Rovi Guides, Inc. et al v. Comcast Corporation et al

Filing 313

CLAIM CONSTRUCTION OPINION AND ORDER: For the foregoing reasons, the Court adopts the constructions set forth in this Opinion. The Court also adopts the constructions of the "Agreed Terms" as detailed in the parties' Third Amended Joint Claim Terms Chart. (See Dkt. No. 306-1.) SO ORDERED. (Signed by Judge J. Paul Oetken on 8/10/2017) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
ROVI GUIDES, INC.; ROVI TECHNOLOGIES
CORP.; and VEVEO, INC.,
Plaintiffs,
-vCOMCAST CORPORATION; COMCAST
CABLE COMMUNICATIONS, LLC;
COMCAST CABLE COMMUNICATIONS
MANAGEMENT, LLC; COMCAST OF
HOUSTON, LLC; COMCAST BUSINESS
COMMUNICATIONS, LLC; COMCAST
HOLDINGS CORPORATION; and COMCAST
SHARED SERVICES, LLC,

16-CV-9278 (JPO)
CLAIM CONSTRUCTION
OPINION AND ORDER

Defendants.
J. PAUL OETKEN, District Judge:
This is a patent infringement action brought by Plaintiff Rovi Guides, Inc. and its
subsidiaries (together, “Rovi”) against the Comcast Defendants. 1 Currently pending before the
Court are the parties’ memoranda on claim construction. (See Dkt. No. 283; Dkt. No. 288; Dkt.
No. 293.) The Court held a Markman hearing on July 7, 2017, to determine the proper
construction of the disputed terms in this case. (See Minute Entry, July 7, 2017.) Having
considered the parties’ arguments and briefing on claim construction, the Court construes the
disputed terms as set forth below.

1

The Comcast Defendants are Comcast Corporation; Comcast Cable
Communications, LLC; Comcast Cable Communications Management, LLC; Comcast of
Houston, LLC; Comcast Business Communications, LLC; Comcast Holdings Corporation; and
Comcast Shared Services, LLC (together, “Comcast”). On June 30, 2017, this Court granted
Rovi’s motion to dismiss its claims again ARRIS Group, Inc. and its subsidiaries, Technicolor
USA, Inc., and Technicolor Connected Home USA LLC. (Dkt. No. 302.)
1

I.

Background
There are six patents at issue in this case. They are U.S. Patent Nos. 8,713,595 (“the ’595

patent”), 9,172,987 (“the ’987 patent”), 8,433,696 (“the ’696 patent”), 7,895,218 (“the ’218
patent”), 8,122,034 (“the ’034 patent”), and 7,996,864 (“the ’864 patent”). 2 The parties dispute a
total of twenty-nine of the claim terms that appear in these six patents. (See Dkt. No. 306.) The
patents cover a number of different fields, including interactive program guides (“IPGs”), remote
control, and content searching.
Rovi’s expert, Dr. Shamos, posits that a person of ordinary skill in the relevant art
(“POSITA”) would have a bachelor’s degree in “electrical engineering, computer engineering, or
computer science, and two to three years of experience relating to electronic content delivery,
such as experience with design or technical analysis of cable or satellite television systems, settop boxes, multimedia systems or electronic program guides, or any equivalent knowledge,
training, and/or experience.” (Dkt. No. 283 at 1; Dkt. No. 283-7 ¶ 5 (“Shamos Decl.”).)
Comcast’s experts, Dr. Bederson and Dr. Kelly, also offer opinions regarding the level of
skill in the art for the particular patents. For the ’864 patent, Dr. Bederson states that the relevant
field of art is “television user interfaces,” and that a POSITA “at the time of the alleged invention
of the ’864 patent would have been someone with at least a bachelor’s degree in computer
science, electrical engineering, computer engineering, or a similar discipline, and at least two to
three years of experience or familiarity with electronic program guides, television video signal
processing, graphical user interfaces, and associated software.” (Dkt. No. 289 ¶ 14–15

2

On July 28, 2017, Rovi requested that the Court dismiss, without prejudice, all
claims related to U.S. Patent Nos. 6,725,281 and 8,755,666. (Dkt. No. 311.) That request is
hereby granted.
2

(“Bederson Decl.”).) For the ’218 and ’034 patents, Dr. Kelly contends that the relevant field of
art is “data search techniques,” and that a POSITA “at the time of the claimed inventions would
have a minimum of: (i) a bachelor’s degree in computer science, computer engineering, applied
mathematics, or a related field of study; and (ii) two or more years of industry experience
relating to designing and implementing systems that utilize data search techniques. Additional
graduate experience could substitute for professional experience, or significant experience in the
field could substitute for formal education.” (Dkt. No. 290 ¶ 13–14 (“Kelly Decl.”).)
The Court does not perceive significant differences between these formulations and the
parties did not dispute this matter in their briefs or at oral argument. Each of the parties’ experts
believes that a person of skill in the art would have a bachelor’s degree and two or more years of
industry experience. The Court therefore concludes that a POSITA for the six patents-in-suit
would have a bachelor’s degree in electrical engineering, computer engineering, computer
science, or applied mathematics as well as two or more years of relevant industry experience,
including in electronic content delivery, electronic program guides, television video signal
processing, graphical user interfaces, cable or satellite television systems, set-top boxes,
multimedia systems, or data search techniques.
II.

Legal Standard
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s

decisions in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and Markman v.
Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc). Claim construction is an
issue of law properly decided by the Court. Markman, 52 F.3d at 970–71. “It is a ‘bedrock
principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is
entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.

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Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). “[I]n all aspects of
claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola, Inc., 757 F.3d
1286, 1298 (Fed. Cir. 2014), overruled on other grounds by Williamson v. Citrix Online, LLC,
792 F.3d 1339 (Fed. Cir. 2015) (en banc) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998)).
To determine the meaning of the claims, courts begin by considering the intrinsic
evidence, the primary source for determining claim meaning. Phillips, 415 F.3d at 1313; C.R.
Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004) (collecting cases). The
intrinsic evidence includes the claims themselves, the specification, and the prosecution history.
See Phillips, 415 F.3d at 1313–14; C.R. Bard, Inc., 388 F.3d at 861. The general rule—subject
to certain specific exceptions discussed below—is that each claim term is construed according to
its ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time
of the invention in the context of the patent and intrinsic evidence. Phillips, 415 F.3d at 1312–
13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). “There is a heavy
presumption that claim terms are to be given their ordinary and customary meaning.”
Massachusetts Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1118 (Fed. Cir. 2016) (quoting
Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (internal
quotation marks omitted)).
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term

4

either in the specification or during prosecution.” 3 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
As to lexicography, it is well settled that “patentees may choose their own descriptive
terms as long as those terms adequately divulge a reasonably clear meaning to one of skill in the
art.” Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1375 (Fed. Cir. 1999). To
act as his or her own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” GE Lighting Solutions,
750 F.3d at 1309 (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
1337, 1341 (Fed. Cir. 2001)). Departing from the ordinary meaning of the claim terms requires
the patentee to set forth his or her lexicography “with reasonable clarity, deliberateness, and
precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir.
1998); see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is
indeed free to define the specific terms used to describe his or her invention, this must be done
with reasonable clarity, deliberateness, and precision.”). “Where an inventor chooses to be his
own lexicographer and to give terms uncommon meanings, he must set out his uncommon

3

The Court notes that some cases have characterized other principles of claim
construction as exceptions to the general rule as well. See, e.g., CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002) (noting, for example, the statutory requirement that
“a claim term will cover nothing more than the corresponding structure or step disclosed in the
specification, as well as equivalents thereto, if the patentee phrased the claim in step- or meansplus-function format”).
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definition in some manner within the patent disclosure so as to give one of ordinary skill in the
art notice of the change.” Id. at 1480 (quoting Intellicall, Inc., v. Phonometrics, Inc., 952 F.2d
1384, 1387–88 (Fed. Cir. 1992) (internal quotation marks omitted)). “Absent implied or explicit
lexicography or disavowal,” the plain meaning of the claim terms governs. Trustees of Columbia
Univ. v. Symantec Corp., 811 F.3d 1359, 1364 n.2 (Fed. Cir. 2016).
The Federal Circuit, in Phillips, rejected any claim construction approach that sacrificed
the intrinsic record—including the specification—in favor of extrinsic evidence, such as
dictionary definitions or expert testimony. The en banc court disavowed the suggestion made by
Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should
discern the ordinary meaning of the claim terms—through dictionaries or otherwise—before
turning to the specification. Phillips, 415 F.3d at 1319–24. Phillips does not, however, preclude
all uses of dictionaries in claim construction proceedings. Instead, the court assigned
dictionaries a role subordinate to that of the intrinsic record. The Phillips court noted that, “[i]n
some cases, the ordinary meaning of claim language as understood by a person of skill in the art
may be readily apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly understood words. In
such circumstances, general purpose dictionaries may be helpful.” Id. at 1314 (citation omitted).
The Federal Circuit did not impose any particular sequence of steps for a district court to
follow when it considers disputed claim language. Id. at 1323–24. Rather, Phillips held that a
court must attach the appropriate weight to the intrinsic sources offered in support of a proposed
claim construction, bearing in mind the general rule that the claims measure the scope of the
patent grant. Id. at 1324.

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III.

Discussion
A.

The ’595 Patent Claim Terms

The ’595 Patent, titled “Interactive Program Guide Systems and Processes,” “relates to
television program guide systems and particularly to interactive television program guide
systems and related processes that can automatically tune a television, or program a video
cassette recorder (VCR), based on program selections made from program schedule information
displayed on a television or other suitable video monitor.” (’595 patent col. 1 ll. 18–23.) Simply
put, by way of this invention, one can use an IPG to control tuners, allowing a user to record
multiple programs even if the programs are scheduled at the same time.
1.

“Tuner”

Term Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

tuner

no construction is
necessary, plain and
ordinary meaning

an electronic circuit used to
selectively receive RF signals in a
desired frequency channel

’595 Patent Claims
1, 9, 13, 14, 17, 21,
& 22

Rovi argues that no construction is necessary for this term. In the alternative, Rovi urges
the Court to adopt Comcast’s proposed construction for “tuner” in U.S. Patent No. 8,621,512
(“the ’512 patent”), for which it argued at the United States International Trade Commission:
“an electronic circuit used to selectively receive RF signals in a desired frequency channel and
convert them into audio and video signals.” (Dkt. No. 283 at 3–5.)
Comcast argues that it is improper to import limitations from a different patent—the ’512
patent—into the term “tuner” as used in the ’595 patent. (Dkt. No. 288 at 5–6.) The ’512 patent
describes the “[t]uner outputs” as “connected to audio/video output.” (’512 patent col. 7 ll. 33–
35.) Rovi’s proposal to add a requirement that the tuner “convert [RF signals] into audio and
video signals” does not find similar support in the ’595 patent, which describes “tuning circuitry”

7

that “processes the incoming signals in a conventional manner to extract the program schedule
information, operational parameters, and software modules.” (’595 patent col. 7 ll. 20–23.)
In this case, Comcast is concerned that if the term is given no construction, Rovi will
argue that modern technology in the accused products falls within the scope of the ’595 patent.
In particular, some of the accused products utilize “full-band capture” technology, as opposed to
capturing a particular signal out of a set of incoming signals. (Dkt. No. 288 at 5.)
Comcast’s construction is consistent with both Rovi’s own expert’s understanding and
the specification’s description of the tuner. Rovi’s expert, Dr. Shamos, stated that “[a] tuner is
an electronic circuit that enables a device to selectively receive a signal out of a selection of a
plurality of signals.” (Shamos Decl. ¶ 7.) This comports with Comcast’s proposed construction.
Moreover, the specification of the ’595 patent repeatedly describes the user making selections
that “caus[e] the tuning circuitry . . . to tune to the channel.” (’595 patent col. 22 ll. 46–47; see
also id. col. 4 ll. 37–41; col. 7 ll. 43–46; col. 19 ll. 56–60.)
The term “tuner” is not overly technical, but some explanation of the term may be helpful
for the fact-finder. Comcast’s proposed construction is consistent with the terms plain and
ordinary meaning, describes the function of a tuner as used in the specification, and is endorsed
by Rovi’s expert. As such, the Court adopts Comcast’s proposed construction for “tuner”: “an
electronic circuit used to selectively receive RF signals in a desired frequency channel.”

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2.

“Video Recorder”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

video
recorder

’595 Patent Claims 1,
9, 13, 14, 17, 21, & 22

no construction is necessary,
plain and ordinary meaning

video cassette recorder

Rovi argues that no construction is necessary for the term “video recorder.” (Dkt. No.
283 at 15–16.) While the specification of the ’595 patent discusses video recorders only in the
context of “video cassette recorders,” Rovi argues that this is merely a preferred embodiment of
the invention, which should not limit the claims. (Dkt. No. 293 at 1.)
Comcast contends that Rovi’s “plain and ordinary meaning” is an attempt to expand the
scope of the claims to encompass modern technology not contemplated by the ’595 patent,
including “digital video recording.” (Dkt. No. 288 at 4.)
Comcast also notes that the term “video recorder” does not appear anywhere in the
specification of the ’595 patent. (Id. at 3.) In fact, the only device disclosed in the patent that is
capable of recording video is a “video cassette recorder.” (Id.)
In support of its limiting construction, Comcast relies on Regents of University of
Minnesota v. AGA Medical Corp., where the Federal Circuit held that if “every single
embodiment disclosed in the . . . patent’s drawings and its written description is made up of” a
particular embodiment—here a VCR—and the patent describes the “invention” as having that
embodiment, “this description limits the scope of the invention.” 717 F.3d 929, 936 (Fed. Cir.
2013). In that case, however, the Federal Circuit also held that “[t]he claim language fully
support[ed]” the construction as described in the specification. Id. This is not the case here,
where the claim term “video recorder”—an unambiguous term—does not support the limiting
construction urged by Comcast.

9

Comcast has not met the high burden of demonstrating lexicography or estoppel to
otherwise limit the scope of this term. The Federal Circuit “has expressly rejected the contention
that if a patent describes only a single embodiment, the claims of the patent must be construed as
being limited to that embodiment.” Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004) (collecting cases). Indeed, “[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.’” Id. (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1327 (Fed. Cir. 2002)).
The ’595 patent does not exclude or restrict the otherwise easily understood term “video
recorder.” Accordingly, the Court affords this term its plain and ordinary meaning.
3.
Term

“Interactive Television Program Guide” and “User Equipment
Having an Interactive Program Guide Implemented Thereon”
Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

interactive
’595 Patent
television program Claims 1,
guide
9–17, 21,
23, & 24

guide that allows user
navigation through and
interaction with television
program listings and causes
display of program
information on user
television equipment based
on user commands

an application that causes the
display of a set of screen
displays, at least one of them
presenting schedule
information for television
programs, and at least one
screen display being
responsive to user input.

user equipment
’595 Patent
having an
Claims 9
interactive
television program
guide
implemented
thereon

no construction is
necessary, plain and
ordinary meaning

equipment at a user site that
stores and runs the
interactive television
program guide

There are two systems that are currently accused of infringement: the older, “Legacy”

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system and the newer, “X1” system. (Dkt. No. 288 at 6.) The Legacy system runs its interactive
program guide directly on the set-top box while the X1 system utilizes a distributed cloud server
to store the guide software. (Id.) Comcast argues that Rovi is attempting to broaden the
meaning of the claim terms to capture the X1 system.
For the “interactive television program guide” term, Comcast indicates in its brief to this
Court that it disputes only whether the term refers to a “guide” or “an application,” and otherwise
agrees to the remainder of Rovi’s proposed construction. (Dkt. No. 288 at 7 n.5.)
Rovi disputes Comcast’s proposed construction to the extent that it (1) limits the guide to
“an application,” as opposed to multiple applications; 4 and (2) limits the guide to run on
“equipment at a user site.” (Dkt. No. 293 at 2.)
Comcast’s proposed construction, however, is consistent with the disclosures of the ’595
patent. Throughout, the ’595 patent treats the term “interactive television program guide” as an
application that is implemented on a set-top box, which is located at the user site. For example,
the Abstract of the ’595 patent explains that “the interactive program guide is preferably
implemented using a microprocessor-controlled set-top box that is coupled to the viewer’s
television set.” (’595 patent at Abstract.) Figure 1 of the patent, depicted below, goes on to
describe “a system 50 which provides the interactive program guide of the present invention.”
(Id. col. 5 ll. 64–65.)

4

At oral argument, counsel for Comcast noted that Rovi’s misgivings about “an
application” being singular are unfounded, conceding that “‘application’ can refer to, you can
have a distributed application, so you can have some software here and some software over there
that work together as an application.” See Transcript of Oral Arg. at 96:9–11.

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That system includes “a data center 52 and a headend telecasting center 54,” which transmits a
“set of program schedule information . . . on a cable network 68” that is received by “[a]
plurality of set-top boxes 70 coupled to the cable network 68 [to] receive the television program
signals and the program schedule information.” (Id. col. 6 ll. 5–6, 46–55.) The ’595 patent
refers to “a set-top box suitable for implementing the interactive program guide of the present
invention.” (Id. col. 5 ll. 46–48.)
In this way, the ’595 patent contemplates a distributed system that provides the
“interactive television program guide” to a set-top box, which then implements the “interactive
television program guide.” This is consistent with Comcast’s description of the “interactive
television program guide” as “an application” and with Comcast’s description of “user
equipment” as referring to “equipment at a user site,” (i.e., on the set-top box coupled to the
viewer’s television set). The ’595 patent does not disclose an “interactive television program
guide” that is stored or run at a location other than the user site, such as on remote servers or
elsewhere.
Rovi’s expert opines that the specification of the ’595 patent “make[s] it clear that the
12

interactive television program guide . . . can be distributed applications that run on, or are
implemented on, different items of equipment that can be geographically distant.” (Shamos
Decl. ¶ 15.) But neither Rovi nor Dr. Shamos specifically points to where in the ’595 patent
there is any support for finding that the “interactive television program guide” is a distributed
application run on geographically distant units. Instead, Dr. Shamos cites to a number of
passages in the specification of the ’595 patent that generally refer to the interactive television
program guide, but do not otherwise support his position that the application runs on multiple,
geographically distant units. (See id.) Moreover, Dr. Shamos himself refers to the “guide” as an
“application[],” which supports Comcast’s proposed construction of the “guide” as “an
application.” (Id.)
In further support of Comcast’s construction, Claim 9 describes the “user equipment” as
“comprising a display device, a first tuner, a second tuner, a memory, a set-top box, and a video
recorder.” (’595 patent col. 31 ll. 51–53.) All of these items are present at the user site. (See id.
col. 7 l. 15–col. 8 l. 46; id. at Figure 2; id. col. 4 ll. 14–17 (“The interactive program guide is
implemented preferably using a microprocessor-controlled set-top box that is coupled to the
viewer’s television set.”).)
Comcast’s proposed constructions are consistent with the specification and will clarify
the nature of the “interactive television program guide” contemplated by the patent to the fact
finder. See United Video Properties, Inc. v. Amazon.com, Inc., No. 11 Civ. 003, 2012 WL
2370318, at *13 (D. Del. June 22, 2012), aff’d, 561 F. App’x 914 (Fed. Cir. 2014) (construing
“interactive program guide” as “an application that produces interactive display screens that
include television program schedules and channel information”).
The Court, therefore, construes “interactive television program guide” to mean “an

13

application that allows user navigation through and interaction with television program listings
and causes display of program information on user television equipment based on user
commands.” The Court construes “user equipment having an interactive television program
guide implemented thereon” as “equipment at a user site that stores and runs the interactive
television program guide.”
4.

“Receiv[ing] . . . Program Schedule Information”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

receiv[ing] . . . program
schedule information

’595 Patent
Claims 1, 9,
& 17

no construction is
necessary, plain and
ordinary meaning

receiv[ing] program
schedule information
in the set-top box

Rovi argues that it is improper to import the term “in the set-top box” into the claim,
which (1) alters its plain meaning and (2) creates antecedent basis issues in reading the claim
term if implemented. (Dkt. No. 293 at 3.)
Comcast argues that the claim term “receiv[ing] . . . program schedule information”
should be construed as limited to receipt of such information only “in the set-top box,” as
opposed to in a remote server or other remote device. (See Dkt. No. 288 at 8.)
The specification of the ’595 patent explains that “[a] plurality of set-top boxes 70
coupled to the cable network 68 receive the television program signals and the program schedule
information.” (’595 patent col. 6 ll. 53–55; see also id. col. 4 ll. 17–19 (“The set-top box
receives program schedule information and software from a headend telecasting center.”).) And
Comcast notes that the examiner relied on the limitation that the “receiver receives” certain
information to overcome a particular prior art reference. (Dkt. No. 288 at 8 (citing Dkt. No. 29112 at 3.)

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Neither Comcast’s citation to the specification to show lexicography nor its reference to
the prosecution history to show disavowal meets the high standard required for the Court to
deviate from the plain and ordinary meaning for this term by adding the proposed limitation. See
Thorner, 669 F.3d at 1365–66 (describing the standards for lexicography and disavowal as
“exacting”). As such, the Court adopts the plain and ordinary meaning for the term
“receiv[ing] . . . program schedule information.”
B.

The ’987 Patent Claim Terms

The ’987 patent, titled “Methods and Systems for Updating Functionality of a Set-Top
Box Using Markup Language,” covers an invention in which markup language documents are
used to update and modify the functionality of a program guide.
1.

“Markup Language”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

markup
language

’987 Patent
Claims 1, 8,
9, & 16

computer language for
system for marking or tagging a
specifying the format of a document so that the document
file for printing or display arranges user display screen layout
and styling and indicates
functionality

Comcast’s proposed construction is from the specification of the ’987 patent, which
states that “[t]he markup language used may be any suitable markup language or system of
marking up, or tagging, a document (e.g., text file) so that the document indicates user display
screen layout and styling and program guide functionality.” (’987 patent col. 2 ll. 30–34
(emphasis added).) Comcast describes this as “lexicography.” (Dkt. No. 288 at 19–20.)
Comcast disagrees with Rovi’s proposed construction because it does not include the concept of
“tagging” or “marking up.” (Id. at 20–21.)

15

Rovi argues that the addition of the word “system” is inappropriate since (1) “system”
has a special definition in patent law—indicating an apparatus claim (Dkt. No. 293 at 3); and (2)
a “markup language” is a language, not a system (Dkt. No. 283 at 14).
Indeed, the passage that Comcast relies upon describes the markup language as a
“markup language or system of marking up.” (’987 patent col. 2 ll. 30–31 (emphasis added).)
Even assuming that this passage constitutes lexicography, Comcast’s definition impermissibly
reads out the “markup language” aspect in favor of the “system of marking” aspect. But this
passage does not constitute lexicography because Comcast has failed to demonstrate that the
patentee, “with reasonable clarity, deliberateness, and precision,” departed from the ordinary
meaning of the claim term. Paulsen, 30 F.3d at 1480.
Rovi’s expert relies on the 2002 edition of the Microsoft Computer Dictionary to argue
that the “usual definition” of “markup language” is a “set of codes in a text file that instructs a
computer how to format the file on a printer or video display or how to index and link its
contents.” (Shamos Decl. ¶ 13.) This is more consistent with Rovi’s proposed construction than
Comcast’s.
Rovi’s definition is consistent with the plain meaning, the specification, and the
dictionary definition relied upon by its own expert. As such, the Court construes “markup
language” as “computer language for specifying the format of a file for printing or display.”

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2.

“Markup Language Document” and “Dynamic Hyper Text Markup
Language [“DHTML”] Document”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

markup language
document

’987 Patent
Claims 1, 8,
9, & 16

No construction
necessary, plain and
ordinary meaning

self-contained file tagged
using markup language code

Dynamic Hyper
Text Markup
Language
document

’987 Patent
Claims 8 &
16

computer file containing
Dynamic Hypertext
Markup Language

self-contained file tagged
using Dynamic Hyper Text
Markup Language code

The crux of the dispute over this term is Comcast’s inclusion of the “self-contained”
limitation in its proposed construction. Rovi relies upon a dictionary definition of “Dynamic
Hyper Text Markup Language”: “Of all the Web-related technologies, DHTML is perhaps the
most poorly named. A reference to ‘the dynamic hypertext markup language’ leads one to think
of a self-contained language, perhaps a big brother of HTML, used to enable dynamic interactive
effects. But DHTML is not a self-contained language.” (Dkt. No. 283-1 at 4.)
Comcast, in turn, relies on a dictionary definition of “document”: “Any self-contained
piece of work created with an application program and, if saved on disk, given a unique filename
by which it can be retrieved.” (Dkt. No. 291-21 at 4.)
The incorporation of the “self-contained” limitation from Comcast’s definition of
“document” into the construction of “Dynamic Hyper Text Markup Language document” would
create confusion. The language in question is not self-contained. Referring to it as such simply
because it is used in a “document,” which is self-contained in a different respect, will not assist
the trier of fact and has no support in the intrinsic evidence.

17

As such, the Court finds that no construction is required for “markup language
document” and construes “Dynamic Hyper Text Markup Language document” as a “computer
file containing Dynamic Hypertext Markup Language.”
3.

“Preprogrammed on the Set-Top Box”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

preprogrammed on
the set-top box

’987 Patent
Claims 1 &
9

programmed on the set top
box prior to receipt of a
markup language
document

written in the code on the
set-top box prior to
performing any of the
claimed steps

With respect to this term, the parties dispute whether the preprogramming must happen
(a) prior to the receipt of a markup language document, as Rovi contends, or (b) prior to
performing any of the claimed steps, as Comcast contends.
Claim 1 of the ’987 patent describes a “method” that “generat[es] for display . . . a
display item having a first program function,” where that first program function is
“preprogrammed on the set-top box.” (’987 patent col. 10 ll. 60–65.) The method continues
when the set-top box “receiv[es] . . . a markup language document,” “interpret[s] the markup
language document”—which “assigns a second program function to the display item”—and then
“update[es] the set-top box based on the markup language document such that the display item
has the second program function.” (Id. col. 10 l. 66–col. 11 l. 17.) Finally, the “display item
having the second program function” is “generat[ed] for display.” (Id. col. 11 ll. 8–9.)
Comcast argues that the display item’s “first program function” must be programmed
prior to any other step of the claim, including before it is generated for display. (Dkt. No. 288 at
22 (citing Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (reciting a test to

18

determine “if the steps of a method claim that do not otherwise recite an order, must nonetheless
be performed in the order in which they are written”).)
Rovi argues that Comcast’s proposed temporal limitation is neither required by the claims
nor disclosed in the specification. (Dkt. No. 283 at 12–13.) All that is required by the claim,
according to Rovi, is that the display item’s “first program function” be programmed prior to the
receipt of a markup language document because that is how the claim differentiates the display
item’s “first program function” from its “second program function.” (Dkt. No. 283 at 13.)
Moreover, Rovi argues, Comcast’s proposed construction is framed in the context of
claim 1, a method claim, but claim 9 of the ’987 patent also contains the disputed term and is an
apparatus claim. Comcast’s proposed construction would risk the validity of Claim 9 by creating
one claim with two categories of invention: a system and method. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); Tate Access Floors v. Interface
Architectural Res., 279 F.3d 1357, 1367 (Fed. Cir. 2002) (“[C]laim language should generally be
construed to preserve validity, if possible.”).
Claim 1 indicates that a “display item” with a “first program function” is
“preprogrammed on a set-top box.” (’987 patent col. 10 ll. 60–65.) As a matter of logic, this
should occur before it is generated for display, as is consistent with Comcast’s proposed
construction. However, Comcast has not demonstrated that the claim language requires that the
steps “must be performed in the order written.” Altiris, 318 F.3d at 1369. Nor has Comcast
convinced the Court that its construction would not risk the validity of claim 9, as Rovi argues.
In any event, neither party’s proposed construction is required by the claims or the specification.
The meaning of “preprogrammed on the set-top box” is unambiguous and requires no
construction. As such, the Court affords the term is plain and ordinary meaning.

19

4.

“Program Function”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

program
function

’987 Patent Claims
1, 3, 9, & 11

a function of a
program guide

program guide functionality
(i.e., not screen layouts)

The parties mainly dispute Comcast’s inclusion of the limitation that “program function”
does not include “screen layouts.”
Comcast points to the specification’s discussion of “screen layout” as separate from
“function” or “functionality.” (Dkt. No. 288 at 23.) For example, the ’987 patent discusses
“[d]isplay screen style and layout and program guide functionality” as two separate things that
“may be set initially for the program guide.” (’987 patent col. 7 ll. 14–15.)
Rovi points out that Comcast’s proposed additional negative limitation is not found or
used in the claims. (Dkt. No. 293 at 4.) Though Rovi proposes a construction for this term, it
also argues that the term need not be construed. (Id.)
This is a straightforward term. Comcast has not demonstrated that the distinction on
which it relies rises to the level of lexicography sufficient to justify its proposed construction,
which imports a limitation from the specification into the claims. As such, the Court provides no
construction for the term.
C.

The ’696 Patent, ’218 Patent, & ’034 Patent Claim Terms

These three patents are all addressed to improvements in “incremental search,” which
involves updating search results as a user “incrementally” enters additional search inputs and
ranking the results by relevance.
The ’696 patent, titled “Method and System for Processing Ambiguous, Multiterm
Search Queries,” relates to searches for video/audio content items in which the user’s search

20

query is input using a device having a text input interface with overloaded keys. An overloaded
key is a key with multiple alphabetical and/or numerical symbols, such as a touch-tone phone
where the “2” key is associated with the number “2” and the letters “A,” “B,” and “C.”
The ’218 patent, titled “Method and System for Performing Searches for Television
Content Using Reduced Text Input,” covers certain uses of incremental searches for television
content using prefixes of descriptive words. The ’218 patent claims identifying and selecting a
television content item from a relatively large set of television content items using reduced text
input. For example, a user could search for the actor “Brad Pitt” by entering prefixes for each
word, such as “B P,” “BR P,” “B PI,” and so on.
The ’034 patent, titled “Method and System for Incremental Search With Reduced Text
Entry Where the Relevance of Results is a Dynamically Computed Function of User Input
Search String Character Count,” is directed to improving the dynamic retrieval of search results
for each character entered, which the patent describes as important for increasing the likelihood
of a user’s arriving at desired results without having to enter the full search text.
1.

The “Items” Terms

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

television
content item

’218 Patent
Claims 1 & 19

no construction is
necessary, plain and
ordinary meaning

video/audio content that can
be selected by a television
viewer

units of video/audio content

video/audio content that can
be selected by a viewer

’696 Patent
Claims 11 &
25
content items

’696 Patent
Claims 1 & 15

First, there is no limitation in the claims or the specification that supports Comcast’s
proposed limitation that “content items” be “selected by a viewer.”

21

Second, Comcast indicates that it does not object to Rovi’s proposed construction, so
long as “content item” excludes reference to any “descriptor,” such as a title.
Comcast notes that in Rovi’s preliminary response to a petition for inter partes review
(“IPR”) of the ’696 patent, Rovi indicated that its construction of “content items” excludes
“descriptors relating to the content item (such as a title) [from] the definition of ‘content item’
itself.” (Dkt. No. 288 at 26–27 (quoting Dkt. No. 291-24 at 10, 12).) Comcast argues that
Rovi’s proposed construction in its preliminary response constitutes a disclaimer that requires
Rovi to put forth a narrower construction of the term than was put forth during the inter partes
review proceedings. (Id. (citing Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir.
2017) (affirming prosecution disclaimer based on statements in inter partes preliminary
response)).). As such, Comcast does not object to Rovi’s construction of “content items” as
“units of video/audio content” so long as this understanding excludes descriptors, such as the
title. And Comcast similarly does not object to Rovi’s proposal of “no construction” for
“television content item,” so long as it is subject to the understanding that it does not include
“descriptors.” (Dkt. No. 288 at 27.)
At oral argument, Rovi argued that Comcast was asking the Court “to attribute to Rovi,
based on the IPR proceeding, a position that Rovi hasn’t taken.” Transcript of Oral Arg. at 29:2–
4. A review of the response shows that Rovi did not evince a “clear and unmistakable surrender
of claim scope,” which is necessary to constitute disclaimer. Aylus Networks, 856 F.3d at 1362.
While Rovi emphasized the distinction between “content items” and their “descriptors,” they
explicitly maintained that “a descriptor may relate to a content item, but is not the content item
itself.” (Dkt. No. 291-24 at 12.)

22

The nature of this relationship is important to understanding the claim terms at issue. In
context, the claims discuss “selecting and presenting” “content items.” (See, e.g., ’218 patent
col. 10 ll. 15–17.) The specification notes that “[t]he system identifies a group of one or more
television content items from the set of available television content items having descriptors
matching the search entry.” (’218 patent col. 4 ll. 1–3.) “The names,” i.e. titles, are then
“displayed” so that “[t]he viewer can then select the desired content item from the group
displayed.” (Id. col. 4 ll. 3–7.) A construction of the term “content item” that categorically
excludes their related “descriptors” does not make sense in the context of the claimed invention,
which explicitly discusses selecting content items based on their related descriptors.
Accordingly, the Court construes “content items” as “units of video/audio content” and
provides no construction for “television content items.”
2.
Term

“Prefixes”

Claim(s)

prefixes ’034 Patent
Claims 1 &
16

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

no construction is
necessary, plain and
ordinary meaning

variable length strings containing
characters of a word running from the
first character of the word

Rovi asks for no construction of the term “prefix,” but nevertheless refers the Court to
Random House Webster’s Unabridged Dictionary, which defines “prefix” as “[a]n affix placed
before a base or another prefix, as un- in unkind and re- in unrewarding.” (Dkt. No. 283-5.)
Rovi also argues that a construction of “prefix” that could include the entire word—as in
Comcast’s construction—would render the invention inoperable by conflating “prefixes and
“terms,” which are otherwise distinct. (Dkt. No. 283 at 26–27.)
Comcast notes that Rovi’s proposed dictionary definition is inconsistent with the
specification, in that the specification does not require a “prefix” to be an “affix.” The

23

specification notes that “[a] prefix substring of a word in a name captures information from the
word and can be a variable length string that contains fewer than all the characters making up the
word.” (’034 patent col. 4 ll. 49–52.) In this way, “unk” is a prefix for “unkind,” even if it is not
so in the dictionary definition provided by Rovi. Comcast, instead, points to the definition of
“prefix” from a textbook entitled “Compilers.” (Dkt. No. 291-26 at 119.) That text identifies
“ban” and “banana” as a prefix of “banana.” (Id.)
Neither the claims nor the specification sufficiently resolve the parties’ dispute as to the
permissible length of a “prefix” as used in the invention. Comcast’s external evidence— the
“Compilers” textbook—provides a more trustworthy and consistent definition of the term.
Moreover, Comcast’s proposed construction of “prefix” does not render the invention inoperable
by conflating “prefix” with “term” since “prefix” is broader than “term”: all terms are prefixes,
but not all prefixes are terms.
As such, the Court construes “prefixes” as “variable length strings containing characters
of a word running from the first character of the word.”
3.

“Term”

Term Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

term

no construction is
necessary, plain and
ordinary meaning

one or more ordered or unordered words
that are part of the title, keyword, or any
other portion of the meta-content of an
item

’034 Patent
Claims 1, 4, 6,
& 19

Rovi argues that no construction is necessary for the term “term,” and that Comcast’s
inclusion of a list of examples is unnecessary and likely to confuse the fact-finder.
Comcast argues that the specification is clear about the definition of the word “term.”
Indeed, the ’034 Patent expressly notes: “[T]erm (i.e., an individual word or phrase that is a part

24

of the title, keyword or any other portion of the meta-content) . . . .” (’034 patent col. 2 ll. 65–
67.) It goes on to note that “[a]s used herein, a ‘term’ is a set of one or more ordered or
unordered words.” (Id. col. 6 ll. 59–60.)
“In a specification, a patentee’s ‘use of “i.e.” signals an intent to define the word to
which it refers.’” SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1200 (Fed. Cir. 2013)
(quoting Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009)). And
while there are exceptions to this general rule, see SkinMedica, 727 F.3d at 1201–02, Rovi does
not argue that they apply, nor does the Court conclude that they do.
Accordingly, the Court construes “term” as “one or more ordered or unordered words that
are part of the title, keyword, or any other portion of the meta-content of an item.”
4.

“Relatively Large Set of [Selectable] Television Content Items”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s
Proposed
Construction

relatively large set of selectable
television content items /
relatively large set of television
content items

’218 Patent
Claim 1 &
19

at least 1,500
selectable television
content items

Indefinite

Comcast argues that the phrase “relatively large” does not provide objective boundaries
sufficient to inform a POSITA about the scope of the claims, rending the claim term indefinite.
(Dkt. No. 288 at 30–32.)
Section 112 requires that a patent specification “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the applicant regards as
his invention.” 35 U.S.C. § 112(b). The Supreme Court has read this provision to require that “a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig

25

Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). Indefiniteness must be proven by clear and
convincing evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir.
2015).
“[C]laims involving terms of degree are [not] inherently indefinite.” Sonix Tech. Co. v.
Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). “[A]bsolute precision is unattainable”
when drafting patent claims. Nautilus, 134 S.Ct. at 2129. “Thus, ‘a patentee need not define his
invention with mathematical precision in order to comply with the definiteness requirement.’
Sonix Tech., 844 F.3d at 1377 (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374,
1384 (Fed. Cir. 2005)).
Here, the term “relatively large” is a term of degree. Whether such a term is indefinite
depends on whether the intrinsic evidence provides sufficient guidance as to the scope of the
claim. Compare Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)
(holding claim term “not interfering substantially” did not render a claim indefinite where the
intrinsic evidence included, among other thing, examples of noninterfering structures and criteria
for their selection), with Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348–50
(Fed. Cir. 2005) (holding claim term “aesthetically pleasing” rendered claim indefinite where the
specification “provide[d] no guidance to a person making aesthetic choices,” rendering the claim
“completely dependent on a person’s subjective opinion”).
Arguing against a holding that the term “relatively large” is indefinite, Rovi relies on
certain examples from the specification. Comcast argues that the relied-upon examples are
inapposite.
First, the specification does not use the term “relatively large.” However, the
specification of the ’218 Patent does describe a study of searches performed on a set of 1,500

26

restaurants in which “98-99% of the restaurants were listed within a display list of top 5
restaurants with the entry of 4 characters, where 2 characters were taken from the first word and
two from the next.” (’218 patent col. 9 ll. 21–24.) Simply put, this study describes a search
through a database of 1,500 items using 4 characters, where 2 characters are from a first search
word and 2 characters are from a second search word, resulting in 98-99% of the restaurants
being listed in the search results. This is the smallest database discussed in the ’218 patent,
which also describes a database of “only 150,000 items.” (Id. col. 9 ll. 11–19.)
These examples do not give meaning to the phrase “relatively large set of selectable
television content items.” They are provided as examples in a discussion about the invention’s
treatment of “entity and term space complexity” in designing search mechanisms. (Id. col. 8 ll.
64–67.) The specification teaches that it may be “useful to appropriately partition the space and
have multiple distinct computing engines to serve requests.” (Id. col. 9 ll. 2–4.) This is
accomplished by, for example, breaking down a movie database into its component genres or
breaking down a phone book search space into its component cities. (Id. col. 9 ll. 4–8.) The
patent then provides three example database searches: a 150,000 item database; a 1,500 item
database; and a 58,000 item database. (Id. col. 9 ll. 11–31.) For each, the patent discusses how
many characters are required to achieve a list of results that is sufficiently accurate. (See id. col.
9 ll. 9–11 (“[T]he number of characters to be entered may have to be increased to keep the hash
collision count within the tolerable limit of scrolling.”).)
Rovi argues that the examples are provided to “show[] the benefits of searching within a
relatively large set of items (1,500 restaurant names) using a limited number of characters from
more than one word.” (Dkt. No. 293 at 9.) Rovi’s expert opines that the example with 1,500
items would inform a POSITA that such a database is “relatively large” within the context of the

27

patent. (Dkt. No. 283-8 ¶ 9.) But Comcast’s expert disagrees, stating that the examples are of
arbitrary sizes and pointing out that the specification does not discuss whether the sizes are large
or small. (Dkt. No. 290 ¶ 19.)
In Sonix, the Federal Circuit reversed a finding of indefiniteness as to the term “visually
negligible.” First, it determined whether the claim language made the scope of the term
“unmistakably” clear. 844 F.3d at 1378. Here, the claim terms provide no guidance as to the
meaning of the term “relatively large.” Second, the Sonix court determined whether the term
was “purely subjective”—such as the term “aesthetically pleasing”—or whether there exists an
“objective baseline through which to interpret the claims.” Id. Whether a database is “relatively
large” is not a purely subjective inquiry; rather, to determine if a database is “relatively large,”
all one needs is a reference point to compare to. Jupiter is relatively large compared to Earth but
relatively small compared to the Sun.
Turning to the written description, which is “key to determining whether a term of degree
is indefinite,” id., there is no reference point provided that would allow a POSITA to determine
the scope of the term “relatively large set of selectable television content items.” There is no
indication as to whether the disclosed databases—which are 1,500 to 150,000 units in size—are
small, large, or average. Moreover, the parties’ experts disagree about what a relatively large
database is. Rovi’s expert states that a database of 7,000 items would be considered “relatively
large” (Dkt. No. 283-7 ¶ 10), while Comcast’s expert notes that such databases at the time of the
invention could reach upwards of eight billion (Dkt. No. 290 ¶ 20). In any event, Rovi argues
that reference to databases not disclosed in the ’218 patent specification are “irrelevant.” (Dkt.
No. 293 at 9.)

28

Accordingly, the Court finds by clear and convincing evidence that, while the term
“relatively large set of selectable television content items” is not a purely subjective term, the
written description does not provide sufficient support to inform with reasonable certainty those
skilled in the art of the scope of the invention. Accordingly, the Court hold that claims 1 and 19
of the ’218 patent are invalid as indefinite. 5
5.

“The Second Overloaded Key Forming a String with the First
Overloaded Key”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

the second
overloaded key
forming a string with
the first overloaded
key

’696 Patent
Claims 1 &
15

no construction is
necessary, plain and
ordinary meaning

the second overloaded key
forming with the first
overloaded key a prefix
substring of each of at least two
words

The crux of the parties’ dispute as to this term is whether the “string” formed when
combining the first and second overloaded key must have, at least, two words.
Comcast points to various parts of the patent that, it argues, require that any search term
be at least two words. (Dkt. No. 288 at 32–34.) First, in describing the “field of invention” the
patent states that “[t]he present invention generally relates to . . . methods and systems for
processing ambiguous, reduced text, multi-term search queries.” (’696 patent col. 1 ll. 27–31
(emphasis added).) This is strong evidence that the patent is limited to multi-term search
queries, as opposed to single-term queries. See Regents of Univ. of Minnesota, 717 F.3d at 936
(“When a patent thus describes the features of the ‘present invention’ as a whole, this description

5

This moots the parties’ dispute over the construction of the claim terms
“descriptive term” and “descriptor prefix string / descriptor prefix,” which appear only in claims
1 and 19 of the ’218 patent.
29

limits the scope of the invention.”) (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503
F.3d 1295, 1308 (Fed. Cir. 2007)).
Second, the patent’s abstract explains that “[t]he search query is a prefix substring of
each of at least two words relating to the desired item,” and this description is also found in the
summary of invention and the specification. (Id. at Abstract; see also id. col. 2 ll. 14–15; id. col.
3 ll. 14–16.) And the patent’s title is “Method and System for Processing Ambiguous, Multiterm
Search Queries.” (Id. col. 1 ll. 1–3 (emphasis added); see also id. Figure 6 (disclosing multiple
term prefix queries).)
Comcast argues that “every single example of a search query in the specification
describes entry of a prefix substring of at least two words.” (Dkt. No. 288 at 33.) Rovi
disagrees, relying on the specification’s description of Figure 4. There, the patentee describes a
search with one word—“NBA.” (Dkt. No. 283 at 14 (citing ’696 patent col. 5 ll. 22–25.) But
“NBA” is not a single word prefix—it constitutes three single letter prefixes for the term
“National Basketball Association.” Rovi also points to a discussion as to how the system orders
search results based on the “type of query input,” which includes “single term prefixes.” (Id.
(citing ’696 patent col. 5 ll. 50–55.) But this disclosure is not inconsistent with the patent’s
otherwise clear requirement that the search query comprise a prefix with two or more words.
That is, although the “ordering criteria” can favor results when an input matches a “single term
prefix,” the patent is directed to, and only discloses, processing “multi-term search queries”
where “[t]he search query comprises a prefix substring of each of at least two words relating to
the desired item.” (’696 patent col. 1 ll. 27–31; col. 3 ll. 14–16.)
And while dependent claims 5, 6, 19, and 20 refer to “entry of a plurality of overloaded
keys corresponding to one or more words in an [ordered/unordered] format” (Id. col. 8 ll. 35–40;

30

col. 9 ll. 45–50), these claims are intended to distinguish between “ordered” and “unordered.”
Moreover, claim differentiation is a presumption that may be rebutted. See, e.g., Regents of
Univ. of Cal. v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1375 (Fed. Cir. 2008) (“[T]he
presumption created by the doctrine of claim differentiation is ‘not a hard and fast rule and will
be overcome by a contrary construction dictated by the written description or prosecution
history.’”) (quoting Seachange Int’l, Inc. v. C–COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)).
In sum, the ’696 patent specification, “the single best guide to the meaning of a disputed
term,” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), consistently
describes “a prefix substring of each of at least two words,” even going so far as to describe “the
present invention” as related to “multi-term search queries.” See Honeywell Int’l, Inc. v. ITT
Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that when a patentee uses the phrases
“‘this invention’ or ‘the present invention’ . . . the public is entitled to take the patentee at his
word”).
Accordingly, the Court construes “the second overloaded key forming a string with the
first overloaded key” term as “the second overloaded key forming with the first overloaded key a
prefix substring of each of at least two words.”
6.

“Subspace Categories” and “Relevance Bias Value”

Claims 1 and 16 of the ’034 patent require “the terms associated with the items being
organized into searchable subspace categories, each subspace category having a relevance bias
value.” (’034 patent col. 10 ll. 43–46; col. 12 ll. 22–24.)

31

i.

“Subspace Categories”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

subspace
categories

’034 Patent
Claims 1 &
16

categories of
subspace terms

categories of terms, such as TV channel
terms, TV show terms, TV cast terms,
movie name terms, and movie cast terms

Though Rovi proposes a construction for this term, it argues in its reply that the term
“requires no construction because it has a plain and ordinary meaning.” (Dkt. No. 293 at 11.)
Comcast’s non-exhaustive list of examples of “categories of terms” is taken from the
specification, specifically the disclosure of Figure 7. (Dkt. No. 288 at 34.) But to the extent that
Comcast’s proposed construction alters the plain and ordinary meaning of the term, it must
demonstrate lexicography or disavowal. It argues neither. Instead, it appears that Comcast seeks
merely to introduce a construction that may aid the trier of fact.
Where, as here, the term has a plain and ordinary meaning that is readily apparent, the
Court need not provide a construction. As such, the Court affords “subspace categories” its plain
and ordinary meaning.
ii.

“Relevance Bias Value”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

relevance
bias value

’034 Patent
Claims 1 &
16

value based on the preference
of one subspace relative to
one or more of the other
subspaces

a subspace-specific value that
causes certain subspace results to
have a higher relevance than
other subspaces

The specification notes that “the biasing of one subspace over another refers to the
relative preferential position of subspaces by boosting or suppression.” (’034 patent col. 8 ll. 30–
32.) The “bias causes certain subspace results to have a higher relevance than other subspaces”

32

(id. col. 7 ll. 36–37 (emphasis added)), but Rovi’s definition more accurately describes what the
term is, as opposed to its effect.
The Court, therefore, construes “relevance bias value” as “value based on the preference
of one subspace relative to one or more of the other subspaces.”
E.

’864 Patent Claim Terms

The ’864 patent, titled “Method and Apparatus for Displaying Television Program and
Related Text,” covers a method and system for displaying an electronic program guide. It
creates a method and system through which a television viewer can continue to watch a program
while also scrolling through a program listing to view other available programs. To accomplish
this, the ’864 patent is directed to dividing the television screen into three areas: program
listings, program description, and the currently broadcast program.
1.

“Display[ing] of Television Program Listings” and “Display[ing] a
Detailed Program Description”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

displaying /
display of a
plurality of
television
program listings

’864 Patent
Claims 1,
6, 10, & 16

no construction
necessary, plain and
ordinary meaning

displaying / display of the
plurality of television program
listings such that the textual
information is arranged on the
screen so none of it is covered
by the television program

displaying /
display of . . . a
detailed program
description

’864 Patent
Claims 1,
6, 10, & 16

See construction of
“detailed program
description”; otherwise,
no construction
necessary, plain and
ordinary meaning

displaying / display of the
detailed program description
such that the textual information
is arranged on the screen so
none of it is covered by the
television program

The parties dispute whether the term “display of a . . . program” in the claims of the ’864
patent requires that the program being displayed not overlap with the textual information being
displayed. The plain and ordinary meaning of the term “display” does not limit the term to non33

overlapping instances. See Phillips, 415 F.3d at 1312–13; Alloc, 342 F.3d at 1368. And in
patent law, “[t]here is a heavy presumption that claim terms are to be given their ordinary and
customary meaning.” Shire Pharm., 839 F.3d at 1118 (quoting Aventis Pharm., 715 F.3d at 1373
(Fed. Cir. 2013) (internal quotation marks omitted)).
Comcast’s primary argument for construing the term to include this limitation comes
from the patent’s specification, which teaches in the Summary of the Invention:
According to the invention, the moving images of a television
program are displayed in a PIP window on the screen of a television
monitor and textual information related to the television program is
displayed in the background on the screen. Preferably, the audio
portion of the television program displayed in the PIP window is
also reproduced by the sound system of the television monitor. The
textual information is arranged on the screen so none of it is covered
by the moving images.
(’864 patent col. 2 ll. 6–14 (emphases added).) Comcast argues that the last sentence limits the
claims as it is in a paragraph purporting to describe “the invention.” (See Dkt. No. 288 at 35–36
(citing Regents of Univ. of Minnesota, 717 F.3d at 936).) Rovi points to the second sentence of
the above-quoted passage, which describes a preferred embodiment, to argue that the relied-upon
language does not limit the claims or describe the invention as a whole. (See Dkt. No. 293 at 15–
16.)
The patentee did not deliberately act as his own lexicographer in this section. This
disclosure notes that, “[a]ccording to the invention,” the program is displayed in a picture-inpicture (“PIP”) window on the screen “and textual information related to the television program
is displayed in the background.” (’864 patent col. 2 ll. 6–14.) This does not evidence an
intention by the patentee to disclaim embodiments in which the text is partially covered by the
program image, as Comcast argues. The patentee then describe a preferred embodiment, in
which the audio of the program continues to play and then notes that the textual information “is

34

arranged on the screen so none of it is covered by the moving image.” (Id.) Had the patentee
clearly intended to limit the invention, as Comcast argues, he could have switched the second
and third sentences or otherwise conveyed a clear intent to do so. Given the high standard to
demonstrate lexicography or disavowal, see Thorner, 669 F.3d at 1365–66, the Court does not
construe this as a deviation from the plain and ordinary meaning of the claim term.
Comcast also relies on other passages in the specification, including the Abstract, which
describe the text as uncovered by the image. (See, e.g., ’864 patent at Abstract (“All the text of
the background information lies outside the PIP window.”); id. col. 6 ll. 25–26 (“PIP window 42
does not cover up any of the information of background area 40”). Yet at oral argument, counsel
for Comcast conceded that “it’s not entirely clear” whether the embodiment of the invention
pictured in Figure 9 of the patent discloses video on top of text or vice versa. Oral Arg. at
114:22–115:1.
Accordingly, the Court affords “displaying / display of a plurality of television program
listings” its plain and ordinary meaning.
2.

“Detailed Program Description”

Term

Claim(s)

Rovi’s Proposed Construction

Comcast’s
Proposed
Construction

detailed
program
description

’864 Patent
Claims 1, 6, 9,
10, & 16

description of a program
including information in addition
to the program title

Indefinite

Comcast argues that the term “detailed program description” is indefinite.
“Definiteness requires clarity, though ‘absolute precision is unattainable.’” Mentor
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1290 (Fed. Cir. 2017) (quoting Nautilus, 134
S. Ct. at 2129). “When a ‘word of degree’ is used, the court must determine whether the patent

35

provides ‘some standard for measuring that degree.’” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quoting Enzo Biochem, 599 F.3d at 1332). As described
earlier, in Sonix Technology, for example, the Federal Circuit found the phrase “visually
negligible” definite based on examples from the specification and prosecution history. 844 F.3d
at 1379–80.
The term “detailed” is a word of degree. The term is found only in the claims of the ’864
patent, while the written description discloses a “brief program description.” (See, e.g., ’864
patent col. 5 ll. 39–40.) Comcast posits that “[t]he patent cannot ‘inform, with reasonable
certainty’ the meaning of ‘detailed’ by consistently describing something as ‘brief.’” (Dkt. No.
288 at 37 (quoting Nautilus, 134 S. Ct. at 2124).)
The term “near” informs a person of ordinary skill in the art about the scope of the
invention with reasonable certainty. First, the Court agrees with Rovi’s expert Dr. Balakrishnan
that a program description can be both brief and detailed. (Dkt. No. 295 ¶ 14.) Second, the
patentee provides examples of program descriptions throughout the ’864 patent that are sufficient
to demonstrate the meaning of “detailed program description” to a POSITA. For example, the
’864 patent explains that “[p]referably, two levels of detail are available for the program
description” (’864 patent col. 6 ll. 59–60), and provides multiple figures that elucidate the scope
of a detailed program description (see id. Figures 2–5, 16–18, 21, 33–35). As to Figure 2, for
example, the patent describes area 44 as “Program description area 44” and explains that it
“includes the start time and length (duration) of the program being described.” (’864 patent col.
5 ll. 15–19.) The “detailed program description” contemplated by the patent provides
information describing the program.

36

Because one skilled in the art would understand the scope of the term based on examples
from the specification, the Court holds that the claim term “detailed program description” is not
indefinite. Because the term is simple to understand, the Court affords the term its plain and
ordinary meaning.
3.

“Electronic Program Guide” and “Tuner”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

electronic
program
guide

’864 Patent
Claims 1, 6,
& 10

no construction
an application that causes the display of a
necessary, plain and set of screen displays, at least one of them
ordinary meaning
presenting schedule information for
television programs, and at least one
screen display being responsive to user
input

tuner

’864 Patent
Claims 1, 6,
10, & 16

no construction
an electronic circuit used to selectively
necessary, plain and receive RF signals in a desired frequency
ordinary meaning
channel

Comcast’s proposed construction is premised, in part, on constructions provided to
similar terms in different patents. (Dkt. No. 288 at 38–39 (citing United Video Props., 2012 WL
2370318, at *4-5, *13; Dkt. No. 291-11 at 41–42.) Though Comcast’s construction contains a
number of limitations, the parties’ briefing is primarily focused on whether the “electronic
program guide” is an “application.”
The patent describes an electronic program guide as a “schedule of program listings”
“stored in an electronic memory,” which is “recalled from memory by the viewer on command
for display on the television screen.” (’864 patent col 1 ll. 51–54.) “The formats of the
electronic program guide are shown in FIGS. 2 to 5.” (Id. col. 5 ll. 9–10.) The claims are
directed to a “method for displaying an electronic program guide.” (See id. col. 22 l. 15; id. col.
22 l. 50; id. col. 23 l. 17.) Contrary to Comcast’s proposed construction, the patent’s treatment
of “electronic program guide” is inconsistent with the concept of an “application.” While
37

“applications” may be “stored in an electronic memory” and “recalled,” Comcast provides no
explanation for how the “format of the [application] is shown” in Figures 2–5 or how the
application is “displayed” by the claimed methods.
Accordingly, the Court affords the term “electronic program guide” its plain and ordinary
meaning.
As to “tuner,” the parties dispute whether it is properly construed as an “electronic
circuit.” For the reasons discussed in relation to the ’595 patent above, the Court adopts
Comcast’s proposed construction. Accordingly, the Court construes “tuner” as “an electronic
circuit used to selectively receive RF signals in a desired frequency channel.”
4.

“Substantially All of a Currently Broadcast Television Program”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

substantially all of a
currently broadcast
television program

’864 Patent
Claims 6 &
10

no construction
necessary, plain and
ordinary meaning

most of the essential
information of the television
program including the center
part of its image

Comcast’s proposed construction for this term is taken from statements made by the
patentee during the prosecution of a continuation application. The Federal Circuit has clarified
that “prosecution disclaimer may arise from disavowals made during the prosecution of ancestor
patent applications.” Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003).
That is, “[w]hen multiple patents derive from the same initial application, the prosecution history
regarding a claim limitation in any patent that has issued applies with equal force to subsequently
issued patents that contain the same claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192
F.3d 973, 980 (Fed. Cir. 1999).

38

Here, Comcast relies on the prosecution history of Application No. 11/064,219 (“the ’219
patent”). This patent claims priority to, and shares the same title, specification, and inventors
with, the ’864 patent. The Patent Office initially rejected the claims because the term
“substantially” was “not defined” and “one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention.” (Dkt. No. 291-34 at 8.) In response, the patentee
expressly defined that term: “[T]he phrase ‘substantially all of an image’ refers to a displayed
image that ‘generally convenes most of the essential information of the television program.’”
(Id.) The patentee relied on the specification’s disclosure that, when the image is obscured, “this
results in loss of part of the picture of the television program. But, the remainder of the picture,
which is the center part of the image, together with the sound portion thereof generally convenes
most of the essential information of the television program.” (Id.) Based on this disclosure, “a
person of ordinary skill would be reasonably apprised of the meaning of term ‘substantially’ and
the scope of the claimed invention.” (Id.)
Rovi argues that this prosecution history should not apply to limit the scope of the ’864
patent because the claim language employed by the ’219 patent is different. The ’864 patent
claims a method for “simultaneously displaying in a second area of the screen substantially all of
a currently broadcast television program” (’864 patent col. 22 ll. 55–57), while the ’219 patent
claims a “means for displaying substantially all of an image output by the video signal tuner in a
video area of the video display.” (Dkt. No. 191-34 at 2). This is a distinction without a
difference because the Patent Office’s rejection of the claims of the ’219 patent for indefiniteness
applies with equal force to the ’865 patent, and Rovi does not argue otherwise.

39

Accordingly, the Court construes “substantially all of a currently broadcast television
program” as “most of the essential information of the television program including the center
part of its image.”
5.

“Plurality of [Television] Program Listings”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

plurality of
television program
listings / plurality of
program listings

’864 Patent
Claims 1, 4, 5,
6, 10, & 16

no construction
necessary, plain and
ordinary meaning

information identifying a
plurality of television
programs and including
schedule information

The parties dispute whether the claim term “plurality of television program listings” must
include “schedule information.” Comcast argues that “[t]he specification is replete with
teachings that the television program listings include scheduling information.” (Dkt. No. 288 at
40.) Yet Comcast’s proposed construction is inconsistent with a preferred embodiment of the
invention, at Figure 2, reproduced here:

The specification explains that “[t]he viewer can move a cursor 48 vertically to highlight one of
the program listings displayed in area 46.” (’864 patent col 5 ll. 19–20.) In Figure 2, the socalled program listings do not include scheduling information. Comcast’s proposed construction
40

is, therefore, inconsistent with a preferred embodiment. Because “an interpretation which
‘excludes a [disclosed] embodiment from the scope of the claim is rarely, if ever, correct,’”
Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir. 2013) (alteration in original)
(quoting Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013)),
the Court affords this term its plain and ordinary meaning.
G.

Indefiniteness Challenges
1.

Section 112(f)

The statute at 35 U.S.C. § 112(f) (2012) (formerly 35 U.S.C. § 112, ¶ 6), provides that
“[a]n element in a claim for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.” A claim limitation expressed in this fashion is commonly
referred to as a means-plus-function claim limitation. When a claim term is drafted in a manner
that invokes 35 U.S.C. § 112(f), it is referred to as means-plus-function claiming. This provision
“allows a patentee to express a claim limitation by reciting a function to be performed rather than
by reciting structure or materials for performing that function. Such a limitation is construed ‘to
cover the corresponding structure, materials, or acts described in the specification and
equivalents thereof.’” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir.
2003) (quoting 35 U.S.C. § 112, ¶ 6)).
In determining whether § 112(f) applies to a claim limitation, the Federal Circuit “has
long recognized the importance of the presence or absence of the word ‘means.’” Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). “[U]se of the word ‘means’
in a claim element creates a rebuttable presumption” that § 112(f) applies, while the failure to do

41

so creates a rebuttable presumption that § 112(f) does not apply. Id. “Merely because a named
element of a patent claim is followed by the word ‘means,’ however, does not automatically
make that element a ‘means-plus-function’ element.” Id. (quoting Cole v. Kimberly–Clark
Corp., 102 F.3d 524, 531 (Fed. Cir. 1996). Section 112(f) applies where “the words of the claim
are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure.” Id. “To determine whether a claim recites sufficient structure, ‘it is
sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art
to designate structure, even if the term covers a broad class of structures and even if the term
identifies the structures by their function.’” Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019
(Fed. Cir. 2017) (quoting TecSec, Inc. v. Int’l Bus. Machines Corp., 731 F.3d 1336, 1347 (Fed.
Cir. 2013)).

42

i.

“Interactive Program Guide Configured To . . .”

Term

Claim(s)

Rovi’s
Proposed
Construction

Comcast’s Proposed
Construction

user equipment having an
interactive television
program guide
implemented thereon, . . .
said interactive television
program guide configured
to: receive . . . ; store . . . ;
cause . . . ; receive . . . ;
receive . . . ; direct . . .”

’595
Patent
Claim 9

no construction
is necessary,
plain and
ordinary
meaning

This is a means-plus-function
limitation.
Function: receive television
programs and program schedule
information; store the program
schedule information in said
memory; cause said display device
to display a program guide
display; receive a user selection to
record, with said video recorder, a
first television program indicated
on said program guide display;
receive a user selection to view a
second television program
indicated on said program guide
display; and direct an output of
said first tuner of said first
television program selected to be
recorded to said video recorder
and an output of said second tuner
of said second television program
selected to be viewed to said
display device, such that said first
television program selected to be
recorded is recorded by said video
recorder at the same time that said
second television program
selected to be viewed is displayed
by said display device, and
wherein said set-top box includes
two tuners, one each for said video
recorder and said display device,
said two tuners comprising said
first tuner and said second tuner.
Structure: Indefinite under
§ 112(f)

Comcast argues that this limitation must be construed pursuant to § 112(f) “because it
does not connote sufficient structure for performing the claimed list of functions.” (Dkt. No. 288
43

at 46.) In that case, Comcast urges, the claim is indefinite for failure to recite a structure that
corresponds to the recited function. (See id. (“All that the term recites is an interactive television
program guide, which is not a structure.”).)
Rovi argues that this claim is not a means-plus-function claim under § 112(f) because it
recites “user equipment” as the apparatus that must include the structure recited in the claim.
(Dkt. No. 293 at 5.)
Without the use of the word “means” in the claims, there is a rebuttable presumption that
§ 112(f) does not apply. Williamson, 792 F.3d at 1348. And “where a claim recites a function,
but then goes on to elaborate sufficient structure, material, or acts within the claim itself to
perform entirely the recited function, the claim is not in means-plus-function format.” Sage
Prod., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997). To be sure, the claim
discloses functions, as recited in Comcast’s proposed construction. Just as clearly, the claim
articulates that this function is performed by an “interactive television program guide
implemented” on “user equipment.” Comcast has not rebutted the presumption that § 112(f)
does not apply because it has not shown that “user equipment” would not designate sufficient
structure to a POSITA. Claim 9 itself describes the “user equipment” as “comprising a display
device, a first tuner, a second tuner, a memory, a set-top box, and a video recorder.” (’595 patent
col. 31 ll. 51–53.) As such, the Court holds that § 112(f) does not apply, and affords this term its
plain and ordinary meaning.

44

ii.

“Set-Top Box with Control Circuitry Configured To . . .”

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed Construction

set-top box
with control
circuitry
configured to

’595
Patent
Claim 9

no construction is
necessary, plain
and ordinary
meaning

§ 112 ¶6
Function: “generate for display a display
item having a first program function, wherein
the first program function is based on a nonmarkup language, and the first program
function is preprogrammed on the set-top
box; receive a markup language document
from a remote source; interpret the markup
language document to determine that the
markup language document assigns a second
program function to the display item; update
the set-top box based on the markup
language document such that the display item
has the second program function; and
generate for display, the display item having
the second program function.
Structure: Indefinite under § 112(f).

Comcast argues that § 112(f) applies to this claim term, as “control circuitry” does not
connote any definite structure and is no different from reciting a general purpose computer.
(Dkt. No. 288 at 47.) Rovi points out that Comcast overlooks the recitation of the “set-top box”
as the apparatus that must include the structure recited in the claim. (Dkt. No. 293 at 5–6.)
Because there is a rebuttable presumption that § 112(f) does not apply—the word “means” is not
used—and because the claim recites “set-top box”—which designates structure to a POSITA—
§ 112(f) does not apply. As such, the Court affords this term its plain and ordinary meaning.

45

iii.

“Processor for Performing . . .”

Term

Claim(s)

Rovi’s Proposed Comcast’s Proposed
Construction
Construction

processor for performing a
first incremental find … for
ordering one or more items
found in the first incremental
find … for performing a
second incremental find …
for ordering one or more
items found in the second
incremental find . . .

’034
Patent
Claim 16

no construction
is necessary,
plain and
ordinary
meaning

This is a means-plus-function
limitation.
Function: performing a first
incremental find, ordering
one or more items found in
the first incremental find,
performing a second
incremental find, ordering
one or more items found in
the second incremental find.
Structure: A general purpose
CPU processor implementing
the algorithm disclosed in
8:36-9:25.

The parties dispute the law applicable in this case. As explained in Williamson, the
Federal Circuit has “traditionally held that when a claim term lacks the word ‘means,’ the
presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that
the claim term fails to ‘recite[ ] sufficiently definite structure’ or else recites ‘function without
reciting sufficient structure for performing that function.’” 792 F.3d at 1348 (emphasis added)
(quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Comcast does not dispute that “processor” is a structure; rather, it argues that, as a
structure, it is insufficient to perform the function required by the claims (i.e., performing an
incremental find and ordering the results). Rovi argues that if there is a sufficiently definite
structure in the claims, “the inquiry ends and § 112(f) does not apply.” (Dkt. No. 293 at 12.) In
particular, Rovi argues, the clause that follows “or else” in Williamson “is used to say what will
happen if something is not done—i.e., in cases where functional claim language fails to ‘recite

46

sufficiently definite structure,’ courts may consider whether the claims recite ‘function without
reciting sufficient structure for performing that function.’” (Dkt. No. 293 at 12 n.8.)
Rovi’s reading of Williamson is inconsistent with the ordinary usage of the phrase “or
else,” which is typically used to introduce an alternative. The en banc Federal Circuit in
Williamson twice recited this standard, 792 F.3d at 1348–49, and nowhere indicated that “or
else” should take on Rovi’s proposed meaning: namely, that we turn to the second test only if the
first test is not met.
As such, though Comcast has conceded that “processor” has a sufficiently definite
meaning, “this does not end the Williamson analysis.” GoDaddy.com, LLC v. RPost Commc’ns
Ltd., No. 14 Civ. 126, 2016 WL 212676, at *56 (D. Ariz. Jan. 19, 2016), aff’d, No. 2016-2335,
2017 WL 1829147 (Fed. Cir. May 5, 2017). Under Williamson, § 112(f) will apply—even
though the patentee did not use the term “means”—if the claim “recites ‘function without
reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1349
(quoting Watts, 232 F.3d at 880). Here, the claim term at issue provides that the “processor” is
“for performing a first incremental find . . . and for ordering one or more items found in the first
incremental find” and “also for performing a second incremental find . . . for ordering one or
more items found in the second incremental find.” (’034 patent col. 12 l. 32–col. 13 l. 1.)
As taught by Comcast’s expert, Dr. Kelly, off-the-shelf processors cannot perform the
claimed incremental find and ordering functions of claim 16. (Dkt. No. 290 ¶¶ 23–24.) That is,
“[b]ecause the patent calls for a processor to perform more than a general function, an algorithm
is required.” Velocity Patent LLC v. Mercedes-Benz USA, LLC, No. 13 Civ. 8413, 2016 WL
5234110, at *6 (N.D. Ill. Sept. 21, 2016) (citing EON Corp. IP Holdings LLC v. AT&T Mobility
LLC, 785 F.3d 616, 623 (Fed. Cir. 2015)) (“A microprocessor or general purpose computer lends

47

sufficient structure only to basic functions of a microprocessor. All other computer-implemented
functions require disclosure of an algorithm.”)). Rovi does not dispute that the finding and
ordering functions of the patent are not typical functions found in a general purpose processor.
The Court concludes that the term “processor” as used in claim 16 is a term that a
POSITA would not understand as having sufficient structure for performing the recited functions
of “performing a[n] . . . incremental find . . . and for ordering one or more items found in
the . . . incremental find.” Therefore, § 112(f) applies. See Velocity Patent, 2016 WL 5234110,
at *6; GoDaddy.com, 2016 WL 212676, at *56.
“In construing a means-plus-function claim, the district court must first determine the
claimed function and then identify the corresponding structure in the written description of the
patent that performs that function.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316
(Fed. Cir. 2010). Here, the claimed function is “performing a[n] . . . incremental find . . . and for
ordering one or more items found in the . . . incremental find.” Comcast notes that “[t]he only
disclosed structure that comes close to describing how to perform these functions is the
algorithmic structure described in the specification at 8:36–9:25.” (Dkt. No. 288 at 48.)
Comcast also notes that an “algorithmic structure may be found at 6:6–42 and Figure 4,” though
it may fail to teach certain ranking function of the claim. (Dkt. No. 288 at 49 n.33.) Rovi does
not direct the Court to any portion of the specification that recites a corresponding structure that
performs the claimed function.
Accordingly, the Court adopts Comcast’s proposal: this claim term is limited to the
algorithmic structures found in the specification of the ’034 patent.

48

2.

Mixed Statutory Classes

Term

Claim(s)

Rovi’s Proposed
Construction

Comcast’s Proposed
Construction

wherein a set-top
box includes two
tuners

’595 Patent
Claims 1 & 17

no construction is necessary,
plain and ordinary meaning

indefinite

Claim 1 of the ’595 patent is a method claim; Claim 17 is a Beauregard claim. “A
Beauregard claim—named after In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)—is a claim to
a computer readable medium (e.g., a disk, hard drive, or other data storage device) containing
program instructions for a computer to perform a particular process.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). The Federal Circuit has instructed
that Beauregard claims, such as claim 17, are treated as method claims. See Digital-Vending
Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1276 n.1 (Fed. Cir. 2012) (Beauregard
claims “should be treated as method claims to avoid ‘exalt[ing] form over substance’” (quoting
CyberSource, 654 F.3d at 1374)).
Pursuant to 35 U.S.C. § 112, ¶ 2, a single claim combining “two separate statutory
classes of invention,” such as “an apparatus and a method of using that apparatus,” is indefinite
as “not sufficiently precise to provide . . . an accurate determination of the ‘metes and bounds’ of
protection involved.” IPXL Holdings, 430 F.3d at 1384 (quoting Ex Parte Lyell, 17 U.S.P.Q.2d
1548, 1550–51 (P.T.O. Aug. 16, 1990) (internal quotation marks omitted)); see also Manual of
Patent Examination Procedure (“MPEP”) § 2173.05(p)(II) (“A single claim which claims both an
apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or
pre-AIA 35 U.S.C. 112, second paragraph.”).
Comcast argues that claims 1 and 17 are both indefinite for inclusion of the phrase
“wherein a set-top box includes two tuners,” which describes an apparatus but is located in the

49

method claims. (Dkt. No. 288 at 49–50.) Specifically, Comcast argues that “it is unclear
whether infringement occurs when one practices each step of the method or whether one must
also create a set-top box having two tuners.” (Id. at 50.)
Rovi argues that inclusion of the phrase “wherein a set-top box includes two tuners”
simply “limits the method to being practiced only within this environment.” (Dkt. No. 293 at 6.)
That is, infringement occurs when one practices each step of the methods described in claims 1
and 17. These methods are directed to controlling two tuners within the disclosed structure—a
set-top box with two tuners.
The Federal Circuit has explained that a finding of indefiniteness for claims that contain
two separate statutory categories of invention is premised on “the lack of clarity as to when the
mixed subject matter claim would be infringed.” Microprocessor Enhancement Corp. v. Texas
Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Here, there is no such ambiguity as to
claims 1 and 17 of the ’595 patent. These claims are limited to practicing the claimed method on
a set-top box with two tuners. The inclusion of the phrase “wherein a set-top box includes two
tuners” provides context and simply limits the claimed method to being practiced in the disclosed
environment.

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IV.

Conclusion
For the foregoing reasons, the Court adopts the constructions set forth in this Opinion.
The Court also adopts the constructions of the “Agreed Terms” as detailed in the parties’

Third Amended Joint Claim Terms Chart. (See Dkt. No. 306-1.)
SO ORDERED.
Dated: August 10, 2017
New York, New York
____________________________________
J. PAUL OETKEN
United States District Judge

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