1996) (defining modem as "a device that enables a computer to transmit data over telephone
lines").

2.

The '268 and '128 Patents

The '268 Patent is directed to "[a]n electronic program schedule system with product
ordering capability." '268 Patent at [57]. Similarly, the' 128 Patent is directed to "[a]n
electronic program schedule system with access to both stored television program schedule
information and data feeds containing status information for live programs such as sporting
events." '128 Patent at [57].
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a.

"displaying" ['268 Patent, Claims 1-5, 7, 9, 11, 36] and
"displaying ... with the electronic television program
guide" ['268 Patent, Claims 1, 36]

Plaintiffs' Proposed
Construction:

presenting visual information

Amazon's and IMDb's Proposed
Construction:

using the electronic television program guide to visually
overlay on a screen

Court's Construction:

using the electronic television program guide to visually
overlay on a screen

"Displaying" must be interpreted in the context of the claim, not in isolation. On
Demand Machine Corp. v. Ingram Indus., 442 F.3d 1331, 1344 (Fed. Cir. 2006). The Court

construes the term "displaying ... with the electronic television program guide" as "using the
electronic television program guide to visually overlay on a screen." "Displaying ... with the
electronic television program guide" requires that the electronic television program guide be used
to perform the displaying, which is consistent with the dictionary definition of"with." In
addition, in every instance in which the patent describes an electronic television program guide's
information "display," the information is in an overlaying relationship with a television program
appearing on a television. See e.g., '268 Patent col. 5 11.41-47; id. at col. 5 11.47-53; id. at col. 10
11.22-28.
Plaintiffs argue that the word "with" cannot be interpreted to mean "using" because
"using" appears in other portions of the claims. However, other uses of the word "with" in the
Patent make clear that "with" means "using" in the context of this limitation. For example,
Claim 1 recites a method "for allowing a user to order products with an electronic television
program guide," and later recites almost the exact same language, except with the word "using"
instead of"with": "allowing a user to order the product ... using the ... electronic television

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guide."
b.

"program listings" ['268 and' 128 Patents]

Plaintiffs' Proposed
Construction:

entries that provide information about particular
programs

Amazon's and IMDb's Proposed
Construction:

entries that provide information about television
programs, including current and future air times

Court's Construction:

entries that provide information about particular
television programs

The Court construes the term "program listings" as "entries that provide information
about particular television programs." Many of the claims of the '268 and' 128 Patents call for
"program listings." For example, Claim 1 of the '268 Patent calls for "displaying program
listings" whereas Claim 2 of the '128 Patent calls for "program schedule information
compris[ing] program listings." The specification of both patents indicates that program listings
are both part of the electronic program guide and provide data about particular programs. See,
e.g., '128 Patent col. 4 ll.59-60 ("program listings included in the electronic program guide");

'268 Patent col. 4ll.25-27 (same);' 128 Patent col. 38 ll.15-20 ("program listings data for each of
the programs"); '268 Patent col. 35 11.16-19 (same).
Amazon's proposed construction would require that the program listings include "current
and future air times." However, there is nothing about the ordinary language of the term
"program listings" that requires them to contain any particular types of information about the
listed programs. In addition, the specification makes clear that "program listings" need not
include "current and future air times." For example, Figure 22 of the '268 Patent includes
program listings but not "current and future air times." '268 Patent Fig. 22; id. at col 7. 11.1-3.

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c.

"electronic television program guide" ['268 and '128
Patents]

Plaintiffs' Proposed
Construction:

an electronic application that provides information to
allow users to find television programming

Amazon's and IMDb's Proposed
Construction:

an application that provides program schedule and
channel information for a television receiver
*When used in the '268 Patent claims, also "the
electronic television program guide" is "executed on a
user-controlled data processor."

Court's Construction:

an electronic application that provides television
program schedule and channel information

The Court construes the term "electronic television program guide" as "an electronic
application that provides television program schedule and channel information." The
"Background of the Invention" states that "this invention relates to an electronic program
schedule system, which provides a user with schedule information for broadcast or cablecast
programs viewed by the user on a television receiver." '268 Patent col. 1 ll.13-16. The next
sentence explains "[m]ore particularly, it relates to an electronic program guide .... " Thus, an
"electronic program guide" is a type of electronic program schedule system described in the
previous sentence - i.e., at a minimum, it must include schedule information for programs
viewed on a television receiver.
This construction is also consistent with the patents' description of prior art "electronic
program guides." The prior art electronic program guides all included schedule information for
television "channels." '268 Patent col. 1 ll.22-33; '128 Patent col. 1 ll.23-34. The patents
claimed to introduce an improved electronic program guide that, like the prior art, still included
schedule information for television channels:

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[The] objects of the invention are achieved by an electronic
program schedule system which includes a receiver for receiving
broadcast, satellite or cablecast television programs for a plurality
of television channels and a tuner for tuning a television receiver to
a selected one of the plurality of the television channels. A data
processor receives and stores in a memory television program
schedule information for a plurality of television programs to
appear on a plurality of television channels. A television receiver
is used to display the television programs and television program
schedule and other information.
'268 Patent col. 5 11.27-41; '128 Patent col. 6 11.1-15. All examples of the electronic program
guides in the patents include schedule information for television channels.
d.

"standardized product" ['268 Patent, Claim 34]

Plaintiffs' Proposed
Construction 1:

a category of product (such as a DVD or VHS tape) that
is the same for each of multiple programs

Amazon's and IMDb's Position:

a program-associated product whose availability is
determinable solely from information identifying the
product

Court's Construction:

a category of product (such as a VHS tape or transcript)
that is the same for each of multiple programs

The Court construes the term "standardized product" as "a category of product (such as a
VHS tape or transcript) that is the same for each of multiple programs." Claim 34 depends from
Claim 1 and requires "allowing the user to order a standardized product from the electronic
television program guide." The specification describes a mechanism by which the demands on
system memory can be reduced by standardizing the types of products that are available. '268

Initially, Plaintiffs proposed to construe the term "standardized product" as "the
order placed by the user with the electronic television guide is time and date stamped" and
Amazon asserted that the term was indefinite. During oral argument, the Court noted that it was
unlikely to find that the term is indefinite but also that it was unsatisfied with Plaintiffs' proposed
construction. The parties submitted these revised constructions on May 7, 2012. (D .I. 119 &
120).
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Patent col. 3611.28-35. Accordingly, a system has "standardized products" where it lists generic
product types (such as videocassettes) that are associated with, and can be purchased for,
multiple video programs.
e.

"time and date stamping an order placed by the user
with the electronic television program guide" ['268
Patent, Claim 51]

Plaintiffs' Proposed
Construction:

the order placed by the user with the electronic television
program guide is time and date stamped

Amazon's and IMDb's Proposed
Construction:

recording, with the electronic television program guide
executed on the user-controlled data processor, the time
and date of the order as reflected on the user's guide
application

Court's Construction:

the order placed by the user with the electronic television
program guide is time and date stamped

Claim 51 calls for the method of Claim 1 "further comprising time and date stamping an
order placed by the user with the electronic television program guide." The Court construes the
term "time and date stamping an order placed by the user with the electronic television program
guide" as "the order placed by the user with the electronic television program guide is time and
date stamped." The phrase "time and date stamping" describes an action performed on "an order
placed by the user with the electronic program guide." The prepositional phrase "with the
electronic television program guide" properly should be read as modifying the nearest antecedent
(the noun "order"). For example, in HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270,
1274 (Fed. Cir. 2012), the Federal Circuit construed the phrase "[a] mobile station for use with a
network including a first base station and a second base station that achieves a handover .... "
The court found that the district court had erred in finding that the phrase beginning with
"including" modified the "mobile station" rather than the "network" because "[m ]odifiers should
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be placed next to the words they modify .... A reader, therefore, may assume that the phrase
beginning with 'including' and the clause beginning with 'that achieves' modify 'network."' /d.
at 1274-75.
f.

Plaintiffs' Proposed
Construction:

"multimedia informational system" [' 128 Patent, Claim
37]

The preamble is not limiting. Moreover, the phrase does
not require construction because it is clear.
To the extent the Court believes that a construction
would be helpful to the jury, however, the phrase should
be construed as:
a system for providing multimedia information

Amazon's and IMDb's Proposed
Construction:

The preamble is limiting.
an electronic television program guide system that
includes at least program schedule information,
television program signals, program ordering, and access
to data feeds

Court's Construction:

a system for providing multimedia information

The Court construes the term "multimedia informational system"as "a system for
providing multimedia information." This construction is consistent with the term's plain
meaning. In addition, the preamble of Claim 3 7 is not limiting, as Amazon argues. The

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preamble calls for "[a] multimedia informational system for displaying program schedule
information and Internet data comprising .... " The claim then goes on to enumerate all of the
structures that make up the claimed system and all of the structures that are necessary to perform
the functions recited in the claims. The body of the claim is, therefore, "a structurally complete
invention" without reference to the preamble. Catalina Mktg. Int'l, Inc. v. Coolsavings.com,

Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ("a preamble limits the invention if it recites essential
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structure or steps, or if it is 'necessary to give life, meaning and vitality' to the claim.
Conversely, a preamble is not limiting 'where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or intended use for the
invention."').

g.

"data feed" ['128 Patent, Claim 37]

Plaintiffs' Proposed
Construction:

an updatable transmission of data from one place to the
other

Amazon's and IMDb's Proposed
Construction:

an updatable transmission of data sent by a television
programming provider over television signals (not over
the internet)

Court's Construction:

an updatable transmission of data sent by a television
programming provider over television signals

The Court construes the term "data feed" as "an updatable transmission of data sent by a
television programming provider over television signals." The prosecution history makes clear
that this term does not include internet-delivered data. During the application process, the
applicants sought claims directed in part to receiving "internet-delivered" data. The Patent
Office rejected those claims because the "internet-delivered data" limitation "is not part of the
applicants' original disclosure":
The applicants ... don't prove that the "Internet delivered data" is
actually delivered to users via Internet as now claimed by the
applicants. In fact, in page 63, lines 15-24 of the specification,
applicants clearly state that the data feed is a dedicated channel at
the cable head-ends and DBS providers, which is not considered an
Internet service for providing additional information to the user
ends .... [N]owhere in the specification mentions or hints that the
information is delivered to users via Internet.
(D.I. 68 Ex. 8.20 at 7-8).
In response to the Patent Office's rejection, the applicants amended all claims to: 1)
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remove any claim to "Internet delivered data," and 2) add limitations reciting that Internet data is
received by a remote facility and then it populates a "data feed." Although the remote facility
can receive Internet data, the applicants disclaimed delivery of the data over the Internet as being
outside the scope of their invention. Therefore, the claimed "data feed" is not transmitted over
the internet.
h.

"video display generator" ['128 Patent, Claims 37-39,4851, and 53]

Plaintiffs' Proposed
Construction:

a component that generates a video display

Amazon's and IMDb's Proposed
Construction:

a component that combines two or more input signals
into one output television signal for display, where the
information from the input signals is overlayed in the one
output television signal

Court's Construction:

a component that generates a video display

The Court construes the term "video display generator" as "a component that generates a
video display." Amazon asserts that the term "video display generator" outputs "television
signals." However, Claim 37 contains no such limitation whereas Claim 41 calls for the "video
display generator to display a television program of [one] of the television program signals." It is
improper to import a requirement that the "video display generator" output television signals
because doing so would ignore the fact that some, but not all, of the claims call for the generator
to perform that function. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246,
1254 (Fed. Cir. 2011).

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Plaintiffs' Proposed
Construction:

"a receiver" [' 128 Patent, Claim 37]
the portion of the user equipment responsible for
accepting data sent from a data provider
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Amazon's and IMDb's Proposed
Construction:

a device which can receive television signals, including
data transmitted over those signals

Court's Construction:

a device which can receive television signals, including
data transmitted over those signals

The Court construes the term "receiver" as "a device which can receive television signals
including data transmitted over those signals." The' 128 specification describes the receiver as
being capable of receiving television signals. See, e.g., col. 1 11.11-14; col. 6 11.1-4; FIG. 1, col. 9
11.58-65. Both the 75.0 MHz receiver and the TV Receiver of FIG. 1 receive a television signal
as an input. Although there are "numerous ways in which data feeds may be provided" to users,
each of those ways is over a television provider's signal. See, e.g., col. 46 11.5-24. The receiver,
at a minimum, must receive television signals.
j.

"program schedule information" ['268 and '128 Patents]

Plaintiffs' Proposed
Construction:

information about the scheduling of one or more
programs

Amazon's and IMDb's Proposed
Construction:

information that includes the current and future air times
of programs on television channels

Court's Construction:

information about the scheduling of television programs

The Court construes the term "program schedule information" as "information about the
scheduling of television programs." The patent describes the "invention" as using "television
program schedule information for a plurality of television programs to appear on the plurality of
television channels." '128 Patent col. 6 11.7-9; '268 Patent col. 5 11.32-34; see also '128 Patent
col. 29 11.31-36 ("displaying schedule information for all available channels").

3.

The '643 Patent

The '643 Patent is directed to interactive television program guides, and more
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specifically, to "television program guides that allow viewers to browse video-on-demand
programs." '643 Patent col. 1ll.12-14.

a.

"viewer television equipment" [Claims 1, 7, and 13]

Plaintiffs' Proposed
Construction:

user-controlled equipment capable of displaying
remotely provided audio-visual programming

Amazon's Proposed
Construction:

viewer equipment for viewing television programs that
includes a television and either a set-top box or circuitry
similar to a set-top box

Court's Construction:

viewer equipment capable of displaying remotely
provided television programming by means of either a
set-top box or circuitry similar to a set-top box

The Court construes the term "viewer television equipment" as "viewer equipment
capable of displaying remotely provided television programming by means of either a set-top box
or circuitry similar to a set-top box." This construction is consistent with the ordinary meaning
of television. See, e.g., Webster's Ninth New Collegiate Dictionary 1213 (9th ed. 1991) ("an
electronic system of transmitting transient images ... together with sound over a wire or through
space by apparatus that converts light and sound into electrical waves and reconverts them into
visible light rays and audible sound." This construction is also consistent with the specification
of the '643 Patent, which sets forth:
Viewer television equipment 30 typically contains set-top boxes
34. Viewer television equipment 30 may also be any suitable
equipment into which circuitry similar to set-top box circuitry has
been integrated, such as an advanced television receiver (such as
HDTV), a personal computer television (PC/TV), or any suitable
television equipment.
'643 Patent col. 6 11.37-42. This quotation encompasses all alternative embodiments ofthe
invention.
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b.

"program guide display" [Claims 1, 5, 7, 11, 13, and 17]

Plaintiffs' Proposed
Construction:

a display of an application that provides information to
allow users to find programming

Amazon's Proposed
Construction:

a display of an application, on a portion of a screen used
by a current channel, of program information for one and
only one category of video-on-demand programs

Court's Construction:

a display of an application that provides program
information for one category of video-on-demand
programs at a time

The Court construes the term "program guide display" as "a display of an application that
provides program information for one category of video-on-demand programs at a time." In the
"Summary of the Invention," the patentee defines the "program guide display" as one that shows
video-on-demand program listings for only a single category:
The program guide display of the present invention contains
information for one or more video-on-demand (VOD) programs in
a given category. Information about video-on-demand programs in
other categories is not shown.
'643 Patent col. 211.25-28. The specification further provides that "[p]rogram guide display 70
preferably contains information about a particular video-on-demand program. If desired, such
video-on-demand programs may be organized according to certain categories." '643 Patent col.
8 ll.25-28. In this example, one program in a category is listed; the viewer may scroll, one at a
time, through all programs in a category. !d. at col. 8 ll.29-33; id. at col 8 1.63 to col. 9 1.11.

c.

Plaintiffs' Proposed
Construction:

"video-on-demand program listing"

an entry that provides information about a particular
video-on-demand program

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Amazon's Proposed
Construction:

video-on-demand program listing fin a program guide
display}: A selectable entry of information for a videoon-demand program; information presented on a separate
display screen after the entry is selected, about the videoon-demand program, is not a "program listing"

Court's Construction:

an entry that provides information about a particular
video-on-demand program

The Court construes the term "video-on-demand program listing" as "an entry that
provides information about a particular video-on-demand program."
Amazon asserts that Plaintiffs' proposed construction is inconsistent with the file history
because the applicant distinguished his invention during prosecution by defining "program
listing" to exclude "information presented on a separate display screen after the entry is
selected." In particular, Amazon points to the fact that the applicant told the examiner that
Figure 38 from the Florin patent (U.S. Patent No. 5,583,560) was not a part ofthe "program
listings." (D.I. 86 at 22). Figure 38, however, is not part of the "program listings" because it
does not contain "information about a particular video-on-demand program." Rather, Figure 38
depicts only "a preview icon 382, a credit icon 384, an info icon 386, and a ticket icon 388 ...
displayed, along with a preview trailer, which is continuously looping." U.S. Patent No.
5,583,660 col. 22 11.21-24. There is no information about the program in that screen.
Amazon argues that Figure 38 contains information "including the availability of a
preview clip and the option to purchase" (D.I. 86 at 22), but neither is information about the
program. First, the claims require that preview-clip indicator must be shown with the program
listing. Thus, a preview-clip indicator is not information provided by a program listing, but
instead something that the claims require must be provided with a program listing. Similarly,

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Figure 38 does not contain any information about a purchase option, just an icon that will bring
the user to a different screen that contains purchase information. Thus, as the applicant told the
examiner, Figure 38 does not show an "indicator that a video clip preview is available for the
VOD program [that] is 'displayed with the video-on-demand program listing.'" (D.I. 68-6 at
178). Instead, the clip in Figure 38 is displayed alone and without any information about the
video-on-demand program.

d.

The "Means-Plus-Function" Terms

The parties agree that the following three terms are in a "means-plus-function" format
and therefore subject to 35 U.S.C. § 112 ~ 6. Means-plus-function limitations are interpreted in
two steps. First, the Court identifies and construes the claimed function. Lockheed Martin v.
Space Systems/Lora! Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003). Second, the Court identifies the

"corresponding" structures disclosed in the specification and which "the specification or
prosecution history clearly links or associates that structure to the function .... " Mettler-Toledo,
Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012); Medtronic, Inc. v. Advanced
Cardiovascular Sys., Inc., 248 F.3d 1303, 1311-12 (Fed. Cir. 2001).

Even if the patent discloses a structure that is capable of performing a claimed function, it
is not a "corresponding structure" unless the specification clearly links it to that function.
Medtronic, 248 F.3d at 1312. And if there is no "corresponding structure," the claim is invalid

for indefiniteness under 35 U.S.C. § 112 ~ 2. Aristocrat Techs. Australia Pty Ltd v. Int'l Game
Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008); Mettler-Toledo, 671 F.3d at 1296.

i.

"means for indicating that a video clip
preview is available for a video-ondemand program that is associated with a
video-on-demand program listing
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wherein the indication is provided with
the video-on-demand program listing"
[Claim 1]
Plaintiffs' Proposed
Construction:

Function (ID): Indicating that a video clip preview is
available for a video-on demand program that is
associated with a video-on-demand program listing.

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Function (Construction):

The phrase does not require construction because its
meaning is clear.
Structure: An icon or its equivalents as described in, for
example, col. 8, lines 32-39, col. 9, lines 48-51, and/or
Figures 6A, 6B and related text from the specification.

Amazon's Proposed
Construction:

Function (ID): indicating that a video clip preview is
available for a video-on-demand program that is
associated with a video-on-demand program listing
wherein the indication is provided with the video-ondemand program listing
Function (Construction): an indication that a video clip
preview is available for a video-on-demand program
must appear with the video-on-demand program listing
for that program

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["program listing" defined above]
["video-on-demand program listing" defined above]
Structure:
Includes an icon on a display and a set-top box with a
processor; but the patent does not disclose the computer
algorithm needed to instruct the processor to perform the
claimed function.
•

Claim is indefinite because there is no structure
clearly linked to the claimed function and the

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patent does not disclose an algorithm for
performing claimed function.
Court's Construction:

Function CID): Indicating that a video clip preview is
available for a video-on demand program that is
associated with a video-on-demand program listing.
Function (Construction):
The phrase does not require construction because its
meaning is clear.

Structure: An icon or its equivalents.

Because the parties agree that this term is a means-plus-function term, the Court will
construe it accordingly, with the function being "indicating that a video clip preview is available
for video-on-demand program that is associated with a video-on-demand program listing," and
the associated structure being "an icon or its equivalents."
Amazon's proposed construction improperly appends the subsequent "wherein" clause to
the function. However, the "wherein" clause does not modify the function. Instead, it states a
separate limitation that acts on the result: the indication. See Lockheed Martin Corp. v. Space
Systems/Lora!, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) ("The function is properly identified as

the language after the 'means for' clause and before the 'whereby' clause, because a whereby
clause that merely states the result of the limitations in the claims adds nothing to the substance
of the claim.").
Amazon also argues that the '643 specification does not clearly link structure for
performing any of the three means-plus-function limitations because an "icon" is an image, not a
structure. Amazon does not otherwise dispute that the icon is clearly linked as a means for
indicating that a preview clip is available. And where the "functions can be achieved by any

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general purpose computer without special programming ... it [is] not necessary to disclose more
structure than the general purpose processor that performs those functions." In re Katz

Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). In Katz, the
Federal Circuit held that "the functions of 'processing,' 'receiving,' and 'storing' are coextensive
with the structure disclosed, i.e., a general purpose processor." !d. Similarly, "displaying" an
icon is a common function that can be achieved by any general purpose computer without special
programming. Thus, the '643 Patent discloses sufficient corresponding structure.

"means for displaying the video clip preview on
the viewer television equipment" [Claim 1]

ii.

Plaintiffs' Proposed
Construction:

Function (ID and Construction): displaying the video
clip preview on the viewer television equipment
Structure: a processor that executes any of the software
to display the video clip preview on the viewer television
equipment as described in, for example, col. 3, lines 2934, col. 5, lines 10-25, col. 7, lines 6-40, col. 9, line 48col. 10, line 7, col. 10, line 59- col. 11, line 52; and/or
Figures 2, 3, 6B and/or 9 and related text from the
specification, or any equivalents thereof.

Amazon's Proposed
Construction:

Function (ID And Construction): displaying the video
clip preview on the viewer television equipment
("viewer television equipment" construed above")
Structure:
None.
•

Claim is indefinite because there is no structure
clearly linked to the claimed function.

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Court's Construction:

Function (ID and Construction): displaying the video
clip preview on the viewer television equipment
Structure: a processor that executes any of the software
to display the video clip preview on the viewer
television equipment

The parties agree that this term is a means-plus-function term and also agree that
the function is and should be construed as "displaying the video clip preview on the viewer
television equipment." The parties, however, disagree as to the structure. For the reasons
already discussed, the Court finds that the '643 Patent discloses sufficient corresponding

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structure.
iii.

Plaintiffs' Proposed
Construction:

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"means for displaying an ordering display screen
after the video clip preview of the video-ondemand program is displayed, wherein the
ordering display screen provides the viewer with
the opportunity to select an ordering option to
order the video-on-demand program"

Function (ID): displaying an ordering display screen.
Function (Construction): The phrase does not require
construction because its meaning is clear.
To the extent the Court believes that a construction
would be helpful to the jury, however, the court should
construe the phrase an ordering display screen to mean:

a screen requiring viewer input to order a video-ondemand program
Structure: a processor that executes any of the software
to display an ordering display screen as described in, for
example, col. 3, lines 40-41, col. 4, lines 52-57, col. 5,
lines 10-25, col. 7, lines 6-40, col. 10, lines 8-50, col. 10,
line 59- col. 11, line 52; and/or Figures 2, 3, 8 and/or 9
and related text from the specification, or any equivalents

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thereof.

Amazon's Proposed
Construction:

Function (ID):

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displaying an ordering display screen after the video clip
preview of the video-on-demand program is displayed,
wherein the ordering display screen provides the viewer
with the opportunity to select an ordering option to order
the video-on-demand program.
Function (Construction): following the display of the
video clip preview, an option to order the video-ondemand program is presented on a new display screen
Structure:
None.

Court's Construction:

Function (ID): displaying an ordering display screen.
Function (Construction): The phrase does not require
construction because its meaning is clear.
Structure: a processor that executes any of the software
to display an ordering display screen

Because the parties agree that this term is a means-plus-function term, the Court
will construe it accordingly, with the function being "displaying an ordering display screen" and
the associated structure being "a processor that executes any of the software to display an

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ordering display screen." As with the first means-plus-function term, Amazon improperly

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appends the subsequent "wherein" clause to the function. For the reasons already discussed, the

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"wherein" clause does not modify the function.
For the reasons already discussed, the Court finds that the '643 Patent discloses
sufficient corresponding structure.

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4.

[

The '690 Patent

The '690 Patent describes a system that "allows a user to select a pay program for
purchase from a program guide." '690 Patent at [57].
a.

"interactive program guide" [Claims 1, 9, 10, 14]

Plaintiffs' Proposed
Construction:

an interactive electronic application that provides
information to allow users to find television
programming

Amazon's Proposed
Construction:

an application that produces interactive display screens
with program schedules and channel information (among
other things) for a television receiver

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The 'interactive program guide' in Claims 1, 9, 10, and
14 is executed on user equipment.
Court's Construction:

an application that produces interactive display screens
that include television program schedules and channel
information

The Court construes the term "interactive program guide" as "an application that
produces interactive display screens that include television program schedules and channel
information." This construction is consistent with the specification of the '690 Patent. For
example, the "Background of the Invention" describes an "interactive program guide" as
including data that allows the display of broadcast times for televisions. '690 Patent col. 1 11.1935. The "Summary of the Invention" provides that the invention's "guide" uses schedule
information. /d. at col. 211.7-27. The patent also uses this information to perform various
functions: e.g., to notify the viewer "[j]ust before the scheduled broadcast time of each program
in the package" and to monitor whether the user has watched the purchased package. /d. at col. 2
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11.7-33.
Amazon's proposed construction would read a "television receiver" into the '690 claims.
The Court rejects this limitation. The claims of the '690 Patent do not contain the terms
"television receiver," "television," or "receiver." The claims, thus, refute that there is any such
limitation. In addition, the concept of the an "interactive program guide" does not require that
the programs be received by any particular piece of equipment.
The Court also rejects Amazon's attempt to read in a "user-equipment" limitation for
some, but not all, instances where the term "interactive program guide" is used. The preamble of
Claim 1 calls for a "system comprising user equipment on which an interactive program guide is
implemented." Nothing about this requires the program guide to be implemented exclusively on
the user equipment. Indeed, the claims call for steps that require remote components for
implementation. For example, Claim 9 requires that users be allowed to "impulse purchase the
package through the user guide."

b.

"package" [Claims 1, 9, 10, 19, 27, and 28]

Plaintiffs' Proposed
Construction:

a set of more than one program

Amazon's Proposed
Construction:

a collection of scheduled programs bundled for sale as a
single unit

Court's Construction:

a set of two or more programs available for sale as a
single unit

The Court construes the term "package" as "a set of two or more programs available for
sale as a single unit." Amazon's proposed construction would require that the programs
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comprising a "package" be scheduled. However, nothing about the ordinary meaning of the
word "package" inherently requires the programs that comprise it to be scheduled programs
(rather than say, programs available on demand). There is also nothing in the claims that would
otherwise require the programs to be scheduled.
Plaintiffs dispute that the items in a package must be bundled for sale as a single unit.
However, the Court's construction is consistent with the common usage of"package" and also
with how the patent specification uses the term. See '690 Patent at [57]; id at col. 1 11.49-55
("[U]sers often use program guides to purchase pay programs individually without realizing that
the purchased programs are part of an available package.")

c.

Plaintiffs' Proposed
Construction:

"determine whether the selected program is part of a
package" [Claim 1]

The phrase does not require construction because its
meaning is clear.

To the extent the Court believes that a construction
would be helpful to the jury, however, the phrase should
be construed as:

the interactive program guide determines whether the
selected program is part of a package

Amazon's Proposed
Construction:

the interactive program guide on the user equipment
determines whether the selected program is part of a
package

Court's Construction:

The phrase does not require construction because its
meaning is clear.

The term "determine whether the selected program is part of a package" does not require
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construction because there is nothing about the phrase "determine whether the selected program
is part of a package" that is unclear. Amazon's proposed construction attempts to add a
requirement that the determination is performed on the user equipment. Claim 1 does not state
that the interactive program guide is on the equipment; rather, the claim states that the interactive
program guide is implemented on the user equipment.

d.

The method defined in claim 19, further comprising
providing the user with an opportunity to impulse
purchase the package through the interactive program
guide. [Claim 27]

Plaintiffs' Position:
Amazon's Position:

The claim is indefinite under 35 U.S.C. § 112 ~ 2; there
is no antecedent basis to the interactive program guide
limitation.

Court's Construction:

The claim is not indefinite.

Amazon argues that Claim 27 is indefinite because there is no antecedent basis for the term
"the interactive program guide." The Federal Circuit has made clear that the standard of
indefiniteness is high. See Praxair v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (citing
Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)). "Because

a claim is presumed valid, a claim is indefinite only if the 'claim is insolubly ambiguous, and no
narrowing construction can properly be adopted.'" Honeywell Int 'I. Inc. v. Int 'I Trade Comm 'n.,
341 F.3d 1332, 1338-39 (citing Exxon, 265 F.3d at 1375).
Amazon is correct that the term "interactive program guide" does not explicitly appear in
parent Claim 19, but Claim 27 is not thereby rendered indefinite because it still has a "reasonably

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ascertainable meaning." See Energizer Holdings, Inc. v. Int 'I Trade Comm 'n, 435 F.3d 1366,
1370-71 (Fed. Cir. 2006) (holding that dependent claim containing "said zinc anode" not
indefinite despite the fact that "zinc anode" did not appear in the parent claim because the claim
scope was "reasonably ascertainable by those skilled in the art"). The meaning of Claim 27 is
clear notwithstanding the missing antecedent. The claims and specification are all directed to
systems and methods involving interactive program guides. A person of ordinary skill in the art
would not be confused by the fact that Claim 19 refers to "the" interactive program guide rather
than to "an" interactive program guide.
The claim terms will be construed as set forth above.

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