Personalized Media Communications, LLC v. Samsung Electronics America, Inc. et al
Filing
110
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/25/2016. (ch, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PERSONALIZED MEDIA
COMMUNICATIONS, LLC
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§
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Plaintiff,
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v.
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Case No. 2:15-cv-01366-JRG-RSP
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(Lead)
APPLE, INC.,
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Defendant.
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______________________________________ §
§
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PERSONALIZED MEDIA
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COMMUNICATIONS, LLC
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§
Plaintiff,
§
§
v.
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Case No. 2:15-cv-01206-JRG-RSP
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(Consolidated)
TOP VICTORY ELECTRONICS
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(TAIWAN) CO. LTD., ET AL.,
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Defendants.
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_____________________________________________________________________________
PERSONALIZED MEDIA
COMMUNICATIONS, LLC
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§
§
Plaintiff,
§
§
v.
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SAMSUNG ELECTRONICS AMERICA, INC.§
and SAMSUNG ELECTRONICS CO., LTD. §
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Defendants.
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1
Case No. 2:15-cv-01754-JRG-RSP
MEMORANDUM OPINION AND ORDER
On September 23, 2016, the Court held a hearing to determine the proper construction of
the disputed terms in six patents. The Court has considered the parties’ claim construction
briefing (Dkt. Nos. 69, 78, 196 and 83) 1 and arguments. Based on the intrinsic and extrinsic
evidence, the Court construes the disputed terms in this Memorandum Opinion and Order. See
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831 (2015).
BACKGROUND AND THE ASSERTED PATENTS
Personalized Media Communications, (“PMC”) brought multiple actions alleging patent
infringement. One action was brought against Apple, Inc. (“Apple”). Another action was brought
against Top Victory Electronics (Taiwan) Co. Ltd., TPV Int’l (USA), Inc., Envision Peripherals,
Inc., Top Victory Electronics (Fujian) Co. Ltd., TPV Electronics (Fujian) Co. Ltd., TPV
Technology Ltd., Hon Hai Precision Industry (Taiwan) Co., Ltd., Wistron Corp., Wistron
Infocomm Technology (Texas) Corp., Wistron Infocomm Technology (America) Corp., and
Vizio (collectively, “Vizio”). Those two actions have been consolidated for pre-trial purposes.
Further, the claim construction terms in those two actions has been separated into two phases.
This Court has already issued an Opinion and Order on the Phase 1 terms (“Phase 1 Order”). 2
Resolution of the Phase 2 terms is provided in this Opinion and Order. Apple is not a participant
in the Phase 2 dispute. A third action was brought against Samsung Electronics America, Inc.
1
The docket numbers referenced herein generally reference the docket numbers in Case No.
2:15-cv-01754-JRG-RSP. However, the Vizio briefing (Dkt. No. 196) is from Case No. 2:15-cv01366-JRG-RSP (Lead).
2
The Phase 1 Order is found in Case No. 2:15-cv-01366-JRG-RSP (Lead).
2
and Samsung Electronics Co., Ltd. (collectively “Samsung”). 3 In addition to the Phase 2
disputes, this order addresses the Samsung action claim construction disputes.
This Opinion and Order includes the construction of terms found in six patents: U.S.
Patent Nos. 7,747,217 (“’217 Patent”), 7,752,649 (“’2,649 Patent”), 7,752,650 (“’650 Patent”),
7,856,649 (“’6,649 Patent”), 8,675,775 (“’775 Patent”), and 8,711,885 (“’885 Patent”)
(collectively, “the Asserted Patents”). The ’2,649 Patent is also asserted against the Apple. The
’2,649 Patent claim terms that overlap both actions are included in the Phase 1 construction.
Some disputed terms addressed herein relate to both the Samsung and Vizio actions, some relate
to only the Samsung action and some relate to only the Vizio action.
The Asserted Patents are part of patent family which has extensive prosecution and
litigation history, including multiple prior litigations, reexaminations and IPRs. The Asserted
Patents were originally filed in May and June 1995 and are part of a chain of continuation
applications filed from U.S. Patent 4,965,825 (“the ’825 Patent). The ’825 Patent issued from an
application filed in 1987. The ’825 Patent was a continuation-in-part application of another
application first filed in 1981 (now U.S. Patent No. 4,694,490). 4
The disputed terms fall into 33 term groupings. A discussion of the technology of the
Asserted Patents is found in the Phase 1 Order.
LEGAL PRINCIPLES
“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 v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
3
Vizio and Samsung are collectively referred to as “Defendants.”
For citations to the 1981 specification the parties cite to the ’490 Patent. For citations to the
1987 specification, citation is generally made to the ’217 Patent.
4
3
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—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. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[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) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
4
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the
court in interpreting the meaning of disputed claim language, particular embodiments and
examples appearing in the specification will not generally be read into the claims.’” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
5
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary fact finding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
A. Departing from the Ordinary Meaning of a Claim Term
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
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either in the specification or during prosecution.” 5 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.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”). “Where an applicant’s statements
are amenable to multiple reasonable interpretations, they cannot be deemed clear and
unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir.
2013).
5
Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
7
B. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 6
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
AGREED TERMS
The parties agreed to the following constructions in the Joint Claim Construction Chart
with regard to terms in dispute amongst PMC, Vizio and Samsung.
6
Because the application resulting in the patent was filed before September 16, 2012, the
effective date of the AIA, the Court refers to the pre-AIA version of § 112.
8
Agreed Construction Between PMC
and Vizio and Between PMC and Samsung
a device that performs operations according to
instructions
Term
processor
(’2,649 Patent claims 1, 26, 27, 28, 29, 39, 48,
49, 50, 62, 64, 67, 78, 85, 92, 93, 94, and 97;
’650 Patent claims 1, 18, 32; ’6,649 Patent
claim 9; ’775 Patent claims 2 and 11; ’885
Patent claims 1, 9 and 23)
Preambles of ’2,649 Patent claims 78, ’6,649
Patent claim 9, ’885 Patent claims 1, 9, and
105, ’650 Patent claims 1 and 18, ’775 Patent
claims 2 and 11
inputting logic
The preamble is limiting. 7
This term does not require construction beyond
its plain and ordinary meaning.
(’6,649 Patent claim 9)
embedded signal[s]
signals that are enclosed within or made an
integral part of a transmission
(’885 Patent claim 1)
embedded data [on said information
transmission]
data that is enclosed within or made an integral
part of said information transmission
(’885 Patent claim 9)
(Dkt. No. 85 at 1, 22-24; Dkt. No. 91 at 2-3.)
PMC and Vizio agreed to the following constructions in the Joint Claim Construction
Chart with regard to terms in dispute amongst PMC and Vizio only.
Agreed Construction As
Between PMC and Vizio
This term does not require construction beyond
its plain and ordinary meaning.
Term
inputting logic into said processor or computer
(’6,649 Patent claim 9)
generates information based on said second
medium based on said identifying content of
said second medium
This term does not require construction beyond
its plain and ordinary meaning.
(’217 Patent claim 38)
broadcast [transmission]
an over-the-air transmission from one location
to multiple locations
(’775 Patent claim 5; ’885 Patent claims 1, 10,
7
The parties’ final joint claim construction chart further provides the parties’ agreed statements
as to why each particular preamble is limiting. (Dkt. No. 85 at 22-24.)
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105 and 106)
cablecast [transmission]
a transmission over hard-wire from one
location to multiple locations
(’775 Patent claim 5; ’885 Patent claims 1, 11,
105 and 106)
(Dkt. No. 212 at 7-9.)
PMC and Samsung agreed to the following constructions in the Joint Claim Construction
Chart with regard to terms in dispute amongst PMC and Samsung only.
Term
programming [noun]
(’2,649 Patent claims 1, 39, 48, 49, 63, 67, 78,
92, and 93, ’6,649 Patent claims 9 and 10, ’775
Patent claim 13)
digital video signals
Agreed Construction As
Between PMC and Samsung
(noun) everything that is transmitted
electronically to entertain, instruct, or inform,
including television, radio, broadcast, print,
and computer programming as well as
combined medium programming
video signals encoded as discrete numerical
values instead of an analog representation
(’2,649 Patent claim 62, ’650 Patent claim 18)
(Dkt. No. 85 at 34, 44.)
Several terms were not presented in the parties’ final claim construction charts but were
noted in the claim construction briefing to be agreed terms:
Construction
Term
setting a visible background color at some or
all of said memory
(’650 Patent claim 4)
mass medium programming
(’885 Patent claims 9 and 14)
whereby the decoder is capable of decoding
no construction necessary
(Agreed between PMC, Samsung and Vizio)
(Dkt. No. 69 at 27-28; Dkt. 78 at 24; Dkt. 196
at 19)
everything that is transmitted electronically to
entertain, instruct or inform, including
television, radio, broadcast print, and computer
programming as well as combined medium
programming, designed for multiple recipients
(Agreed between PMC and Vizio)
(Dkt. No. 69 at 37; Dkt. No. 196 at 25)
no construction necessary
10
and transferring, based on the control signal
(Agreed between PMC and Vizio)
(Dkt. No. 69 at 42; Dkt. 196 at 29)
(’775 Patent claim 2)
DISPUTED TERMS
1. “processor instruction[s]” (’217 Patent claims 1 and 38, ’775 Patent claim 18)
PMC
Commands or program codes that are
executed by, or enabling information that
instructs, a processor to perform operations.
Vizio & Samsung Defendants
No construction necessary. If construction is
necessary: Commands that are executed by a
processor to perform operations.
The central dispute is that, in addition to commands, PMC asserts that the term also
encompasses information that instructs a processor to perform an operation (i.e., the processor is
preconfigured to respond to some information).
Positions of the Parties
PMC contends that the term also includes a processor that is preconfigured to perform an
operation, needing only an “instruction” to begin doing so. PMC points to: “Microcomputer,
205, is preprogrammed to respond in a predetermined fashion to instruction signals embedded in
the ‘Wall Street Week’ programming transmission.” ’490 Patent 19:42-44. PMC objects to
Defendants’ construction as not encompassing this scenario. PMC contends that Defendants
argue that “instruction signals” and “processor instructions” are distinct. PMC contends that the
Defendants’ distinction excludes signals that trigger the execution of commands by the
processor. (Dkt. No. 83 at 1.) PMC contends that the specification does not make such a fine
distinction and points to the statement: “the microcomputer at each subscriber station . . . is
preprogrammed . . . to operate in a predetermined fashion or fashions in response to said initial
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instructions.” ’217 Patent 13:2-7. PMC contends that only its construction includes instructions
that may cause a processor to perform preprogrammed operations. (Dkt. No. 83 at 1.)
Vizio contends that there is no support for “program codes” or “enabling information” as
used by PMC. Vizio contends that “enabling information” is not used in the specification and
that the citation provided by PMC contradicts PMC’s assertion. More particularly, Vizio
contends that the specification at ’490 Patent 19:42-44 teaches that the processor is
preprogrammed with “processor instructions” that are executed by the processor in response to
“instruction signals.” (Dkt. No. 196 at 1.)
Samsung contends the term is well known in the art. Samsung contends that it is unclear
what “program codes” are and, thus, PMC adds uncertainty to the construction. Samsung also
objects to PMC’s inclusion of instructions that trigger execution of commands by a processor.
Samsung contends that the passages cited by PMC indicate that signals can trigger the execution
of instructions at the processor, but do not equate “instruction signals” with “processor
instructions.” Samsung contends that PMC relies on a circular notion that an instruction to
process instructions is included in “processor instructions.” (Dkt. No. 78 at 1-2.)
As to “program code,” PMC points to: “The term ‘signal unit’ hereinafter means one
complete signal instruction or information message unit. Examples of signal units are a unique
code identifying a programing unit, or a unique purchase order number identifying the proper use
of a programing unit, or a general instruction identifying whether a programing unit is to be
retransmitted immediately or recorded for delayed transmission.” ’490 Patent 2:64-3:3.
The parties did not argue this term at the oral hearing.
12
Analysis
The specification describes an example in which instruction signals are provided to a
microcomputer to activate preprogrammed
functionality:
“Microcomputer, 205, is
preprogrammed to respond in a predetermined fashion to instruction signals embedded in the
‘Wall Street Week’ programming transmission.” ’490 Patent 19:42-44. Further, though not
mentioning “instruction signals,” elsewhere, the specification describes the microcomputer being
preprogrammed to evaluate “initial instructions” and operate in accordance with the initial
instructions: “the microcomputer at each subscriber station (including microcomputer, 205) is
preprogrammed (1) to evaluate particular initial instructions in each distinct series of received
input instructions to ascertain how to process the information of said series and (2) to operate in
a predetermined fashion or fashions in response to said initial instructions.” ’217 Patent 13:2-7. It
is clear from the specification that instructions may therefore merely activate preprogrammed
functionality. Defendants never affirmatively state that they contend their construction excludes
such embodiments. However, implicitly Defendants appear to take such a position. This
construction issue should be resolved. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1362 (Fed. Cir. 2008). The specification makes clear that the instructions may be
signals that activate preprogrammed functionality of the processor. ’490 Patent 19:42-44; ’217
Patent 19:42-44. PMC’s use of “program codes” does not, however, add clarity and only
interjects ambiguity. The specification use of “signals” is clear.
The Court construes “processor instruction[s]” to mean “commands or signals that
are executed by, or instruct, a processor to perform operations.”
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2. Programming Terms
programming [verb] (’6,649 Patent claim 9, ’650 Patent claims 1, 18, and 32, ’2,649
Patent claims 2, 3, 11, 26, 37, 41 and 42)
PMC
[verb] Supplying or loading information or
instructions that are used to activate, enable,
or perform a processing functionality.
Vizio & Samsung Defendants
[verb] Providing a sequence of operating
instructions.
programmable [control] processor[s] (’885 Patent claim 102)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio & Samsung Defendants
[Control] processors that can be provided
with a sequence of operating instructions.
The parties primarily dispute whether programming includes “loading information” to
“activate” or “enable” preprogrammed operations or is limited to the use of operating
instructions.
Positions of the Parties
PMC contends that the term includes both providing a device with executable instructions
and a second scenario in which the term also include “loading information” to “activate” or
“enable” preprogrammed operations. (Dkt. No. 69 at 2.) PMC points to: “[b]y preprogramming
subscriber station apparatus with information for processing length token information, the
present invention enables said apparatus to determine the particular information bit . . . .” ’217
Patent 32:5-8.
As to “programmable [control] processor[s],” PMC notes that it sought to include
“instructions” in PMC’s Phase 1 proposed construction for “processor.” PMC notes that the
Court’s Phase 1 preliminary construction rejected “instructions.” PMC contends that assuming
the Court maintains such a position, the only issue presented relates to what is the meaning of
“programmable.” PMC contends this is the same issue as presented above for Term 1. PMC
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contends that as stated for that term, the issue is whether the term is limited to providing
executable code to the processor or whether the term further encompasses a second scenario,
instructing a processor to operate on preprogrammed instructions. (Dkt. No. 69 at 25.)
Vizio contends that during prosecution of the related U.S. Patent No. 7,783,252 (“the
’252 Patent”), PMC argued that “programming” can be defined as “a sequence of coded
instructions that can be inserted into a mechanism (as a computer).” (Dkt. 198 Ex. A at 21.)
Vizio contends that PMC relied on this definition to argue that prior art did not disclose a
“programmable device” because it lacked the “ability to be ‘programmed’ with… ‘coded
instructions.’” (Id.) As to PMC’s citation to ’217 Patent 32:5-8, Vizio contends that PMC
conflates “programming” operating instructions with “processing” information. Vizio contends
that PMC’s construction would broadly include, for example, inputting numbers into a processor
to enable multiplication of those numbers. (Dkt. No. 196 at 3.)
Samsung contends that PMC shifts focus from the meaning of “programming” to the
capability of what is being programmed. Samsung contends that the importance of the passage at
’217 Patent 32:5-8 is its disclosure of providing a sequence of operating instructions to the
apparatus. Samsung contends that PMC’s argument of a second scenario to activate or enable
processing is merely a hook for additional functionality that PMC attempts to graft into a
straightforward term. (Dkt. No. 78 at 3.) Samsung further points to the ’6,649 Patent file history.
Samsung contends that during prosecution, the applicants stated that the use of “programming” is
“consistent with normal / usual usage” and cited to a Webster’s dictionary definition. Samsung
reprints the argument:
15
Dkt. No. 78 Ex. A 10/10/2000 Amendment at 119. Samsung contends that this also conforms to
other dictionary evidence. (Dkt. No. 78 at 3-4.)
Samsung contends that “programmable [control] processor[s]” presents the same issue.
Samsung contends that it construes “programmable” consistent with the proper construction for
“programming.”
In reply, PMC contends that only its construction encompasses the second scenario of
providing instructions to the processor to invoke preprogrammed functionalities. PMC contends
that the portion of the file history cited by Samsung was referencing the noun version of
“programming.” (Dkt. No. 83 at 1-2.) PMC contends that PMC never suggested that the cited
definitions controlled the verb construction. PMC contends that Vizio’s file history suffers from
the same deficiency. PMC contends that the citation does not define the verb “programming,”
because the claim then at issue, claim 3, used the words “programming” and “programmable
16
device” separately. (Id. at 2). PMC further contends that, in any event, this portion of the file
history is not a disavowal because it dealt with a reference (Leventer) in which switches are used
to select transmission protocols. PMC contends that in prosecution, it merely stated that Leventer
did not allow “programming” of any type because it merely involved a switch to select
transmission protocols. (Dkt. No. 83 at 2.)
The parties did not argue these terms at the oral hearing.
Analysis
The Court finds Defendants’ arguments to be more persuasive. As to PMC’s contention
that a second scenario needs to cover sending signals to activate preprogramming of the
processor, it is the preprogramming which is “programming” not the signal that activates the
programming. Specifically, PMC points to the activation of preprogrammed functionality in the
specification and states that it is the act of activating the preprogramming that is programming.
However, the specification makes clear there is “preprogramming.” ’217 Patent 32:5-8. The
subsequent activation of that programming is not described in the specification as programming,
rather it is the programming ahead of time (“preprogramming”) that is the programming step. It
is clear, through the use of the term “preprogramming” itself, that the “preprogramming” is the
programming step. The act of providing subsequent activation signals to activate what has
already been programmed is not “programming.” Moreover, the specification conforms to the
prosecution history regarding the ordinary meaning of the term. In particular, PMC’s file history
statements support Defendants’ position and the dictionary evidence cited by PMC in
prosecution supports Defendants’ positions. (Dkt. No. 198 Ex. A at 21; Dkt. No. 78 Ex. A at
119.) Further, PMC’s construction is so broad as it would cover the prior art Leventer reference,
which PMC contended in prosecution, and now still contends, did not allow “‘programming’ of
17
any type.” (Dkt. No. 83 at 2.) Specifically, a switch such as in Leventer may be considered to
provide a signal (information) to activate a desired processing functionality.
The Court construes programming [verb] to mean “providing a sequence of
operating instructions.” The Court construes “programmable [control] processor[s]” to
mean “[control] processors that can be provided with a sequence of operating
instructions.”
3. media / medium (’217 Patent claims 1, 30, 31, and 38)
PMC
Forms of electronically transmitted
programming, such as audio, video, graphics,
text, and/or computer presentations.
Vizio & Samsung Defendants
Channel[s] of communication, such as radio,
television, broadcast print, or Internet.
The parties dispute whether digital television is a single media or two media.
Positions of the Parties
PMC contends there are two disputes: (1) the general meaning of the term and (2) what
examples should be included in the construction. PMC contends that the specification makes
clear the medium is a “form of electronically transmitted programming;” “[t]he stations so
automated may transmit any form of electronically transmitted programming, including
television, radio, print, data, and combined medium programming…” (’217 Patent 167:52-55)
and “[t]he programming so displayed (or outputted) may be any form of electronically
transmitted programming including television, radio, print, data, and combined medium
programming and may be received via any electronic transmission means…” (id. at 201:44-47).
PMC contends that nothing in the specification limits “media” to “channels.” PMC further
contends that even Defendants’ examples of “media” (radio, television, broadcast print, or
Internet) are not channels, but rather consistent with PMC’s definition.
18
PMC contends that Defendants rely on a BPAI citation of a dictionary definition of
“medium” as a “channel of communication.” PMC contends that the BPAI was dealing with the
issue of how to distinguish “medium” from a “signal.” PMC further contends that the BPAI
recognized that in the context of the claims, “medium” was not only a channel of
communication, but that “medium is the picture and sound information carried by the television
signal or the caption information.” (Dkt. No. 69 Ex. 8 (2009 BPAI Decision) at 24.)
PMC contends that its listed examples of “media” are consistent with the specification
and the Court’s preliminary constructions in the Phase 1 hearing. PMC requests that the Court
amend the list to make clear that “computer programs” are also forms of media. PMC contends
that the Background of Invention makes clear that conventional “broadcast” media may be
combined with “the capacity of computers to process and output user specific information” and
the “new media that result from such combinations are called ‘combined’ media.” ’217 Patent
1:55-65. PMC notes that the specification then states that “stations so automated may transmit
any form of electronically transmitted programming, including television, radio, print, data and
combined medium programming.” ’217 Patent 167:52-55.
Vizio contends that the term is limited by the file history. Vizio points to PMC’s
argument to the Board that:
…”medium” and “media” which connote a channel of communications.
Accordingly, the ‘content’ of a medium should be interpreted to mean the
substance, gist, meaning or significance of a channel of communications.
(Dkt. No. 196 Ex. F, Appeal Br at 32-33.) The Board then defined a medium as a “channel of
communication” “such as radio, television, newspaper, book or Internet.” (Dkt. No. 196 Ex. N,
Appeal Decision at 23.) Vizio also contends that its construction conforms to the Notice of
Allowance which stated “medium—a channel of communication such as radio, television,
19
newspaper, book or Internet.” (Dkt. No. 196 Ex. B Notice of Allowance at 2.) Vizio contends
that PMC’s construction of “media” would allow PMC to argue that conventional television is a
“multimedia presentation” because it is composed of both audio and video. Vizio states that the
specification makes clear that television is a single channel used to communicate a single
medium presentation, even though it contains both audio and video:
This method provides techniques whereby, automatically, single channel, single
medium presentations, be they television, radio, or other electronic
transmissions, may be recorded, coordinated in time with other programing
previously transmitted and recorded, or processed in other fashions.
’490 patent 3:51-56 (emphasis added). Vizio contends that PMC cannot cite a single embodiment
for the broad proposition that “audio” and “video” each comprise a single medium. Vizio states
that the ’490 specification describes combining television and radio (18:8-29), television and
broadcast print (20:11-38) and television and data (18:43-68). As to PMC pointing to the
following sentence in the Patent Office’s Appeal Decision for support: “the medium is the
picture and sound information carried by the television signal or the caption information,” Vizio
contends this sentence is more correctly read to say that television, which contains picture and
sound information, is but a single medium. Vizio contends that, regardless, this sentence cannot
contradict PMC’s unambiguous definition that the Board explicitly adopted (in the same
Decision) and that the Examiner relied upon to award the claims.
Samsung contends that PMC attempts to insert “forms of electronically transmitted
programming” into the construction, but PMC fails to draw any correlation, from the intrinsic
record or otherwise, between “media/medium” and “forms of electronically transmitted
programming.” Samsung asserts that PMC’s reliance on the preliminary construction of
“multimedia signals” in Phase One (“signals that include information for multiple forms of
media…”) is misguided; that refers to a different concept, from a different claim from a patent
20
not asserted here. Samsung contends that the traveling signal within a medium and the medium
itself are wholly separate notions and that the signals described merely include information for
media—this cannot be a definitional statement about what constitutes a medium. Samsung also
objects to PMC inserting “computer presentations” into the construction. Samsung contends that
such language is not part of the Phase 1 preliminary construction of “multimedia signals” and
that “computer presentation” is not mentioned anywhere in the patent specification. (Dkt. No. 78
at 4-5.)
Samsung also points to the applicants’ file history statement:
(Dkt. No. 78 Ex. C (03/07/2005 Appeal Brief) at 32 (annotation added).) Samsung further points
to the Notice of Allowance:
(Dkt. No. 78 Ex. D at 2 (annotation added).)
21
In reply, PMC contends that the Defendants rely on out of context statements by the
BPAI and the Examiner regarding a different dispute. PMC contends that Defendants fail to
rebut that the BPAI recognized that a medium is not merely a channel, but rather the “picture and
sound information” carried by a channel. PMC contends that this conforms that “medium” refers
to the form of electronically transmitted program. (Dkt. No. 83 at 15.)
At the oral hearing, it became clear that the parties’ dispute centered upon whether digital
television is a single media or two media: a separate video media and a separate audio media.
PMC acknowledged that conventional analog television of the 1980s is a single media. (Dkt. No.
237 at 63-65.) However, PMC contends that modern television is two media. In particular, PMC
contends that the packetized communication transmission techniques of digital television result
in two media, because audio information in the television transmission stream is contained in
audio data packets and video information in the television transmission stream is contained in
separate video data packets. (Id. at 64-65.)
Defendants contested PMC’s distinction between analog and digital television streams.
Defendants contend that both streams are a single media. Defendants contend that in analog
television the sound and video were similarly transmitted as separate information combined into
the television stream, though not as separate packets but rather separated by different carrier
frequencies. (Id. at 72-73.) Defendants contend that in all cases, the specification describes
television as a single media. Defendants assert that the patent was about combining two separate
media, not dissecting a television signal into two components and calling those two components
two separate media. (Id.)
Analysis
PMC contends that digital television transmission streams contain information of two
22
types, audio and video information. Further, PMC contends that this information is separated in
the television signal. However, the same can be said for traditional analog television. That one
separates the information via data packets and the other separates the information via carrier
frequencies is a distinction that is not identified as being relevant in the patent with regard to the
meaning of “media.”
The intrinsic record is clear that television is a single medium: “[t]his method provides
techniques whereby, automatically, single channel, single medium presentations, be they
television, radio, or other electronic transmissions, may be recorded, coordinated in time with
other programing previously transmitted and recorded, or processed in other fashions.” ’490
patent at 3:51-56. Further, television was clearly a single type of programming: “[t]he stations so
automated may transmit any form of electronically transmitted programming, including
television, radio, print, data and combined medium programming.” ’217 Patent 167:52-58. This
also conforms to the examples in the specification. The Wall Street Week programming
transmission was not described as a multimedia program because it was a television signal with
audio and video, but rather was described as multimedia programming because a television
signal was combined with separate computer generated graphics. See ’490 Patent 19:30-68; ’217
Patent 11:25-15:14, Figures 1, 1A, 1B and 1C. Similarly, the Julia Childs television program is
not described as two media merely because the television program has audio and visual. Rather,
it is the separate coordination of print media with the television media that is described. ’490
Patent 20:12-68.
Moreover, the ’217 Patent specification is explicitly clear that “television” may include
digital television transmissions: “…portions of the television picture that are covered by locally
generated overlays (which in digital television transmissions can include frames of transmitted
23
video that are "frozen" after reception in fashions well known in the art)” (’217 Patent 236:2226), “digital video and audio television transmissions” (’217 Patent 144:57-58) and “[i]n
example #7, the program originating studio that originates the ‘Wall Street Week’ transmission
transmits a television signal that consists of so-called ‘digital video’ and ‘digital audio,’ well
known in the art” (’217 Patent 149:47-50). PMC has not pointed to any intrinsic record citation
that makes clear that, as used in the specification, “television” was meant to be limited to analog
television. Rather, when viewed in its entire context the specification is clear that “television”
may include analog or digital television. PMC argued at the hearing that the specification notes
that combining television with a radio simulcast is combined programming. However, PMC
misses the point that it is not the audio that is a part of the television signal stream but rather a
separate audio stream from another media, in this case radio. Thus, as described in the ’490
specification, the multiple media is obtained by combining television with something else,
television and radio, television and broadcast print and television and data. ’490 Patent 18:8-29,
20:11-38 and 18:43-68.
The file history further supports Defendants’ contention that the audio and visual content
of a television signal is but one media. More particularly, the Board’s and PMC’s statements in
the appeal passages, cited by Defendants above, make clear that television is viewed as a single
media. Also, in additional passages, the Board referenced television programming as a single
medium. The ’217 Patent Board decision stated: “where the second medium is a broadcast
television,” “where the second medium is the television program” and “both a television program
medium (“first medium”) and …” (Dkt. No. 69 Ex. 8 at 67, 68 and 71 (Jan. 13 2009 BPAI
Decision).) Further, even a passage that PMC cites to from the ’217 Patent Board decision
supports the proposition that television is a single medium. The passage states that “the medium
24
is the picture and sound information carried by the television signal or the caption information.”
(Id. at 24.) Here, the Board clearly states that the “picture and sound information” (emphasis
added) carried by the television is a medium. The television signal itself is not treated as
multimedia.
The Court construes “media” / “medium” to mean “forms of electronically
transmitted programming, such as audio, video, graphics, and/or text, television
programing (including its video and audio components) is a single form of media.”
4. subset of [a/said] plurality of signals (’217 Patent claim 38)
PMC
Portion of [a/the] larger set
of signals.
Vizio Defendants
Defendants contend the Court
should construe the longer
phrase “receives a subset of a
plurality of signals.”
Samsung Defendants
No construction necessary.
To the extent a construction is
required for the shorter phrase
here, Defendants propose:
Less than the full set of the
plurality of signals.
The parties dispute whether a subset must be “less than” the full set.
Positions of the Parties
PMC contends that the surrounding language of claim 38 makes the limitation clear: “a
receiver that receives a subset of a plurality of signals from an external source” … “said subset
of said plurality of signals comprises a plurality of said plurality of signals.” PMC contends that
the clear claim language does not limit the term to “less than the full set,” but rather only
requires the subset include more than one signal from the given set of signals (a “plurality of said
plurality of signals”). (Dkt. No. 69 at 5.) PMC contends that the claim language does not exclude
the plurality of signals being just two signals and the subset being equal the two signals. PMC
25
contends that Vizio’s construction reads out the possibility of the subset being equal to the set.
PMC contends that its construction is consistent with the dictionary definition cited by Vizio:
(1) “a set (as of data) that is itself an element of a larger set” and (2) “a mathematical set each of
whose elements is also an element of a given set.” (Dkt. No. 69 at 6 (quoting Webster’s Third
New International Dictionary (1981)).) PMC contends that the dictionary definition does not
exclude a subset from being equal to a given set. PMC contends, in set theory, it is taught in
middle school mathematics that subset A of set B is less than or equal to B. PMC contends that a
simple Google search confirms this. (Dkt. No. 83 at 3.) PMC contends if the plurality of signals
is ten signals, then the subset may be two to ten signals. PMC contends that it is antithetical to
set theory to require otherwise. (Id.)
Vizio contends that PMC clearly intends to interpret the term to be “less than or equal
to.” Vizio states that PMC argues that whenever a microcomputer receives a plurality of signals,
then the microcomputer also receives a subset of the plurality of signals because the subset can
equal the full set. Vizio contends that PMC’s construction renders “subset” meaningless. (Dkt.
No. 196 at 5 (citing Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over
one that does not do so”)).) Vizio contends that the limitation is important because it was added
by an Examiner’s amendment. (Id. (citing Dkt. 196 Ex. B at 17).)
Samsung contends that PMC improperly allows the subset to be the same as the set.
Samsung contends that PMC uses the term “portion” in PMC’s construction. Samsung contends
that “portion” does not generally mean the whole thing. (Dkt. No. 78 at 6-7.) Samsung contends
that the Webster’s dictionary recites “an element of a larger set,” which contradicts PMC.
Samsung contends that the term “subset” is not highly technical and does not need construction.
26
The parties did not argue this term at the oral hearing.
Analysis
PMC contends that the term means “less than or equal to,” yet PMC’s own construction
contradicts inclusion of “equals to.” In particular, PMC’s construction references “larger set,”
and as such PMC itself states that the plurality of signals is “larger” than the subset. Though
PMC may be correct that the strict definition in mathematical set theory may include “some or
all,” the context of the claims and the specification is more important. See Phillips, 415 F.3d at
1317. The language of the claim (“said subset of said plurality of signals comprises a plurality of
said plurality of signals”) implies the subset is not all of the plurality of signals. Moreover, the
relationship of the claim elements requires the subset of claim 38 to not include all of the
plurality of signals. In particular, claim 38 recites (1) “receives a subset of a plurality of signals,”
(2) “said plurality of signals includes a first medium and a second medium,” and (3) “wherein
said second medium is not included in said subset of said plurality of signals.” Thus, the claim
language explicitly rejects PMC’s interpretation of “some or all.” Further, “subset” is not utilized
in the specification and PMC has not identified any teaching in the specification in which the
plurality of signals includes a second medium and the “portion” of the plurality of signals does
not include the second medium, yet the “portion” somehow includes all of the plurality of
signals.
The Court construes “subset of [a/said] plurality of signals” to mean “less than all of
another set of signals.”
5. timing of communicating [television programming] (’2,649 Patent claim 1)
PMC
This term does not require
Vizio Defendants
No construction necessary.
27
Samsung Defendants
Synchronization of the
construction beyond its plain
and ordinary meaning. To
the extent a construction is
necessary, PMC proposes:
Timing of passing
information from one device
or component to another
device or component.
receiver station operations
and programming
transmissions
The primary dispute is whether “timing” is limited to synchronizing with a receiver
station.
Positions of the Parties
PMC cites to the context within claim 1 of the receiver station “controlling the timing of
communicating television programming in accordance with said message stream.” PMC
contends that the claim is not limited to synchronization of the receiver station, which is just one
example in the specification. (Dkt. No. 69 at 7.) PMC notes that the specification merely states
that the signals “can” synchronize the operation. ’217 Patent 7:54-57 (noting that signals “occur
at precise times in programming and can synchronize the operation of receiver station apparatus
to the timing of programming transmissions”). PMC contends, though, that the claim merely
states timing “in accordance with said message stream,” specifying that the communicating can
be based on the nature of the signals embedded in the incoming transmission. (Dkt. No. 69 at 7.)
PMC contends that the manner of controlling the “timing” is not limited to “synchronization”
because, elsewhere, the specification states that “timing, and location of embedded signals may
vary.” ’217 Patent 7:47-48. PMC further states that “communicating” is not limited to
interactions between the receiver station and the programming transmissions, because the
specification discloses “authorized subscribers” and “subscriber stations.” Id. at 7:43-46.
Vizio contends that if construed, Samsung’s construction should be used. (Dkt. No. 196
at 6.)
28
Samsung contends that the claim states that the timing is “in accordance with said
message stream” received at the receiver station and the specification discloses that the
embedded signals (i.e., the message stream) can be used to “synchronize the operation of
receiver station apparatus to the timing of the programming transmissions.” ’217 Patent 7:55-57.
The parties did not argue this term at the oral hearing.
Analysis
Samsung seeks to limit the term to an embodiment within the specification. However,
Samsung has not pointed to any disavowal or disclaimer supporting such limitation. Arlington
Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“[E]ven where a
patent describes only a single embodiment claims will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using words of expressions
of manifest exclusion or restriction.”) (citation omitted). Moreover, the claim merely states
“controlling the timing of communicating television programming in accordance with said
message stream.” Samsung is correct that the specification states that embedded signals (i.e., the
message stream) can be used to “synchronize the operation of receiver station apparatus to the
timing of the programming transmissions.” However, Samsung is seeking to add an additional
limitation as to what the message stream is used for. The claim limitation merely requires timing
the communication with the message stream, it does not provide the additional requirement that
the message stream is used for synchronization. Thus, synchronization of the receiver station
operations and programming transmissions is not required by this term.
The Court finds that “timing of communicating [television programming]” has its
plain and ordinary meaning.
29
6. variable formats (’6,649 Patent claim 9)
PMC
This term does not require construction
beyond its plain and ordinary meaning. To the
extent a construction is necessary, PMC
proposes:
Arrangements or structures of data that can be
changed or adapted.
Vizio & Samsung Defendants
Changing format that is not a set, proper
format.
The parties dispute whether the formats must change or be capable of change and
whether the file history defines the term to not be a “set, proper format.”
Positions of the Parties
PMC contends that the term does not need to be construed, consistent with this Court not
construing similar “varying” terms at issue in PMC v. Motorola, Inc., No. 2:08-cv-70-CE, Dkt. 271
at 34-35 (E.D. Tex. Sept. 30, 2011).
PMC objects to Defendants’ construction for two reasons.
First, PMC contends Defendants’ construction requires the format to change even though the
term says “variable,” which signifies a capacity to change. PMC contends that varying and variable
are thus two different concepts. Further, PMC contends that the specification uses both terms
separately, indicating they have different meanings: signals being “placed, within the
transmissions, in locations that are unvarying and unvariable.” ’490 Patent 2:51-54. PMC
contends the claim makes clear the formats are variable and when varying occurs, at least two of
locations, timing lengths, and schemes must vary. PMC contends that Defendants transform this
language into “varying the formats.”
Second, PMC objects to Defendants’ inclusion of “set, proper format” from the
prosecution history. PMC contends that Samsung’s reference to a 1997 Amendment was with
reference to defining “television signaling scheme” not “variable formats.” Further as to “set,
proper,” PMC contends that “set” appears nowhere in the citations provided by Defendants. As
to “proper,” PMC contends that, in prosecution, PMC was merely distinguishing the Zawels
30
reference by noting Zawels’ own words in which transmissions were in “proper formats.” PMC
contends that it is clear that PMC was not unequivocally suggesting that Zawels’ term of art
(“proper format”) was something definitional. (Dkt. No. 83 at 5.) PMC further contends that
elsewhere in the same prosecution passage, the applicants stated that Zawels was not “capable of
varying formats as disclosed in the present invention.” (Dkt. No. 196 Ex. C (Feb. 17, 1998
Amendment) at 66.)
Vizio contends that the claim requires “variable formats including at least two varying
locations, varying timing lengths and varying encryption schemes.” Vizio contends that, thus, the
format must vary and not merely have the capability to change. (Dkt. No. 196 at 6.) Vizio
contends that “proper” comes from the file history where PMC distinguished a prior art signal
that was “not transmitted in varying formats, [but] is transmitted only in the ‘proper format.’”
(Id. (quoting Dkt. No. 196 Ex. C (Feb. 17, 1998 Amendment) at 66).)
Samsung contends that its construction flows from the intrinsic record. Samsung
contends that the applicants defined “variable formats” as “varying locations, timing and lengths,
including variable encryption schemes.” (Dkt. No. 78 Ex. G (July 28, 1997 Amendment) at 40.)
Samsung also contends that the 1981 specification was critical of signals placed within
transmissions in locations that are “unvarying and unvariable.” (Dkt. No. 78 at 9 (citing ’490
Patent 2:51-54).) Samsung also cites to the 1998 Amendment that used the term “proper.”
The parties did not argue this term at the oral hearing.
Analysis
The claim term is clearly “variable” not “varying.” The context of the term, as used in
the claim, may provide substantial guidance as to the term’s meaning. Phillips, 415 F.3d at 1314.
31
Here, the context of the surrounding claim language makes clear that the term is directed to
programming the station to have the capability to process variable formats: “programming said
programmable receiver station with multiple signal processing schemes to process television
programming signals encoded in variable formats in accordance with said multiple signal
processing schemes, said variable formats including at least two of varying locations, varying
timing lengths and varying encryption schemes.” As to the file history, a clear disclaimer has not
been shown, and PMC provides the better interpretation of the passages in question. See Omega
Eng. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim
interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
evidence and protects the public’s reliance on definitive statements made during prosecution.”)
The Court construes “variable formats” to mean “formats that can be changed or
adapted.”
7. varying locations (’6,649 Patent claim 9)
PMC
This term does not require construction
beyond its plain and ordinary meaning. To
the extent a construction is necessary, PMC
proposes:
Changing order, placement, or location.
Vizio & Samsung Defendants
Changes in the place where a television
programming signal can be found within a
transmission.
The focus of the parties’ dispute is on PMC’s inclusion of “order.”
Positions of the Parties
PMC notes that this District previously construed the identical term, “varying locations,”
to have its plain and ordinary meaning. PMC v. Motorola, Inc., No. 2:08-cv-70-CE, Dkt. 271 at 35
(E.D. Tex. Sept. 30, 2011) (referred to by the parties as the Echostar Order). PMC contends that in
PMC v. Motorola, the Court did not limit “location” to where a “television programming signal” is
32
within a transmission but generally found that “location” referred to “some part or portion of a
television transmission.” Id. PMC points to the specification statement that the signals “may
appear in various and varying locations . . . they may appear on one line in the video portion of
the transmission, or on a portion of one line, or on more than one line . . . .” ’490 Patent 4:17-20.
PMC contends that this passage teaches that varying a location includes changing the order of
the signal, rather than simply its placement “within a transmission.”
Vizio objects to PMC’s inclusion of varying the “order” within the meaning of varying
the “location.” Vizio contends that the specification teaches that the location is varied by moving
the signals among lines of a frame. ’490 Patent 4:17-22. Vizio contends these are changes in the
location within a transmission. Vizio contends that there is no support for the proposition that
merely changing the order of signals is considered to be varying locations. Vizio contends this
also conforms to the characterization of the prior art in the specification where it was stated that
the prior art only transmitted signals “placed, within the transmissions, in locations that are
unvarying and unvariable.” ’490 Patent 2:51-54. Vizio contends this is consistent with PMC v.
Motorola which found that a “location” is “some part or portion of a television transmission.”
Samsung contends that there is no teaching, intrinsic or extrinsic, that one of skill in the art
would interpret “locations” to have the construction advanced by PMC. Samsung contends that
Defendants’ construction is in conformance with construction in PMC v. Motorola. Samsung further
notes that the specification describes a signal as “one full discrete appearance of a signal embedded
at one time in one location on a transmission.” ’490 Patent 3:3-5.
The parties did not argue this term at the oral hearing.
Analysis
The claim term is “location.” PMC has pointed to no evidence that equates the order of a
signal in a transmission to the location. The specification passage PMC cites to (’490 Patent
33
4:17-20) does not mention “order” and provides no teaching that merely varying the order
inherently varies the location. A signal that may have a varying order compared to other signals
but is in the same location has not been varied in location, only varied in order. PMC has not
pointed to intrinsic evidence that redefines the “location” to further include the “order” of the
signal. Defendants’ positions, in effect, conform to the rationale in the PMC v. Motorola order.
PMC v. Motorola, Inc., No. 2:08-cv-70-CE, Dkt. 271 at 35 (E.D. Tex. Sept. 30, 2011).
The Court construes “varying locations” to mean “changes in the place where a
television programming signal can be found within a transmission.”
8. varying timing lengths (’6,649 Patent claim 9)
PMC
Changing amount of time required to transmit
information.
Vizio & Samsung Defendants
Indefinite.
Defendants contend the term is not used in the specification and is not reasonably
definite.
Positions of the Parties
PMC contends that term is a common term and has a commonsense meaning
corresponding to PMC’s construction. PMC contends that the PMC v. Motorola construction
found that “varying the pattern of timing” to have its plain and ordinary meaning. PMC v. Motorola,
Inc., No. 2:08-cv-70-CE, Dkt. 271 at 35 (E.D. Tex. Sept. 30, 2011). PMC contends that the
specification equates “length of time” with “timing length:”
Following the transmission of each message, for a particular interval of time no
SPAM information is transmitted that is causes any processing at any apparatus of
the apparatus version of message. Said interval is the length of time required for
the slowest apparatus of said apparatus version to receive said message, record the
operating system instructions and information of said message, and commence
operating under control of said instructions and information.
34
’217 Patent 273:11-19.
PMC further contends that simple semantics shows that “varying timing lengths” means
“changing lengths of time.” PMC states that Vizio’s expert (Dr. Reader) understood the meaning
of “varying length of time.” (Dkt. No. 196-23 at ¶180.) PMC contends that “varying timing
lengths” is merely another way of saying “varying length of time.”
Vizio notes that the term in PMC v. Motorola was a different term (“varying the pattern of
timing”), thus presumably having a different meaning than the term in dispute here. Vizio contends
“varying the timing lengths” has no meaning in the art nor in the intrinsic record and points out that
PMC did not identify any intrinsic evidence to support PMC’s position. (Dkt. No. 196 at 7.) Vizio
notes that the specification does reference “varying lengths” and “varying timing,” but the
specification does not reference “varying timing lengths.” Vizio contends that PMC construes the
term to mean “lengths of time,” but Vizio contends these are different words. Vizio notes that the
specification does reference “time interval,” which may be synonymous with “length of time,” but
that the claim did not use “time interval.” Vizio contends that this reinforces that “timing length”
means something different than “length” or “interval of time.” (Id.)
Vizio further points to PMC’s infringement contentions that accuse (1) packets which have
“variable amounts of time to transmit and receive,” and (2) encoded video access units that have
“varying timing length that can depend on the bit-rate, and whether the bit-rate is constant or
variable.” (Dkt. No. 196 Ex. D (’6’649 infringement contentions) at 11.) Vizio further points to
PMC’s contentions as also reading on the MPEG-2 standard which allows for some packets of
“variable lengths.” (Id. at 12.) Vizio contends that PMC’s interpretations include a length of time, a
transmission rate, and a packet length, further revealing the uncertain scope of the term. Vizio
contends that a person of ordinary skill would not be able to determine which, if any, is the correct
interpretation. (Dkt. No. 196 at 8 (citing Reader Decl. at ¶164).)
35
Samsung contends that the term is not a term of art and that PMC offers no specification
support. Samsung contends that there is no frame of reference as to whether the term is referencing
the length or size of the signal or referencing the length of time. Further, Samsung contends that if
referencing the length of time, it is not clear if the term is referencing the time to transmit one signal
verse another or referencing a shorter verse longer program that is being transmitted. (Dkt. No. 78 at
10.)
At the oral hearing, Defendants pointed to ’6,649 Patent claim 12 which recites:
said television signaling scheme defining the programming and information content
in said variable formats including varying locations in said television program
material, timing, lengths and encryption schemes;
transferring said one or more instruct signals from said transmitter station to said
transmitter; and
transmitting said television program material and said one or more instruct signals
from said transmitter station to said one or more receiver stations wherein
said one or more instruct signals are effective to implement said television
signaling scheme….
Defendants, in particular, contend that by reciting “varying locations in said television program
material, timing, lengths and encryption schemes” the claim highlights that “timing” and “length” are
different. (Dkt. No. 237 at 58.)
Analysis:
The term itself and the specification give guidance that the term relates to the length of
time. The specification describes time intervals that may change and states that these intervals
are lengths of time. ’217 Patent 273:11-19. Further, signals are described in the specification as
transmitted for “predetermined time intervals.” ’490 Patent 9:41-46. As acknowledged by
Vizio’s expert, a construction of “changing the amount of time” would make sense if the
disputed term was “varying length [of time]….” (Dkt. No. 196-23 at ¶180.) The Court finds that,
in context, “varying timing lengths” has the same meaning Vizio’s expert prescribes to “varying
lengths of time.” In context of the intrinsic record and the claim language itself, the term is
36
reasonably certain. Vizio contends that the infringement contentions raise doubts as to the terms
meaning. As presented, those contentions raise questions as to infringement, but do not change
the Court’s construction. As to Defendants’ citation to claim 12, which recites both a format’s
timing and length features, this does not establish that a feature of the timing cannot be the length
of the time. A format may have a length, while the timing of a format may also have a time
length.
The Court construes “varying timing lengths” to mean “changing amount of time
required to transmit information.”
9. code / code portion (’775 Patent claim 2, 3, 6, 11, 12, and 13)
PMC
(code) Digitally encoded
information.
Vizio Defendants
(code) One or more
instructions.
Samsung Defendants
“Code” is not present in any
asserted claim.
(code portion)
Digitally encoded
information that is a part of
a larger information
transmission.
(code portion) Part of a
program instruction set.
(code portion) Part of a
program instruction set.
The parties dispute whether “code” must include “instructions.”
Positions of the Parties
PMC objects to Defendants’ attempts to limit “code” to program instructions. PMC
contends that its construction is consistent with the claim language:
receiving an information transmission containing a code portion;
receiving a control signal;
receiving the code portion of said information transmission and transferring it to
the detector;
detecting data in said received and transferred code portion and passing said data
to said processor;
processing said detected and passed data to produce said at least some of said
video image;
37
’775 Patent claim 11. Further, PMC points to claim 21 which depends from claim 11 and states:
“wherein said receiver station receives at least one complete video image in a signal transmitted
from a remote station,” and
detecting at least one computer program instruction in said signal transmitted
from said remote station;
storing said detected at least one computer program instruction; and subsequently
processing data detected in said code portion to produce video in
accordance with said at least one computer program instructions.
’775 Patent claim 21.
PMC contends that Defendants seek to equate two different terms in the claims –
“computer program instructions” and “code portion.” PMC contends that Defendants further
seek to incorporate the “computer program instructions” of dependent claim 21 into claim 11,
where the term does not appear. (Dkt. No. 69 at 11.)
PMC contends that its construction is consistent with the claims and the specification.
PMC notes the claims recite “code portion of said information transmission” which includes
“data” that is detected and processed. PMC points to the specification: “[i]n the present
invention, the embedded signals contain digital information that may include addresses of
specific receiver apparatus controlled by the signals and instructions that identify particular
functions the signals cause addressed apparatus to perform” (’217 Patent 7:59-63) and
“[e]xamples of signal words are a string of one or more digital data bits encoded together on a
single line of video or sequentially in audio” (id. at 8:28-30). PMC contends that its construction
is consistent with the specification that “code” refers to “digital information” which may include,
but is not limited to, instructions.
As to the Phase 1 preliminary construction that “downloadable code” is “one or more
instructions received in a transmission from a remote source,” PMC contends that result flowed
38
from the different claims at issue in Phase 1 in which the “downloadable code” served as the
“basis” for “controlling a decryptor….” PMC contends that the claims at issue here are not
drafted in a manner relating to “instructions” and instead the claims are broader. (Dkt. No. 69 at
13.)
Vizio contends that “code portion” is only discussed in the specification in the context of
instructions causing processors to operate or instructions executed by processors: “[t]hen SPAMcontroller, 205C, commences executing the code portion of said load-run-and-code instructions”
(’217 Patent 54:48-49) and “[t]hen the code portion of said load-run-and-code instructions cause
SPAM-controller, 205C, to operate in a fashion that differs from the fashion of said first
message” (id. at 73:41-42). Vizio contends that claim 21 does not provide claim differentiation
because unlike “computer program instruction,” the “code portions” described in the
specification can be executed by specialized controllers in the receivers, such as SPAMcontroller 205C and controller 39J. (Dkt. No. 196 at 10 (citing ’217 Patent 52:15-29, 88:47-52).)
Vizio contends that PMC’s construction attempts to circumvent the Court’s Phase 1
preliminary construction of “downloadable code” which is part of an “encrypted digital
information transmission” in the Phase 1 ’635 Patent claim 33. Vizio contends that PMC offers
no evidence why “code portion,” which is similarly part of an “information transmission,”
should be construed differently. (Id.)
Samsung objects that PMC attempts to broaden “code portion” to encompass any digital
“information,” yet the claims specifically distinguish “code portion” from the rest of the
transmission. Samsung contends PMC’s construction renders such distinction meaningless.
Samsung contends that the specification references “code portion” as part of a program
instruction set. (Dkt. No. 78 at 11 (citing ’217 Patent 88:51-52 (“said load-run-and-code
39
instructions cause control processor, 39J, to commence executing the code portion of said
instructions”) ’217 Patent 54:48-67 (“Then SPAM-controller, 205C, commences executing the
code portion of said load-run-and-code instructions….”); ’217 Patent 54:40-46, 73:41-42).)
Samsung further notes that during prosecution PMC identified a section of the ’775 Patent
entitled “Transmitting and Receiving Program Instruction Sets” as providing written description
of the claims. (Id. at 11-12.)
Samsung contends that PMC’s specification citations do not relate to “code portion” at
all. As to claim 21, Samsung also notes that claim 21 is limited to “computer program
instructions.” Further, Samsung notes that dependent claim 19 recites a “first processor
instruction” that resides in the “code portion,” making clear that the code portion is part of a
program instruction set.
As to dependent claim 19, PMC states that this merely demonstrates that the “code
portion” would contain “data” and the “first processor instruction.” At the oral hearing, PMC
emphasized its concern that Defendants’ construction would exclude a code portion from
including data. (Dkt. No. 237 at 110-114.) Defendants responded that instructions may contain
data within the instruction and that Defendants’ construction did not prohibit data from being
contained in the instruction. (Id. at 116.)
Analysis
As discussed in the Phase 1 claim construction order, “code” can have varying meanings.
Just as with regard to “downloadable code” in the Phase 1 dispute, here in context of the
specification, “code portion” is used in context of program instructions. As noted by PMC, code
portion may also include “data” and is not limited to just instructions. Thus, as described in the
specification, instructions may include data. ’217 Patent 222:26-37. However, in context of the
40
specification descriptions, it is the inclusion of the instructions which makes the portion a “code
portion.” See ’217 Patent 54:48-67, 73:41-42, 88:47-52.
The Court construes “code” to mean “one or more instructions.” The Court
construes “code portion” to mean “part of an instruction set.”
10. an expanded [and contracted] code portion (’775 Patent claims 2, 6, and 11)
PMC
Longer [and shorter] code
portion.
Vizio Defendants
Indefinite
Samsung Defendants
(an expanded . . . code
portion) A code portion that
changes in volume from
smaller to larger.
(a contracted code portion) A
code portion that changes in
volume from larger to
smaller.
Samsung contends the term requires a code portion to change. Vizio contends the term is
indefinite. PMC contends that the term relates to the code length.
Positions of the Parties
PMC points to the specification statements of: (1) “a SPAM message containing expandto-full-field-search execution segment information” causing “decoders, 203, to commence
detecting digital information in every frame of its received video information from the first
detectable portion of line of said frame to the last detectable portion of the last line of said
frame” and (2) “a SPAM message containing resume-normal-location-search execution segment
information” causing “line receivers, 33, to commence detecting digital information in the
normal transmission location of every frame of its received video information.” ’217 Patent
236:29-44, 236:60-67, 237:23-30. PMC also contends that its construction is in accord with the
41
plain and ordinary meaning of “expanded” as “longer” and “contracted” as “shorter,” as the
applicants explained in distinguishing the claim over the prior art:
The Office Action confuses Zaboklicki’s decoding (from Webster’s Dictionary,
1a: to convert, e.g., as a coded message, into intelligible form; b: to recognize and
interpret, e.g., an electronic signal; 2: decipher,) with expanding (a: to open up :
unfold; b: to increase the extent, number, volume, or scope of : enlarge,) and
contracting (a: limit, restrict, …c: to draw together: concentrate; d: to reduce to
smaller size by or as if by squeezing or forcing together).
(Dkt. No. 69 Ex. 17 (July 22, 1997 Amendment) at 26.)
PMC contends that Samsung cites the inventors’ July 22, 1997 Response to Office
Action. PMC contends that there, the inventors amended then claim 20, dependent on then claim
17, to recite:
The method of claim 17, further comprising the step of programming said
receiver station selectively to receive at least two [or more] specific code portions,
a first of said at least two [or more] code portions having a greater signal volume
being an expanded code portion, a second of at least two [or more] code portions
having a lesser signal volume being a contracted code portion.
(Id. at 5 (underlines and brackets in original).) PMC contends that the use of “greater signal
volume” and a “lesser signal volume” supports PMC’s construction.
As to Samsung’s construction, PMC contends that “expanded” and “contracted” are
adjectives to describe “code portion.” PMC contends that Samsung defines the term as a verb (“a
code portion that changes”). Further, PMC contends that Samsung acknowledges that Samsung’s
construction would render claims 2, 11 and 23 as being directed to the same embodiment
(“volume”). However, PMC contends that only claim 23 specifies “volume.”
Vizio contends that the intrinsic record does not provide an objective reference
framework for what constitutes “an expanded code portion” and “a contracted code portion.”
Vizio states that the terms do not indicate whether “a contracted code portion” is shorter than
some typical code portion, shorter than “an expanded code portion,” or shorter than that same
42
code portion once was. (Dkt. No. 196 at 11 (citing Reader Decl. at ¶ 33).) Vizio notes that ’775
Patent claim 23 recites “a greater signal volume being an expanded code portion” and “a lesser
signal volume being a contracted code portion.” But Vizio contends that claim 23 provides no
objective reference framework to determine what constitutes objectively certain scopes of
“lesser” and “greater.”
Vizio further states that the intrinsic record also fails to provide guidance as to a
measuring unit for this term. Vizio states that there is no guidance as to whether “expanded” and
“contracted” refer to the length of each code portion, the amount of information in each code
portion, the duration of the transmission for a code portion as measured by time, or how the code
portion is expanded and contracted, etc. (Id. (citing Reader Decl. at ¶¶ 34, 42, 54, 62, 69).) Vizio
states that the numerous distinct possibilities regarding the uncertain measuring units makes the
scope of “an expanded [and a contracted] code portion” indefinite to a person of ordinary skill in
the art. (Dkt. No. 196 at 12 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71
(Fed. Cir. 2014) (“It is not enough . . . to identify ‘some standard for measuring the scope of the
phrase’”. . . the claims “must provide objective boundaries for those of skill in the art.”)).)
Vizio contends that PMC misreads the portion of the specification which discusses the
“expand-to-full-field search execution segment information.” ’217 Patent 236:29-44. Vizio
contends that this discussion refers to an expanded search for information – not a “code portion”
that is expanded. Similarly, Vizio contends that the specification discusses the “resume-normallocation-search execution segment information” with reference to a search location, not to a code
portion that is contracted.
As to PMC’s dictionary definitions it submitted during prosecution, Vizio contends that
these definitions still lack an objective frame of reference or unit of measure to determine
43
whether there has been an “increase [in the] extent, number or volume” that constitutes
“expanded” or a “reduc[tion] to smaller size” that constitutes “contracted.” Id.
Vizio also contends PMC’s construction is incorrect because the prosecution history
requires the claim to have one code portion that is both expanded and contracted, instead of two
code portions. Vizio states that in prosecution, PMC argued:
that Seth-Smith does not describe a code portion to be expanded and contracted,
because the page number (i.e., the alleged code portion) is not both expanded and
contracted at Seth-Smith’s transmitter station. With respect to Claims 52, 53, and
79, which expressly recited this limitation, the Examiner agreed, withdrawing the
rejections to these Claims.
(Dkt. No. 196 Ex. G (May 28, 2013 Amendment) at 35; Ex. U (Feb. 28, 2013 Amendment) at
28.) Vizio contends that PMC’s construction, however, can broadly and ambiguously include
two code portions, one of them “longer” and the other one “shorter.” Vizio contends that PMC’s
construction recaptures subject matter it expressly relinquished.
Vizio further states that PMC’s infringement contentions include multiple distinct
theories for “an expanded and a contracted code portion” such as “a larger number of” and “a
smaller number of” TS packets for “a desired channel or program,” “larger[-sized]” and
“smaller[-sized]” PES packets, “larger digital video containers” and “smaller digital video
containers,” etc. (Dkt. No. 196 Ex. Q (’775 infringement contentions) at 41-43.) Vizio contends
that this further supports finding the terms to be indefinite.
Samsung contends that during prosecution, PMC cited to Webster’s dictionary as noted
above, but that each dictionary example shows the terms require a change (smaller to larger or
larger to smaller). Samsung contends that PMC’s construction removes the concept of change
altogether. Samsung further contends that its construction references “volume” as the
embodiment providing support for the claims relates to the “volume” of a program. (Dkt. No. 78
44
at 13, n. 12 (citing ’217 Patent 234:60-235:1).) At the oral hearing, Samsung stated that PMC’s
use of a term that connotes length was improper. Samsung stated that the use of “larger” or
“smaller” gets closer to a proper construction. (Dkt. No. 237 at 87.)
Samsung states that the prosecution history further supports that the claims require
expanding or contracting the code portion. Specifically, Samsung states that the applicants
argued with regard to claim 2 that the prior art “fails to teach that the decoder expands or
contracts the code portion based on the control signal.” (Dkt. No. 78 Ex. J (10/09/2012
Amendment) at 33.) Samsung also cites to the statement: “the encoded page number does not
serve as the basis for expanding or contracting a code portion of information transmissions.”
(Dkt. No. 78 Ex. K (02/28/2013 Amendment) at 27.) Samsung further cites to the prosecution
statement: “the code portion is not both expanded and contracted at Seth-Smith’s transmitter
station.” (Id. at 28.) Samsung contends that PMC thus made binding admissions in prosecution
and that the terms should not be broadened to capture mere “longer” or “shorter” code portions.
Samsung further points to ’217 Patent 235:13-67 as indicating that size of the code portion is
enlarged by employing an “expand-to-full-search” to enlarge the volume of the video
transmission that is searched for the code portion. (Dkt. No. 78 at 14, n.13 (citing ’217 Patent
235:13-67).)
Analysis
The claims describe a decoder that is capable of decoding both “an expanded and a
contracted code portion” of transmissions (claims 2 and 11). This corresponds to the
specification describing “to commence detecting digital information in every frame of its
received video information” and “to commence detecting digital information in the normal
transmission location of every frame of its received video information.” ’217 Patent 236:29-44,
45
236:60-67, 237:23-30. Though Vizio objects that the term “code portion” is not utilized, it is
clear that larger and smaller portions of the transmission are utilized. This also conforms to the
prosecution history and its discussion of the ordinary dictionary meaning. (Dkt. No. 69 Ex. 17
(July 22, 1997 Amendment) at 26.) Though Vizio contends that it is unclear what is “expanded”
or “contracted,” the term itself and the construction of “code portion” above (a part of an
instruction set) provide guidance. The relevant instruction sets are a larger instruction set or a
smaller instruction set.
As to Samsung’s construction, such construction does not conform to the surrounding
claim language as described above. For example in claim 2, “the decoder is capable of decoding
and transferring, based the control signal, an expanded and a contracted code portion information
transmissions.” This does not conform to Samsung’s concept that a particular code portion is
changing. Rather, what is decoded and transferred is an expanded or contracted portion. This
also conforms to dependent claim 6: “producing all of at least one video image based on decoded
data during a time when one of an expanded code portion and a contracted code portion
information transmission is decoded and transferred.” In context of the claims and the
specification, PMC’s view of the term is proper. At the oral hearing, it was argued that PMC’s
use of “longer” and “shorter” limit the term to a context in that only the length of the code
portion was issue. As noted, the specification and claims include reference to “volume” of a code
portion. In this context the code portion need not just be longer (or shorter) but could more
generally be larger (or smaller).
The Court construes “an expanded [and contracted] code portion” to mean “larger
[and smaller] code portion.”
46
11. portion receiver (’775 Patent claim 11)
PMC
Device or component that receives a digitally
encoded portion of a larger information
transmission.
Vizio & Samsung Defendants
Device that searches for a code portion in a
normally visible portion and a normally nonvisible portion of each frame of an
information transmission.
The dispute centers on whether the meaning of the term was disclaimed in prosecution.
Positions of the Parties
PMC points to the claim language for support: “[a] method of processing signals at a
receiver station having a portion receiver,” “receiving the code portion of said information
transmission,” and “controlling the portion receiver, based on the control signal, to receive and
transfer an expanded and a contracted code portion information transmission . . . .”
Vizio and Samsung both state that in prosecution, “portion receiver” was characterized
as:
As explained at pages 457-458, applicants’ portion receiver operates normally in
one of several operating modes -- a “normal” search mode in which received
processor data (digital data) is searched for only within the normal transmission
locations of each frame of received video information, and an “expanded” search
mode in which received processor data (digital data) is searched for from the first
detectable portion of each frame to the last detectable portion of each frame.
Moreover, applicants’ invention further contemplates searching for received
processor data “outside” of the capacity of a conventional transmission (e.g., in a
side lobe of a transmission, as disclosed at page 463).
(Dkt. No. 78 Ex. L (USP 7,884,995 3/23/1998 Amendment) at 25.) 8 Vizio contends that PMC
ignores these characteristics. Vizio contends that its construction conforms to the specification
also: “[i]n television, the normal transmission location of the preferred embodiment is in the
vertical interval of each frame of the television video transmission. . . . [T]he vertical interval . . .
8
Vizio contends that claims of the application which lead to USP 7,884,995 were originally
pending in that application but then moved to the ’775 Patent, including the ’775 Patent claims
asserted against Vizio. (Dkt. No. 196 at 14, n.9.)
47
is not visible on a normally tuned television set.” ’217 Patent 44:18-24. Vizio contends that
PMC’s construction merely requires the receiver be capable of receiving a digital portion, which
reads on prior art receivers and disregards the prosecution.
Samsung points to the prosecution statement cited above and contends that this
prosecution history is consistent with the specification which confirms the portion receiver
searches in normally visible and non-visible portions. ’217 Patent 235:53-236:67.
In reply, PMC contends that the then pending claim that was relevant to the prosecution
statement at issue contained the “searched” language, unlike the present claim. Specifically,
PMC contends the then pending claim language was (1) “a portion receiver for receiving at least
some of a television signal;” (2) “a controller for controlling said portion receiver;” and (3)
“controlling said portion receiver to one of increase and decrease the size of said selected portion
by varying the amount of said received television signal which is actually searched for data . . . .”
(Dkt. No. 78 Ex. L (USP 7,884,995 3/23/1998 Amendment) at 2.) PMC contends that, thus, the
applicant distinguished the prior art on the “search” concept because the claim in question
contained “searched.” PMC contends that nothing in the file history requires a “portion receiver”
in the asserted claims to search for anything. PMC contends that the only other position of
Defendants is an argument to limit the claim to a disclosed embodiment. (Dkt. No. 83 at 8.)
The parties did not argue this term at the oral hearing.
Analysis
The claim calls out “receiving the code portion of said information transmission,” and
“controlling the portion receiver, based on the control signal, to receive and transfer an expanded
and a contracted code portion information transmission.” In context of the claim language itself,
PMC’s construction is more appropriate. As to Defendants arguments that the prosecution
48
history limits the method of how the portion receiver is operated, the prosecution history
statements merely describe the embodiment disclosed in the specification. When read in full
context, these statements are not limiting the term “portion receiver” to a particular search
algorithm. Moreover, Defendants’ prosecution arguments are further weakened as the
prosecution claim in question included “search” language, but the issued claim in question does
not, rather it merely references controlling “to receive and transfer an expanded and a contracted
code portion information transmission.”
The Court construes “portion receiver” to mean “device or component that receives
the code portion.”
12. valve (’885 Patent claim 1)
PMC
A device or processor that
regulates the flow of digital
data.
Vizio Defendants
A device that regulates the
flow of signal processing
information.
Samsung Defendants
No construction necessary.
In the post briefing joint claim construction chart, Vizio changed its construction in a
manner that more conforms with PMC’s construction. (Dkt. No. 212 at 4.) The primary
difference remaining is PMC’s use of “digital data” and Vizio’s use of “signal processing
information.” This remaining issue between PMC and Vizio was not addressed in the parties’
briefing and the bulk of the parties’ arguments in the briefing are no longer applicable. Samsung
contends that PMC does not construe what a valve. Specifically, Samsung contends that PMC
merely states the valve is a “device” and then describes its function. Samsung contends the claim
clearly already describes the function: “performs at least one of the functions of ceasing to
communicate and commencing to communicate said embedded signals to said one processor.”
49
Samsung contends that PMC seeks to avoid this language as PMC’s infringement contentions
identify a demultiplexer as the “valve,” even though demultiplexers merely parse the
information, they do not start and stop the data flow. (Dkt. No. 78 at 16-17, n.15.) Samsung
contends that a jury will understand the term’s meaning without construction in the context of
the functional language provided in the claim itself.
The parties did not argue this term at the oral hearing.
Analysis
The basic functionality, as described in the specification, for a valve relates to
commencing and ceasing the communication. ’217 Patent 51:61-63, 37:21-25, 38:24-39:5,
55:17-18, 90:46-50. This conforms to the surrounding claim language which states: “said valve
performs at least one of the functions of ceasing to communicate and commencing to
communicate said embedded signals to said one processor.” The specification and the claim do
not exclude other functionality, however at least one of the functions as claimed is required. All
of the parties are in agreement that “valve” is not used in an ordinary mechanical context
meaning. As such, the Court finds it would be beneficial to provide a construction to the jury to
clarify the term. Vizio’s use of “signals” is more true to the claim which requires control of the
communication of “embedded signals” by the valve.
The Court construes “valve” to mean “a device that regulates the flow of signals.”
13. valve control signal[s] (’885 Patent claim 1)
PMC
Vizio Defendants
This term does not require
Signals that control the
construction beyond its plain operation of a valve, but not
and ordinary meaning. To
merely channel control words
the extent a construction is
necessary, PMC proposes:
50
Samsung Defendants
Signals that control the
operation of a valve.
Control signals that affect,
control, or enable, a valve.
The primary disputes relate to PMC’s use of “affect” and “enable” and Vizio’s inclusion
of a negative limitation.
Positions of the Parties
PMC notes that the parties in Phase 1, including Vizio, agreed no construction was
necessary for “control signal.” PMC notes that the Court in PMC v. Motorola, Inc. and PMC v.
Zynga declined to construe control signal.
Vizio contends that “valve control signal” is a different term than “control signal,” and
that “valve control signal” was distinguished in prosecution. Vizio contends that during
prosecution, PMC argued that “the channel control word 200 and its constituent codes” in the
Campbell reference “fail[ed] to anticipate the claimed valve control signals.” (Dkt. 196 Ex. J
(’644 application, July 21, 1997 Amendment) at 15.) Vizio further points to PMC’s statement
that in Campbell, “[t]he channel control word 200 defines codes that are required for access to
each television program being transmitted,” and “the channel control word 200 and its
constituent codes” perform a long list of functions, such as “defin[ing] the level of access
required for the television program in question,” and “provid[ing] the converter with the code
necessary to operate the video descrambler unit 116.” (Id.) Vizio contends that PMC then argued
that the valve control signals were different from all such codes. Vizio contends that, thus, PMC
excluded the channel control word and its constituent codes from “valve control signal[s].” Vizio
contends that PMC’s construction would encompass channel control words.
Samsung objects to PMC’s inclusion of “affect” or “enable” a valve. Samsung contends
that PMC is adding two additional capabilities that have nothing to do with the plain meaning of
51
“control.” Samsung contends that PMC’s construction is inconsistent with PMC’s point of
distinction with regard to the prior memory in that the memory communicated information as
part of its “innate functions of the memory 130 that do not require that the memory 130 be
controlled.” (Id. at 13-14.)
PMC contends that inclusion of Vizio’s “as opposed to channel control words” would
confuse the jury. PMC further contends that this limitation is not necessary because in
prosecution, it was found that valve control signals are not anticipated by “channel control
words.” (Dkt. No. 83 at 10.)
The parties did not argue this term at the oral hearing.
Analysis
PMC has not provided support for expanding “control” to also include “affect” and
“enable.” Absent evidence from the intrinsic record, the Court declines to make such change as
those terms extend beyond the ordinary meaning of “control.” 9 As to “channel control words,”
the parties are in agreement that channel control words are not valve control signals. (Dkt. No.
83 at 10.) This also conforms to the file history. As there is no disagreement on this issue, the
Court finds that for jury clarity the phrase is not necessary.
The Court construes “valve control signal[s]” to mean “signals that control the
operation of a valve.”
14. [a] control portion (’885 Patent claim 102)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio & Samsung Defendants
A portion that carries operating instructions.
9
For example, a power cord may affect or enable a desktop computer to work, but one would not
construe the power cord as controlling the computer.
52
The primary dispute is whether operating instructions must be included in the portion.
Positions of the Parties
PMC objects to Defendants’ use of “operating instructions.” PMC contends that when
operating instructions are required, the patentees used that term such as the use of “operating
system instruction” in claim 28 and “operating instructions” in claim 77. PMC contends that the
asserted claim only requires that the “control portion” be passed “to a programmable processor to
cause programming.” PMC contends that, thus, the control portion could be a digital signal that
causes programming to be loaded, rather than being operating instructions. (Dkt. No. 69 at 23.)
To the extent Defendants cite to an amendment in the ’217 Patent prosecution, PMC contends
that the claim in question stated “said at least a control portion of said instruction module to be
transferred to memory at a subscriber station and executed upon command.” (Dkt. No. 69 Ex. 14
(Oct. 4, 1999 Amendment) at 21.) PMC contends that, here, the claim does not require the
“control portion” to be part of an “instruction module.”
Samsung contends that PMC intends to argue that “control” captures other things such as
“affecting” and enabling” as PMC argued for “valve control signal” and “control signal.”
Samsung contends that claim 102 differentiates between a “control portion” and the more
general “first” and “second” “portions” of “digital data” recited in the claims. Samsung further
contends that the specification teaches that the control over the receiver station is via operating
instructions. (Dkt. No. 78 at 21 (citing ’217 Patent 14:6-13).)
The parties did not argue this term at the oral hearing.
Analysis
Samsung has not pointed to evidence for limiting the term to instructions. Samsung’s
identification of a mere embodiment in the specification only points to an embodiment and
53
Samsung has not pointed to anything limiting the term. See Arlington, 632 F.3d at 1254. Further,
as noted by PMC some claims explicitly recite instructions and some do not, further counseling
against Samsung’s limitations. See Phillips, 415 F.3d at 1314. As to Samsung’s arguments
regarding the “control signal” disputes, the Court notes just as in those terms, “control portion”
requires the control concept, not merely affecting or enabling.
The Court finds that “[a] control portion” has its plain and ordinary meaning.
15. among said plurality of programmable processors (’885 Patent claim 102)
PMC
Between some or all of the
programmable processors.
Vizio Defendants
Through each of the plurality
of programmable processors
in the receiver station.
Samsung Defendants
Among each of the plurality
of programmable processors
in the receiver station.
The parties dispute whether the passing function is among “some or all” (PMC) verse
“each” (Defendants) of the processors.
Positions of the Parties
PMC acknowledges that in one 2014 prosecution response, the applicants referred to
“passing at least a portion of said digital data to each of said plurality of programmable
processors.” (Dkt. No. 69 Ex. 15 at 49.) PMC contends that this was merely a “cut and paste”
error, because in an earlier 2013 office action response the applicants had discussed the same
prior art (Yanagimachi) reference and used the same language, however, in that 2013 response
the claim at issue used the word “each.” (Dkt No. 69 at 24 (citing Dkt. 69 Ex. 16 at 52).) PMC
contends that the applicants mistakenly copied the office action response language. PMC
contends that the two claims in question (then claims 123 and 158) cannot reasonably be
considered to be equivalent in this regard because one used “each” and one did not. PMC
contends that this alone indicates that the 2014 office action was not a “clear and unambiguous”
54
disavowal. PMC notes that while issued ’885 Patent claims 109 and 110 use “each,” the failure
to use “each” in claim 102 indicates that “each” was not intended in claim 102.
Further, PMC contends that “each” was not the point of distinction made over
Yanagimachi, but rather, the point of distinction was whether Yanagimachi disclosed
“programmable” processors. PMC contends that accordingly, the way to reconcile the
prosecution history was that the discussion of “each” with respect to claim 158 was “a
throwaway” and not a clear unequivocal disavowal. (Dkt. No. 83 at 11.)
Vizio contends that twice PMC argued that the prior art failed to teach “passing at least a
portion said digital data to each of said plurality of programmable processors.” (Dkt. No. 196 Ex.
L (Jan. 15, 2014 Amendment) at 49; Dkt. No. 196 Ex. M (July 8, 2013 Amendment) at 52.)
Vizio contends that whether or not the applicants made a “cut and paste” error is irrelevant under
the law. Vizio contends that the Federal Circuit has repeatedly relied on the public notice
functions of prosecution histories and “requires that a patentee be held to what he declares during
the prosecution of his patent.” Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989,
995 (Fed. Cir. 2003) (“If the applicant mistakenly disclaimed coverage of the claimed invention,
then the applicant should have amended the file to reflect the error, as the applicant is the party
in the best position to do so.”).
Samsung similarly states that PMC acknowledges that the applicants distinguished
Yanagimachi in 2013 based on “each” and used the same distinction in 2014. Samsung contends
that this was not merely a cut and paste error because a side by side comparison of the two
amendments indicates that the paragraphs in question where changed significantly:
55
(Dkt. No. 78 at 22-23.) Further, Samsung notes that the January 2014 response also distinguished
then claim 158 a second time on the same basis in the next paragraph: “Nor, does the reference
teach the processing of the passed at least a portion of digital data or stream of digital data (or
data message) and/or outputting processing information at each of said plurality of
programmable processors, as claimed in claims 158, and 162-164.” (Dkt. No. 69 Ex. 15 at 49.)
The parties did not argue this term at the oral hearing.
Analysis
As drafted, the plain claim language could arguably take on one of two meanings: “some
or all” or “each.” Each party points to the intrinsic record as support for their position. Though
claim language varying among terms is indicative of the differing meanings, it is not an absolute
rule. See Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012)
56
(claim differentiation cannot “overcome…a contrary construction dictated by the written
description or prosecution history.”). Here, the applicants twice prescribed in prosecution a
meaning to “among” as used in the asserted claim. That such meaning was “mistakenly” made is
not clear in the record. The applicants’ statements, however, do clearly reference “among” in the
context of “each” processor with regard to the asserted claim.
The Court construes “among said plurality of programmable processors” to mean
“among each of the plurality of programmable processors.”
16. command[s] (’650 Patent claims 1 and 18)
PMC
Signal that causes performance of a function.
Vizio & Samsung Defendants
An instance of signal information that is
addressed to a particular subscriber station
apparatus and that causes said apparatus to
perform a particular function or functions, and
that always includes at least a header and an
execution segment.
The parties dispute whether a paragraph in the specification is definitional and whether
elsewhere the specification contradicts that paragraph.
Positions of the Parties
PMC contends that Defendants’ construction reads out preferred embodiments disclosed
in the specification. Specifically, PMC contends the specification discloses the “pseudo
command” and the “meter command” are commands that are “addressed to no apparatus” and
“do[] not instruct [any] processors . . . to perform any controlled functions.” ’217 Patent 25:3338. PMC states that although “[t]hese commands are always transmitted with meter-monitor
segment data” there is no mention of a header or an execution segment that must also be part of
the transmission. PMC further contends that these commands allow “gathering ratings on
conventional programming transmissions . . . without causing . . . controlled functions at
57
inappropriate times” and “apparatus . . . to transmit meter information to buffer/comparator, 14,
without performing any controlled function.” Id. at 25:33-54. PMC contends that these
embodiments are excluded by Defendants’ inclusion of “addressed to a particular subscriber
station apparatus” and “always includes at least a header and an execution segment.” (Dkt. No.
69 at 27.)
PMC further notes that the claims already provide details as to the commands: to be
directed at either “said control processor” (claim 1) or “said plurality of processors (claim 18).
PMC contends that Defendants’ inclusion of a “subscriber station” adds a term not in the claim.
PMC further contends that both asserted claims also disclose as one of the limitations that “a
plurality of” or “at least one” “command[s] in [a/said] message stream” are input to one or more
apparatus. PMC contends that, at least with respect to the claim language at issue, details such as
“at least a header and an execution segment” are irrelevant given the disclosure of “command[s]
in [a/said] message stream” and therefore should be excluded from construction to save the jury
from unnecessary confusion.
PMC contends that its construction leaves out unnecessary details regarding what
apparatus commands are addressed to, and it does not read out embodiments. PMC states that the
asserted claims in which “command” appears already set forth what apparatus commands are
directed to, and it would be redundant to include in the construction that commands are
“addressed to a particular subscriber station apparatus.” PMC states that Defendants’
construction also excludes an embodiment—“pseudo commands,” which are “addressed to no
apparatus.” ’217 Patent 25:34-35. As to “meter commands,” PMC states that the specification
discloses that “[t]he meter command causes apparatus such as controller, 12, of FIG. 2D to
transmit meter information to buffer/comparator, 14, without performing any controlled
58
function.” Id. at 25:51-54. PMC, thus, contends that meter commands still cause performance of
a function (i.e., transmitting meter information to the buffer/comparator), but in that specific
embodiment it does not perform a “controlled function.” (Dkt. No. 83 at 12.)
Vizio and Samsung contend that their construction comes directly from the definition
provided in the specification:
A command is an instance of signal information that is addressed to particular
subscriber station apparatus and that causes said apparatus to perform a particular
function or functions. A command is always constituted of at least a header and
an execution segment.
’217 Patent 23:34-38. Vizio states that PMC’s construction relies on a single paragraph that
appears to disclose embodiments which conflict with the explicit definition of “command.” (Dkt.
No. 196 at 19.) Vizio states that the specification discloses “pseudo commands” and “meter
commands,” which are “addressed to no apparatus” and “do[] not instruct processors . . . to
perform any controlled functions.” ’217 Patent 25:33-38. Vizio states that the applicant “cannot
rely on its own use of inconsistent and confusing language in the specification to support a broad
claim construction which is otherwise foreclosed.” Trustees of Columbia Univ. v. Symantec
Corp., 811 F.3d 1359 (Fed. Cir. 2016). Vizio contends that PMC’s own construction conflicts
with the disclosed “meter commands,” because meter commands do not cause performance of
any controlled functions.
Analysis
The specification contains two relevant paragraphs. The first states:
A command is an instance of signal information that is addressed to particular
subscriber station apparatus and that causes said apparatus to perform a particular
function or functions. A command is always constituted of at least a header and
an execution segment. With respect to any given command, its execution segment
contains information that specifies the apparatus that said command addresses and
specifies a particular function or functions that said command causes said
59
apparatus to perform. (Hereinafter, functions that execution segment information
causes subscriber station apparatus to perform are called "controlled functions.")
’217 Patent 23:34-43. This passage is found in a section entitled “The Composition of Signal
Information…Commands, Information Segments and Padding Bits.” The first two paragraphs
describe signals. The third paragraph is listed above and provides a definitional statement as to
commands. Then specification states in column 25:
The preferred embodiment includes one appropriate command (hereinafter called
the "pseudo command") that is addressed to no apparatus and one command that
is addressed to URS signal processors, 200, (hereinafter, the "meter command")
but does not instruct said processors, 200, to perform any controlled function.
These commands are always transmitted with meter-monitor segment data that
receiver station apparatus automatically process and record. By transmitting
pseudo command and meter command signals, transmission stations cause
receiver station apparatus to record meter-monitor segment information without
executing controlled functions. The pseudo command enables a so-called ratings
service to use the same system for gathering ratings on conventional
programming transmissions that it uses for combined media without causing
combined media apparatus to execute controlled functions at inappropriate times
(eg., combine overlays onto displays of conventional television programming).
The meter command causes apparatus such as controller, 12, of FIG. 2D to
transmit meter information to buffer/comparator, 14, without performing any
controlled function.
Id. at 25:33-53.
The Court finds that in the overall context of the specification, the first passage cited
above is definitional in nature. At the oral hearing, PMC acknowledged to the Court that there
was no portion of the specification in which a command is described as not having a
header/execution section. (See Dkt. No. 237 at 26-27.) Thus, neither the column 25 passage cited
by PMC nor elsewhere in the specification is the statement that “[a] command is always
constituted of at least a header and an execution segment” (’217 Patent 23:37-38) contradicted.
The specification is clear as to this point.
60
The remaining dispute centers on whether a command must be “addressed to a particular
subscriber station apparatus.” As to the addressing concept, PMC acknowledged that the
specification teaches that only pseudo commands fail to be addressed. The specification provides
an explicit statement in a definitional description section of the patent that states “[a] command
is an instance of signal information that is addressed to particular subscriber station apparatus
and that causes said apparatus to perform a particular function or functions.” ’217 Patent 23:3437. The specification is equally clear that the one exception to this rule is specifically labeled
differently, a “pseudo command:” “one appropriate command (hereinafter called the "pseudo
command") that is addressed to no apparatus.” Id. at 25:33-35. The claims in question recite a
“command” not a “pseudo command.” Moreover, the context of the claim usage conforms with a
command as opposed to a pseudo command, because in the claims the commands are provided to
a particular processor: in claim 1 the commands are explicitly input to the control processor and
in claim 18 they are provided to “said first of said plurality of processors.”
The Court construes “command[s]” to mean “an instance of signal information that
is addressed to particular subscriber station apparatus and that causes said apparatus to
perform a particular function or functions. A command is always constituted of at least a
header and an execution segment.”
17. explains [a/said] significance (’217 Patent claims 1, 4, 30, and 38)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio & Samsung Defendants
Indefinite
The parties dispute whether how an “explanation” is made and what level of
“significance” is required to be disclosed.
61
Positions of the Parties
PMC contends that the surrounding claim language of claim 1 states “outputting and
displaying said multimedia presentation to a user at said receiver station based on said step of
coordinating such that said presentation using said information has a predetermined relationship
to said content of said medium . . . and said content of said medium . . . explains a significance of
said presentation using said information.” PMC contends that the specification discloses this
limitation:
…TV monitor, 202M, displays the conventional television image and the sound
of the transmitted "Wall Street Week" program. During this time the program
may show the so-called "talking head" of the host as he describes the behavior of
the stock market over the course of the week. Then the host says, "Now as we
turn to the graphs, here is what the Dow Jones Industrials did in the week just
past," and a studio generated graphic is transmitted. FIG. 1B shows the image of
said graphic as it appears on the video screen of TV monitor, 202M. Then the host
says, "And here is what your portfolio did." . . . TV monitor, 202M, then displays
the image shown in FIG. 1C which is the microcomputer generated graphic of the
subscriber's own portfolio performance overlaid on the studio generated graphic.
And microcomputer, 205, commences waiting for another instruction from
decoder, 203.
By itself, the meaning of FIG. 1A is hardly clear. But when FIG. 1A is
combined and displayed at the proper time with the conventional television
information, its meaning becomes readily apparent. Simultaneously, each
subscriber in a large audience of subscribers sees his own specific performance
information as it relates to the performance information of the market as a whole.
’217 Patent 13:63-14:27. PMC contends that this means that the graphic of the subscriber’s own
portfolio performance has a “predetermined relationship” with the audio and video content of the
“Wall Street Week” program, and the conventional television information in “Wall Street Week”
“explains a significance” of the subscriber’s graphic. PMC contends that this was also described
in prosecution when the applicants proposed to amend then claim 7 “to set forth that content of
the second medium explains a significance of content of the first portion of the multimedia
presentation,” and stated that (1) the “disclosed WSW television programming is a second
62
medium,” (2) the “graphic overlay of a viewer’s stock portfolio performance is a first portion of
the multimedia presentation,” and (3) “[c]ontent of the WSW television programming, i.e., the
host saying ‘and here is what your portfolio did,’ explains the significance of the content of the
graphic overlay.” (Dkt. No. 69 Ex. 20 (February 4, 2002 Response) at 30.) PMC notes that the
applicants explained that “[i]n other words, the content of the second medium that is output in
coordinated fashion with the first medium includes some explanation or evaluation of the
meaning or importance of the content of the first medium.” (Id. at 113.)
Vizio contends that the ’217 Patent’s claims and specification lack any frame of reference
as to how an “explanation” is made and what level of “significance” is required, making the term
subjective. As to PMC’s Wall Street Week example, Vizio contends that PMC’s assertions (that
the embodiment in which a TV host states, “Here is what your portfolio did today,” explains the
significance of a subscriber’s personal stock portfolio graphic when it is overlaid on top of a
stock market graphic) is not correct. Vizio contends that the example does not use the term
“explains a significance,” does not define this term, and does not describe what in the receiver
station is used to create the explanation. Vizio contends that, thus, the example fails to cure the
uncertainty of this term. (Dkt. No. 196 at 20.)
Vizio further contends that the claim language has other ambiguities. Specifically, Vizio
points to claim 30 requiring that the “content of said second medium” (e.g., a broadcast
television program) comes from an external source and is not within the control of the claimed
“multimedia presentation apparatus.” Vizio contends that infringement of this term depends
entirely on the content of the medium and has no relation to the claimed receiver station’s ability
to create a multimedia presentation according to the claim. Vizio points to Ex parte Brummer as
supporting Vizio’s indefiniteness position. Ex parte Brummer, 12 U.S.P.Q.2d (BNA) 1653, 1655
63
(1989) (finding a claim reciting a bicycle with dimensions defined by the rider’s height and
weight indefinite because “the same bicycle might fall within this language of claim 9 when
ridden by a rider of one combination of weight and build, but not when ridden by a rider of
another”). Vizio contends that this would result in a system displaying a car commercial to
infringe when the narrator “explains” the significant features of the car (whatever they may be),
but not infringe if the commercial merely shows a car and plays music. Vizio contends that this
example is not an abstract hypothetical: PMC contends Vizio infringes because the audio of a
standard television program explains the significance of the video of the same standard television
program, regardless of what the television program is or how the television is operated. (Dkt. No.
196 Ex. R (’217 infringement contentions) at 114.)
Vizio further points to the prosecution history in which PMC argued, during prosecution,
that the prior art’s “teletext character translation is provided to explain the meaning of the second
language sub-audio,” referring to subtitles translating foreign language audio. (Dkt. 196 Ex. S
(Feb. 4, 2002 Amendment) at 131.) Vizio contends that a translation does not, however, explain
the significance of the audio as it is simply a translation. Vizio contends that if the viewer is
fluent in the audio’s language but not the teletext language, then the translation is of no
significance to the viewer because the viewer already understands the audio but does not
understand the sub-titles. (Dkt. No. 196 at 20.)
Samsung states that none of the specification excerpts cited by PMC disclose how the
underlying programming explains the significance of the overlay. Samsung contends that in the
Wall Street Week example, when the host says “and here is what your portfolio did,” it is unclear
how this explains the significance of the stock portfolio performance. Samsung states that, more
importantly, the specification is silent on what “significance” means as the term is never used in
64
the 1981 Specification on which PMC relies. Samsung contends that the word “significance,” in
this context, is ambiguous and lacks reasonable certainty and is, therefore, indefinite.
In reply, PMC states that, in prosecution, the applicants argued on appeal to the BPAI
that it “is the substance, gist, meaning or significance of the second medium that must explain
the significance of the presentation,” and that a “structural portion of television signal, such as
synchronization pulse, cannot explain the significance of a presentation.”(Dkt. No. 83 Ex. 1
(Mar. 27, 2006 Reply Br.) at 14.) The BPAI reversed the Examiner’s rejection, finding that the
prior art reference failed to disclose that “said content of said second medium explains a
significance of said presentation using said information . . . .” (Dkt. No. 69 Ex. 8 (Jan. 13, 2009
BPAI Decision) at 69-70.) PMC further states that Defendants’ argument also ignores that the
specification sets forth a clear example in the Wall Street Week embodiment regarding what
“explains a significance” means. As to Vizio’s argument that Claim 30 is indefinite because the
“content of said second medium” comes from an external source over which the claimed
apparatus has no control, PMC states that claim 30 recites that the “microcomputer” of the
claimed “multimedia presentation apparatus” must “determine[] content of each received
medium received” and “coordinate[] a presentation . . . based on said microcomputer
determining content of said second medium by processing an identifier which identifies said
content . . . .” ’217 Patent claim 30.
At the oral hearing, the Defendants emphasized a file history discussion of the Baker
reference in which Defendants contend a television signal of a picture of a bank (such as a logo)
explains the significance of data data (such as an account balance). (Dkt. No. 237 at 102-103,
105-106.) Defendants contend that the logo explained a significance of the account balance, yet
this example was argued in prosecution to not explain the significance of the bank data. (Id.) At
65
the hearing, PMC contended that the bank logo provided no explanation as to the account
balance. (Id. at 107-108.)
Analysis
Defendants have not established that a person of skill in the art could not determine with
reasonable certainty the scope of the term, particularly in light of the intrinsic evidence. See
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30. The claim language
describes “explains a significance of said presentation using said information.” Though
Defendants argue otherwise, the Court finds that the Wall Street Week example in the
specification helps provide reasonable certainty by illustrating an example of such explanation of
the significance of the presentation. ’217 Patent 13:63-14:27. Note, the “host says, ‘And here is
what your portfolio did.’” Id. at 14:6. Further, “[b]y itself, the meaning of FIG. 1A is hardly
clear. But when FIG. 1A is combined and displayed at the proper time with the conventional
television information, its meaning becomes readily apparent.” Id. Together this disclosure
provides support and certainty to the claim limitation. The BPAI also found the language
understandable. (Dkt. No. 69 Ex. 8 (Jan. 13, 2009 BPAI Decision) at 69-70.) Elsewhere, the
prosecution history also makes the language clear. (Dkt. No. 69 Ex. 20 (February 4, 2002
Response) at 30.) As to Defendants’ dispute regarding the Baker reference, Defendants have not
shown how the bank logo explains a significance of the bank balance such that any uncertainty is
interjected into the term “explains a significance of.”
The Court finds that the term "explains [a/said] significance" has its plain
and ordinary meaning.
66
18. instruct signals (’6,649 Patent claim 9)
PMC
This term does not require construction
beyond its plain and ordinary meaning. If
required, To the extent a construction is
necessary, PMC proposes:
Signals carrying information used by the
receiver station to invoke an operation.
Vizio & Samsung Defendants
A signal including an instruction or series of
instructions as opposed to identifiers used for
comparison purposes.
The parties dispute whether the term is limited to “instructions.”
Positions of the Parties
PMC notes that this Court, in the Echostar Markman Order, found that because the
“explicit claim language defin[ed] the function of the instruct signal,” the term required no
additional construction. (Dkt. No. 69 Ex. 11 at 34.) PMC also points to this Court’s statement in
the Zynga case which also found that the term “require[s] no construction” after analyzing the
claim language. (Dkt. No. 69 Ex. 12 at 26.) Finally, PMC contends the Special Master appointed
in the PMC v. Scientific-Atlanta, Inc. case explained, “‘an instruct signal’ is simply a signal” and
that “[t]he function of that signal is expressly set forth in the claim.” (Dkt. 69 at 31.)
If construction is needed, PMC points to the language of claim 9 “one or more instruct
signals . . . enable the receiver station to receive and identify [the] variable formats [of the]
plurality of discrete signals [which] deliver[] at least a portion of television programming.” PMC
also points to the specification: instruct signals contain “information that may include addresses
of specific receiver apparatus controlled by the signals and instructions that identify particular
functions the signals cause addressed apparatus to perform.” ’217 Patent 7:59-63.
Vizio contends that the prior Courts did not consider the ’6,649 Patent prosecution
history as that patent was not asserted in the prior cases. Vizio contends that during prosecution,
PMC argued that “address codes,” in a prior art reference, did not anticipate the claimed “instruct
67
signals” because the “address codes” “merely identify the page and row as being transmitted in
any given field … These address codes do not instruct anything…. The address codes are
compared and when matches occur, the character codes are entered into storage, the address
codes do not instruct anything to occur, they are used for comparison purposes only.” (Dkt. No.
196 Ex. C (Feb. 17, 1998 Amendment) at 70.) Vizio contends that its construction accounts for
these statements.
Samsung also contends that PMC attempts to change “instruct” to mean “information
used by the receiver station.” Samsung contends that the specification quote provided by PMC is
not relevant as it is from the 1987 specification whereas PMC is claiming priority to the 1981
specification. Further, Samsung contends that PMC fails to make clear that the quoted portion of
the specification relates to “embedded signals,” and that it is the embedded signals that contain
digital information and instructions. ’217 Patent 7:59-63.
In reply, PMC contends that contrary to Defendants’ assertions, PMC’s construction does
not read on “identifiers for comparison purposes” as recited in the file history because PMC’s
construction requires that “an operation” be “invoked” by the “receiver station.” PMC contends
that during prosecution, PMC argued the prior art’s “address codes” are not “effective at the
receiver station to implement a television signaling scheme” which defines the programming and
information content in said variable formats (including varying locations, timing, lengths, and
encryption schemes). (See Dkt. No. 196 Ex. C (Feb. 17, 1998 Amendment) at 71.) PMC
contends its construction is not antithetical to those statements, nor are the statements a clear
disavowal. (Dkt. No. 83 at 13.)
The parties did not argue this term at the oral hearing.
68
Analysis
The prosecution history cited by Defendants does not equate “instruct signals” with
“instructions.” The statements merely distinguished address data, but did not limit the signals to
instructions. The statements emphasized that address data does not instruct. (Dkt. No. 196 Ex. C
(Feb. 17, 1998 Amendment) at 70.) As noted by Samsung, PMC’s construction could be
interpreted to remove the “instruct” concept and merely encompass any data used by the receiver
station. Such a view of PMC’s construction does not appear to give full weight to the
requirement that the information is used “to invoke an operation.” To avoid such potential
confusion, the Court modifies PMC’s construction. “Instruct signals” are “signals carrying
information that instructs an operation to be invoked.”
The Court construes “instruct signals” to mean “signals carrying information that
instructs an operation to be invoked.”
19. …standard… (’2,649 Patent claims 88 and 90)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio & Samsung Defendants
Indefinite
Vizio contends the term could mean a “standard” such as a standard promulgated by a
standards organization or a “standard” such as a reference that is used for comparison purposes.
Samsung contends that “standard,” as used in the specification, references unifying operations
across multiple platforms but that this is not the use in the claims as the claims reference a
standard identifying a signal to be processed.
69
Positions of the Parties
PMC points to the surrounding claim language: “method of claim 1, wherein a standard
informs said receiver station of a signal to be processed, said method further comprising the step
of evaluating at least some of said selected at least one message based on said standard.” PMC
contends that the specification states an “objective of the unified system of programming
communication of the present invention is standardization of receiver station operating systems,”
and that with “standardization, any given transmission station such as the program originating
studio of example #10 can assemble and take control of a computer system of the computers of
selected subscriber stations in the fashion described above in example #7 without any need to
preprogram system software at any apparatus of said selected subscriber stations.” ’217 Patent
266:7-15. PMC also points to the examples of “EOFS Standard Word Location” and “EOFS
Standard Length Location.” Id. at 272:11-15. PMC contends that even Vizio’s expert agrees that
one “of ordinary skill in the art would understand a ‘standard’ to be a specification comprising a
set of normative requirements” and that “standards may be developed by a standards developing
organization (‘SDO’), a consortium, a single company, or other entity, and may be proprietary or
publicly known (i.e., open).” (Dkt. No. 83 at 14 (quoting Dkt. No. 196-23 (Reader Decl.) at
¶186).)
Vizio contends that the evidence cited by PMC uses “standard” in two distinct ways: (1)
the idea of “standardization” or use of standards, and (2) two registers (EOFS Standard Word
Location and Standard Length Location) which hold reference values for comparison purposes.
Vizio contends that if “standard” has the first meaning, the claim is indefinite because it is not
clear if the standard is a standard promulgated by an industry organization or one of the
Defendants’ own internal standards. (Dkt. No. 196 at 22.) Vizio contends that any transmission
70
must operate according to some defined standard to work, and thus, “standard” does not provide
any bounds if the term carries a broad meaning. As to the EOFS registers, Vizio contends that
the term “standard” is not used in the claims in the same manner that the word is used with
regard to the registers.
Samsung contends that “standardization” referenced in the specification has nothing to do
with the use of “standard” in the claims. Samsung contends that “standardization,” as used in the
specification, is in relation to unifying operating systems across platforms, not the “standard”
that identifies a signal to be processed as recited in the claims. (Dkt. No. 78 at 25.) As to the
EOFS citations, Samsung contends that “standard” is used as the proper name for a particular
memory location, not the “standard” recited in the claims. Samsung further contends that, though
known now, the specification provides no reference to digital television standards.
The parties did not argue this term at the oral hearing.
Analysis
As to Vizio’s contention that “standard” could have two meanings (a first meaning that
relates to standards such as an industry or internal company standard and a second meaning that
relates to being a reference value), Vizio has not identified any teaching in the intrinsic record
that would support a conclusion that the second concept is being referenced. As noted by PMC,
the specification states (1) an “objective of the unified system of programming communication
of the present invention is standardization of receiver station operating systems,” and (2) that
with “standardization, any given transmission station such as the program originating studio of
example #10 can assemble and take control of a computer system of the computers of selected
subscriber stations in the fashion described above in example #7 without any need to preprogram
system software at any apparatus of said selected subscriber stations.” ’217 Patent 266:7-15.
71
Such a teaching conforms with Vizio’s first understanding of a standard. Further, PMC also
points to the examples of “EOFS Standard Word Location” and “EOFS Standard Length
Location.” Id. at 272:11-15. That a “standard” location is used also conforms with the first
meaning attributed to Vizio. That the location is used for comparison purposes does not change
that a standard (in the first sense) location is utilized. Further, Vizio contends that the term
should limited to a particular type of standard (industry verse internal). However, whether an
industry standard or an internal standard, Vizio has not shown that it would not be
understandable to one of skill in the art as to the meaning of a “standard” as both are standards in
that usage of the term.
As to Samsung’s contention that “standard” is used as a name of a location, such a name
only supports that it is a “standard” location (in the first sense). Having rejected the “second”
potential construction of “standard,” the Court finds that it would be beneficial to a jury to
understand the term in accordance with the plain and ordinary meaning of the term in the first
context attributed by Vizio. The Court notes that Vizio’s expert provided a definition of such
ordinary meaning with which PMC also agrees. (Dkt. No. 83 at 14; Dkt. No. 196-23 (Reader
Decl.) at ¶186.) The Court finds that the intrinsic and extrinsic evidence does not conflict with
such meaning in the proper context of the specification.
The Court finds that “…standard…” means “specification comprising a set of
normative requirements.”
20. Order of steps for ’6,649 claim 9
PMC
The steps of claim 9 of the 6’649 patent need
not be performed in the order disclosed.
Vizio & Samsung Defendants
“Programming” step is performed prior to the
“inputting logic” step.
72
“Receiving one or more instruct signals step”
is performed prior to the “inputting logic”
step.
“Inputting logic” step is performed prior to
the “Receiving a plurality of discrete signals”
step.
The parties dispute whether the steps of the claim must be performed in the order recited.
Positions of the Parties
PMC contends that ordinarily the claim limitations of a method claim need not be
performed in a particular order. PMC contends that nothing in the claim requires an ordering.
PMC states that Defendants may argue that because the “inputting logic” step refers to “said
variable formats,” then the identity of the variable formats must be established in the preceding
“programming” and “receiving” steps. PMC contends, however, that the claimed system could
easily anticipate the various formats and instruct signals that might be encountered by the
receiver station and could be anticipatorily provided with the necessary logic to process them.
PMC further states that Defendants appear to assume that the receiver station could not “receive”
signals of a particular variable format before it had been input with logic to receive and identify
those signals. PMC states that though Defendants’ ordering of that particular step might be most
efficient, it is not required by the claim. The receiver station, for example, could cache the
signals until it later obtained the necessary logic to formally receive and identify them. (Dkt. No.
69 at 32.)
Defendants 10 contend that the claim requires “programming” the system to process
signals encoded in variable formats to allow for the identification of variable formats in the later
recited “inputting logic” step, and thus, accordingly, the “programming” step must be performed
10
Vizio adopts Samsung’s arguments. (Dkt. No. 196 at 23.)
73
prior to the “inputting logic step.” Defendants further contend that “receiving one or more
instruct signals” must take place before “inputting logic ... in accordance with one or more
instruct signals.” Finally, Defendants contend that before “receiving a plurality of discrete
signals identified according to a particular format,” the inputting logic step must be completed
because it “enable[s] said receiver station to receive … said variable formats.”
In reply, as to the programming step, PMC contends that nothing in the “programming”
step mentions using the programming to “identify” variable formats, as Samsung suggests. PMC
contends that Samsung does not respond to PMC’s argument that the system could receive
signals of a particular format before obtaining their associated logic by temporarily storing those
signals. PMC contends that because this possibility is feasible and is not foreclosed by the claim
language, Defendants’ attempt to impose an ordering on claim 9 is improper.
The parties did not argue this term at the oral hearing.
Analysis
Ordinarily, a method claim is not construed to require that its constituent steps be
performed in a particular order unless the claim recites an order. Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). A method claim that does not recite an
order may nonetheless be construed to require that the claim’s steps be performed in a particular
order if (1) the claim language, “as a matter of logic or grammar” requires that the steps be
performed in a particular order, or (2) the specification “directly or implicitly requires such a
narrow construction.” See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir.
2003). Defendants have pointed out neither. There is no reason (in the claims or specification)
that the inputting logic step could not be performed before the programming step or the receiving
one or more instruct signals step. Similarly, there is no reason that the receiving a plurality of
74
discrete signals step could not be performed before the inputting logic step. Defendants’ specific
ordering requirements are rejected.
The Court finds that the steps of 6’649 Patent claim 9 need not be performed in the
recited order.
21. dedicated register memory (’2,649 Patent claims 78, 82, 83, and 97)
PMC
A memory space location preconfigured
to temporarily store information for use in
later operations.
Vizio
A register memory used strictly for one
function, and not used for any other functions.
The parties dispute whether PMC includes the concept of “dedicated.”
Positions of the Parties
PMC contends that it has taken the Phase 1 “register memory” construction and modified
it to add the concept that the memory is “preconfigured” to store information. (Dkt. No. 69 at
34.) PMC contends that the concept of “dedicated” means that the register has been designated
for use as a register memory (at least until reconfiguration.). PMC objects to Vizio’s construction
as suggesting that a register memory can only have one function, thus requiring each specific
operation to have its own register memory. PMC contends that although Vizio points to a
passage that indicates that certain operation might have certain functions (’217 Patent 82:5583:37), PMC contends this does not define “dedicated register memory” to require this feature.
PMC states this passage only indicates that certain named register memories, not every register,
are “dedicated strictly to the functions described below and are not used for any other functions.”
PMC contends that the specification passage cited by Vizio only mentions that specific register
memories in one embodiment are “dedicated” to certain specific functions, but it never defines
the term “dedicated register memories.” At the oral hearing, PMC argued that “dedicated register
75
memory” merely refers to a register memory that is always a register memory, as opposed to a
memory that may temporarily operate as a register memory. (Dkt. No. 237 at 96-97.)
Vizio contends that under PMC’s construction, every memory location that can
temporarily store information would be “dedicated.” Vizio contends that PMC’s construction
effectively reads out the word “dedicated.” Vizio contends that the specification describes two
classes of register memories: working memories and dedicated memories. Vizio contends that
working memories can be used for multiple functions, but “dedicated register memories” are
“dedicated strictly to the functions described below, and are not used for any other functions.”
’217 Patent 83:24-26. Vizio contends that this passage is the only disclosure regarding dedicated
register memories, and PMC should be held to that disclosure. (Dkt. No. 196 at 23-24.)
Analysis
PMC’s construction, in effect, does not give meaning to “dedicated” as PMC’s
construction could be interpreted to encompass all register memories as the term “register
memory” is construed in the Phase 1 Order based on what breadth of meaning “preconfigured”
carries. Further, PMC has not pointed to any evidence that links “dedicated” to “preconfigured.”
Vizio, however, reads more into the specification than is actually recited. The specification
citation provided by Vizio states: “[w]ith the exception of the memories whose names include
the word ‘working,’ all the aforementioned register memories are dedicated strictly to the
functions described below and are not used for any other functions.” ’217 Patent 83:24-26. This
passage does not mandate that the “aforementioned register memories” may only have strictly
one function. In fact, the register memories may have the “functions” (plural) as “described
below.” These register memories are not stated to be limited to one function. The specification
does not provide a clear disavowal that the “dedicated” register memories must only provide one
76
function. In this context, “dedicated” as used in the term is more appropriately viewed as
describing the register memory, not the function provided by the register memory.
The Court construes “dedicated register memory” to mean “memory that is
dedicated for use solely as a register memory.”
22. [from/cause] said plurality of programmable processors (’885 Patent claims 102,
105, and 106)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio
From/cause each programmable processor of
said plurality of programmable processors.
The parties dispute whether the file history mandates the use of “each.”
Positions of the Parties
PMC contends the dispute is the same as the dispute for the term “among said plurality of
programmable processors,” whether the claim requires the invocation of all of the programmable
processors. PMC contends that the prosecution history Vizio cites to relates to canceled
application claim 123 which included the word “each.” (Dkt. No. 69 at 35-36.)
Vizio notes that the asserted issued claims (102, 105 and 106) correspond to application
claims 160, 163 and 164. Vizio contends that during prosecution, PMC stated that the prior art
fails to teach “outputting processing information at each of said plurality of programmable
processors, as claimed in claims 123-128 and 158-170. For this reason, the reference also fails to
teach . . . the step of causing, using a programmable control processor, at least one of said
plurality of programmable processors to receive only of said data message to process said data
message selectively, as claimed in Claims 128 and 163.” (Dkt. 196 Ex. M (July 8, 2013
Amendment) at 55.)
The parties did not argue this term at the oral hearing.
77
Analysis
Similar to the “among” term discussed above, the prosecution history provides guidance.
Though application claim 123 does not correspond to the asserted claims, application claims 160,
163 and 164 are corresponding claims and subject to the statements made by the applicants.
(Dkt. 196 Ex. M (July 8, 2013 Amendment) at 55.) For similar reasons as provided with the
“among” term, the Court finds that the proper construction includes “each.”
The Court construes “[from/cause] said plurality of programmable processors” to
mean “from/cause each programmable processor of said plurality of programmable
processors.”
23. receives a subset of a plurality of signals (’217 Patent claim 38)
PMC
This term does not require construction
beyond its plain and ordinary meaning. To
the extent a construction is necessary, PMC
proposes:
Receives a portion of a larger set of signals.
Vizio
Receives less than the full set of the plurality
of signals.
The dispute presented is really a dispute as to the meaning of “subset” as discussed above
for the term “subset of [a/said] plurality of signals.” PMC contends that the term does not need
construction, because the addition of “receives a” to the “subset of [a/said] plurality of signals”
does not raise any additional issues for construction. Vizio provided no additional briefing. The
parties did not argue this term at the oral hearing.
Analysis
Having construed “subset of [a/said] plurality of signals,” the addition of “receives a”
does not raise any additional construction disputes.
78
The Court finds that other than the construction of “subset of [a/said] plurality of
signals” as construed above, the term “receives a subset of a plurality of signals” needs no
further construction.
24. multimedia presentation (’217 Patent claims 1, 30, 31, 32, and 38)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio
Presentation comprising the combination of
two or more media (i.e., channels of
communication, such as radio, television,
broadcast print, or Internet).
To the extent a construction is necessary,
PMC proposes:
A presentation that uses multiple forms of
media.
The primary dispute is a dispute as to the meaning of “media,” which is a term construed
above. The parties also dispute whether Vizio’s construction would exclude disclosed
embodiments by requiring the presentation to be “combined,” thus excluding a coordinated
presentation of two media on two separate displays.
Positions of the Parties
PMC notes that Vizio’s use of “combined” would require the presentation to be output to
a single display. PMC contends that claims, such as ’217 Patent claim 14 require outputting the
television program of a multimedia presentation on a first output device and a second medium of
the presentation on a second output device. (Dkt. No. 69 at 38.) PMC also contends that Vizio’s
construction would exclude the Wall Street Week example (a graphic of a user’s portfolio
overlaid on the television program) because such a presentation is presented only through a TV
monitor, not through multiple channels of construction. (Id.) Vizio does not separately argue this
term beyond the arguments of the “media” term.
The parties did not argue this term at the oral hearing.
79
Analysis
The primary disputes between the parties are addressed above with regard to “media.” As
to the impact of “multi,” the Court adopts PMC’s construction.
The Court construes “multimedia presentation” to mean “a presentation that uses
multiple forms of media.”
25. Content Terms
content [of a/said [first/second] medium (’217 Patent claims 1, 4, 30, 31, and 38)
determining[s] content / identify[ies/ing] [said] content (’217 Patent claims 1, 30, and
38)
PMC
These terms do not require construction
beyond their plain and ordinary meaning.
Vizio
Content [of a/said [first/second] medium:
Information in or describing the medium,
such as the identity of the program, and
words, sounds, and images in the medium,
that say something about the substance of the
medium.
determining[s] content / identify[ies/ing]
[said] content:
Requires some ascertaining or recognizing the
content, e.g. an identifier that is associated
with a particular television program, and not
simply determining / identifying the presence
of a type of information.
NOTE: Vizio added the “e.g.” phrase post
briefing. (Dkt. No. 212 at 6.)
The parties dispute whether merely determining the type of information (for example
audio verse video) constitutes determining content.
80
Positions of the Parties
PMC contends that Vizio attempts to take disparate portions of the BPAI’s discussion of
“content of a medium” and combine them into a single claim definition, while removing context.
PMC states that the BPAI noted that a “definition of ‘content’ as ‘substance, gist, meaning, or
significance’ is supported by a dictionary definition” and that “[c]ontent of a medium is
information in or describing the medium, such as the identity of the program, and words, sounds,
and images in the medium.” (Dkt. No. 69 Ex. 8 (Jan. 13 2009 BPAI Decision) at 26.) PMC
contends that in a completely separate discussion over 60 pages later in its decision, the BPAI
distinguished the claims over prior art that disclosed identifying the “sync signal ‘content,’”
noting that “[a] sync signal may be content of a signal, but it is not ‘content’ of a ‘medium’
because it says nothing about the substance of the media (the program) being received.” Id. at 87.
PMC contends that Vizio combines these completely separate discussions of “medium,”
requiring that the “identity of the program, and words, sounds, and images in the medium” must
also “say something about the substance of the medium.” PMC contends that is not what the
BPAI said. PMC contends that to the extent any construction of this term is necessary, the BPAI
confirms that it merely means “the substance” of the medium. PMC contends that it would not
aid the jury to inform the jury that “the content” of the medium is synonymous with “the
substance” of the medium.
As to “determining / identifying” the content, PMC contends that Vizio selectively edits
the BPAI’s decision. PMC notes that the BPAI stated:
The limitations of “determining content” or “identifying content” require some
ascertaining or recognizing the content, but this is not limited to machine
recognition. As disclosed, this could be an identifier that is associated with a
particular television program, such as ‘Wall Street Week.’ The identifier is just a
number that has an association with the program and does not have to be human
readable text.
81
(Id. at 26.) PMC contends that Vizio takes the first part of this passage—“[r]equires some
ascertaining or recognizing the content”—and then omits the entire following discussion which
makes clear that identifying or determining content may simply include recognizing a numerical
identifier having some association with the content. PMC states that Vizio then adds a
requirement that “determining” or “identifying” the content of a medium cannot be “simply
identifying the presence of a type of information.” PMC contends that Vizio’s interpretation
would exclude the very embodiment relied upon by the BPAI, in which a numerical identifier
reflects the “presence of a type of information,” such as a particular television program.
Vizio contends that PMC disregards the prosecution history. Specifically, Vizio contends
that PMC repeatedly stated that the “content of a medium” is what the actual television program
is, and not just a description of what the signal is. Vizio contends that there are three examples:
(1) PMC described content as “program specific information” (Dkt. No. 196 Ex. S (Feb. 4, 2002
Amendment) at 35), (2) described an embodiment in which “the content of television
programming is determined” such that “a determination of what television program is received
[which] is not contemplated by the prior art” (id. at 119-120), and (3) disparaged the prior art
because it does “not signify what television program is being provided via the television
broadcast” (Dkt. No. 196 Ex. F (Mar. 7, 2005 Appeal Brief) at 32-33.). Vizio contends that it
proposes the same construction for “content of a medium” used by the Examiner in the Notice of
Allowance to capture PMC’s statements: “information in or describing the medium, such as the
identity of the program, and words, sounds, and images, in the medium []. Says something about
the substance of the media.” (Dkt. No. 196 Ex. B (Feb. 25, 2010 Notice of Allowance) at 3.)
Vizio also states that on appeal, PMC argued that determining the content of a medium
requires determining the identity of a television program (e.g., Wall Street Week). (Dkt. No. 196
82
Ex. F (Mar. 7, 2005 Appeal Brief) at 34.) Vizio contends that the Appeals Board and the
Examiner agreed and construed both “determining” and “identifying” content as “require some
ascertaining or recognizing the content, but this is not limited to machine recognition. As
disclosed, this could be an identifier that is associated with a particular television program, such
as ‘Wall Street Week.’” (Dkt. No. 196 Ex. N (Jan. 13, 2009 Decision on Appeal) at 26); (Dkt.
No. 196 Ex. B (Feb. 25, 2010 Notice of Allowance at 3).) In response to PMC’s argument that
Vizio’s proposed construction would “exclude the very embodiment relied upon by the BPAI,”
Vizio states that the “numerical identifier” does not merely identify the presence of a type of
information. Rather, Vizio notes that the BPAI stated, the numerical identifier would be unique
to the “Wall Street Week” television program, which is consistent with Vizio’s construction.
(Dkt. No. 196 Ex. N at 26.)
Vizio
contends
that
the
negative
limitation
in
Vizio’s
construction
for
determining/identifying content (“and not simply determining the presence of a type of
information”) is necessary because it prevents PMC from reclaiming scope that it disavowed
during prosecution, specifically that determining whether a signal includes audio or video
satisfies the claims. Vizio states that the Examiner initially asserted that identifying a “sub-pilot
tone” that indicated audio was present anticipated “determining the content” of a television
program. (Dkt. No. 196 Ex. S (Feb. 4, 2002 Amendment) at 128-129.) Vizio contends that to
traverse this rejection, PMC argued that merely detecting the “sub-pilot tone identifies the
presence, not the content, of the sub-audio.” (Id. at 138.) Vizio contends that PMC should not be
allowed to reclaim the scope it surrendered.
In reply, PMC summarizes the dispute as to what “content” is being determined or
identified in the claims: whether it could simply be a numerical identifier associated with a TV
83
program, or whether it must be something more: such as the “words, sounds, and images.” PMC
states that the BPAI decision makes clear that “content . . . could be an identifier that is
associated with a particular television program, such as ‘Wall Street Week.’” (Dkt. No. 69 Ex. 8
(Jan. 13, 2009 BPAI Decision) at 26.) PMC states that the BPAI further specifies that the
“identifier” is “just a number that has an association with the program and does not have to be
human readable text.” (Id.) PMC contends that Vizio’s construction, which requires the detection
of more than “the presence of a type of information,” is thus directly at odds with the BPAI’s
minimum requirement of a numerical identifier that need not be human-readable.
PMC contends that its description of content as “program specific information” does not
run afoul of a construction of “content” to require “a number that has an association with [a]
program.” (Dkt. No. 196 Ex. S (Feb. 4, 2002 Amendment) at 36.) PMC states that the numerical
identifier discussed by the BPAI may constitute “program specific information.” PMC states that
its description of its invention as requiring “a determination of what television program is
received” and whether “particular graphic information is overlaid on the television video” also
does not mean that the “determining” or “identifying” step must include the detection of more
than the presence of a type of information, such as digital video signals. PMC also asserts that
the supposed “disparage[ment] [of] the prior art” does “not signify what television program is
being provided” is again not at odds with a construction of “content” to require that a number
associated with the identity of a TV program be determined or identified. PMC contends that
Vizio’s construction of “content” should be rejected in favor of either no construction, or one
that comports with the BPAI’s statements which requires only a bare-bone numerical identifier
associated with a television program.
84
PMC states that if the Court wishes to construe “content of a medium,” it should adopt
the plain and ordinary meaning of “something about a medium.” PMC states that Vizio’s attempt
to place a negative limitation on “content” (i.e., it must say something about the presence of the
medium) is also based on a mistaken reading of PMC’s statements in the file history. PMC
contends that during prosecution, PMC stated that the Hirashima “second language subaudio/
teletext translation system” does not teach or suggest “identifying the content of a first medium
and identifying the content of a second medium” because detecting the presence of the subpilot
tone in Hirashima is not the same as detecting the content of the media. (Dkt. No. 196 Ex. S
(Feb. 4, 2002 Amendment) at 138 (“Detecting Hirashima’s sub-pilot tone identifies the presence,
not the content, of the sub-audio.”).) PMC contends if “identifying the content” means,
according to the BPAI, the determination of a numerical identifier associated with a program,
such as “Wall Street Week,” then there has been no surrender of claim scope for PMC to state
that the identification of a tone or sub-audio is not the same as the identification of a certain
program identifier, such as the name of the translation or audio recording under Hirashima. (Dkt.
No. 83 at 17.)
At
the
oral
hearing,
it
became
clear
that
PMC
contends
that
merely
determining/identifying the “type” of content is encompassed by the claim terms. (Dkt. 237 at
34-35, 37-38, 41-42, 47-48.) Thus, under PMC’s view the content could merely be categorized
as broadly as video or audio, and thus, “determining content” / “identifying content” could be as
simple as determining whether video or audio is present. PMC contends that there may be other
properties or characteristics to determine content but that the first question is what type of
content is present, and thus, merely determining the type of content (video or audio) is
“determining content” / “identifying content.” (Id. at 35, 37-38.)
85
Defendants emphasized at the oral hearing that the claim terms relate to identifying the
content, not merely identifying the type of transmission. Defendants noted that the claims
originally contained limitations as to the “kind” of transmission. Defendants noted that “kind”
was removed from the claims and the “determining the content” was added. Defendants then
noted that the corresponding applicant argument distinguished prior art which merely identified
the presence of sub-audio as opposed to determining the content. (Id. at 50-51.)
Analysis
The Court rejects PMC arguments as not conforming to the plain and ordinary meaning
of the terms, conflicting with the specification and conflicting with the file history. Further,
PMC’s arguments are inconsistent. As even PMC acknowledges, the plain and ordinary meaning
of “content” relates to the “substance” what is transmitted. (Dkt. No. 69 at 41.) At the oral
hearing PMC also reiterated that the “content” is the “substance or gist.” (Dkt. No. 237 at 47.)
This conforms to the identifiers of the content in the specification. ’490 Patent 15:57-60
(identifiers for each programming unit), 19:21-23 (identifier that identifies “Wall Street Week”);
’217 Patent 26:8-9 (identifier codes for each program). This also conforms to what PMC asserted
in prosecution amendments. (Dkt. No. 196 Ex. S at 35 (“identifying content in the description of
analyzing identifier signals to identify program specific information”), 119-120 (as to
“determines content,” the prior art does not suggest “determining the content of the television
video” and “the determination of what television program is received is not contemplated by the
applied art.”), 138 (detecting the presence of sub-audio is “not the content” detection).) This also
conforms to PMC’s appeal arguments. (Dkt. No. 196 Ex. F at 32-33 (“Accordingly ‘content’ is
properly construed to mean ‘substance,’ ‘gist,’ “meaning’ or ‘significance,’ in contrast to ‘form’
or ‘structure.’”), 33 (“the Examiner has interpreted the term ‘determining content’ to simply
86
mean ‘detecting a portion of a transmission signal.’ As properly construed, the synchronization
signals of a television video signal are not ‘content’ of a medium.”), 34 (“The content (the ‘Wall
Street Week’ program) of the television broadcast (second medium) is identified.”)) This also
conforms to the BPAI’s appeal decision. (Dkt. No. 196 Ex. N at 26 (“Although not defined in the
specification, Appellants' definition of ‘content’ as ‘substance, gist, meaning, or significance’ is
supported by a dictionary definition (Br. 32). ‘Content’ of a medium is information in or
describing the medium, such as the identity of the program, and words, sounds, and images in the
medium. The limitations of ‘determining content’ or ‘identifying content’ require some
ascertaining or recognizing the content, but this is not limited to machine recognition. As
disclosed, this could be an identifier that is associated with a particular television program,
such as ‘Wall Street Week.’”))
Thus, the intrinsic record clearly conforms to the plain and ordinary meaning which
conveys the concept of the substance or gist of what is being transmitted. Further, this evidence
clearly counsels that determining / identifying the content is not merely identifying the type of
the medium.
PMC ignores this meaning and bases its arguments, though, on the contention that
“content” transmitted on a medium is “something about a medium” such as merely identifying
the presence of video or audio. (Dkt. No. 83 at 17; Dkt. 237 at 34-35, 37-38, 47-48.) To reach
this conclusion, PMC ignores the plain meaning described above. Further, PMC ignores the clear
context of the claims in which the “content” of a medium and “medium” are separate elements.
Thus, PMC argues that identifying merely “TV” or “audio” would identify the content. PMC,
though, is identifying the medium, not the content, which are different claim elements. For
example, ’217 Patent claim 1 recites (1) a first medium and a second medium and (2)
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determining content of each medium. The content is then identified with an identifier and the
identifier is used in coordinating the multimedia presentation including the requirement that
“said content of said medium comprising an identifier that matches said predetermined identifier
explains a significance of said presentation using said information.” Under PMC’s theory,
merely identifying the type of medium would be sufficient to identify the content. However, such
identification does not identify the “substance” of what is transmitted. PMC’s position also
directly conflicts with its prosecution arguments in which PMC argued that the claims did not
merely relate to identifying the type of transmission, such as merely identifying the presence of
sub-audio. In fact, PMC appears to construe the terms to mean that which was explicitly
removed from the claim, the “kind” of transmission.
Further, PMC acknowledged, at the oral hearing, that its construction does not require
identifying the content but rather merely “the first question” that is part of identifying the
content. (Dkt. No. 237 at 35, 37-38, 47-48 (identifying “TV” or “audio” is sufficient).) However,
the claim limitation does not merely state determining or identifying part of the content or
performing a partial identification of the content, rather the terms in question are “determining
content” and “identify[ies/ing] content.” Merely identifying the type of content does not identify
the content.
Finally, it is noted that PMC also bases its arguments on the premise that Vizio would
exclude the example of there being a numerical identifier associated with a TV program. Vizio
does not make such a statement, and Vizio’s construction explicitly contradicts PMC’s assertion.
In particular, Vizio’s construction would encompass “information,” which is “the identity of the
program.” Such information could clearly be the numerical identifier of a TV program. PMC
has not presented any evidence that indicates Vizio’s construction conflicts with the intrinsic
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record. Moreover, Vizio’s construction is in accordance with the plain meaning and the repeated
statements of the applicants and the BPAI.
The Court finds that “content [of a/said [first/second] medium” has its plain and
ordinary meaning and that “determining[s] content / identify[ies/ing] [said] content” means
“ascertaining or recognizing the content, and not simply determining / identifying the type
of medium.”
26. a [first/second] passing fashion (’885 Patent claim 102 and 106)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Vizio
Indefinite
Vizio contends that the type or manner of passing is not disclosed.
Positions of the Parties
PMC states that the claim recites, “passing a first portion of said stream of digital data
among said plurality of programmable processors in a first passing fashion” and “controlling,
with said programmable control processor, the passing of a second portion of said stream of
digital data among said plurality of programmable processors in a second passing fashion.” PMC
contends that one of ordinary skill in the art, reviewing the claims and the specification, would
understand (1) that there are different fashions, or manners, of passing streams of digital data and
(2) what a first passing fashion and a second passing fashion, as recited in the claims, mean.
(Dkt. No. 69 at 41.)
Vizio notes that PMC readily admits there are “different fashions, or manners of passing
streams of digital data,” but Vizio contends that nothing in the specification or prosecution
history provides any guidance to one of ordinary skill in the art as to what these “fashions or
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manners” are. Vizio contends that even with the guidance of the intrinsic record, a person skilled
in the art could understand “passing fashion” as passing data or signals uncompressed,
compressed, unencrypted, encrypted, with error correction, without error correction, with or
without authorization information, passing by value, or passing by reference, etc. (Dkt. No. 196
at 27 (citing Dkt. No. 196-23 (Reader Decl.) at ¶¶ 116, 139).)
Vizio also contends that nothing suggests how the first and second passing fashions
differ. Vizio contends that in Intermec Techs. Corp. v. Palm Inc. a pair of similar terms, “first
style” and “second style,” are indefinite because “[n]owhere in the specification or claims is
there any suggestion as to how the styles differ, examples of styles, nor any other guidance
which would allow a person of ordinary skill in the art to discern the meaning of ‘first style’ or
‘second style,’ nor to discern the degree of difference between the two.” Intermec Techs. Corp. v.
Palm Inc., 738 F. Supp. 2d 522, 546-48 (D. Del. 2010). Vizio contends that the ’885 patent
specification, claims, and prosecution history provide no guidance as to how the “first/second
passing fashions” differ.
In reply, PMC contends that the specification includes extensive disclosures of
“fashion[s]” in which data is passed. PMC points to the specification disclosures that “[w]hen
said transfer-00-header-message instructions are executed in the course of the processing of the
message of FIG. 2H, said instructions cause processing to proceed in the following fashion,”
followed by more than a column of disclosures regarding how the message is processed and
transferred. ’217 Patent 59:1- 60:16. PMC also points to the passage: “In this fashion, said
transfer-a-00-header-message instructions cause controller, 39, to transfer the message of FIG.
2H to the addressed apparatus of said message.” Id. at 60:14-16. PMC contends that the claims
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make clear that the data must be passed in a “first” and “second” passing fashion, i.e., different
fashions of passing data.
The parties did not argue this term at the oral hearing.
Analysis
The claim limitation only requires passing a first portion of the data among the processes
in a first fashion and passing a second portion in a second fashion. Vizio seeks to limit the claims
to a particular type of passing. However, that is not what is claimed. The specification provides
numerous details regarding ways portions could be passed. ’217 Patent 59:1- 60:16. This portion
of the description begins by stating that “instructions cause processing to proceed in the
following fashion.” Seven paragraphs then explain the fashion of transferring a message of
Figure 2H such that “[i]n this fashion,” the message instructions cause the controller “to transfer
the message of FIG. 2H to the addressed apparatus.” Id. at 60:14-16, 59:5-60:7. The specification
continues with “[b]y contrast…” and then describes the transfer of a message that contains
command information such as shown in Figure 2K. Id. at 60:17-61:36. These passages of the
description are summarized as describing “[i]n this fashion…instructions cause controller, 39, to
transfer the message of FIG. 2K to the addressed apparatus of said message.” In this context, it
is reasonably certain that there can be multiple ways of passing portions of the data among the
processors. Vizio, in effect, contends that the first fashion and second fashion must be limited to
particular fashions. However, even Vizio’s expert acknowledges that one skilled in the art would
understand that there may be many different ways passing could be performed as a broad range
of possibilities exists. (Dkt. No. 196-23 (Reader Decl.) at ¶¶ 116, 139.) Merely because a term is
broad does not render it indefinite. Here, it is reasonably certain that, as claimed, there merely
must be a first fashion and a second fashion. Further, the intrinsic evidence provides meaning to
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the passing fashions and the extrinsic evidence establishes that the concept of differing fashions
of passing would have meaning to one skilled in the art to a reasonable certainty.
The Court finds that “a [first/second] passing fashion” has its plain and ordinary
meaning.
27. expanding [and contracting] the portion of said [received] information transmission
(’775 Patent claims 3 and 13)
PMC
Selecting a longer [or a shorter] portion of
said [received] information transmission.
Vizio
Indefinite
The parties do not raise issues beyond those raised in the term “an expanded [and
contracted] code portion” which is construed above. The same analysis applies here.
The Court construes “expanding [and contracting] the portion of said [received]
information transmission” to mean “selecting a larger [or a smaller] portion of said
[received] information transmission.”
28. control processor (’2,649 Patent claims 1, 2, 3, 8, 11, 13, 39, 41, 42, 62, 67, 78, 91, 92,
93, and 97; ’650 Patent claim 1)
PMC
A digital electronic device or circuit that
controls other devices or circuits by operating
on control information according to
instructions.
Samsung
A processor that controls other devices or
circuitry by processing control information.
As noted in the Agreed Constructions above, the parties agreed that “processor” means “a
device that performs operations according to instructions.” Samsung contends that PMC’s
change of “processor” to “digital electronic device or circuit” is noteworthy because “digital
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electronic device” does not appear in the patent specification. The parties did not argue this term
at the oral hearing.
The term in question includes “processor.” PMC has not shown why the agreed
construction of “processor” should be deviated from. Having construed “processor,” Samsung’s
construction most accurately conforms to the specification. Specifically, the specification
describes control processors responding to “signals” generally. ’217 Patent Abstract. Further,
SPAM signals “are invoked at the control processor” (’217 Patent 81:32-36) and “SPAM signals
includes data, computer program instructions, and commands” (’217 Patent 22:4-5).
The Court construes “control processor” to mean “a processor that controls other
devices or circuitry by processing control information.”
29. message / message stream (’2,649 Patent claims 1, 2, 7, 8, 11, 28 29, 39, 41, 48, 49, 50,
51, 64, 78, 82, 83, 84, 88, 90, 92, 93, 94, 97; ’650 Patent claim 1 )
PMC
(message) A digital data package having a
recognizable structure.
(message stream) A series of messages.
Samsung
(message) All the signal processing
information, transmitted in a given
transmission, from the first bit of one header
to the last bit transmitted before the
first bit of the next header.
(message stream) A series of ordered
transmitted messages.
Positions of the Parties
Samsung’s construction of “message” conforms to the Court’s Phase 1 preliminary
construction. PMC acknowledges that the Court’s Phase 1 preliminary construction of “message”
is acceptable and also has no objections to construing “message stream” to be “a series of
messages.” (Dkt. No. 69 at 50.) Samsung contends that PMC does not cite support to limit the
term to “digital data package” or “recognizable structure.” (Dkt. No. 78 at 28.)
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As to “message stream,” Samsung contends that the specification shows message streams
in a particular order. (Dkt. No. 78 at 28 (citing Figure 2I).) Samsung further contends that the
specification teaches that messages are transmitted.
The parties did not argue this term at the oral hearing.
Analysis
The parties are substantively in agreement as to “message” as PMC and Samsung have
both indicated that the Phase 1 preliminary construction is acceptable. As to “message stream,”
Samsung has not identified any portions of the intrinsic record that mandate inclusion of the
limitations Samsung seeks beyond the plain meaning of message stream.
The Court construes “message” to mean “all the signal processing information,
transmitted in a given transmission, from the first bit of one header to the last bit
transmitted before the first bit of the next header.”
The Court construes “message stream” to mean “a series of messages.”
30. cadence information (’2,649 Patent claim 67)
PMC
Fields in a data package such as headers,
length tokens and/or end-of-file signals that
enable a receiver apparatus to distinguish the
individual messages within a message stream.
Samsung
Information (such as headers, length tokens,
or end-of-file signals) that enables a receiver
apparatus to distinguish the individual
messages of a message stream.
The parties dispute whether the term should include “fields in a data package” verse
“information.”
Positions of the Parties
PMC objects to construing the term as “information” rather than “fields in a data
package.” PMC contends that it seeks to define the structure of the term rather than exemplary
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content. PMC contends that using “information” adds nothing for the jury. (Dkt. No. 69 at 5253.) PMC contends that the specification refers to “cadence signals” and that, in context,
“signals” are transmitted as “data packages.” (Dkt. No. 69 at 53.)
Samsung contends that “data package” is nowhere in the specification and that PMC does
not cite to support for referencing “fields.” (Dkt. No. 78 at 29.)
The parties did not argue this term at the oral hearing.
Analysis
The disputes presented are similar to those presented in Phase 1 for the same term. For
the reasons articulated in Phase 1 Order, the Court rejects PMC’s construction.
The Court construes “cadence information” to mean “information (such as headers,
length tokens, or end-of-file signals) that enables a receiver apparatus to distinguish the
individual messages of a message stream.”
31. digital television signals (’2,649 Patent claims 39, 51, and 67)
PMC
Television programming that includes digital
audio and digital video signals.
Samsung
Television programming in which the video
and audio are transmitted as digital video
signals and digital audio signals, at least a
portion designed for multiple recipients.
Positions of the Parties
PMC states that the specification makes clear that the Court’s Phase 1 preliminary
construction is correct. (Dkt. No. 69 at 53.) PMC contends that its construction is “consistent”
with the Phase 1 preliminary construction. (Id.) Samsung adopts the Court’s Phase 1 preliminary
construction. Samsung contends that PMC’s construction broadens the construction through the
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use of “includes.” Samsung contends that PMC offers no rationale for removing “at least a
portion designed for multiple recipients.”
The parties did not argue this term at the oral hearing.
Analysis
The Court adopts the same construction as originally presented in the Court’s Phase 1
preliminary construction for the reasons described in the Phase 1 Order.
The Court construes “digital television signals” to mean “television programming in
which the video and audio are transmitted as digital video signals and digital audio signals,
at least a portion designed for multiple recipients.”
32. control signal (’775 Patent claims 2, 3, 11, 12, 13, 14; ’885 Patent claim 106)
PMC
This term does not require construction
beyond its plain and ordinary meaning. To the
extend construction is necessary, PMC
proposes:
A signal that carries information, data or
instructions that affects, controls, or enables
processing.
Samsung
A signal that controls as opposed to only
providing identification information.
Samsung contends that PMC’s inclusion of “information” “that affects” “processing”
expands the construction beyond “control.”
Positions of the Parties
Samsung contends that, like the term “valve control signal,” there is a fundamental
dispute between Samsung and PMC about the plain meaning of the term “control signal” that
should be resolved. Samsung states that while this Court and others have declined to construe
this term in the past, the applicants’ disclaimer in the ’775 patent file history (which was not
addressed by the parties in previous cases) makes an explicit construction necessary in this case.
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Samsung contends that the dispute is whether a control signal must actually exert control or
merely provide “information” that “affects” and “enables” processing. Samsung contends that
the applicants disclaimed the latter to avoid prior art during prosecution.
Specifically, Samsung states that the applicants distinguished the claimed “control
signal” from a “pointer” (the page number in the Seth-Smith reference) because the “decoder . . .
is not controlled by this pointer” and the pointer merely “tells the decoder where to locate
teletext information.” (Dkt. No. 78 Ex. K, (02/28/2013 Amendment) at 24-25.) Samsung also
references the statement that the pointer “is more appropriately understood as an input to the
decoder, rather than as a signal that controls the decoder.” (Id.) Samsung also contends that the
applicants distinguished the claimed “control signal” from “subscription control information,”
because subscription control information is merely “used to identify subscriber messages at the
receiver’s decoder.” (Id. at 73.) Samsung states that while “pointers” and “subscription control
information” may affect or enable processing, they do not exert control as was pointed out during
prosecution.
In reply, PMC notes that this Court has twice (Echostar and Zynga) declined to construe
the term. (Dkt. No. 83 at 19.) PMC contends that claim scope was not surrendered during
prosecution by distinguishing Seth-Smith’s “encoded page number” from a “control signal.”
(Dkt. No. 78 Ex. K (Feb. 28, 2013 Amendment) at 25-26.) PMC states that, rather, the applicant
argued that the “encoded page number does not amount to a control signal because the encoded
page number does not control a decoder to decode, transfer, expand, and contract the code
portion of an information transmission.” (Id. at 26.) PMC contends that such a statement is not a
clear disavowal of a “control signal,” which has the ability to “affect, control, or enable
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processing.” (Dkt. No. 83 at 19 (citing ’217 Patent 7:49-63, 12:6-14, 39:6-10, 115:41-60, 149:4767, 169:3-15; ’490 Patent, 17:39-46, 12:13-32, 19:35- 20:7, 4:5-30, FIGs. 4A-4E).)
The parties did not argue this term at the oral hearing.
Analysis
The claim term in question is “control signal.” For the reasons explained above for the
term “valve control signal,” the Court similarly rejects PMC’s expansion of “control” here to
further include “affect” and “enable.” PMC has not identified any intrinsic evidence that supports
changing the term “control” to include concepts beyond control, such as “affect” and “enable.”
As to Samsung’s negative limitation, PMC has acknowledged that a mere identification (such as
a page number) is not within the ordinary meaning of “control.” (Dkt. No. 83 at 19-21.) As the
issue is not in dispute, Samsung has not demonstrated why it would be beneficial for the jury to
include the negative limitation.
The Court construes “control signal” to mean “a signal that controls.”
33. information from said first medium / information based on said second medium
(’217 Patent claims 1, 30, and 38)
PMC
This term does not require construction
beyond its plain and ordinary meaning.
Samsung
Information distinct from video and audio
data of the other medium.
The parties dispute whether the information must be distinct from the video and audio of
the medium.
Positions of the Parties
Samsung contends its construction aids the jury in its determination by clarifying that the
asserted claims involve audio and video data as well as distinct information, which together are
used to generate a multimedia presentation (according to the claim preambles). Samsung
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contends that the Wall Street Week example disclosed in the patent plainly demonstrates that the
claimed “information” is distinct from the claimed “content.” Samsung contends, for instance,
that the ’217 Patent teaches combining graphics information, using video overlays, with the
video from the broadcast transmission. (Dkt. No. 78 at 30 (citing ’490 Patent at 19:42-20:2).)
Samsung contends that in this example, the graphics information is plainly distinct from the
video information.
In reply, PMC contends that Samsung neither provides support for its proposal that
“information” and “content” are distinct with respect to a “medium,” nor for its assertion that
“video and audio data” may be equated with the “content,” but not the information of a medium.
PMC contends that neither claim 1 nor the specification discloses that the “content” of a medium
consists only of “video and audio data.” PMC further states that the specification and claim
language does not require that “information” from or based on a medium must be distinct from
the video and audio data. (Dkt. No. 83 at 20.) PMC states that Samsung’s citing of a teaching in
the specification of combining graphics information using video overlays does not bolster
Samsung’s position because it accounts only for the “video” portion of the proposed “video and
audio data” construction. PMC contends that because “information,” “content,” and “medium”
are non-technical terms that are already being construed separately, PMC submits that the Court
need not construe the terms here.
The parties did not argue this term at the oral hearing.
Analysis
Samsung merely points to an example from the specification in which the relevant
information is distinct from the TV video and audio signal. More particularly, Samsung points to
the Wall Street Week example where graphics (non-audio / non-video information) are combined
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with the audio/video of a television program. Samsung has not, however, identified evidence in
the specification mandating such a limitation. See Arlington, 632 F.3d at 1254. Further, “[t]he
stations so automated may transmit any form of electronically transmitted programming,
including television, radio, print, data, and combined medium programming…” (’217 Patent
167:52-55) and “[t]he programming so displayed (or outputted) may be any form of
electronically transmitted programming including television, radio, print, data, and combined
medium programming and may be received via any electronic transmission means…” (’217
Patent 201:44-47).
Moreover, the specification provides further guidance contradicting
Samsung’s construction. The ’490 specification describes an embodiment of combining
television and radio, a combination that Samsung would exclude. ’490 Patent 18:9-29. A
construction excluding embodiments is rarely correct. See Accent Packaging, Inc. v. Leggett &
Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (holding that a construction that excludes the
preferred embodiment “is rarely, if ever, correct”).
Having rejected Samsung’s “distinct”
limitation, the Court has resolved the claim construction dispute. See O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“district courts are not (and
should not be) required to construe every limitation present in a patent’s asserted claims.”);
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2
Micro, where the court failed to resolve the parties’ quarrel, the district court rejected
Defendants’ construction.”).
The Court finds that the terms “information from said first medium” and
“information based on said second medium” have their plain and ordinary meanings.
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.
CONCLUSION
The Court adopts the constructions above for the disputed and agreed terms of the
Asserted Patents. Furthermore, the parties should ensure that all testimony that relates to the
terms addressed in this Order is constrained by the Court’s reasoning. However, in the presence
of the jury the parties should not expressly or implicitly refer to each other’s claim construction
positions and should not expressly refer to any portion of this Order that is not an actual
construction adopted by the Court. The references to the claim construction process should be
limited to informing the jury of the constructions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 25th day of October, 2016.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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