Custom Media Technologies LLC v. Comcast Corporation

Filing 76

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 8/11/15. Associated Cases: 1:13-cv-01421-LPS, 1:13-cv-01424-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CUSTOM MEDIA TECHNOLOGIES LLC,
Plaintiff,
v.
COMCAST CABLE COMMUNICATIONS,
LLC,

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C. A. No. 13-1421-LPS

_______________________)
Defendant.

CUSTOM MEDIA TECHNOLOGIES LLC,
Plaintiff,
v.
DISH NETWORK, LLC,

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C.A. No. 13-1424-LPS

_______________________)
Defendant.

Richard D. Kirk, Stephen B. Brauerman, Vanessa R. Tiradentes, Sara E. Bussiere, BAYARD,
P.A., Wilmington, DE.
Robert Freitas, Jason S. Angell, Jessica N. Leal, FREITAS ANGELL & WEINBURG LLP,
Redwood Shores,, CA.
_ Attorneys for Plaintiff

Jack B. Blumenfeld, Karen Jacobs, Jennifer Ying, MORRIS, NICHOLS, ARSHT & TUNNELL
LLP, Wilmington, DE.
Michael Brody, Sarah J. Kalemeris, WINSTON & STRAWN LLP, Chicago, IL.
Michael Murray, WINSTON & STRAWN LLP, New York, NY.
Alexandra McTague, WINSTON & STRAWN LLP, Palo Alto, CA.
Attorneys for Defendant Comcast Cable Communications, LLC

Rodger D. Smith, II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE.
G. Hopkins Guy III, Alali Dagogo-Jack; BAKER BOTTS LLP, Palo Alto, CA.
Bradley Bowling, Ali Dhanani, Michael Sherby, BAKER BOTTS LLP, Houston, TX.
Jamie R. Lynn, BAKER BOTTS LLP, Washington, DC.
Attorney for Defendant DISH Network, LLC

MEMORANDUM OPINION

August 11, 2015
Wilmington, Delaware

~~/!)__
STARK;
I.

.S. District Judge:
BACKGROUND

On August 15, 2013, Custom Media Technologies LLC ("Custom Media" or "Plaintiff') · ·
filed suit against Comcast Cable Communications, LLC and DISH Network, LLC (collectively
"Defendants") 1 alleging infringement of U.S. Patent No. 6,269,275 ("the '275 patent"). (C.A.
No. 13-1421D.I.1; C.A. No. 13-1424 D.I. 1) The patent-in-suit generally relates to
"customizing and distributing presentations for user sites over networks for utilization on
demand." (D .I. 1)2
- Pending before the Court is the issue of claim construction for various disputed terms of
the patent-in-suit. The parties completed briefing on claim construction on June 9, 2015 (D.I. 58, .
60, 66, 67; C.A. No. 13-1424 D.I. 59, 62, 68, 69), and filed an updated claim construction chart
on June 10, 2015 (D.I. 73). The parties also submitted technology tutorials. (D.I. 64; C.A. No.
13-1424 D.I. 65) The Court held a claim construction hearing on June 23, 2015. (D.I. 75)
("Tr.")

II.

LEGAL STANDARDS

The ultimate question of the proper construction of a patent is a question of law. See

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "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."

1

Plaintiff filed a total of eight related cases against various defendants, all of which have
been dismissed except for the two remaining cases.
2

Unless otherwise specified, citations are to the docket in 13-1421-LPS.
1

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324.
Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the
statutes and policies that inform patent law." Id.
"[T]he 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 of the invention, i.e., as of the effective filing date of the patent application."

Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent 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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.

Phillips, 415 F .3d at 1314. Furthermore, "[ o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim terms are
normally used consistently throughout the patent .... " Id. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide .... For
example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one

2

party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim

term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[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) (internal quotation marks omitted), aff'd, 481
F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution

history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F .3d
at 1317. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent's intrinsic evidence

and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at

3

841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F .3d
at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of
the technical aspects of the -patent is consistent with that of a person of skill in the art, or to
establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney

Bowes, Inc. v. Hewlett-Packard Co., 182 F3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."

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 GmbHv. Int'! Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
4

(quoting Modine Mfg. Co. v. U.S. Int'/ Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

III.

'DISPUTED TERMS 3

A.

"presentation"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

This claim term does not
require constructiori.

"arrangement of media
components that will be
played together in that
arrangement"

"arrangement of media
components"

The parties dispute whether the term "presentation" needs to be construed. In arguing
that no construction is necessary, Plaintiff objects to a construction whereby media components
would have to be "played together in that arrangement."4 Whether such a limitation is in the
claims presents a genuine dispute, which the Court must resolve by construing "presentation."

See 02 Micro Int'! Ltd. v. Beyond Innovation Tech. Co. Ltd., 521F.3d1351, 1362 (Fed. Cir.
2008) ("When the parties present a fundamental dispute regarding the scope of a claim term, it is
the court's duty to resolve it.").
The parties further dispute whether a "presentation" must be limited to a "played"
presentation and whether it is a fixed arrangement. Plaintiff contends a presentation need not be

3

The Court will adopt the parties' agreed-upon constructions for the terms "profile data
. objects" and ''user profile information." (See D.I. 73-1) In addition, the term "broadcasting" is
no longer in dispute, since the case against Defendant AT&T Services, Inc., the only Defendant
that submitted a proposed construction of the term, has been dismissed. (See C.A. No. 13-1419
D.I. 76)
4

Defendants' initial proposal also included the limitation that the arrangement of media
components be "fixed," to which Plaintiff also objected. However, in their reply brief
Defendants offered a compromise construction, which is the proposal shown in the table.
(See D.I. 67 at 16)
5

"played," so long as it is playable. (Tr.

8~9)

The Court sees no support in the specification for

Defendants' assertion that "to even qualify as a presentation, it needs to be presented." (Id. at 10)
So long as the presentation is playable, as an arrangement of media components, the claims do.
not require that presentation actually be played before falling within the scope of the claims.
The Court does agree with Defendants that the specification is clear that a presentation is
a compilation or arrangement of media components. 5 For example, the figures show multiple
media components making up the presentations. (See '245 patent, Figs. 6 and 7) In addition, the
specification teaches that the components are selected to create a customized presentation. (See
id. at col. 511. 2-6) ("The set top box 18 then can combine the selected ones of the data object

components to create a customized presentation for the user.")
However, the Court finds that Defendants' proposed limitation that the media
components be "played together in that arrangement" is confusing and in tension with the
specification, which teaches presentations that may be modified more easily than with prior art
technologies. In describing the advantages of the present invention, the specification states, "The
presentations can be updated or otherwise modified periodically in a flexible and efficient
manner." (Id. at col. 3 11. 14-16) Requiring the media components to be "played together in that
arrangement" invokes the idea of "fixed" presentations (which Defendants no longer explicitly
include in their construction).

5

Plaintiff conceded as much in the hearing, and suggested that the Court might construe
the term as "arrangement of media components." (Tr. 9)
6

B.

"presentation logic objects"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

"data structures comprising
logic for selecting media
components"

Indefinite.

"data structures comprising
logic for selecting media
components"

Or, in the alternative: This
claim term does not require
construction.
Defendants contend the term "presentation logic objects" is indefinite. Plaintiff disagrees
and proposes a construction, but alternatively would be content if the Court does not adopt a
construction.
Plaintiff argues that "logic and objects are terms of art in Computer Science and ... a
person of ordinary skill in the art at the time of the invention would understand that, in the
context of the intrinsic evidence, logic for selecting certain media components would be included
in a data structure." (D.I. 58 at 7) Defendants. assert that the intrinsic record fails to define with
reasonable certainty the function, structure, or properties of a presentation logic object. (See D.I.
60 at 15) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014))
The claim language identifies two functions for the presentation logic objects:
What is claimed is:
1. A method for customizing and distributing presentations
for user sites, comprising: ...
creatingpresentation logic objects based on corresponding
ones of the data objects to facilitate the creation of
individual customized presentations for each one of
the user computer means;
storing each one of the presentation logic objects
7

individually locally in the group of user computer
means; ...
selecting certain ones of the media components at each one
of the user computer means in response to its
presentation logic object and its data object;
('275 Patent, col. 81. 60 - col. 91. 16) As set out in the claim, the presentation logic objects
work with the data objects "to facilitate" the creation of individualized presentations, and also
allow the system as a whole to "select[] certain ... media components" in response to the
presentation logic object and the data object. This is consist_ent with the specification, which
explains the role of the presentation logic objects in the abstract and in the description of the
present invention. (See, e.g., id. at col. 3 11. 22-30) ("Presentation logic objects used in
conjunction with data objects facilitate the creation of individual customized presentations, at the
user sites .... Certain ones of the media components of the media objects are selected in
response to the individual presentation logic objects and the individual data objects to create ·
customized presentations for the users at their user sites.") The figures of the patent also show
the presentation logic object working with the user profile. (See id. at Fig. 9) (Step 65 recites
"For each recipient, use profile and presentation logic object to combine objects for
presentation")
hi addition, the examples in the specification help give meaning to the term "presentation
logic objects." In the Physical Therapy Example, a data object (including patient's name,
therapeutic objective, and exercise regimen) is transmitted to a fulfilling server, and "[t]he
fulfilling server does appropriate billing and creation of the presentation logic object for the
patient." (See id. at col. 711. 21-32) "The presentation logic object is transmitted via email to the

8

patient's set top box ... The set top box of the patient stores the relevant objects from the
multicast based on instructions from the presentation logic portion of the email." (Id. at 11. 3246)
Extrinsic evidence also supports Plaintifrs position. The Edwards Declaration states: "It
is self-evident that presentation logic objects (1) are objects and (2) include logic, i.e., computer
program instructions. The '275 patent further makes clear that this logic is for selecting one or
more media components from a set of media components." (D.I. 69 if 4) "[I]t has been well
understood for many years than an object may include information (data) and/or logic (methods).
Therefore, a profile data object is an object that contains a specific type of data, and a
presentation logic object is an object that contains a specific type of logic." (Id. at if 11)
Edwards concludes, ''the '275 patent provides one of ordinary skill in the art with a precise
delineation of what falls within the scope of the claims and what does not fall within the scope of
.

'

the claims." (Id. at if 16)
The specification need not describe more fully the scope of the presentation logic objectin terms of timing, programming, or other properties which Defendants contend are lacking in
the description - in order to not be indefinite. While the appropriate construction is certainly
broad, it is supported by intrinsic and extrinsic evidence and is the appropriate construction.

9

C.

"creating presentation logic objects based on corresponding ones of
the data objects"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

"creating presentation logic
objects, each based on one or
more profile data objects"

This phrase, as a whole, is
indefinite. (This is in
addition to indefiniteness
based on the "presentation
logic objects" addressed
above.)

"creating presentation logic
objects, each based on one or
more profile data objects"

The parties dispute whether this claim term is indefinite. Plaintiff proposes the
construction adopted by the Patent Trial and Appeal Board ("PTAB") in the inter partes review
("IPR") proceeding instituted by Cisco Systems, Inc. ("Cisco") on the '275 patent. (See D.I. 58
at 7) (citing D.I. 59-4 Ex. D at 13) Defendants argue, ''Neither the specification nor the file
history describe how to create PLOs [presentation logic objects] based on corresponding PDOs
[profile data objects]" (D.I. 60 at 19), and, therefore, the term is indefinite. Defendants also
contend that Plaintiffs proposal o1:11Y construes the "corresponding" limitation, but does not give
any construction to the term "based on." (D.I. 67 at 15) ("[T]he Board only considered whether
the specification describes 'corresponding.'")
Plaintiff's declarant, Dr. Edwards, identified portions of the specification that refer to
where and why the presentation logic objects are created (see D.I. 61if22), but Defendants assert
that the claim is indefinite since the specification does not teach how presentation logic objects
are created. However, Dr. Edwards explains that "the technique of creating objects of different
types based on a correspondence of those types was well known in the field of computer
programming. . . . A person of ordinary skill would not require any specific teaching within the

10

'275 patent specification itself to use such a technique to create presentation logic objects based
on profile data objects." (Id. at ii 24)
Defendants have failed to persuade the Court that this term is indefinite. Based largely on
the expert testimony submitted, the Court finds that one of ordinary skill in the art would be able
to determine, with reasonable certainty, how to create a presentation logic object based on a
profile data object. (See id. at ii 25) ("A person of ordinary skill in the art would understand that
a data structure comprising logic for a selection process can be created based· on other data
structures containing information (e.g., demographic information, preferences, interests, etc.)
about an individual user.")

D.

"gathering user profile information"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

This claim term does not
require construction

"collecting user profile
information for users at a
computer remote from the
group of user computer
means"

"bringing together, collecting,
or assembling user profile
information for users"

· The parties have agreed that the term ''user profile information" is construed to mean
"information about one or more user(s)." Therefore, the only dispute remaining is whether the
term "gathering" should be construed. Defendants propose limiting "gathering" to "collecting
... at a computer remote from the group of user computer means." This limitation is not
consistent with the disclosures of the specification.
Defendants' proposal would limit the "gathering" of user profile information to a remote
computer, the "profile compiling computer," which appears in Fig. 1 as personal computer 43.
Defendants argue:
11

The '275 patent is directed to "a method and apparatus for
customizing and distributing presentations [to enable] a large
number of remotely located user sites to receive the presentations
on demand .... " Fig. 1 shows multiple examples of these
remotely located user sites. Each of the user sites in Fig. 1 is
remotely located from the profile compiling computer 43, which
gathers the user profile information.
(D.I. 60 at 7) (internal citations omitted; emphasis in original) Defendants contend that the·
invention only works if the user profile information is gathered at a remote central location. (Tr.
46)
However, there is no limitation in the claims which specifies any particular location at
which the gathering must be performed. While the profile compiling computer appears as a
remote computer in Figure 1, Defendants' construction would improperly narrow the claim scope
to a preferred embodiment. The claims do not limit gathering to a remote computer.
At the hearing, both parties made reference to the same dictionary definition of
"gathering" as support for their proposal. (See id. at 44, 48) ("to bring together or assemble from
various places, sources, or people") The Court has used that definition as a guide in construing
this claim term, as it encompasses the plain meaning of "gathering" and does not import
unwarranted limitations from the specification.

12

E.

"user computer means"

Plaintiff's Proposal

Defendants' Proposal,

Court's Construction

''user computer equipment,
such as a personal, computer
or a set top box, which is
adapted to receive
downloaded messages or
presentations"

Indefinite.

Function: computing,
accessing, creating, storing,
receiving, and/or selecting.

This term must be construed
in accordance with 35 U.S.C.
§ 112, ir 6.
Function: computing,
accessing, creating, storing,
receiving, and/or selecting.

Structure: The specification
does not describe structure
performing the claimed
function.

Structure: a general purpose
computing device is
disclosed without sufficient
disclosure of how that
general device performs the
recited functions, thereby
rendering this claim element
indefinite.

The parties dispute whether this is a means-plus-function claim and, if it is, Defendants
argue that it is indefinite for lack of a corresponding structure. Plaintiff offers a construction
should the Court determine this is not a means-plus-function claim, which is also the
construction adopted by the PTAB. 6
The claim term appears several times. For example, claim 1 recites:
A method for customizing and distributing presentations for user
sites, comprising:

6

"We agree with Petitioner that 'user computer means' is usercomputer equipment, such
as a personal computer or a set top box." (D.I. 59-4 Ex. D at 10) The PTAB expressly noted that
"'user computer means' recites structure rather than function and neither party contends that the
limitation should be construed according to 35 U.S.C. § 112, sixth paragraph." (Id. at 9; see also
Tr. 55-56)

13

gathering user profile information;
creating profile data objects based on individual user profile
information;
accessing the profile data objects individually locally in
each one of a group of user computer means;
creating presentation logic objects based on corresponding
ones of the data objects to facilitate the creation of
individual customized presentations for each one of
the user computer means;
storing each one of the presentation logic objects
individually locally in the group of user computer
means;
broadcasting a single universal presentation media
object including a set of media components
to each one of a group of remotely located
user computer means;
receiving the universal presentation media object
individually at each one of the group of user
computer means;
selecting certain ones of the media components at each one
of the user computer means in response to its
presentation logic object and its data object; and
arranging selected ones of said media components
to create customized presentations for the
users.
('275 patent, col. 8 1. 61 - col. 9 1. 18) (emphasis added)
Using the word "means" raises a presumption that 35 U.S.C. § 112(6) is invoked. See
Williamson v. Citrix Online, LLC, 2015 WL 3687459, at *6 (Fed. Cir. June 16, 2015) ("[T]he use
of the word 'means' in a claim element creates a rebuttable presumption that§ 112, para. 6
applies."). Plaintiff has pointed only to a general purpose computer or set top box (but no

14

algorithm for completing the functions) to satisfy the structure required by§ 112(6), and
contends that this is not a means-plus-function term. Plaintiff conceded at the hearing that "[t]he
specification does not describe a specific programming algorithm for the personal computer."
(Tr. 74)
"User computer means" appears in Claim 1 six times. Plaintiff emphasizes two of the
instances - "creating presentation logic objects ... for each one of the user computer means" and
"broadcasting ... to each one of a group of remotely located user computer means" - as support
for its contention that the user computer means "does not require that the user computer means
performs each of the recited steps." (D.I. 58 at 18) However, at least the other four instances of
the term are linked to functional language. In this situation, Plaintiffhas·failed to rebut the
presumption that the term is used as a means-plus-function term. See Personalized Media

Commc 'ns, LLC v. Int 'l Trade Comm 'n, 161 F .3d 696, 703-04 (Fed Cir. 1998) ("[U] se of the
word 'means' creates a presumption that § 112, if 6 applies . . . . [This] presumption can be
rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant.").
"[A] means-plus-function claim element for which the only disclosed structure is a

general purpose computer is invalid if the specification fails to disclose an algorithm for
performing the claimed function." NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008). Plaintiff has identified only a general purpose computer or set top box as the
associated structure. 7 For at least the "selecting" function of claim 1, there is no identified
algorithm. Because there is no corresponding algorithm associated with the "selecting" function,

7

While Plaintiff did not specifically assert the general purpose computer or set top box as
the corresponding structure, its proposed construction confirms that this is the identified structure
in the specification.
15

the claim term "user computer means" lacks a corresponding structure.
At the hearing, Plaintiff argued that for at least some of the uses of "user computer
means," no algorithm need be disclosed, invoking the. exception of In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (holding that there is exception to

rule requiring algorithm when claimed functions "can be achieved by any general purpose
computer without special programming"). Plaintiffs position is unavailing. Because not all of
the uses of the term come within the Katz exception, the claim term lacks a corresponding
structure. See NetMoneyIN, 545 F.3d at 1367 ("[I]n a means-plus-function claim in which the
disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general.purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.") (internal quotation marks omitted).

F.

"group of [remotely located] user computer means"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

This claim term does not
require construction.

"large number of user
computer means"

This claim term does not
require construction.

The parties dispute whether this term requires construction. Defendants' proposal
substitutes "large number" for "group." The intrinsic evidence does not support such a narrow
construction (e.g., eliminating "small numbers"). Further, Defendants' proposed phrase, "large
number," is itself ambiguous and, therefore, unhelpful to a jury.
Defendants assert that limiting "group" to a "large number" is required by the prosecution
history, because the applicant disclaimed a method comprising a small number of user
computers, as the solution of the invention was directed to bandwidth problems that would not

16

exist with only "a small number of users" involved. (C.A. 13-1419 D.I. 56 at 5) The statements
on which Defendants rely, including those in which the applicant distinguished a prior art
reference, Rapaport, arguably.based on the number of users (see id at 6), do not constitute a clear
and unambiguous disavowal. 8 See Seachange Int'!, Inc. v. C-COR Inc., 413 F.3d 1361, 1373
(Fed. Cir. 2005). The Court agrees with Plaintiff that the distinction over Rapaport was not
dependent on the "large number" of customized individualized presentations, as Rapaport
required a browser to build a profile wherein users could retrieve media files. (See C.A. 13-1419
D.I. 57 Ex. D at 5-6) Although the prosecution history highlights that an advantage of the
present invention is that it could broadcast to a "large number" of users, the claims were not
amended to include a "large number" limitation.
Having rejected Defendants' position, and because "group" will be understandable to the
jury without clarification, no construction is necessary.

8

Defendants purport to find a disclaimer in the following statement: "Independent claims
1 and 6 have been amended to more clearly and accurately distinguish over each one of the cited
references by specifically emphasizing a large number of user computers can receive individual
customized presentations without undue bandwidth considerations ...." (C.A. No. 13-1419 D.I.
57 Ex. C at 5-6) (emphasis added) Here, the patentee is focusing on an advantage of the claimed
invention (usability with a large number of users), but is not saying the claimed invention is
incapable of also being used with a small number of users.
17

G.

"single universal presentation media object including a set of media
components"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

"common presentation media
object that is broadcasted to
each user computer means of
a plurality of user computer
means and includes a set of
media components that can
be used by the plurality of
user computer means to
locally create a customized
presentation"

"single data structure
including all the media
components selected for
broadcast, based on the
gathered user profile
information, as necessary to
create all of the customized
presentations for all users"

"single data structure
including all the media
components selected for
broadcast, based on the
gathered user profile
information, as necessary to
create all of the customized
presentations for all users"

The term "single universal presentation media object" does not appear in the
specification. Instead, as Defendants explain, "[t]o overcome rejections over prior art, Applicant
modified the 'presentation media object' with a pair of adjectives: 'single' and 'universal."' (D.I.
60 at 2) The original claims, directed to "a common presentation media object," were rejected by
the PTO. (See C.A. No. 13-1424 D.I. 62-1 Ex. 1at3) The Court agrees with Defendants'
discussion of the prosecution history as follows:
[T]he only place that Applicant ever discussed a "single universal
presentation media object" was in the "Discussion of the Disclosed
Embodiment of the Present Invention" of the response to the final
rejection where the words "single universal" were first added.
Applicant described how profile information was collected for
different users to create, for example, "profile data objects and
presentation logic objects reflecting Mary's interest in sports cars,
John's interest in child-safety features, and Fred's need for an RV
can be respectively stored on their ... individual computers."
Thereafter:
A single universal presentation
objection is then created, and
includes all the media components
necessary to create all of the

18

desired customized presentations
for the individual users. The single
universal presentation object is
broadcast over the Internet to be
received by all the user computers.
(D.I. 60 at 3-4 (internal citations omitted; emphases in original)) (quoting D.I. 60-1 Ex. 3 at 4-5)

H.

"media components"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

"media segments such as
segments of audio, motion
picture video, text video, text,
graphics, programming
objects, or a combination
thereof'

"playable segments"

"media segments such as
segments of audio, motion
picture video, text video, text,
graphics, programming
objects, or a combination
thereof'

The parties dispute whether the "media components" must be "playable." Plaintiff argues
that only some potential media components are playable, such as audio and video components,
while others, such as text, graphics, or programming objects, need not be playable, as explained
by the specification. (See D.l. 58 at 5) Defendants contend that "being able to 'play' a
presentation is integral to [the invention's] very nature." (D.L 60 at 20)
Plaintiffs proposed construction is supported by the specification, which states:
It should be evident to someone skilled in the art that these
segments may be of various lengths and may be audio, motion
picture video, text video, or a combination thereof. Further, it
should be understood to those skilled in the art that although the
segments identified are audio or video, they may also be any other
kind of digital information such as text, graphics or programming
objects such as JAVA™ programming objects.
('275 Patent, col. 5 11. 54-61) Construing "media components" to be limited to "playable
segments" could exclude text, graphics, or programming objects, a result which would be

19

inconsistent with the specification.
I.

"in response to its presentation logic object and its data objeCt"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

This claim term does not
require construction

"in response to both its
presentation logic object and
separately its data object"

"in response to both its
presentation logic object and
its data object"

The only dispute in regard to this claim term is whether to add the qualifiers "both" and
"separately" to the claim language. The claim requires "selecting certain ones of the media
components at each one of the user computer means in response to its presentation logic object
and its data object." ('275 Patent, col. 911. 14-16; see also id. col. 5 11. 2-4 ("The set top box 18
then selects certain ones of the media components in response to its presentation logic object and
its data object")) In the Court's view, the claim's use of "and" is adequately accounted for by
adding ''both" to the construction; "separately" is not also needed. 9
J.

"arranging the selected ones of said media components to create
customized presentations for the users"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

This claim term does not
require construction.

"assembling, by the user
computers and without user
intervention, the selected
media components into
presentations, each
presentation corresponding to
a user"

This claim term does not
require construction.

The specification requires that the user computer makes the presentation by "arranging."

9

At the hearing, Plaintiff indicated it did not object to adding "both." (Tr. 105)
20

Plaintiff asserts that this claim term is clear and requires no construction, while Defendants
propose (1) substituting "assembling"
assembling is

d<~me

fl

"arranging," (2) adding the limitation that the

''without user intervention," and (3) adding a limitation that the presentations

.

.

.

correspond to a user." Much of the claim term other than "arranging" has already been
construed.
The Court agrees with Plaintiff. Defendants have failed to persuade the Court that
substituting "assembling" for "arranging" is required by the specification or clarifies how the
·invention works in a way that the claim language does not. Defendants have further failed to
show that the "without user intervention" limitation is supported by the specification. Claim 1
recites that the media components are selected "at each one of the user computer means."
Defendants' proposed requirement of automatic arranging is based on the embodiments disclosed .
in the specification, but there is no basis to import this as a limitation into the claims. Lastly, the
proposal by Defendants that each presentation must correspond to a user is also unsupported.

IV.

CONCLUSION
An appropriate Order follows.

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