Music Choice v. Stingray Digital Group Inc.

Filing 145

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 7/6/2017. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

MUSIC CHOICE,
Plaintiff,
v.

C.A. No: 2:16-cv-586-JRG-RSP (lead)

STINGRAY DIGITAL GROUP INC. and
STINGRAY MUSIC USA, INC.,
Defendants.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Music Choice (“Plaintiff”) (Dkt.
No. 112, filed on under seal on April 28, 2017),1 the response of Stingray Digital Group Inc. and
Stingray Music USA, Inc. (collectively “Defendants”) (Dkt. No. 130, filed under seal on May 12,
2017), and the reply of Plaintiff (Dkt. No. 135, filed on May 19, 2017). The Court held a hearing
on the issues of claim construction and claim definiteness on June 12, 2017. Having considered
the arguments and evidence presented by the parties at the hearing and in their briefing, the Court
issues this Order.

1

Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
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Table of Contents
I. 

BACKGROUND ............................................................................................................... 3 
A. 
B. 

II. 

The Video-On-Demand Patents .............................................................................. 3 
The Visual-Complement Patents ............................................................................ 5 

LEGAL PRINCIPLES ..................................................................................................... 6 
A. 

Claim Construction ................................................................................................. 6 

B. 

Departing from the Ordinary Meaning of a Claim Term ........................................ 9 

C. 

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 10 

III. 

AGREED CONSTRUCTIONS ..................................................................................... 11 

IV. 

CONSTRUCTION OF DISPUTED TERMS ............................................................... 13 
A. 
B. 

“generate the video image by retrieving the media assets identified in the
video image specification” and “generate a video image using the media
assets identified in the video image specification” ............................................... 17 

C. 

“transmit to the second transmission system the generated video image
multiplexed with the audio data corresponding to the sound recording” ............. 20 

D. 

“trigger message” .................................................................................................. 22 

E. 

“still image” .......................................................................................................... 26 

F. 

The Broadcast Terms ............................................................................................ 28 

G. 

“multicast” and “music multicast system” ............................................................ 32 

H. 

“configuring a client system to receive and play music broadcast from a
broadcast media source through a broadcast channel” ......................................... 35 

I. 

“creating a playlist”............................................................................................... 38 

J. 

“data packet” ......................................................................................................... 40 

K. 

“set-top-box” ......................................................................................................... 43 

L. 

“linear audio channel”........................................................................................... 45 

M. 

“popular music videos” ......................................................................................... 47 

N. 
V. 

“first transmission system” and “second transmission system” ........................... 13 

The Stream Terms ................................................................................................. 49 

CONCLUSION ............................................................................................................... 52 

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I.

BACKGROUND
Plaintiff alleges infringement of five U.S. Patents: No. 7,320,025 (the “’025 Patent”), No.

8,769,602 (the “’602 Patent”), No. 9,351,045 (the “’045 Patent”), No. 9,357,245 (the “’245
Patent”), and No. 9,414,121 (the “’121 Patent”) (collectively, the “Asserted Patents”). The
Asserted Patents consist of two patent families. The first family includes the ’025, ’045, and ’121
Patents (the “Video-On-Demand Patents”). The second family includes the ’602 and ’245 Patents
(the “Visual-Complement Patents”).
A.

The Video-On-Demand Patents

Through a series of continuation and continuation-in-part applications, each of the VideoOn-Demand Patents claim priority to an application filed on March 18, 2002. In general, the VideoOn-Demand Patents are directed to technology for supplementing a broadcast media service with
an on-demand and personalized media service.
The abstracts of the Video-On-Demand Patents are identical and provide:
The present invention provides systems and methods for, in some cases,
supplementing a broadcast media service with an on-demand and personalized
media service.
Claim 1 of the ’025 Patent, an exemplary method claim, provides:
1. A method, comprising:
configuring a client system to receive and play music broadcast from a
broadcast media source through a broadcast channel;
receiving application data at the client system, the application data including a
video identifier identifying a video, wherein the application data is
transmitted with the broadcast music;
while the client system is playing the broadcast music, (a) enabling a user of
the client system to indicate that the user desires to view the video and (b)
receiving an indication that the user desires to view the video;
in response to receiving the indication, automatically ceasing the playing of the
broadcast music, transmitting from the client system to an on-demand system

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the received video identifier, and establishing an on-demand session between
the on-demand system and the client system; and
after establishing the on-demand session, transmitting from the on-demand
system to the client system the identified video, receiving the transmitted
video at the client system, and automatically playing the received video in
response to receiving the transmitted video from the on-demand system.
Claim 1 of the ’121 Patent, an exemplary system claim, provides:
1. A system for providing an on-demand, personalized media service and a
broadcast service to a set-top-box, comprising:
a distribution network, wherein the set-top-box is connected to the distribution
network; and
a distribution system including a transmission system operable to transmit via
the distribution network a media channel comprising a stream of audio and
video data, wherein
the set-top-box is operable to:
(1) receive the media channel via the distribution network,
(2) reproduce the stream of audio data included in the received media
channel for a user of the client system to hear,
(3) display video corresponding to the stream of video data included in the
received media channel on a display device for the user to see,
(4) receive via the distribution network video identifier information
comprising an identifier for identifying an available on-demand video
while displaying on the display device the video corresponding to the
stream of video data included in the received media channel,
(5) display a user selectable element for requesting the available ondemand video on the display device so that the user selectable element
is displayed on the display device together with at least a portion of the
video corresponding to the stream of video data as a result of receiving
the video identifier information transmitted to the set-top-box using the
distribution network, the user selectable element being associated with
the available on-demand video, and
(6) in response to the user of the set-top-box selecting the user selectable
element, causing an on-demand video system to transmit to the set-topbox the available on-demand video by transmitting to the on-demand
video system an on-demand request message.

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B.

The Visual-Complement Patents

Through a series of continuation applications, each of the Visual-Complement Patents
claim priority to an application filed on August 28, 2001. In general, the Visual-Complement
Patents are directed to technology for providing a video image to complement an audio data stream.
The abstracts of the Visual-Complement Patents are identical and provide:
A system and method for providing an interactive, visual complement to one or
more audio programs. In one aspect, the system comprises an audio subsystem for
generating an audio signal corresponding to a sound recording. The system also
comprises a video subsystem for generating a video image specification based, at
least in part, on the sound recording. In one aspect, the audio signal and video image
specification are transmitted to an audio/video signal transmission system. The
transmission system receives the video image specification and generates a video
signal that conforms to the video image specification. The video signal and the
audio signal are transmitted to at least one consumer receiver. In this way, the
system provides a visual complement to an audio program.
Claim 1 of the ’602 Patent, an exemplary method claim, provides:
1. A method for providing a visual complement to an audio stream, comprising:
transmitting, from a first transmission system to a second transmission system,
audio data corresponding to a sound recording; and
transmitting a data packet comprising a video image specification while the
audio data is being transmitted, wherein the video image specification
specifies one or more media asset identifiers, each of which identifies one or
more media assets, one or more of said media asset identifiers identifying a
media asset associated with the sound recording, said data packet further
comprising sound recording information associated with the sound recording,
the sound recording information comprising one or more of the title of the
sound recording and the name of the artist who recorded the sound recording,
wherein
the step of transmitting the data packet comprises transmitting the data packet
to a system comprising a video image generator, wherein the video image
generator is configured to generate a video image using the video image
specification and the system is configured to provide the generated video
image to a device that is operable to display the video image to a user of the
device, and wherein the video image generator is configured to generate the

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video image by retrieving the media assets identified in the video image
specification.
Claim 12 of the ’245 Patent, an exemplary system claim, provides:
12. A system for providing a visual complement to an audio service, the system
comprising:
an audio transmission system configured to transmit audio data corresponding
to a sound recording specified in a playlist for a linear audio channel; and
a receiving system, comprising a receiver and a video image generator, the
receiving system being configured to:
i) in response to receiving a data packet that was generated using an
identifier identifying the sound recording, generate a video image in
accordance with information included in the data packet, wherein the
data packet includes a media asset identifier identifying a media asset
and further includes sound recording information associated with the
sound recording, the sound recording information comprising the title
of the sound recording and the name of the artist who recorded the sound
recording; and
ii) automatically output the generated video image such that it is received
at a display device operable to display the video image to a user of the
display device without the user having to select a menu item, wherein
the generated video image includes the song information comprising the
title of the song and the name of the artist, and
the receiving system is configured to retrieve the identified media asset
and use the retrieved media asset in generating the video image.
II.

LEGAL PRINCIPLES
A.

Claim Construction

“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., 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

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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.
“[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.

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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 MicroDevices, 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”).
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

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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 not helpful to a court. Id. 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 factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.

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 either
in the specification or during prosecution.”2 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,

2

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).

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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).
C.

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)3

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.”

3

The Court refers to the pre-AIA version of § 112 but understands that there is no substantial
difference between definiteness under the pre-AIA version and under the AIA version of the
statute.

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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).
III.

AGREED CONSTRUCTIONS
The parties have agreed to the following constructions set forth in their Joint Claim

Construction Chart P.R. 4-5(d) (Dkt. No. 137) and at oral argument.

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Term4

Agreed Construction

“media asset(s)”





’602 Patent Claims 1, 8
’245 Patent Claims 1, 12, 17
’025 Patent Claim 8
’045 Patent Claims 1, 6, 14, 19

“personalized media service”


’121 Patent Claim 1

“on-demand service”


’121 Patent Claim 6

“video image specification”


’602 Patent Claims 1, 8

media items including, for example, graphic
image files, audio files, video files and/or text
messages

a service that allows a user to have at least
some degree of control over the content that is
transmitted by the service provider to the user
a service that enables a user to select the
precise content (e.g., music, video or other
content) and/or type of content (e.g., genre
and sub-genre) that is transmitted by the
service provider to the user, when the user
desires such content
no construction necessary – the words of the
claims should be given their plain and
ordinary meaning

“configured to”





’602 Patent Claims 1, 8
’245 Patent Claim 12
’045 Patent Claims 5, 6, 10–11, 16
’121 Patent Claim 6

“media channel”


’121 Patent Claims 1, 6

“video data”



’045 Patent Claims 1, 6, 11, 16
’121 Patent Claims 1, 6

no construction necessary – the words of the
claims should be given their plain and
ordinary meaning

no construction necessary – the words of the
claims should be given their plain and
ordinary meaning
no construction necessary – the words of the
claims should be given their plain and
ordinary meaning

4

For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest-level claim in each dependency chain is listed, and (2) only asserted claims
identified in the parties’ Joint Claim Construction Chart P.R. 4-5(d) (Dkt. No. 137) are listed.

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Considering the parties’ agreement,

the Court hereby adopts the parties’ agreed

constructions.
IV.

CONSTRUCTION OF DISPUTED TERMS
A.

“first transmission system” and “second transmission system”

Disputed Term

Plaintiff’s Proposed
Construction
no construction necessary –
the words of the claims
should be given their plain
and ordinary meaning

Defendants’ Proposed
Construction
first/second system that is not
a digital network and that
transmits a signal

“second transmission system” no construction necessary –
the words of the claims
 ’602 Patent Claims 1, 8
should be given their plain
 ’245 Patent Claims 1, 17
and ordinary meaning

first/second system that is not
a digital network and that
transmits a signal

“first transmission system”



’602 Patent Claims 1, 8
’245 Patent Claims 1, 17

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: These terms are used in the Visual-Complement Patents according to
their plain and ordinary meanings (systems that transmit things) and a jury will properly
understand these terms without construction. Dkt. No. 112 at 9. Defendants’ proposed “signal”
limitation is improper because the claims expressly state that the systems transmit “data.” Id. at
10. And the “is not a digital network” limitation is improper because the patents describe
exemplary transmission systems that may, in the art, be or include digital networks. Id. at 9–10.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’602 Patent fig.1, col.1 ll.59–63, col.4 ll.21–
23, col.4 ll.27–30, col.6 ll.22–27, col.10 ll.41–46; ’602 Patent File Wrapper July 29, 2013 Reply

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to Non-Final Office Action (Plaintiff’s Ex. A, Dkt. No. 112-8). Extrinsic evidence: Russ Decl.5
¶¶ 45–56 (Dkt. No. 112-6 at 18–23).
Defendants respond: In the description of the invention, the Video-On-Demand Patents
distinguish “transmission system” from “public network” and “private network” by listing them
in the disjunctive, and thus define “transmission system” as something other than a network. Dkt.
No. 130 at 6–7. Further, the patents consistently describe the “transmission systems” as signal
transmission systems. Id. at 7–8.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’602 Patent col.1 ll.45–67, col.4 ll.20–21,
col.4 ll.23–25, col.5 ll.37–40, col.6 ll.26–27, col.8 ll.12–15. Extrinsic evidence: Steinberg Dep.6
130:8–13 (Defendants’ Ex. 4, Dkt. No. 130-5 at 8); Shamos Decl.7 ¶¶ 29–30 (Dkt. No. 130-9 at
6); Giannetti Dep.8 119:22 – 120:1 (Defendants’ Ex. 1, Dkt. No. 130-2 at 3–4).
Plaintiff replies: The description of the “transmission system” that Defendants identify as
defining a “transmission system” as other than a “digital network” concerns exemplary
embodiments and is therefore not limiting. Dkt. No. 135 at 3–4.
Plaintiff cites further intrinsic evidence to support its position: ’602 Patent col.5 l.37, col.6
ll.14–15.

5

Declaration of Dr. Samuel H. Russ in Support of Music Choice’s Opening Claim Construction
Brief.
6
Deposition of Robert M. Steinberg (Mar. 8, 2017).
7
Declaration of Michael Shamos, Ph.D.
8
Deposition of Kelley L. Giannetti (Mar. 10, 2017).

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Analysis
The issues in dispute are: (1) whether the transmission systems necessarily exclude digital
networks and (2) whether the transmission systems necessarily transmit signals. There is no
dispute that the transmission systems are systems for transmitting—that is the plain meaning of
the term. And there is insufficient evidence to limit the systems to transmitting “signals” and to
exclude “digital networks.”
The transmission systems of the Visual-Complement Patents transmit information, but are
not necessarily limited to transmitting “signals.” The term “transmission system” is used in the
patents to denote systems that transmit information such as video images, audio signals, encoded
recordings, and data packets from one point to another. For example, the patents explain “[t]he
transmission system then transmits the video image and the audio signal to consumers’
audio/video receivers.” ’602 Patent col.1 ll.59–60 (emphasis added). The patent further explains,
“transmission subsystem 190 . . . may transmit the encoded sound recordings.” Id. at col.4 ll.19–
20 (emphasis added), fig.1 (denoting item 190 “First Transmission System”). And the patent
explains, “[v]ideo subsystem 104 may use transmission subsystem 190 to transmit the data packet”
and “data packets may be extensible mark-up language (XML) files or hyper-text mark-up
language (HTML) files.” Id. at col.5 ll.29–44. That is, in the various embodiments, various types
and formats of data are transmitted by the transmission systems. Claim 1 of the ’602 Patent, for
example, recites “transmitting, from a first transmission system to a second transmission system,
audio data corresponding to a sound recording.” Id. at col.15 ll.62–64. It is not clear from the
intrinsic record the transmission systems necessarily transmit signals. Further, it is not clear how
Defendants intend “signal” to be understood. Injecting “signal” into the construction does not
clarify claim scope.

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The transmission systems of the patents do not necessarily exclude “digital networks.” The
passage Defendants rely on, ’602 Patent col.5 ll.37–40, does not support their proposed negative
limitation. With surrounding context, this passage provides:
FIG. 6 illustrates an exemplary data packet 600. As shown in FIG. 6, data packet
600 includes a video image specification 602. Optionally, data packet 600 may also
include sound recording information 604, and purchase information 606. Video
image specification 602 comprises a list of visual media asset identifiers and
associates a screen position with each asset identifier. The data packets may be
extensible mark-up language (XML) files or hyper-text mark-up language (HTML)
files.
In the embodiment shown in FIG. 1, after generating a data packet for a particular
channel, video subsystem 104 transmits the data packet so that it will be received
by transmission system 170. Video subsystem 104 may use transmission subsystem 190 to transmit the data packet to transmission system 170 or may use a
public network (e.g., the Internet) or private network to transmit the data packet to
transmission system 170.
Id. at col.5 ll.28–44. The passage is describing how an exemplary data packet may flow in an
exemplary audio/video system. It can be transmitted by a specific exemplary transmission system,
“transmission subsystem 190,” or it can bypass this specific transmission system and be
transmitted by a “public network” or a “private network.” At most, this suggests that the specific
exemplary transmission system is not simply a public network or a private network. It does not
support excluding “digital networks” from the scope of “transmission system” in general.9 Indeed,
it is not clear what meaning Defendants ascribe to “digital network” so including it in the negative
in a construction does not clarify claim scope.

9

The passage at column 8, lines 1 through 19 is similar, and the Court’s reasoning applies equally.

16 / 52

Accordingly, the Court rejects Defendants’ proposed “not a digital network” and “signal”
limitations and determines the transmission-system terms have their plain and ordinary meaning
without the need for further construction.
B.

“generate the video image by retrieving the media assets identified in the video
image specification” and “generate a video image using the media assets
identified in the video image specification”

Disputed Term

Plaintiff’s Proposed
Construction

Defendants’ Proposed
Construction

“generate the video image by
retrieving the media assets
identified in the video image
specification”

create the/a video image while
No construction necessary – or after the audio data is being
the words of the claims should transmitted
by
 ’602 Patent Claim 1
be given their plain and retrieving/using media assets
“generate a video image using ordinary meaning
identified in the video image
the media assets identified in
specification
the video image specification”


’602 Patent Claim 8
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: These terms have their plain and ordinary meaning which can be
understood without construction. Dkt. No. 112 at 15. Defendants’ proposed swap of “generate”
for “create” is unnecessary and the requirement that the generating be accomplished “while or after
the audio data is being transmitted” is improper. Id. at 15–16. Specifically, reading in a temporal
limitation is improper for two reasons: First, the ’602 Patent Claim 1 expressly recites a temporal
limitation with respect to a transmitting step, evincing that a temporal limitation should not be read
into the claims when not expressed. Id. at 16. And second, the ’602 Patent describes exemplary

17 / 52

embodiments in which the video image is generated before being transmitted. Id. (citing ’602
Patent col.3 ll.18–21, col.12 ll.57–61).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’602 Patent col.3 ll.18–21, col.7 ll.42–45,
col.11 ll.31–38, col.12 ll.41–46, col.12 ll.57–61. Extrinsic evidence: Russ Decl. ¶¶ 72–84 (Dkt.
No. 112-6 at 30–33).
Defendants respond: The claims themselves require that the video image is generated
“while or after the audio data is being transmitted.” Dkt. No. 130 at 11. For example, Claim 1 of
the ’602 Patent recites that the video image is generated “using the video image specification” and
the “video image specification” is transmitted to the generator “while the audio data is being
transmitted.” Id. at 11–12. Defendants agree the ’602 Patent discloses embodiments in which the
images are generated before being transmitted—but those are referred to in the patent as pregenerated images that are distinct from generated images and the claims involve generated images.
Id. at 12–13.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’620 Patent col.2 ll.7–13, col.12 ll.57–59.
Plaintiff replies: “While or after the audio data is being transmitted” should not be read into
the construction of these terms since the limitation is already required by the claims. Dkt. No. 135
at 5–6.
Analysis
The issues here appear to be: (1) whether “generate” is limited to “create” and (2) whether
temporal limitations that are expressed elsewhere in the claims should be read into the

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constructions of these terms. There is no good reason to rewrite “generate” as “create” or to impose
a temporal limitation on “generate” that is otherwise expressed in the claims.
The parties do not dispute that the image is generated “while or after the audio data is being
transmitted” and that this limitation is elsewhere expressed in the claims. The Court agrees. Given
that there is no dispute, there is no need to construe the terms to resolve the dispute. Further, that
this limitation is recited elsewhere in the claims suggests that the video image is not inherently
generated “while or after the audio data is being transmitted.”
The Court declines to rewrite “generate” as “create.” It is not clear whether the parties
agree that “create” and “generate” are coextensive. And the Visual Complement Patents refer both
to generating an image and creating an image. See, e.g., ’602 Patent col.2 ll.10–13 (“The video
image generator then generates a video image based on the provided video image specification
and transmits the video image to a first transmission subsystem.”), col.10 ll.37–39 (“Video image
generator 702 functions to create a video image based on the video image specification contained
in data packet 732.”). The claims recite “generate” and Defendants have not provided sufficient
reason to stray from the examined and issued claim language.
Accordingly, the Court rejects Defendants’ proposed construction and determines that
these terms have their plain and ordinary meanings without the need for further construction.

19 / 52

C.

“transmit to the second transmission system the generated video image
multiplexed with the audio data corresponding to the sound recording”

Disputed Term
“transmit to the second
transmission system the
generated video image
multiplexed with the audio
data corresponding to the
sound recording”


Plaintiff’s Proposed
Construction
transmit to the second
transmission system the
generated video image together
in a single stream with the
audio data corresponding to the
sound recording

Defendants’ Proposed
Construction
transmit to the second
transmission system the
generated video image
combined into a single data
stream with the audio data
corresponding to the sound
recording

’602 Patent Claim 8
The Parties’ Positions
Plaintiff submits: “Multiplexed” in the context of transmitting video image and audio data

in the ’602 Patent means that they are transferred “together.” Dkt. No. 112 at 17. It would be
improper to require the video image and audio data to be “combined into a single data stream” as
Defendants propose. Id. at 18.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’602 Patent col.2 ll.17–19, col.10 ll.44–46.
Extrinsic evidence: Russ Decl. ¶¶ 86–90 (Dkt. No. 112-6 at 33–35).
Defendants respond: The ’602 Patent explains that the video image and the audio data is
transmitted together by being “combined into a single MPEG-2 data stream.” Dkt. No. 130 at 13–
14 (citing ’602 Patent fig.7, col.4 ll.18–19, col.10 ll.44–46) (quotation marks omitted). And the
testimony of several of the inventors supports that “multiplexed” connotes combined signals
transmitted in a single channel or stream. Id. at 14–15.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’602 Patent fig.7, col.4 ll.18–19, col.10
ll.37–46. Extrinsic evidence: Shamos Decl. ¶ 61 (Dkt. No. 130-9 at 14); Steinberg Dep. 50:7–16

20 / 52

(Defendants’ Ex. 4, Dkt. No. 130-5 at 7); Rosenberg Dep.10 129:7–12 (Defs.’ Ex. 3, Dkt. No. 130-4
at 5); Feras Dep.11 77:7–14 (Defendants’ Ex. 5, Dkt. No. 130-6 at 3).
Analysis
The issue here is whether “multiplexed” means “combined into a single data stream” or
“together in a single stream.” The Court determines that “together in a single stream” is the better
interpretation.
The Visual-Component Patents do not use the term “multiplexed” other than in the claims
but the patents do, however, describe audio and video data being transmitted together. For
example, the patents provide: “the first transmission subsystem then transmits the audio signal
together with the video image to a second transmission system.” ’602 Patent col.2 ll.16–19. They
also describe that “[i]n one embodiment, the video image, data packet 731 and audio stream are
transmitted together in an MPEG-2 data stream.” Id. at col.10 ll.44–46. The parties’ experts agree
that these passages refer to multiplexing. Shamos Decl. ¶ 60, Dkt. No. 130-9 at 14; Russ Decl. ¶
87, Dkt. No. 112-6 at 33–34.
The parties have not precisely articulated the difference between “together in a single
stream” and “combined into a single data stream.” Plaintiff does not dispute that the single stream
is a data stream. Rather, at oral argument Plaintiff stated that “data” is simply redundant. Indeed,
the claim language recites that the stream includes data. And it is not clear to the Court how
separate data streams can be transmitted together in a single stream without being combined at
some point. But in light of the parties’ oral arguments, it appears that the dispute may actually be
whether Claim 8 includes a “combining” step or a “combining” functionality inherent in a recited

10
11

Deposition of Jeremy C. Rosenberg (May 1, 2017).
Deposition of John J. Feras (March 23, 2017).

21 / 52

element. With respect to this, the Court notes that Claim 8 is a “comprising” claim to a system,
which means the claimed system is not limited to the recited elements. The Court further notes
that, as recited in the claim, “the first transmission system is further configured to transmit to the
second transmission system the generated video image multiplexed with the audio data
corresponding to the sound recording.” ’602 Patent col.17 ll.1–4 (emphasis added). The claim does
not recite that the first transmission is configured to multiplex or combine the video and audio
data. That is, while the claim requires that the first transmission system is the element which
transmits the video and audio data together, the claim is silent on whether the first transmission
system is also configured to combine the signals. The Court declines to read in Defendants’
proposed “combined into a single data stream” limitation because it appears that the limitation is
meant to limit first transmission system in way not mandated by the claim language.
Accordingly, the Court construes “transmit to the second transmission system the
generated video image multiplexed with the audio data corresponding to the sound recording” as
follows:


“transmit to the second transmission system the generated video image multiplexed
with the audio data corresponding to the sound recording” means “transmit to the
second transmission system the generated video image together in a single data
stream with the audio data corresponding to the sound recording.”

D.

“trigger message”

Disputed Term
“trigger message”



’602 Patent Claim 8
’245 Patent Claim 4

Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
No construction necessary – the a message created by the audio
words of the claims should be subsystem to initiate the
given their plain and ordinary creation of the video image
meaning

22 / 52

The Parties’ Positions
Plaintiff submits: This term carries the ordinary meanings of its constituent words “trigger”
and “message” which can be understood without construction. Dkt. No. 112 at 18–19. Further, the
claims provide context for the content of the message and what actions it triggers. Id. Defendants’
proposed construction improperly imports limitations from exemplary embodiments and conflicts
with Claim 6 of the ’245 Patent, which recites that the “video specification” is generated on receipt
of the trigger message. Id. at 19.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’602 Patent col.6 ll.42–47, col.9 ll.8–11,
col.10 ll.54–58, col.11 l.64 –col.12 l.4. Extrinsic evidence: Russ Decl. ¶¶ 91–97 (Dkt. No. 112-6
at 35–37); Merriam Webster’s Collegiate Dictionary 1262 (10th ed. 1993) (“trigger”) (Plaintiff’s
Ex. D, Dkt. No. 112-11 at 18).
Defendants respond: “Trigger message” needs to be construed regardless of whether a jury
would understand “trigger” and “message” separately, and the Visual-Complement Patents explain
the meaning of the term. Dkt. No. 130 at 15. First, the patents describe an “audio system for . . .
transmitting triggers to a video subsystem,” thus, the trigger message is created by the audio
system. Id. (quoting ’602 Patent col.1 ll.48–51) (modification by the Court). Second, the patents
explain that “[u]pon receiving a trigger from the audio subsystem the video subsystem generates
an image specification” that is transmitted to the transmission system which “receives the video
image specification and generates a video image that conforms to the video image specification.”
Id. at 15–16 (quoting ’602 Patent col.1 ll.52–58). Thus, the trigger message initiates creation of
the video image. Id.

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In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’602 Patent col.1 ll.48–58, col.2 ll.7–12,
col.6 ll.28–30. Extrinsic evidence: Shamos Decl. ¶ 66 (Dkt. No. 130-9 at 15–16).
Plaintiff replies: The intrinsic record does not support importing Defendants’ proposed
limitations. Dkt. No. 135 at 4.
Analysis
The issues here are: (1) whether the trigger message is necessarily “created” by the audio
subsystem and (2) whether the trigger message necessarily is “to initiate the creation of the video
image.” The trigger message is not necessarily created by the audio subsystem and it is not
necessarily meant to initiate creation of the video image. It is a message configured to trigger (i.e.,
initiate) some action. At oral argument, the parties agreed to the Court’s construction of this term
“message configured to initiate an action.”
The Visual-Complement Patents do not define how, or by what, the trigger messages are
created. For example, the patents provide: “In one aspect [of the invention], the system includes
an audio subsystem for selecting a sound recording based on a playlist, generating an audio signal
corresponding to the sound recording, and transmitting triggers to a video subsystem whenever a
sound recording is selected.” ’602 Patent col.1 ll.47–52. In this passage, it is illustrative that the
audio subsystem is described as generating the audio signal and transmitting the triggers. There
is no mention here of what generates the trigger, only that it is transmitted. See also, id. at col.6
ll.28–39 (“audio subsystem 102 transmits to video subsystem 104 a trigger message”). Elsewhere,
the patents describe that in the embodiment of Figure 13: “the trigger message generated by audio
subsystem 102 may be sent to transmission system 170.” Id. at col.13 ll.27–28. Here, the patents
describe that the audio subsystem not only sends the trigger, but also generates the trigger. Claim

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8 of the ’602 Patent recites: “the audio subsystem is configured to … provide to the video system
a trigger message.” Id. at col.17 ll.6–9 (emphasis added). Here, there is no restriction on what
creates or generates the trigger. That is, in some embodiments the patents explicitly describe the
generation point of a trigger message, implying that the trigger message is not inherently generated
by the audio subsystem. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en
banc) (noting that the use of the term “steel baffles” “strongly implies that the term ‘baffles’ does
not inherently mean objects made of steel”). Thus, the Court understands the trigger message may
be generated by the audio subsystem but need not be generated by the audio subsystem.
The Visual-Complement Patents do not require that a trigger message triggers the creation
of an image. Indeed, the claims define what actions the trigger message triggers. For example,
Claim 10 of the ’602 Patent recites “the video subsystem is configured to generate the video image
specification in response to receiving the trigger message.” ’602 Patent col.17 ll.17–19; see also,
’245 Patent col.26 ll.43–45 (Claim 6 recites “the video subsystem is configured to generate the
video image specification in response to receiving the trigger message”). Elsewhere in the patents,
the trigger message is described as triggering a process to retrieve a video image:
Process 1300 begins in step 1302, where transmission system 170 receives a trigger
message that includes a sound recording identifier. Next (step 1304) transmission
system 170 parses the trigger message to determine the sound recording identifier
included therein. Next (step 1305), transmission system 170 accesses data structure
1200 to determine the ordered set of video image identifiers and purchase
information that are associated with the sound recording identifier determined in
step 1304. Next (step 1306), transmission system 170 retrieves from storage unit
185 the video image identified by the first identifier in the set.
’602 Patent col.13 ll.31–41 (emphasis added). The intrinsic record does not support requiring the
trigger message to initiate creation of the video image.
Accordingly, the Court construes “trigger message” as follows:

25 / 52


E.

“trigger message” means “message configured to initiate an action.”
“still image”

Disputed Term
“still image”


’245 Patent Claims 2, 17

Plaintiff’s Proposed
Construction
No construction necessary –
the words of the claims
should be given their plain
and ordinary meaning

Defendants’ Proposed
Construction
graphic image file (e.g., GIF
files, JPEG files, bitmap file)

The Parties’ Positions
Plaintiff submits: “Still image” has the ordinary meaning of its constituent words and can
be understood without construction. Dkt. No. 112 at 19. Specifically, a video file, such as a MPEG
file, may be a “still image.” Id. at 20 (citing ’245 col.11 ll.47–53 (referring to a MPEG image with
“null P-frames”); Russ Decl. ¶ 102 (stating the “null P-frames” indicate the image is “still”).
Excluding MPEG-formatted files from the scope of “still image” would improperly exclude
described exemplary embodiments involving television transmission of still images because
MPEG is the standard for such transmission. Id. at 20–21.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’245 Patent fig.2, col.4 ll.47–53, col.4 ll.56–
62, col.11 ll.47–53. Extrinsic evidence: Russ Decl. ¶¶ 98–104 (Dkt. No. 112-6 at 38–40); ATIS
Telecom Glossary, “still video”12 (Plaintiff’s Ex. E, Dkt. No. 112-12).
Defendants respond: “Still image” refers to the graphic image files of the ’245 Patent which
are distinct from the video files of the patent in that the latter includes a time component. Dkt. No.
130 at 17. Specifically, an MPEG file is not a still image. Id.

12

http://www.atis.org/glossary/definition.aspx?id=1426

26 / 52

In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’245 Patent col.4 ll.49–52, col.6 ll.10–11.
Extrinsic evidence: Shamos Decl. ¶¶ 72, 130–31 (Dkt. No. 130-9 at 17).
Plaintiff replies that it would be improper to exclude the MPEG embodiment of a still
image. Dkt. No. 135 at 6.
Analysis
The issue here appears to be whether a “still image” is necessarily a data type other than
MPEG. The Visual-Complement Patents do not restrict still images to certain data types and
specifically do not exclude MPEG data types.
The patents describe that a video image is displayed to the user and may comprise various
data types. The patents describe displaying a video image based on the video image specification:
The video image conforms to the video image specification contained in the data
packet so that when the video image is displayed on the subscribers’ audio/video
device 182, the visual media assets defined in the video image specification are
displayed in the locations as specified in the video image specification.
’602 Patent col.6 ll.1–6. For example, the video image from an album may be displayed when a
song from the album is playing. Id. at col.4 ll.50–58. A video image may be constructed from
various media assets, such as graphic image files, video files, and text messages. Id. at col.4 ll.41–
49. “The video image may be encoded according to a Moving Pictures Experts Group (MPEG)
standard, the National Television Standards Committee (NTSC) video signal standard, or other
video signal standard.” Id. at col.6 ll.7–10. For example, “[i]n one embodiment, the video image,
data packet 731 and audio stream are transmitted together in an MPEG-2 data stream.” Id. at col.10
ll.44–46. Thus, the patents teach that information other than “moving pictures” may be encoded
as MPEG data.

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The video image may include a time component in that the image displayed to the user
changes over time. See, e.g., id. at col.2 ll.24–27 (“the video image is updated at various times so
that the video image seen by the consumer changes over time as well as changing whenever a new
sound recording is selected and played by the audio subsystem”), col.5 ll.5–9 (“some of the assets
… specified by the video image specification are determined as function of time”).
From this, the Court understands that whether an image is “still” is determined from the
user’s perspective, and is not based on its data type. If a particular video image, as displayed to a
user, does not change over time, then it is a still image regardless of whether the image is encoded
as MPEG or in some other data format.
Accordingly, the Court construes “still image” as follows:

F.

“still image” means “image that, as displayed, does not change over time.”
The Broadcast Terms

Disputed Term
“broadcast”


a service that transmits to a
plurality of set-top-boxes

see “broadcast”

transmitted to a plurality of
client systems from a media
source through a channel

transmitted simultaneously to
all client systems (users) from
a media source through a
channel designed or
constructed to transmit
simultaneously to all client
systems (users) connected to
the channel

’121 Patent Claim 1

“broadcast from a broadcast
media source through a
broadcast channel”


Defendants’ Proposed
Construction
transmitted simultaneously to
all client systems (users)

’025 Patent Claim 1

“broadcast service”


Plaintiff’s Proposed
Construction
transmitted to a plurality of
client systems

‘025 Patent Claim 1

28 / 52

Disputed Term
“providing an on demand,
personalized media service
and a broadcast service to a
set-top-box”


Plaintiff’s Proposed
Construction
providing to a set-top-box an
on-demand, personalized
media service and a service
that transmits to a plurality of
set-top-boxes

’121 Patent Claim 1

Defendants’ Proposed
Construction
providing an on demand,
personalized media service
along with a service that
transmits content
simultaneously to all client
systems (users)

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: As used in the Visual-Complement Patents and as explained during
prosecution of a parent application, “broadcast” refers to transmission to a plurality of users but
does not require transmission to all users. Dkt. No. 112 at 23–25.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’025 Patent fig.1, col.1 ll.27–34, col.3 ll.43–
45, col.4 ll.3–5, col.5 ll.44–54; U.S. Patent No. 7,783,77213 File Wrapper July 2, 2007 Reply to
Office Action Amendment (Plaintiff’s Ex. F, Dkt. No. 112-13). Extrinsic evidence: Shamos Decl.
¶¶ 86–94 (Plaintiff’s Ex. B, Dkt. No. 112-10 at 20–22); Russ Decl. ¶¶ 115–20 (Dkt. No. 112-6 at
43–45); Microsoft Computer Dictionary 62 (4th ed. 1999) (“broadcast”) (Plaintiff’s Ex. G, Dkt.
No. 112-14 at 8).
Defendants respond: In the art, “broadcast” refers to transmission to all clients and that the
term has this meaning in the claims. Dkt. No. 130 at 20–21. Further, while a broadcast is directed

13

U.S. Patent No. 7,783,772 issued from Application No. 10/098,620; the ’025, ’045, and ’121
Patents claim priority to Application No. 10/098,620 through a series of continuation and
continuation-in-part applications. ’025 Patent, at [63] Related U.S. Application Data; ’045 Patent,
at [63] Related U.S. Application Data; ’121 Patent, at [63] Related U.S. Application Data.

29 / 52

to a plurality of clients, that does not mean that the plurality may be less than all clients. Id. at 21–
22. This is how the patentee explained the meaning of “broadcast” in a related patent application.
Id. at 21.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’025 Patent col.1 ll.27–34. Extrinsic
evidence: Shamos Decl. ¶¶ 88, 90, 93 (Dkt. No. 130-9 at 20–21); Microsoft Computer Dictionary
62 (4th ed. 1999) (“broadcast”) (Plaintiff’s Ex. G, Dkt. No. 112-14 at 8); Steinberg Dep. 33:21 –
34:3, 35:14 – 36:18 (Defendants’ Ex. 4, Dkt. No. 130-5 at 3–6).
Plaintiff replies: The intrinsic evidence does not support restricting “broadcast” to require
transmission to all users. Dkt. No. 135 at 7.
Analysis
The issues here distill to: (1) whether “broadcast” necessarily entails simultaneous
transmission, and (2) whether a “broadcast” is necessarily transmitted to all client systems. In the
context of the intrinsic record, the Court understands “broadcast” to refer to simultaneous
transmission to multiple unspecified users, regardless of whether that constitutes all client systems.
“Broadcast” in the context of the Video-On-Demand Patents, refers to simultaneous
transmission to multiple unspecified users. The Video-On-Demand Patents describe that a
broadcast transmission is sent to “a plurality of client systems.” See, e.g., ’025 Patent col.5 ll.44–
53. And the disclosures distinguish broadcast media systems from on-demand media systems and
personalized media systems based on the control the user has over the content the system transmits
to the user: a user does not have any control over the content of a broadcast system, a user has
precise control over the content of an on-demand system, and a user has some control over the

30 / 52

content of a personalized system. Id. at col.1 ll.26–56. This distinction was further explained
during prosecution of a parent application:
By definition, a “broadcast recording” is a recording that is broadcast. For example,
it is a recording that is sent to multiple unspecified users simultaneously so that
each of the multiple users can listen to the recording. This is the well-known
definition
of
the
term
“broadcast.”
See
e.g.,
Webopedia,
http://www.webopedia.com (defining broadcast to mean “to simultaneously send
the same message to multiple recipients”); and The Free On-Line Dictionary of
Computing, http://foldoc.org, (defining broadcast to mean “a transmission to
multiple, unspecified recipients”).
In contrast, a recording transmitted from an “on-demand system,” by definition, is
not broadcast. Rather, a recording transmitted by an on-demand system is
transmitted to a single recipient (i.e., it is transmitted to the device that requested
the recording).
U.S. Patent No. 7,783,772 File Wrapper July 2, 2007 Reply to Office Action Amendment 14 (Dkt.
No. 112-13 at 15). That is, a broadcast system is distinct from systems that allow user control over
content in that a broadcast is simultaneously transmitted generally to multiple users, and not
addressed to specific users.
The extrinsic evidence does not dictate that a broadcast must be to all client systems. The
term “broadcast” has multiple plain and ordinary meanings. For example, the Microsoft Computer
Dictionary provides: (1) “Sent to more than one recipient. In communications and other networks,
a broadcast message is one distributed to all stations.” and (2) “As in radio or television, a
transmission sent to more than one recipient.” Microsoft Computer Dictionary 62 (4th ed. 1999)
(Dkt. No. 112-14 at 8). And as set forth above in the prosecution history, broadcast can also mean:
(1) “to simultaneously send the same message to multiple recipients” and (2) “a transmission to
multiple, unspecified recipients.” That is, a broadcast may be sent to all users or just more than
one, without specifying the users. Based on the intrinsic record, “broadcast” is used in the Video-

31 / 52

On-Demand Patents according to multiple-recipient meaning, and does not refer to transmissions
that are necessarily directed to all client systems.
The Court declines to read Defendants’ “designed or constructed to transmit
simultaneously to all client systems (users) connected to the channel” into the meaning of
broadcast channel. As set forth above, the Court rejects the “all client systems” limitation. And it
is unclear what “designed or constructed to” means in this context. For example, is a channel that
is broadcast but was not specially designed to be broadcast a “broadcast channel”? Defendants’
proposed limitation does not clarify claim scope.
Accordingly, the Court determines that “providing an on demand, personalized media
service and a broadcast service to a set-top-box” has its plain and ordinary meaning subject to the
constructions of its constituent terms “broadcast service” and “set-top-box” and construes the other
Broadcast terms as follows:


“broadcast” means “simultaneously transmitted to multiple unspecified users”;



“broadcast service” means “service for simultaneously transmitting to multiple
unspecified users”;



“broadcast from a broadcast media source through a broadcast channel” means
“simultaneously transmitted to multiple unspecified users from a broadcast media
source through a broadcast channel.”

G.

“multicast” and “music multicast system”

Disputed Term
“multicast”


Plaintiff’s Proposed
Construction
a system for providing an
audio stream to a plurality of

’245 Patent Claim 17

32 / 52

Defendants’ Proposed
Construction
system that transmits
simultaneously to a subset of
client systems (users) only

Disputed Term
“music multicast system”


Plaintiff’s Proposed
Construction
users essentially
simultaneously

’245 Patent Claim 17

Defendants’ Proposed
Construction
after a user tunes or
subscribes to a music station
or channel

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: Claim 17 of the ’245 Patent itself explains the meaning of “multicast”
and “music multicast system” and therefore the terms can be understood without construction. Dkt.
No. 112 at 21. For example, the claim provides the “music multicast system” is “for providing [an]
audio stream to a plurality of users essentially simultaneously.” Id. Defendants’ proposed
construction obfuscates—and contradicts—the plain meaning of the surrounding claim language.
Id. Further, Defendants’ construction is based on an overly narrow dictionary definition that is
inconsistent with actual usage of “multicast” in the relevant art. Id. at 22.
In addition to the claims themselves, Plaintiff cites the following extrinsic evidence to
support its position: Russ Decl. ¶¶ 107–112 (Dkt. No. 112-6 at 41–42); Shamos Decl.14 ¶¶ 82–83
(Plaintiff’s Ex. C, Dkt. No. 112-10 at 20).
Defendants respond: In the art, “multicast” refers to transmission to all subscribing
machines and the term has this meaning in the claims. Dkt. No. 130 at 18. Further, while the claims
recite what the “music multicast system” is for—i.e., “for providing said audio stream to a plurality
of users essentially simultaneously”—this language informs the intended use of the system, it does

14

Declaration of Michael Shamos, Ph.D.

33 / 52

not define the system. Id. at 18–19. Not every system that provides an “audio stream to a plurality
of users essentially simultaneously” is a “music multicast system.” Id. at 19.
In addition to the claims themselves, Defendants cite the following extrinsic evidence to
support their position: Shamos Decl. ¶¶ 81–82 (Dkt. No. 130-9 at 18–19); Russ Decl. ¶¶ 105, 108
(Dkt. No. 112-6 at 41); Farber Dep.15 32:11–17 (Defendants’ Ex. 2, Dkt. No. 130-3 at 3).
Analysis
The issue here appears to distill to whether a music multicast system necessarily provides
audio data to all subscribing users or simply to multiple users. The Court understands that a
multicast system provides content to multiple specified users.
To begin, the Court rejects Plaintiff’s contention that the meaning of multicast is provided
in Claim 17 of the ’245 Patent. The claim recites: “[a] method for providing a visual complement
to an audio stream, the method being performed by a music multicast system for providing said
audio stream to a plurality of users essentially simultaneously.” ’245 Patent col.18 ll.4–7 (emphasis
added). The claim further recites steps performed by the music multicast system. The Court agrees
with Defendants that “for providing said audio stream to a plurality of users essentially
simultaneously” does not define a “music multicast system.” Indeed, if this language were
definitional, there would be no need to include “multicast” in the claims at all, as Plaintiff posits.
But such a construction fails to give effect to the fact that “multicast” is used in the claims. A
“music multicast system” should be construed as something other than just a “music system.” InfoHold, Inc. v. Muzak LLC, 783 F.3d 1365, 1373 (Fed. Cir. 2015) (“Claims must be interpreted with
an eye toward giving effect to all terms in the claim”).

15

Deposition of Stuart H. Farber (March 24, 2017).

34 / 52

As the parties agreed at oral argument, “multicast” is not synonymous with “broadcast.”
While “broadcast” is used in the Visual-Complement Patents, “multicast” is not used outside of
the claim set of the ’245 Patent. This alone suggests that “multicast” means something different
than “broadcast.” Defendants’ expert suggests multicasting is directed to “subscribers” or
“members.” Shamos Decl. ¶¶ 82–83, Dkt. No. 130-9 at 19. Plaintiff’s expert suggests that such a
meaning is not appropriate in the context of the patents. Russ Decl. at ¶ 112, Dkt. No. 112-6 at 42.
Given the Court’s understanding of the customary meaning of “broadcast,” as set forth above, and
that “multicast” is directed to multiple users as expressed in the claims, “multicast” differs from
“broadcast” in that the destinations of the transmission are specified for multicast and unspecified
for broadcast.
Accordingly, the Court determines that “multicast” need not be construed apart from
“music multicast system” and construes “music multicast system” as follows:


“music multicast system” means “system for providing an audio stream to a
plurality of specified users essentially simultaneously.”

H.

“configuring a client system to receive and play music broadcast from a
broadcast media source through a broadcast channel”

Disputed Term
“configuring a client system
to receive and play music
broadcast from a broadcast
media source through a
broadcast channel”


Plaintiff’s Proposed
Construction
configuring a client system to
receive and play music
transmitted to a plurality of
client systems from a media
source through a channel

’025 Patent Claim 1

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Defendants’ Proposed
Construction
tuning a client system to a
broadcast channel in order to
receive and play music
broadcast from a broadcast
media source

The Parties’ Positions
Plaintiff submits: “Configuring” and “tuning” are not synonymous in the ’025 Patent. Dkt.
No. 112 at 25. For example, Dependent Claim 5 recites “tuning” as a subset of configuring:
“wherein the act of configuring . . . comprises tuning”—evincing that not all configuring includes
“tuning.” Id. at 25–26. And the patent describes exemplary embodiments in which systems are
configured to receive and play without tuning. Id. at 26 (citing ’025 Patent col.15 ll.20–23).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’025 Patent col.15 ll.20–23. Extrinsic
evidence: Russ Decl. ¶¶ 124–25 (Dkt. No. 112-6 at 46).
Defendants respond: The ’025 Patent explains that “configuring a client system to receive
and play music” is “tuning” the system. Dkt. No. 130 at 23 (citing ’025 Patent col.15 ll.22–24).
While the patent includes exemplary embodiments that do not involve tuning, these embodiments
do not include a “configuring” step and do not inform the meaning of this “configuring” limitation.
Id. Further, Claim 5 recites “tuning a tuner,” thus Claim 5 is narrower than Claim 1 by reason of
the “tuner” and does not evince that “configuring a client system” is other than “tuning.” Id. at 23–
24.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’025 Patent col.15 ll.22–24, col.15 ll.37–
38. Extrinsic evidence: Shamos Decl. ¶ 96 (Dkt. No. 103-9 at 22).
Plaintiff replies. “Tuning” may be a form of “configuring” but not all “configuring” is
“tuning.” Dkt. No. 135 at 6.

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Analysis
The sole issue in dispute here, other than the issues addressed in the Broadcast Terms, is
whether “configuring a client system” is limited to “tuning a client system.” It is not.
“Configuring a client system” is broader than “tuning a client system.” Dependent Claim
5 recites, “The method of claim 1, wherein the act of configuring the client system to receive and
play music broadcast from the broadcast media source over the broadcast channel comprises tuning
a tuner of the client system to the broadcast channel.” ’025 Patent col.17 ll.6–10. The Court agrees
with Plaintiff that the distinction between Claim 1 and Claim 5 is the tuning. Indeed, it is not clear
that a tuner is anything other than the thing that enables the tuning. The ’025 Patent describes that
the client systems receive information through an interface that may or may not include a tuner:
The client systems 110 may include, for example, a conventional unidirectional or
bi-directional set-top box or a computer equipped with, at the least, an interface
(e.g., tuner and demodulator) for receiving information sent through distribution
network 108. In another embodiment, the client system 110 may include a computer
or similar device which is equipped with an interface (network card or similar) for
receiving data packets (e.g., IP packets or other packets) sent through network 108.
Id. at col.5 ll.11–19. The Court understands the essence of this configuring limitation is explained
in the ’025 Patent as isolating, or selecting, the channel:
Client systems 110 are operable to isolate at least one of the channels within
combined signal 125 and then provide the audio and video data contained in the
channel to an audio/video system 111, which reproduces the audio/video for a user
101 to hear and/or view.
Id. at col.4 l.65 – col.5 l.2.
Accordingly, the Court rejects Defendants’ proposed “tuning” limitation and determines
that this term has its plain and ordinary meaning, subject to the construction of “broadcast from a
broadcast media source through a broadcast channel.”

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I.

“creating a playlist”

Disputed Term
“creating a playlist”



’025 Patent Claim 8
’045 Patent Claim 1, 6,
14, 19

Plaintiff’s Proposed
Construction
No construction necessary –
the words of the claims
should be given their plain
and ordinary meaning

Defendants’ Proposed
Construction
creating a playlist by an/the
on-demand system

The Parties’ Positions
Plaintiff submits: “Creating a playlist” can be understood without construction. Dkt. No.
112 at 26. Further, it would be improper to require an “on-demand system” be the means for
creating the playlist. Id. at 25–26. The claims are silent regarding what is used to create the list and
reading in a “by the on-demand system” from exemplary embodiments is not justified. Id. Indeed,
some claims recited an on-demand system and some do not. Id. (citing Claims 1 and 11 of the ’045
Patent).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’025 Patent col.11 ll.64–67. Extrinsic
evidence: Russ Decl. ¶¶ 127–29 (Dkt. No. 112-6 at 47).
Defendants respond: The claims and the described embodiments show that the on-demand
system, and not the user, creates the playlist. Dkt. No. 130 at 24–25.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’025 Patent col.9 ll.10–15, col.11 l.64 –
col.12 l.3, col.13 l.67 – col.14 l.5, col.14 ll.24–31, col.15 ll.4–7. Extrinsic evidence: Shamos Decl.
¶¶ 103–04 (Dkt. No. 130-9 at 23–24).

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Plaintiff replies: The claims expressly recite that the on-demand system performs some
steps, which implies that when not expressly recited, the step is not necessarily performed by the
on-demand system. Dkt. No. 135 at 5.
Analysis
The issue here is whether the playlist is necessarily created by the on-demand system. It is
not. The parties did not dispute the Court’s construction at oral argument.
The Claims do not expressly require that the playlist is created by an on-demand system.
For example, ’025 Patent Claim 8 recites: “creating a playlist, wherein the playlist includes a
plurality of media assets, including one media asset corresponding to the selected video” in a claim
to a method “comprising” a number of steps. While the “selected video” is identified in information
received by the on-demand system, it does not necessarily follow that it must be the on-demand
system that creates the playlist. For example, the “comprising” transition phrase allows that the
“selected video” is identified elsewhere such that the playlist can be created elsewhere. Indeed, the
user necessarily has this information as the on-demand system receives the information from the
user. ’025 Patent col.17 ll.20–24. Further, even if the on-demand system creates the playlist in all
the exemplary embodiments, that alone is not enough to read that limitation into the claims.
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366(Fed. Cir. 2012) (“It is likewise
not enough that the only embodiments, or all of the embodiments, contain a particular limitation.
We do not read limitations from the specification into claims; we do not redefine words. Only the
patentee can do that.”). Defendants have not identified any clear expression in the Video-OnDemand Patents limiting where or by what the playlist is created.

39 / 52

Accordingly, the Court rejects Defendants’ proposed “by an/the on-demand system” and
determines “creating a playlist” has its plain and ordinary meaning without the need for further
construction.
J.

“data packet”

Disputed Term
“data packet”



‘602 Patent Claim 1
‘245 Patent Claims 1, 12,
17

Plaintiff’s Proposed
Construction
a collection of data such as
one or more files or
documents

Defendants’ Proposed
Construction
a unit of information, such as
a file, transmitted as a whole
from one device to another

The Parties’ Positions
Plaintiff submits: “Data packet” is used in the Visual-Complement Patents to denote a
collection of data that may comprise multiple pieces. Dkt. No. 112 at 29–30. Defendants’ proposed
construction is taken from a dictionary divorced from the intrinsic record and, while it may be
applicable to “packets” in packet-switched networks, it does not accurately reflect how “data
packet” is used in the context of the patents. Id. at 31.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’602 Patent fig.6, col.4 ll.33–38, col.5 ll.18–
25, col.5 ll.22–25, col.5 ll.28–36, col.9 ll.42–46, col.11 ll.45–51. Extrinsic evidence: Russ Decl.
¶¶ 136–45 (Dkt. No. 112-6 at 50–53); Microsoft Computer Dictionary 385 (5th ed. 2002)
(“packet”) (Plaintiff’s Ex. I, Dkt. No. 112-16 at 7).
Defendants respond: A “data packet” is not just any “collection of data” and must be so
construed else it would read on Google’s database. Dkt. No. 130 at 28. The Visual-Complement
Patents include examples of data packets that are single files, but do not include an example of a
data packet that is more than one file. Id.

40 / 52

In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’602 Patent fig.6, col.5 l.28, col.5 ll.34–36,
col.11 ll.45–46. Extrinsic evidence: Shamos Decl. ¶ 141 (Dkt. No. 130-9 at 32).
Plaintiff replies: The claims themselves constrain the “data packet” from being just any
collection of data, like Google’s database. Dkt. No. 135 at 8. For instance, the data packet of the
claims is transmitted. Id. Further, there is no support in the intrinsic evidence that a data packet
must be transmitted as a whole. Id.
Analysis
The issues here are: (1) whether a data packet necessarily is “transmitted as whole,” (2)
whether a data packet is necessarily a “unit of information,” (3) whether a data packet may span
more than one file, and (4) whether a data packet is any collection of data. A “data packet” is not
necessarily “transmitted as a whole,” a “unit of information,” or limited to one file. Nor is a “data
packet” just any collection of data. It is a collection of data associated for a specific purpose—as
expressly set forth in the claims.
The Court rejects Defendants’ “unit of information” and “transmitted as a whole”
limitations. To begin, it is unclear what these phrases mean in the context of the VisualComplement Patents, which relate to audio/visual broadcasts over cable and satellite systems. It is
clear, however, that the patents are using “data packets” to refer to collections of information rather
than to transmission units. See, e.g., ’602 Patent col.4 ll.35–38 (“A data packet for a particular
channel comprises a video image specification that specifies a visual complement of the audio
service for the particular channel.”), id. at col.4 ll.28–31 (“data packet 600 includes a video image
specification 602 . . . [and] may also include sound recording information 604, and purchase
information 606”). These collections take the form, for example, of files or documents. See, e.g.,

41 / 52

id. at col.5 ll.34–36 (“The data packets may be extensible mark-up language (XML) files or hypertext mark-up language (HTML) files.”), col.11 ll.45–46 (“In one embodiment, data packet 732 is
an HTML document.”). Accordingly, the Court finds Defendants’ extrinsic evidence not helpful
or credible on this issue.
The Court rejects Defendants’ “single file” limitation. The intrinsic record is ambiguous
on whether a data packet may comprise more than one file. While the patents disclose that “data
packets may be … files,” id. at col.5 ll.34–36, this does not necessarily mean that a data packet
may be multiple files or that a data packet is necessarily a single file. Similarly, the described
exemplary embodiment of the data-packet creation process refers generally to collecting and
assembling (packaging) various information related to the visual complement to a sound recording.
Id. at figs.5A–5B, col.9 l.2 – col.10 l.18. The Court finds nothing to justify limiting “data packet”
to a single file.
Construing “data packet” as “collection of data” does not render the term unbounded.
Indeed, the claims provide significant guidance regarding the nature of the data packet. For
example, Claim 1 of the ’602 Patent recites: “data packet comprising a video image specification”
and “said data packet further comprising sound recording information associated with the sound
recording.” Id. at col.15 l.65 – col.16 l.6. Given the “comprising” language, the data packet
expressly may include other information. But that does not render the term unbounded. The data
packet of Claim 1 must have at least the video image specification (as defined in the claim) and
the sound recording information (as defined in the claim).
Accordingly, the Court construes “data packet” as follows:


“data packet” means “collection of data.”

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K.

“set-top-box”

Disputed Term
“set-top-box”



‘045 Patent Claims 2, 7,
12, 17
‘121 Patent Claims 1, 6

Plaintiff’s Proposed
Construction
device that converts a signal
to an input signal to the
television

Defendants’ Proposed
Construction
device that converts a
television signal to an input
signal to the television

The Parties’ Positions
Plaintiff submits: “Set” in set-top-box refers to a television set. Dkt. No. 112 at 31–32. But
the signals the set-top-box process to provide to the television set are not necessarily traditional
television signals, they can be, for example, IP signals. Id. at 32.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’045 Patent col.15 ll.51–55. Extrinsic
evidence: Russ Decl. ¶¶ 148, 150–51 (Dkt. No. 112-6 at 54–56); Microsoft Computer Dictionary
405 (4th ed. 1999) (“set-top box”) (Plaintiff’s Ex. G, Dkt. No. 112-14 at 17).
Defendants respond: The Video-On-Demand Patents describe set-top-boxes as converting
signals received from a television network into signals for input into the television set. Dkt. No.
130 at 29. This comports with the ordinary meaning of the term in the art—that a set-top-box
converts television signals into signals to be input to the television. Id.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’045 Patent col.15 ll.48–55, col.15 ll.62–
65. Extrinsic evidence: Shamos Decl. ¶¶ 143–47 (Dkt. No. 130-9 at 32–33); Microsoft Computer

43 / 52

Dictionary 405 (4th ed. 1999) (“set-top box”) (Pl.’s Ex. G, Dkt. No. 112-14 at 17); McGonigal
Dep.16 98:15–17 (Defendants’ Ex. 7, Dkt. No. 130-8 at 3).
Analysis
The issue here appears to be whether the signal the set-top-box converts is necessarily a
television signal. It is not, as the Court understands Defendants to use “television signal.”
A set-top-box is not limited to cable TV signals. It is not clear what constitutes a “television
signal” as posited by Defendants, but Defendants’ expert appears to equate “television signal” with
“cable TV signal.” Shamos Decl. ¶ 45, Dkt. No. 130-9 at 33. The Video-On-Demand Patents,
however, are not limited to cable TV signals. For example, the patents provide that the set-top-box
is connected to a network “which may be a cable-TV (CATV) network.” ’025 Patent col.16 ll.5–
7 (emphasis added). The Court understands that may be a cable network is distinct from must be
a cable network. Further, the Video-On-Demand Patents incorporated the disclosure of the VisualComplement Patents. See, e.g., ’025 Patent col.5 ll.41–44 (incorporating by reference U.S. Patent
Application No. 10/066,793); ’602 Patent, at [63] Related US. Application Data (listing U.S.
Patent Application No. 10/066,793 as a parent application in a series of continuation applications).
The Visual-Complement Patents provide: “there exist systems that broadcast music via satellite
and cable to consumers’ televisions or set-top boxes.” ’602 Patent col.1 ll.20–22. This means: (1)
signals to the set-top-box are not necessarily cable signals and (2) signals to the set-top-box may
be “music.” Further, the Microsoft Computer Dictionary provides that “[s]et-top boxes can be used
to access the World Wide Web.” Microsoft Computer Dictionary 405 (4th ed. 1999), Dkt. No.

16

Deposition of Daniel L. McGonigal (Apr. 3, 2017).

44 / 52

112-14 at 17. Simply, set-top-boxes do not necessarily process “television signals” as the Court
understands Defendants to use that term.
Accordingly, the Court construes “set-top-box” as follows:


“set-top-box” means “device that converts a signal to an input signal to the
television.”

L.

“linear audio channel”

Disputed Term
“linear audio channel”


’245 Patent Claim 12

Plaintiff’s Proposed
Construction
Not indefinite – the words of
the claims should be given
their plain and ordinary
meaning

Defendants’ Proposed
Construction
Indefinite

The Parties’ Positions
Plaintiff submits: The meaning of “linear audio channel” is reasonably certain in the
context of the ’245 Patent and its prosecution history, which describes and claims delivering audio
information over a channel. Dkt. No. 112 at 33–34. Plaintiff contends that Defendants’ use of a
similar term, “linear music channel,” to describe services evinces that this term has an established
meaning in the art. Id. at 33. Finally, Plaintiff contends two of the three possible definitions posited
by Defendants’ expert are not reasonable in the context of the intrinsic record—the patent is not
concerned with “operating regions of electronic devices or the combining of noise signals.” Id. at
34.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’245 Patent col.4 ll.11–15. Extrinsic
evidence: Stingray, Galaxie (Plaintiff’s Ex. J, Dkt. No. 112-17); Stingray, All Good Vibes

45 / 52

website17 (Plaintiff’s Ex. K, Dkt. No. 112-18); Russ Decl. ¶¶ 154–58 (Dkt. No. 112-6 at 56–58);
Shamos Decl. ¶¶ 76-78 (Plaintiff’s Ex. C, Dkt. No. 112-10 at 18–19).
Defendants respond: It is unclear whether a “linear audio channel” is: (1) an audio channel
with sequentially-arranged content, (2) an audio channel with an electronic device operating in its
linear mode, or (3) an audio channel in which information and noise are added together. Dkt. No.
130 at 30–31. Further, the documents showing Defendants’ use of “linear music channel” do not
evince the meaning of “linear audio channel” because the documents were drafted over a decade
after the priority date. Id. at 30.
In addition to the claims themselves, Defendants cite the following extrinsic evidence to
support their position: Shamos Decl. ¶¶ 74–78 (Dkt. No. 130-9 at 17–18).
Plaintiff replies: The only meaning of “linear audio channel” that is supported by the record
is “an audio channel whose content is arranged sequentially.” Dkt. No. 135 at 9. Further, even
though Defendants’ documents were after the priority date, Defendants have not proffered any
evidence to suggest the term did not have meaning in the art. Id.
Plaintiff cites further extrinsic evidence to support its position: Steinberg Dep. 33:1–5,
33:17 – 34:3 (Defendants’ Ex. 4, Dkt. No. 130-5 at 3–4).
Analysis
The issue in dispute is whether the meaning of “linear audio channel” is reasonably certain.
The Court holds that Defendants have failed to prove the meaning of the term is not reasonably
certain.

17

http://www.stingray.com/entertainment/music

46 / 52

The Court agrees with Plaintiff that of Defendants’ three proposed meanings of “linear
audio channel,” only one is related to the intrinsic evidence and therefore only one is reasonable.
The Visual-Complement Patents do not pertain to operating modes of electronic devices or how
noise and information might be combined to form a signal. Rather, they pertain to supplementing
broadcast audio streams with visual complements related to the recording playing at any given
time. See, e.g., ’602 Patent col.1 ll.45–63. And these audio streams comprise a series of sound
recordings played over time. See, e.g., id. at col.4 ll.7–11 (“A playlist 110 for a particular channel
specifies sound recordings that have been programmed for transmission to the listeners of system
100 over that channel during a given period of time.”). The patents describe exemplary ordering
of these recordings: “Audio subsystem 102 typically retrieves, encodes, and streams the sound
recordings to consumers in the order in which the sound recordings are listed in the playlists
110.” Id. at col.4 ll.13–15 (emphasis added). That is, the patents specifically teach a sequential
ordering of recordings on an audio channel.
Accordingly, the Court construes “linear audio channel” as follows:


“linear audio channel” means “audio channel whose content is arranged
sequentially.”

M.

“popular music videos”

Disputed Term
“popular music videos”


’121 Patent Claim 11

Plaintiff’s Proposed
Construction
Not indefinite – the words of
the claims should be given
their plain and ordinary
meaning

47 / 52

Defendants’ Proposed
Construction
Indefinite

The Parties’ Positions
Plaintiff submits: The meaning of “popular music videos” is reasonably certain in the
context of the disclosure of the ’121 Patent, which relates “popular” with the level of popularity.
Dkt. No. 112 at 35–36 (citing ’121 Patent col.10 ll.19–28 (referring to “the local top 10 videos for
the currently selected format” as “popular videos”)).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’121 Patent col.10 ll.19–28. Extrinsic
evidence: Russ Decl. ¶ 160 (Dkt. No. 112-6 at 58–59); Shamos Decl. ¶ 119 (Plaintiff’s Ex. C, Dkt.
No. 112-10 at 28).
Defendants respond: It is unclear whether a “popular music video” is: (1) a video in the
popular-music genre, (2) a music video that is popular, or (3) a video for a popular piece of music.
Dkt. No. 130 at 31–32. Further, there is no described standard by which to determine if a video or
piece of music is “popular.” Id. at 32.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’121 Patent col.12 ll.42–44. Extrinsic
evidence: Shamos Decl. ¶¶ 117–21 (Dkt. No. 130-9 at 26–27).
Plaintiff replies: The disclosure of using the “local top 10 videos” to provide the “popular”
videos is sufficient guidance to render the meaning of “popular music videos” reasonably certain.
Dkt. No. 135 at 10.
Analysis
The issue here is whether the meaning of “popular music videos” is reasonably certain. It
is—it refers to videos that have a relatively high number of downloads. Defendants have failed to
prove that any claim is rendered indefinite by this term.

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In the context of the disclosure of the ’121 Patent, it is reasonably clear that “popular music
videos” refers to music videos that are popular with their audience. Specifically, the ’121 Patent
provides:
If the user 101 is interested in selecting a popular video, the user 101 may select
button 603. In response to user 101 selecting button 603, client system 110
transmits to on-demand system 192 information indicating that the user 101
activated button 603 (step 528). In response, on-demand system 192 determines the
local top 10 videos for the currently selected format (step 530). This information
may be determined from information stored in a database. Accordingly, on-demand
system 192 may record all user 101 video selections so that the popular videos can
be determined. In step 531, on-demand system 192 transmits to client system 110
a list of the videos determined in step 530. After step 531, control passes back to
step 506.
’121 Patent col.10 ll.19–31. That is, the popular videos are those videos that have a relatively high
frequency of download, such as the “local top 10 videos.”
Accordingly, the Court holds the Defendants have failed to establish the meaning of the
term is not reasonably certain and determines that “popular music videos” has its plain and
ordinary meaning.
N.

The Stream Terms

Disputed Term
“stream of audio data”


’121 Patent Claims 1

“stream of video data”


’121 Patent Claims 1

Plaintiff’s Proposed
Construction
Not indefinite, and no
construction necessary – the
words of the claims should be
given their plain and ordinary
meaning

Defendants’ Proposed
Construction
Indefinite

Not indefinite, and no
construction necessary – the
words of the claims should be
given their plain and ordinary
meaning

Indefinite

49 / 52

Disputed Term
“video data stream”


’121 Patent Claim 6

“stream of audio and video
data”


’121 Patent Claims 1, 6

Plaintiff’s Proposed
Construction
Not indefinite, and no
construction necessary – the
words of the claims should be
given their plain and ordinary
meaning

Defendants’ Proposed
Construction
Indefinite

Not indefinite, and no
construction necessary – the
words of the claims should be
given their plain and ordinary
meaning

Indefinite

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: “Stream” is well-defined, as evinced by Defendants’ use of “stream” in
the proposed construction of “video image multiplexed with the audio data” (discussed above),
and the “audio” and “video” modifiers denote the type of stream. Dkt. No. 112 at 36.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’121 Patent col.4 ll.29–31, col.6 ll.65–67,
col.8 ll.18–19. Extrinsic evidence: Russ Decl. ¶ 161 (Dkt. No. 112-6 at 59).
Defendants respond: It is not clear whether the “stream of audio and video data” is: (1) a
single combined stream with both audio and video data or (2) two separate streams, one of video
data and one of audio data. Dkt. No. 130 at 32–33. Specifically, the claim language “a stream of
audio and video data” suggests a single stream but later recited “the stream of audio data” and “the
stream of video data,” which derive antecedent basis from “a stream of audio and video data,”
suggest two streams. Id. at 33.

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In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’121 Patent col.4 ll.26–31. Extrinsic
evidence: Shamos Decl. ¶¶ 134–36 (Dkt. No. 130-9 at 30–31).
Plaintiff replies: The “stream of audio and video data” is a single combined stream having
both audio data and video data. Dkt. No. 135 at 10–11. And, as described in the ’121 Patent, the
audio data and visual data is extracted from that combined stream. Id.
Plaintiff cites further intrinsic and extrinsic evidence to support its position: Intrinsic
evidence: ’121 Patent col.4 ll.29–34, col.4 ll.62–66, col.5 ll.40–49. Extrinsic evidence: Russ
Decl. ¶ 162 (Dkt. No. 112-6 at 59–60).
Analysis
The issue here distills to whether the meanings of “stream of audio and video data,” “stream
of audio data,” “stream of video data,” and “video data stream” are reasonably certain. The
meanings are reasonably certain—Defendants failed to prove that any claim is rendered indefinite
by any of these terms.
The “stream of audio and video data” term refers to a combined data stream comprising
audio data and video data. The ’121 Patent teaches that separate audio and video data streams may
be combined. See, e.g., ’121 Patent col.11 ll.1–3 (“A personalized channel’ may be an audio
channel, a video channel or in some embodiments, a combination of audio and video channels.”).
This is the plain meaning of “a stream of audio and video data.”
The “stream of audio data,” “stream of video data,” and “video data stream” terms refer to
the components of the combined stream of audio and video data. The ’121 Patent teaches that,
ultimately, audio data is played for the user to hear and the video data is displayed for the user to
view. See, e.g., id. at col.4 l.62–col.5 l.1 (describing a audio/visual system that “preferably includes

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a display device . . . for displaying the video portion” and “which reproduces the audio/video for
a user 101 to hear and/or view”). This suggests the common-sense notion that while audio and
video data may part of a single data stream, the data must be separable for ultimate use. See also,
Russ Decl. ¶ 162 (“if an audio and video stream are combined, they need to be separated at some
point, if for no other reason than the fact that audio needs to be played and the video needs to be
displayed”), Dkt. No. 112-6 at 59–60.
Accordingly, Defendants have failed to prove that Claims 1 and 6 are rendered indefinite
by any of the Stream terms.
.
V.
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 6th day of July, 2017.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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