Trans Video Electronics Ltd. v. Netflix Inc.
Filing
82
MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 7/7/15. Associated Cases: 1:12-cv-01743-LPS, 1:13-cv-00061-LPS, 1:13-cv-01399-LPS (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TRANSVIDEO ELECTRONICS, LTD.,
Plaintiff,
I
C.A. No. 12-1743-LPS
v.
NETFLIX, INC.,
1
I
l
Defendant.
TRANSVIDEO ELECTRONICS, LTD.,
Plaintiff,
J
i
I
C.A. No. 13-61-LPS
v.
AMAZON.COM, INC.,
I
Defendant.
TRANSVIDEO ELECTRONICS, LTD.,
Plaintiff,
C.A. No. 13-1399-LPS
v.
HULU,LLC,
Defendant.
MEMORANDUM OPINION
At Wilmington this 7th day of July, 2015:
On June 23, 2015, the Court construed the term "network," as used in claims 9-14 of U.S.
Patent No. 5,594,936 ("'936 patent") and claims 4-6, 10, 11, and 15-17 of U.S. Patent No.
1
j
I
5,991,801 ("' 801 patent"), as "a network for users to not only receive video but also to transmit
video." (D.I. 79) The Court announced its construction of the disputed claim term from the
bench at the conclusion of the Markman hearing. The Court's reasoning was as follows:
So I'm going to give you my construction of the disputed
term. And let me first note, as you all know, but for the record,
that we agreed to construe the term "network" early after we had a
teleconference and then we received letters from the parties
arguing over whether we should construe it early.
We then allowed short, fairly quick briefs and then
scheduled this hearing for just after the briefing was completed
solely on the one term of"network."
And I undertook that effort in hopes that this might
promote the efficient progress, if not resolution, of these cases.
And that is still my hope and in that spirit, having reviewed the
materials before coming in today and having heard the argument, it
is my view that I should just go ahead and spare you the time that
it would take to wait for me to write an opinion and just give you
my construction.
And having done all that, the Court hereby adopts the
defendants' proposed construction of "network" in all asserted
claims of the '936 and '801 patents with just a slight modification.
I will get [out] a written order. It won't have any
explanation, but I will get a written order out and it will say that
the construction of the term "network" is "a network for users to
not only receive video but also to transmit video."
And you will have understood that I have replaced from the
defendants' proposal, "download" with "receive," and I have
replaced "upload" with "transmit," all of which reflects the express
language in the disclaimer that I find on this record, the disclaimer
by Mr. Vazquez for TransVideo that occurred during the
reexamination prosecution history.
2
l
The Court rejects plaintiffs proposed construction which
was "a network in which the information is encoded in a series of
1s and Os rather than as a continuously varying wave."
So as I indicated, I have found on this record a clear and
unambiguous disclaimer occurred during the reexamination. And
the nature of that disclaimer was that the term "network" as used in
these patents requires users to be able to both upload and
download videos.
Where do we see the evidence, clear and unambiguous
evidence of this disclaimer?
First, in a slide, TVE told the Examiner, "the prosecution
history narrowed the scope of the term 'network' to require a
network that allows for the transmission of videos to users as well
as the receipt of videos from users."
That is at DI 75, Exhibit A at 15.
That disclaimer is picked up in the Examiner's summary of
the interview which states, "Mr. Vazquez then pointed to features
of the '801 patent discussed during its prosecution and argued that
the term 'network' was narrowed to require a network that allows
for the transmission of videos to users as well as the receipt of
videos from users."
That is at DI 75, Exhibit B.
And that same disclaimer was picked up in the patentee's
own summary of the interview which states, "Mr. Vazquez argued
that the prosecution history narrowed the scope of the term
'network' to require a network that allows for the transmission of
videos to users as well as the receipt of videos from users."
And we find that in our record at DI 75, Exhibit C, at 16.
All of plaintiffs arguments against finding a clear and
unambiguous disavowal are unpersuasive.
3
The Court recognizes the reexamination only concerned
claims 20-23, which are not asserted here, but as plaintiff
recognizes, nothing in the prosecution history limits the breadth of
the disclaimer to just these claims. That is, the plaintiff recognizes
that there is nowhere [it] can point that expressly or implicitly
indicates that the effect of Mr. Vazquez's statements regarding the
narrow meaning of"network" are limited just to claims 20-23.
To the contrary, ... close review of the slide presentation
that Mr. Vazquez gave to the Examiner shows the opposite.
As defendants point out, certain slides are directed to the
'801 patent generally, including the crucial disclaimer slide which
I have already quoted, while other slides are expressly directed to
claim 20-23.
Also, and I think importantly, the substance of what Mr.
Vazquez says in that crucial disclaimer slide is to reference the
original prosecution history and specifically the patentee's efforts
to distinguish the Pocock reference, and those efforts were not
themselves limited to claims 20-23 but instead related to claims
including now asserted claims such as 4 through 6 and 10 to 11.
On this record, I believe a person of ordinary skill in the art
would understand the disclaimer to reach all claims of the two
patents-in-suit. And, further, I believe that the public, including
competitors, was entitled to rely on this clear and unambiguous
disclaimer which stretches again to all claims of both of the
patents-in-suit.
This conclusion is further supported by case law which
provides that almost always the same claim term will be construed
identically wherever it is used in the same patent.
And, further, the Court does not understand the plaintiff[]
to be advocating a position that the term "network" be construed
differently across different terms.
Nor is the Court persuaded that ... there is anything about
the decisions of the other tribunals, that is, the Examiner or the
4
Sony District Court that undermines the conclusion that there is a
clear and unambiguous disclaimer here.
The plaintiff[] [has] not shown that either of those tribunals
were addressing precisely the same disclaimer issue now before
this Court. But in any event, this Court is obligated to make its
own decision based on the record and the arguments before it and
having done so concludes that there is a clear and unambiguous
disavowal.
Let me add just a few other thoughts.
First, I recognize there are two patents-in-suit here and the
disclaimer was expressly made only during the reexam of the '801
patent. I understand the law to support nonetheless extending that
disclaimer to the other patent which shares the same specification.
And, further, I don't understand the plaintiff to be disagreeing with
that proposition. So for those reasons, my construction is the same
across both patents.
And, finally, what I have said is my ruling on the one issue
that was before the Court today. The Court's construction tracks
the defendants' language and uses the word "users."
It may be that now the parties have a dispute as to what
"user" means in the claims of these patents-in-suit, and if so, that
may be a claim construction dispute and it may even be a claim
construction dispute that the Court should consider resolving early.
I don't have a view on any of those points at this moment.
I don't have any briefing really that is specifically focused on what
is the proper construction of "user," and that is fair that I don't
because I didn't ask for it. I asked for briefing on the term
"network."
1
But under the circumstances, and given my hopes to again
promote the efficient progress of these cases, I think it best and do
hereby order that the parties meet and confer and give me a joint
status report by a week from today, telling me what should happen
next. It may be that I need to do some additional claim
l
I
l
1
5
construction and need to do it soon. It may be that there is some
other way that this case or these cases should proceed.
Again, I would like the parties to meet and confer and first
try their best to figure that out for me before I attempt to figure
that out.
As I said, we'll get an oral order out that tells you that this
is our construction and orders you to provide us the joint status
report.
6
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?