TVnGO LTD. (BVI) v. LG ELECTRONICS, INC. et al

Filing 88

USCA for the Federal Circuit OPINION. (js)

Case: 20-1837

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Filed: 06/28/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________
TVNGO LTD. (BVI),
Plaintiff-Appellant
v.
LG ELECTRONICS INC., LG ELECTRONICS USA,
INC.,
Defendants-Appellees
______________________
2020-1837
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 1:18-cv-10238-RMB-KMW,
Judge Renee Marie Bumb.
______________________
Decided: June 28, 2021
______________________
CHARLES CANTINE, Dunlap Bennett & Ludwig PLLC,
New York, NY, argued for plaintiff-appellant.
WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP,
Houston, TX, argued for defendants-appellees. Also represented by NATALIE A. BENNETT, Washington, DC; ERIC
KRAEUTLER, Philadelphia, PA; JEREMY DEANE PETERSON,
PV Law LLP, Washington, DC.
______________________

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Before PROST *, SCHALL, and REYNA, Circuit Judges.
PROST, Circuit Judge.
TVnGO Ltd. (BVI) (“TVnGO”) appeals a final patentinvalidity judgment by the U.S. District Court for the District of New Jersey. We agree that the patent claims
TVnGO asserts against LG Electronics Inc. and LG Electronics U.S.A., Inc. (collectively, “LGE”) are indefinite under 35 U.S.C. § 112, paragraph 2. 1 We therefore affirm.
BACKGROUND
I
TVnGO owns U.S. Patent Nos. 8,132,220 (“the ’220 patent”), 9,124,945 (“the ’945 patent”), 9,392,339 (“the
’339 patent”), 9,407,969 (“the ’969 patent”), and 9,794,621
(“the ’621 patent”), which share a specification and drawings. 2 The patents relate to providing “a TV-Internet Integration Box having the ability to merge broadcast TV
signals with IP packet data at a customer site.” ’220 patent
col. 2 ll. 20–22. Figure 1, for example, depicts a “TVInternet Integration Box” with inputs from a cable box and
the internet, and an output to a television:

Circuit Judge Sharon Prost vacated the position of
Chief Judge on May 21, 2021.
1
The America Invents Act (AIA), Pub. L. No. 112-29,
125 Stat. 284, effective September 16, 2012, designated
§ 112, paragraph 2 as § 112(b). These patents stem from
an application filed in 2005, so we refer to pre-AIA § 112.
2
For simplicity, all citations to the shared specification are to the ’220 patent.
*

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Id. at Fig. 1.
This system can be influenced in various ways. An advertiser may specify conditions for displaying advertisements, id. at col. 3 ll. 59–66, an IP-content provider may
store “calendar and program data indicating dates, times
and channels in respect of which the IP content is to be
streamed to the customer premises,” id. at col. 4 ll. 9–13,
and a subscriber may select “what kind of IP content” he or
she “wishes to receive and in respect of which program details, such as icons and/or textual data, are to be displayed,” id. at col. 4 ll. 21–24. The specification further
describes a remote control, id. at col. 7 ll. 7–50, that can be
programmed according to the embodiment of Figures 7a–c:

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Id. at Fig. 7a–c.
Figure 7a “shows the default situation where a TV
screen 40 displays a conventional TV broadcast in a window 41 that is sized to occupy the whole area of the TV
screen 40,” as well as “IP icons 42, 43 and 44 each of which
points to a different IP content that is streamed from a respective web site of known address.” Id. at col. 7 ll. 29–35.
In TVnGO’s view, an icon “could take the form of a commonly recognized logo, such as the Netflix logo.” TVnGO
Ltd. (BVI) v. LG Elecs., Inc., 2020 WL 1899781, at *1 n.3
(D.N.J. Apr. 17, 2020). Figure 7b shows that, upon “pressing the key on the remote control unit 30 that corresponds
to the icon 42, the IP content corresponding thereto is displayed within a small window 45.” ’220 patent col. 7
ll. 35–37. At this point, “[t]he icons 42, 43 and 44 remain
visible so that, if desired, the selected program can be
changed by pressing a different key on the remote control
unit 30.” Id. at col. 7 ll. 39–42. “On pressing a key a second
time in succession, the IP content is re-sized so that its window 45 occupies substantially the whole area of the screen,”
as shown in Figure 7c. Id. at col. 7 ll. 42–44. “On pressing

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the key a third time in succession, the situation reverts to
the default.” Id. at col. 7 ll. 44–46. “Thus, each key operates as a three-way toggle that switches between three different display modes.” Id. at col. 7 ll. 48–50.
II
TVnGO alleges that LGE’s “Smart TVs” infringe the
asserted patents, which it describes as generally directed
to “methods and devices that make televisions ‘smart.’”
J.A. 103–04 (Complaint). After a Markman hearing, preand post-hearing briefing, and supplemental briefing, the
district court issued a claim-construction opinion concluding that the two claim phrases at issue here render the asserted claims indefinite under § 112, paragraph 2.
TVnGO, 2020 WL 1899781, at *7. In the district court’s
view, these phrases present “irreconcilable inconsistencies”
within and across the asserted patents (“intra-” and “interpatent” inconsistencies, respectively). Id. at *3. “Try as it
might,” the district court could not “construe the claims
with any confidence.” Id. at *4. Accordingly, the court held
the asserted claims invalid. J.A. 18. 3 TVnGO appealed.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
“[A] patent must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what
is still open to them.” Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 909 (2014) (cleaned up). Accordingly,
“[t]he Patent Act requires that a patent specification ‘conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant
The claims are: ’220 patent claims 1, 9–10, 13, 17,
and 20; ’945 patent claims 1, 4, 8, 9, 12, 15, 19, and 21;
’696 patent claims 1, 9–10, 13, 17, and 20; ’339 patent
claims 1, 4–7, 12–15, and 18; and ’621 patent claims 1, 4,
9, and 11.
3

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regards as [the] invention.’” Id. at 901 (second alteration
in original) (quoting 35 U.S.C. § 112, para. 2). Patent
claims are indefinite if they “fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Id.
“In the face of an allegation of indefiniteness, general
principles of claim construction apply.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir.
2015) (quoting Enzo Biochem, Inc. v. Applera Corp.,
599 F.3d 1325, 1332 (Fed. Cir. 2010)). The words of a claim
“are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of
the invention.” Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc). “[C]laims are to be read
in light of the patent’s specification and prosecution history.” Nautilus, 572 U.S. at 908.
Whether a claim is indefinite under 35 U.S.C. § 112 is
ultimately a legal conclusion that we review de novo. Cox
Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224,
1228 (Fed. Cir. 2016). “Any fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear
and convincing evidence.” Id. (alteration in original) (quoting Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366
(Fed. Cir. 2003)). “If indefiniteness can be determined
based solely on intrinsic evidence, our review is de novo.”
Id. Here, the district court relied on “a review of the claim
terms, the specifications, and the prosecution histories”
and declined to rely on TVnGO’s expert testimony because
it had “no support” in the patents. TVnGO, 2020 WL
1899781, at *6–7. Therefore, our review is de novo.

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Two phrases are at issue here: “overlay activation criterion” and “overlay activation signal.” 4 In the claims,
these phrases relate generally to producing overlays (e.g.,
in Figures 7a–c above). TVnGO, 2020 WL 1899781, at *1.
But their precise meanings are not reasonably certain in
view of the intra-patent inconsistencies discussed by the
district court. Before addressing those inconsistencies,
however, we first highlight the lack of intrinsic evidence in
this case as to the meanings of these phrases.
For starters, the parties agree that neither “overlay activation criterion” nor “overlay activation signal” has an ordinary meaning in the art. Appellees’ Br. 15; Reply Br. 13;
see TVnGO, 2020 WL 1899781, at *3 & n.8. Instead,
TVnGO contends that a skilled artisan would understand
the disputed phrases by stitching together their constituent words. 5 Reply Br. 2 (“[T]he terms – “overlay,” “activation,” “criterion,” and “signal” – are each easily understood,
plain English words.”); Oral Arg. at 2:24–46 (arguing that
“overlay has a meaning, criterion has a meaning, signal
has a meaning, activation has a meaning”). 6 Here, we are
unpersuaded that the ordinary meanings of the constituent
words alone are enough in the context of this case to establish what these phrases mean.
The patent record is also unhelpful. Neither phrase is
mentioned, let alone defined, in the shared specification, as
The district court’s analysis as to “overlay activation signal” applied equally to the phrase “special overlay
activation signal” appearing in the ’945 and ’621 patents.
TVnGO, 2020 WL 1899781, at *2 n.4.
5
At the district court, TVnGO contended that no
construction was necessary and in the alternative proposed
constructions which, LGE notes, expanded in response to
the inconsistencies LGE raised. See Appellees’ Br. 23–28.
6
No. 20-1837, http://www.cafc.uscourts.gov/oral-argument-recordings.
4

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both were added to the claims during prosecution. And the
“limited information” provided by the prosecution history
isn’t enough to provide reasonable certainty here either.
TVnGO, 2020 WL 1899781, at *6. Like the district court,
we are unconvinced that the disputed phrases “are far from
indefinite” merely because they were “added to the claims,
discussed, understood and considered by the Examiner,
and ultimately allowed.” Appellant’s Br. 10; see Sonix
Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1380
(Fed. Cir. 2017). This dearth of evidence leaves the skilled
artisan unable to resolve the inconsistencies discussed below as to the ’339, ’945, and ’621 patents (discussed in Section I), and the ’220 and ’969 patents (discussed in
Section II).
I
We turn now to the intra-patent inconsistency the district court relied on in holding indefinite the claims of the
’339, ’934, and ’621 patents: an inconsistency between the
specification and the claims as to the result achieved by an
“overlay activation criterion” or “overlay activation signal.”
Specifically, beyond its failure to mention the disputed
phrases, the specification’s use of the words “activates” and
“activating” injects further uncertainty. While the specification uses these words to describe activating an already
overlaid icon to display the IP content it represents, the
claims appear to use the disputed phrases with respect to
displaying an overlay in the first place—creating confusion
as to which reading is correct. On the one hand, the specification states that “pressing on a specific key activates the
displayed icon,” ’220 patent col. 7 ll. 19–22 (emphasis
added), and references “the appropriate keys or button for
activating each icon,” id. at col. 7 ll. 24–25 (emphasis
added). The claims, however, point in a different direction.
With respect to the “criterion” term, ’339 patent claims 1
and 15 recite “respond[ing] to an overlay activation criterion to cause the display screen to display the overlays.”
With respect to the “signal” term, ’945 patent claims 1 and

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12 state that the result of processing the “overlay activation signal” is “generating display drive signals causing the
TV screen to display the overlays,” and ’621 patent claim 1
recites “generating display drive signals that cause the TV
screen to display the one or more overlays.”
TVnGO responds that the disputed terms cover both
displaying an initial overlay and displaying IP material.
E.g., Reply Br. 26. But we are not persuaded that this suggestion clears up the uncertainty, as it could also be the
case that one or the other of these options is right. Even if
it may be possible to “ascribe some meaning” to the disputed limitation, as TVnGO’s reading attempts, more is required: one of ordinary skill must have reasonable
certainty. Nautilus, 572 U.S. at 911. Here, a person of ordinary skill would encounter two claim phrases without an
ordinary meaning in the art. See Teva Pharms. USA, Inc.
v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir. 2015) (indefinite term had no “plain meaning to one of skill in the art”).
Upon consulting the specification, he or she would not find
those phrases. See id. at 1344 (indefinite term not defined
in specification); Infinity Comput. Prods., Inc. v. Oki Data
Ams., Inc., 987 F.3d 1053, 1056 (Fed. Cir. 2021) (indefinite
term absent from specification). And when attempting to
glean their meaning from the patent’s use of “activates”
and “activating,” he or she would find that “the patents
teach two different results”—i.e., display of IP content associated with an already displayed overlay versus display
of an overlay in the first place—without reasonable certainty as to which reading is correct. TVnGO, 2020 WL
1899781, at *3. The asserted ’339, ’945, and ’621 patent
claims are therefore indefinite.
II
We turn next to the intra-patent inconsistency the district court relied on in holding indefinite the claims of the
’220 and ’969 patents. This is an inconsistency between the
independent and dependent claims regarding whether an

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“overlay activation criterion” comes from the internet or
from a user’s premises. On the one hand, the independent
claims indicate that an “overlay activation criterion” is a
type of “overlay-enabling digital data” that is provided
“over the Internet” and “transmitted to the user’s premises.” ’220 patent claims 1, 13; ’969 patent claims 1, 13.
But the dependent claims, on the other hand, state that
“said overlay activation criterion includes . . . a user command information,” indicating that an “overlay activation
criterion” can come from a user’s premises via the remote
control. ’220 patent claims 9, 20; ’969 patent claims 9, 20.
As the district court explained, “the intrinsic evidence presents . . . irreconcilably inconsistent information: the ’220
and ’969 [p]atents indicate that ‘overlay activation criterion’ comes from the Internet and simultaneously not from
the Internet—i.e., from the user’s premises.” TVnGO,
2020 WL 1899781, at *3.
For its part, TVnGO asserts that an overlay activation
criterion “comes from the Internet,” Reply Br. 3, arguing
that, although “‘user commands’ . . . come from a user, not
the Internet,” “user command information” comes from the
internet. Appellant’s Br. 20; see also Reply Br. 19 (“There
is no dispute that a ‘user command’ comes from a user.”).
This distinction lacks intrinsic support. Rather, the specification uses the word “command” only once, and in relation to the infrared (IR) remote control. ’220 patent col. 7
ll. 2–3 (“An IR receiver 28 is adapted to receive IR commands from a remote control unit.”). And when other dependent claims use “command,” they similarly recite
“receiving a command from a user at said user premises.”
Id. at claims 3, 15; ’969 patent claims 3, 15. Accordingly,
one of ordinary skill would lack reasonable certainty as to
the source of an “overlay activation criterion”—whether the
internet or a user’s premises.
TVnGO argues in the alternative that this alleged inconsistency is better characterized as an allegation that the
dependent claims are invalid for sweeping more broadly

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than the independent claims. See 35 U.S.C. § 112, para. 4.
TVnGO misses the mark. The issue is not breadth of the
dependent claims but their use of the disputed phrase in a
way that contradicts the independent claims. The dependent claims state that “said overlay activation criterion includes . . . a user command information,” which conflicts
with the independent claim’s use of this same phrase.
’220 patent claims 9, 20 (emphasis added); ’969 patent
claims 9, 20 (same). That prevents reasonable certainty.
Further, merely dismissing the dependent claims as invalid, as TVnGO proposes, ignores that they are one of the
few sources of intrinsic evidence on the meaning of “overlay
activation criterion” in this record. When faced with this
unknown and undefined phrase, a skilled artisan would
look for clarification not only in the specification but also
in “[o]ther claims of the patent in question,” which “can also
be valuable sources of enlightenment as to the meaning of
a claim term.” Phillips, 415 F.3d at 1314. Here, however,
he or she would discover an inconsistency, throwing the
meaning of “overlay activation criterion” into doubt. These
dependent claims are intrinsic evidence. Arguing that they
are invalid does not change that. The asserted ’220 and
’969 patent claims are therefore indefinite.
CONCLUSION
The district court also relied on inter-patent inconsistencies. TVnGO, 2020 WL 1899781, at *4–6. We find it unnecessary to reach those, as the intra-patent grounds
discussed above are sufficient to establish indefiniteness.
We have considered TVnGO’s remaining arguments and
find them unpersuasive. The district court correctly concluded that the asserted claims are invalid for indefiniteness. We affirm.
AFFIRMED