Personalized Media Communications, LLC v. TCL Corp. et al

Filing 66

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by District Judge Rodney Gilstrap on 6/29/2018. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PERSONALIZED MEDIA
COMMUNICATIONS, LLC
v.
TCL CORP., et al.

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§

CASE NO. 2:17-CV-433-JRG

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
Before the Court is the Opening Claim Construction Brief (Dkt. No. 54) filed by Plaintiff
Personalized Media Communications, LLC (“Plaintiff” or “PMC”). Also before the Court are
Defendants TCL Corp. and TCL Multimedia Technology Holdings Ltd.’s (“Defendants’ or
“TCL’s”) Responsive Claim Construction Brief (Dkt. No. 57) and Plaintiffs’ reply (Dkt. No. 58).
The Court granted the parties’ request that these claim construction proceedings be
conducted without an oral hearing. (See Dkt. Nos. 62 & 64.)

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Table of Contents

I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. AGREED TERMS................................................................................................................. 9
IV. DISPUTED TERMS ............................................................................................................ 11
A. “register memory” ............................................................................................................... 11
B. “stored function invoking data” .......................................................................................... 14
C. “media” and “medium” ....................................................................................................... 16
D. “predetermined identifier” .................................................................................................. 19
E. “among said plurality of programmable processors” .......................................................... 25
F. “command[s]” ...................................................................................................................... 27
G. “control[ling] said digital switch” ....................................................................................... 30
H. Order of Steps of Claim 9 of the ’6649 Patent.................................................................... 31
I. Order of Steps of Claim 10 of the ’6649 Patent ................................................................... 34
V. CONCLUSION...................................................................................................................... 35

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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 7,747,217 (“the
’217 Patent”), 7,752,649 (“the ’2649 Patent”), 7,752,650 (“the ’650 Patent”), 7,856,649 (“the
’6649 Patent”), 8,675,775 (“the ’775 Patent”), and 8,711,885 (“the ’885 Patent”) (collectively,
“the patents-in-suit”). (See Dkt. No. 1, Exs. 1–6.)
The ’217 Patent, titled “Signal Processing Apparatus and Methods,” issued on June 29,
2010, and bears an earliest priority date of November 3, 1981. The Abstract of the ’217 Patent
states:
A unified system of programming communication. The system encompasses the
prior art (television, radio, broadcast hardcopy, computer communications, etc.)
and new user specific mass media. Within the unified system, parallel processing
computer systems, each having an input (e.g., 77) controlling a plurality of
computers (e.g., 205), generate and output user information at receiver stations.
Under broadcast control, local computers (73, 205), combine user information
selectively into prior art communications to exhibit personalized mass media
programming at video monitors (202), speakers (263), printers (221), etc. At
intermediate transmission stations (e.g., cable television stations), signals in
network broadcasts and from local inputs (74, 77, 97, 98) cause control processors
(71) and computers (73) to selectively automate connection and operation of
receivers (53), recorder/players (76), computers (73), generators (82), strippers
(81), etc. At receiver stations, signals in received transmissions and from local
inputs (225, 218, 22) cause control processors (200) and computers (205) to
automate connection and operation of converters (201), tuners (215), decryptors
(224), recorder/players (217), computers (205), furnaces (206), etc. Processors
(71, 200) meter and monitor availability and usage of programming.
Plaintiff submits that “[a]ll six patents have the identical specification” (Dkt. No. 54,
at 1), so the Court herein refers to the specification of only the ’217 Patent unless otherwise
indicated.
Plaintiff has asserted the following claims of the patents-in-suit (Dkt. No. 46, at 1):
Patent
7,747,217

Claims
1, 2, 3, 4, 5, 7, 9, 11, 30, 31, 32, 38

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7,752,649

1, 2, 3, 7, 8, 11, 12, 13, 22, 23, 24, 26, 27, 28, 29, 39, 40, 41,
42, 45, 48, 49, 50, 51, 62, 63, 64, 67, 78, 79, 80, 81, 82, 83,
84, 88, 89, 90, 91, 92, 93, 94, 97, 98

7,752,650

1, 2, 3, 4, 9, 18, 32, 33

7,856,649

9, 10

8,675,775

2, 3, 4, 5, 6, 11, 12, 13, 14, 15, 16, 17, 18, 19, 21, 23

8,711,885

1, 9, 10, 11, 12, 13, 14, 15, 17, 21, 23, 26, 27, 100, 102, 103,
105, 106

The Court previously construed terms in the patents-in-suit in Personalized Media
Communications, LLC v. Apple, Inc., et. al., No. 2:15-cv-01366, Dkt. No. 246 (“Phase 1”), Dkt.
No. 247 (“Phase 2”) (E.D. Tex. Oct. 25, 2016).

II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
“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.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “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

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that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error
on appeal.” Id. (citing 517 U.S. 370).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the

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patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used
in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
customary meaning of a claim term “is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim

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language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the
applicant,” it may lack the clarity of the specification and thus be less useful in claim
construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
relevant to the determination of how the inventor understood the invention and whether the
inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
“a patentee’s statements during prosecution, whether relied on by the examiner or not, are
relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.

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Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Intuit Inc., No. 2:12CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J., sitting by designation)

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(“[P]revious claim constructions in cases involving the same patent are entitled to substantial
weight, and the Court has determined that it will not depart from those constructions absent a
strong reason for doing so.”); see also Teva, 135 S. Ct. at 839–40 (“prior cases will sometimes be
binding because of issue preclusion and sometimes will serve as persuasive authority”) (citation
omitted); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the
importance of uniformity in the treatment of a given patent”) (quoting Markman v. Westview
Instruments, Inc., 517 U.S. 370, 390 (1996)).
III. AGREED TERMS
In their April 6, 2018 Joint Claim Construction and Prehearing Statement (Dkt. No. 46,
Ex. A, at 1), as well as in their June 15, 2018 Joint Claim Construction Chart Pursuant to
P.R. 4-5(d) (Dkt. No. 59-1), the parties set forth agreements as to the following terms in the
patents-in-suit:
Term

Agreement

an expanded [and contracted] code
portion
(’775 Patent)

Larger [and smaller] code portion.

cadence information
(’775 Patent)

Information (such as headers, length tokens, or end of
file signals) that enables a receiver apparatus to
distinguish the individual messages of a message stream.

code
(’650 and ’775 Patents)

One or more instructions.

code portion
(’775 Patent)

Part of an instruction set.

control processor
(’2649, ’650, and ’885 Patents)

A processor that controls other devices or circuitry by
processing control information.

control signal
(’6649, ’775, and ’885 Patents)

A signal that controls.

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digital television signals
(’2649, ’6649, and ’650 Patents)

Television programming in which the video and audio
are transmitted as digital video signals and digital audio
signals, at least a portion designed for multiple
recipients.

digital video signals
(’2649 and ’650 Patents)

Video signals encoded as discrete numerical values
instead of an analog representation.

embedded data [on said
information transmission]
(’885 Patent)

Data that is enclosed within or made an integral part of
said information transmission.

embedded signal[s]
(’885 Patent)

Signals that are enclosed within or made an integral part
of a transmission.

instruct signals
(’6649 Patent)

Signals carrying information that instructs an operation
to be invoked.

message
(’2649 Patent)

All the signal processing information, transmitted in a
given transmission, from the first bit of one header to the
last bit transmitted before the first bit of the next header.

message stream
(’2649 and ’650 Patents)

A series of messages.

processor
(all patents-in-suit)

A device that performs operations according to
instructions.

programmable [control]
processor[s]
(’885 Patent)

[Control] processors that can be provided with a
sequence of operating instructions.

programming
[noun] Everything that is transmitted electronically to
(’2649, ’650, ’6649, ’775, and ’885 entertain, instruct, or inform, including television, radio,
Patents)
broadcast, print, and computer programming as well as
combined medium programming.
[verb] Providing a sequence of operating instructions.
portion receiver
(’775 Patent)

Device or component that receives the code portion.

processor instruction[s]
(’217 and ’775 Patents)

Commands or signals that are executed by, or instruct, a
processor to perform operations.

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variable formats
(’6649 Patent)

Formats that can be changed or adapted.

varying locations
(’6649 Patent)

Changes in the place where a television programming
signal can be found within a transmission.

varying timing lengths
(’6649 Patent)

Changing amount of time required to transmit
information.

valve
(’885 Patent)

A device or processor that regulates the flow of signals.

valve control signals
(’885 Patent)

Signals that control the operation of a valve.

Preamble of claim 9 of the ’6649
patent

The preamble is limiting because it provides the
antecedent basis for the term “said programmable
receiver station” in claim 9.

Preamble of claim 1 of the ’885
patent

The preamble is limiting because it provides the
antecedent basis for the terms “said valve” and “said at
least one processor” in claim 1.

Preamble of claim 9 of the ’885
patent

The preamble is limiting because it provides the
antecedent basis for the terms “said receiver station,”
“said plurality of sources,” “said first processor” and
“said second processor” in claim 9.

Preamble of claim 105 of the ’885
patent

The preamble is limiting because it provides the
antecedent basis for the terms “said plurality of
programmable processors” and “said stream of digital
data messages” in claim 105.

IV. DISPUTED TERMS
A. “register memory”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Memory to temporarily store information for
use in later operations.

A memory in a processor to temporarily store
information for use in later operations.

(Dkt. No. 46, Ex. B, at 1; Dkt. No. 54, at 1; Dkt. No. 57, at 6; Dkt. No. 59-1, at 32.) The parties
submit that this term appears in claims of the ’2649 and ’885 Patents. (Dkt. No. 46, Ex. B, at 1.)
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(1) The Parties’ Positions
Plaintiff cites the Court’s analysis in Phase 1 and argues that “[t]here is no basis to depart
from the Court’s prior constructions of the term.” (Dkt. No. 54, at 1‒2.)
Defendants respond that the claims themselves “indicate[] that the register memory is in a
processor because the functionality recited in the asserted claims requires information contained
in the local register memory to be passed through and processed by the claimed processors.”
(Dkt. No. 57, at 6.)
Plaintiff replies by reiterating that the Court has analyzed these issues previously, and
“TCL cannot urge a different result here, where the claims at issue (2’649 patent, claims 39, 62,
and 67) are identical to those the Court construed previously.” (Dkt. No. 58, at 1 n.1.) Plaintiff
argues that “[t]he fact that a ‘message stream’ is input to a ‘control processor’ and certain
‘control information’ in that message stream is ultimately communicated to a ‘register memory’
from a processor in no way suggests, much less requires, that the register memory be within the
processor.” (Id., at 1–2.)
(2) Analysis
Claim 39 of the ’2649 Patent, for example, recites:
39. A method of processing signals in a television receiver, said television
receiver having a plurality of processors, said method comprising the steps of:
receiving an information transmission including digital television signals
and a message stream;
detecting said message stream in said information transmission;
inputting at least a first portion of said message stream to a control
processor;
selecting control information in said at least a first portion of said message
stream and communicating said selected control information to at least one
register memory;
comparing stored function invoking data to the contents of said at least
one register memory;
inputting said digital television signals to said plurality of processors on
the basis of one or more matches;
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processing of said digital television signals simultaneously at two or more
of said plurality of processors; and displaying television programming included in
said digital television signals.
Defendants have not shown how the recitals of a “control processor” and selecting and
communicating control information necessarily require the “register memory” to be “in a
processor.” Likewise, Defendants have not shown that the specification compels a narrow
reading. See ’217 Patent at 83:24-27 (“With the exception of the memories whose names include
the word ‘working,’ all of the aforementioned register memories are dedicated strictly to the
functions described below and are not used for any other functions.”).
Disclosure of processors having register memories does not demonstrate that all register
memories must be in a processor, and Defendants have not identified any definition or disclaimer
in this regard. See ’217 Patent at 19:46–20:3, 20:26–33, 35:47–36:3 (“Said capacity includes
standard register memory or RAM capacity . . . .”), 49:29–32 & 54:61–64. In short, Defendants
have not justified departing from the Court’s construction in Phase 1, in which the Court
addressed Claims 39, 62, and 67 of the ’2649 Patent as follows:
Though the passage cited by Defendants may contrast “register memory” from
“RAM,” it does not do so on the basis of whether or not the memory is in a
processor or not. Moreover, the passage indicates that register memory may be
found not just in processors but also in comparators or buffers. ’091 Patent
35:34–43. There is no disavowal limiting the ordinary meaning of “register
memory” to only processors. Similarly, the claims do not make such a
requirement. Defendants are correct that the specification elsewhere provides
processors that have register memories, however, these are not statements limiting
register memories to processors and the mere inclusion of an embodiment in the
specification does not mandate reading that embodiment into the claims.
Arlington, 632 F.3d at 1254.
The Court construes “register memory” to mean “memory to temporarily store
information for use in later operations.”
Phase 1 at 76–77 (emphasis omitted).

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The extrinsic dictionary definition submitted by Defendants does not compel otherwise.
Dkt. No. 57, Ex. A, Webster’s New World Dictionary of Computer Terms 317 (3d ed. 1988)
(defining “register” as: “A high-speed device used in a central processing unit for temporary
storage of small amounts of data or intermittent results during processing”); see Phillips, 415
F.3d at 1321 (“heavy reliance on the dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the artisan into the meaning of the term in the
abstract, out of its particular context, which is the specification”).
The Court therefore hereby construes “register memory” to mean “memory to
temporarily store information for use in later operations.”
B. “stored function invoking data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Stored data that invokes a function.

Indefinite

(Dkt. No. 46, Ex. B, at 2; Dkt. No. 54, at 2; Dkt. No. 57, at 8; Dkt. No. 59-1, at 35.) The parties
submit that this term appears in claims of the ’2649 Patent. (Dkt. No. 46, Ex. B, at 2.)
(1) The Parties’ Positions
Plaintiff submits that the Court has previously rejected an indefiniteness challenge, and
Plaintiff proposes the construction that the Court previously reached. (Dkt. No. 54, at 2.)
Plaintiff cites various disclosures in the specification and argues that “[t]here is no basis to depart
from the Court’s prior construction of the term.” (Id. (citing ’217 Patent at 12:4–13:4, 23:33–57,
33:33–43:36, 49:10–31, 49:38–56, 51:64–52:20, 143:60–144:10, 145:23–40, 241:27–242:14,
243:15–23, 243:37–244:24, 268:54–269:23 & Figs. 2E–2K).)

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Defendants respond that this term is unclear because “‘stored function invoking data’
could either mean ‘data for invoking a stored function’ or ‘stored data for invoking a function.’”
(Dkt. No. 57, at 9.)
Plaintiff replies that the Court has already previously construed this term, and “[t]he
standard for indefiniteness is not whether an alternative reading divorced from the claim
language can be gleaned.” (Dkt. No. 58, at 2.)
(2) Analysis
Defendants submit that, where multiple approaches exist, “the patent and prosecution
history must disclos[e] a single known approach or establish that, where multiple known
approaches exist, a person having ordinary skill in the art would know which approach to select.”
Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d 620, 630 (Fed. Cir. 2015); see Teva
Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1344–45 (Fed. Cir. 2015) (finding
indefiniteness because neither the claims nor the specification indicated which of three possible
measures to use in ascertaining “average molecular weight”).
In Phase 1, the Court rejected an indefiniteness argument that was based on purported
lack of certainty as between multiple meanings:
Defendants propose three alternative readings of the claim term. However,
Defendants view the claim term in isolation without consulting the surrounding
claim language. The surrounding claim language provides guidance as to the
meaning of the claim term. For example, in ’2,649 claim 39 control information
is provided to a register memory. The claim then calls out “comparing stored
function invoking data to the contents of said at least one register memory.” In
this context, it is clear that the “data” is compared to the register memory. This
also conforms to the specification. ’091 Patent 143:66-144:10.[fn] As it is the
data that is compared, the claim language is, thus, indicative that the intervening
“stored function invoking” language modifies the claimed “data” that is
compared. This again conforms to the specification. The data is stored and
invokes a function. Again, this matches the specification which describes a
station being “preprogrammed with station specific controlled-function-invoking
information” and “preprogrammed invoking information of said stations.” Id. In
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this context, the preprogrammed information is the stored data. In context of the
claim language and corresponding specification disclosure, the term is reasonable
certainty [sic]. See Nautilus, 134 S. Ct. at 2129–30.
The Court construes “stored function invoking data” to mean “stored data that
invokes a function.”
[fn:] Similarly, ’2,649 claim 54 recites “compare said control information to a
stored function invoking datum, . . .” and ’2,649 claim 62 recites “comparing
stored function invoking data to the contents of said at least one register
memory.”
Phase 1 at 80–81 (emphasis omitted).
Here, Defendants urge that what is “stored” in this disputed term could be the “function”
rather than the “data.” See, e.g., ’217 Patent at 12:65–67, 25:1–6 & 52:15–19 (“preprogrammed
load-run-and-code instructions that control the loading of particular binary information”). On
balance, however, Defendants have not justified departing from the Court’s analysis and
construction in Phase 1 as set forth above.
The Court therefore hereby construes “stored function invoking data” to mean “stored
data that invokes a function.”
C. “media” and “medium”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Forms of electronically transmitted
programming, such as audio, video, graphics,
text, and/or computer presentations.1

Forms of electronically transmitted
programming, such as audio, video, graphics,
and/or text, television programing (including
its video and audio components) is a single
form of media2

Plaintiff previously proposed: “Forms of electronically transmitted programming, such as
audio, video, text, computer graphics, and/or computer presentations.” (Dkt. No. 46, Ex. B, at 4
(emphasis added).)
1

Defendants previously proposed: “Channels of communication, such as radio, television,
broadcast print, or Internet / channel of communication, such as radio, television, broadcast print,
or Internet.” (Dkt. No. 46, Ex. B, at 4 (emphasis added).) Plaintiff has pointed to Defendants’
previous proposal of “Internet” as support for Plaintiff’s proposal of “computer presentations”
(Dkt. No. 58, at 3), but even assuming for the sake of argument that Defendants’ prior proposal
2

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(Dkt. No. 46, Ex. B, at 4; Dkt. No. 54, at 2; Dkt. No. 57, at 11‒12; Dkt. No. 59-1, at 13.) The
parties submit that these terms appear in claims of the ’217 Patent. (Dkt. No. 46, Ex. B, at 4.)
(1) The Parties’ Positions
Plaintiff argues that “[t]he Court’s reasoning [in Phase 2], . . . as well as the intrinsic
evidence, support the inclusion of ‘computer presentations.’” (Dkt. No. 54, at 2.)
Defendants respond by revising their proposal so as to be identical to the Court’s Phase 2
construction. (Dkt. No. 57, at 12.) Defendants argue that “[i]n view of the unambiguous
intrinsic record, the Court’s previous construction specifying that ‘television programing
(including its video and audio components) is a single form of media’ should remain.” (Id.,
at 14.) Further, as to Plaintiff’s proposal of “computer presentations,” Defendants argue that the
Court rejected such a proposal in Phase 2. (Id.)
Plaintiff replies that “TCL itself recognized the appropriateness of including computerbased media when it included ‘Internet’ in its previous proposed construction.” (Dkt. No. 58,
at 3.)
(2) Analysis
Defendants propose the construction that the Court reached in Phase 2, in which the
Court found that “[t]he intrinsic record is clear that television is a single medium.” Phase 2
at 23; see id. at 22–25; see, e.g., Dkt. No. 54, Ex. 9, U.S. Pat. No. 4,694,490 (“the ’490 Patent”)
at 3:51–56, 18:8–13 & 19:30–67 (cited in Phase 2).
Plaintiff has not justified departing from the Court’s construction in Phase 2 that
“television programing (including its video and audio components) is a single form of media.”
can be considered probative, Plaintiff has not shown that referring to the “Internet” is tantamount
to referring to a “computer presentation.”
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For example, the specification appears to recognize a distinction between “television” and
“combined medium programming.” See, e.g., ’217 Patent at 167:52–58 (“any form of
electronically transmitted programming, including television, radio, print, data, and combined
medium programming”). Defendants have also submitted prosecution history of the ʼ217 Patent,
cited by the Court in Phase 2 (see Phase 2 at 24–25), in which the Board of Patent Appeals and
Interferences referred to “medium” in the context of television as “the picture and sound
information carried by the television signal.” (Dkt. No. 57, Ex. B, Jan. 13, 2009 Decision on
Appeal, at 24 (emphasis added).)
As to Plaintiff’s proposal that the list of examples should include “computer
presentations,” Plaintiff has not shown sufficient support in the intrinsic record for including this
as part of the construction. In particular, Plaintiff has not shown how the disclosure of “any form
of electronically transmitted programming” amounts to a disclosure of computer presentations.
See ’217 Patent at 1:55–65 (“Today great potential exists for combining the capacity of broadcast
communications media to convey ideas with the capacity of computers to process and output
user specific information.”) & 167:52–58. The ancestor ’490 Patent refers to “when real-time
video programing is co-ordinated with presentations from a microcomputer working with data
supplied earlier.” ’490 Patent at 3:56–60. Yet, the ’490 Patent has a filing date of November 3,
1981, and Plaintiff has not demonstrated how the phrase “presentations from a microcomputer”
would have been understood at that time. Read in context of the “Wall Street Week” example,
the disclosure regarding “presentations from a microcomputer” appears to refer to presentations
akin to “a microcomputer generated graphic of his [(the viewer’s)] own stocks’ performance
overlay [sic] the studio generated graphic.” Id. at 19:67–20:2; see ’217 Patent at 14:16–19
(“microcomputer generated graphic of the subscriber’s own portfolio performance overlaid on

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the studio generated graphic”); see also id. at Fig. 1C. Plaintiff’s proposal of referring to
“computer presentations,” by contrast, would appear to be much broader than such a graphic
overlay. In short, disclosure of computer processing does not demonstrate that the patentee used
the term “medium” to include computer presentations. Also of note, the parties’ proposals
already separately refer to “graphics.” The Court therefore rejects Plaintiff’s proposal of
“computer presentations.”
The Court accordingly hereby construes “media” and “medium” to mean “forms of
electronically transmitted programming, such as audio, video, graphics, and/or text;
television programing (including its video and audio components) is a single form of
media.”
D. “predetermined identifier”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

A digital identifier having a previously
established value.

“identifier determined prior to receiving
signals at the receiver”

(Dkt. No. 46, Ex. B, at 4; Dkt. No. 54, at 3; Dkt. No. 57, at 16; Dkt. No. 59-1, at 24.) The parties
submit that this term appears in claims of the ’217 Patent. (Dkt. No. 46, Ex. B, at 4‒5.)
(1) The Parties’ Positions
Plaintiff argues that “TCL’s proposed construction is duplicative of and incompatible
with the rest of the claim language, which explicitly establishes a different requirement regarding
the temporal relationship to receiving signals.” (Dkt. No. 54, at 4.)
Defendants respond that “the claim language plainly indicates that the predetermined
identifier resides in the receiver, not the transmitter or the transmitted signal, and is therefore
logically determined before the receiver receives signals.” (Dkt. No. 57, at 16.) Defendants
submit that “even though the term ‘predetermined identifier’ is not explicitly defined in the
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specification, language within the specification suggests that the predetermined identifier is
determined prior to receiving signals at the receiver.” (Id., at 17.) As to Plaintiff’s proposed
construction, Defendants argue that “nothing in the claim language suggests that the
predetermined identifier is digital.” (Id., at 18.) Further, Defendants argue that Plaintiff’s
proposal of “previously” “is either overbroad or simply indefinite” because Plaintiff’s proposal
lacks “any reference point for determining if such time is ‘previous’ or not.” (Id., at 19.)
Defendants conclude that “PMC’s proposal is little more than a veiled attempt to rely on values
set at the transmitter as opposed to predetermined at the receiver station as plainly required by
other aspects of the claim language discussed above.” (Id.)
Plaintiff replies that “TCL’s proposal is inconsistent with the claim language, on its face,
and with the Court’s previous construction.” (Dkt. No. 58, at 3.)
(2) Analysis
In prior litigation, “Samsung and PMC agree[d] that the terms ‘identifier’ and
‘predetermined identifier’ do not require construction beyond their plain and ordinary meaning.”
(Dkt. No. 54, Ex. 10, July 21, 2016 Plaintiff Personalized Media Communications, LLC’s
Omnibus Opening Claim Construction Brief For Civil Action No. 2:15-CV-01366 And Phase
Two Of Civil Action No. 2:15-CV-01206, at 47.)
Claim 1 of the ’217 Patent, for example, recites (emphasis added):
1. A method of outputting a multimedia presentation at a receiver station adapted
to receive a plurality of signals, said method comprising the steps of:
receiving said plurality of signals including at least two media which
include a first medium received in a digital data channel from a source external to
said receiver station;
storing information from said first medium in a storage medium at a
computer at said receiver station;
determining content, through use of processor instructions resident on said
computer at said receiver station, of each medium received after said first medium

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in said plurality of signals, wherein determining content of each medium
comprises:
processing an identifier which identifies said content of each of
said medium:
comparing said processed identifier to a predetermined
identifier, wherein said predetermined identifier is
determined at a time prior to receiving said plurality of
signals;
coordinating, through use of processor instructions resident on said
computer at said receiver station, a presentation using said information with a
presentation of a medium comprising an identifier that matches said
predetermined identifier based on said step of determining content; and
outputting and displaying said multimedia presentation to a user at said
receiver station based on said step of coordinating such that said presentation
using said information has a predetermined relationship to said content of said
medium comprising an identifier that matches said predetermined identifier and
said content of said medium comprising an identifier that matches said
predetermined identifier explains a significance of said presentation using said
information.
The claim thus explicitly provides meaning for “predetermined,” and the other
independent claims in which this term appears are similar in this regard. See ’217 Patent at
Cls. 11 (“wherein said predetermined identifier is determined at a time prior to receiving said
plurality of signals and identifies content of said first medium”), 16 (“said predetermined
identifier being determined prior to receiving said plurality of media and identifying content of
said first medium”), 20 (“said predetermined identifier determined prior to receiving said
plurality of signals and identifying content of said first medium”), 30 (“wherein said
predetermined identifier is determined at a time prior to receiving said plurality of signals and
said second medium includes an identifier that matches said predetermined identifier”), 38
(“wherein said predetermined identifier is determined at a time prior to receiving said plurality of
signals and identifies content of said first medium”), 43 (“said predetermined identifier
determined prior to receiving said plurality of signals and identifying content of said first

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medium”) & 47 (“said predetermined identifier determined prior to receiving said plurality of
signals and identifying content of said first medium”).
As a general matter, redundancy in a construction is not prohibited. See 01 Communique
Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1296 (Fed. Cir. 2012) (“we have not discovered[]
any authority for the proposition that construction of a particular claim term may not incorporate
claim language circumscribing the meaning of the term”).
Nonetheless, because Defendants’ proposed construction would render some of the
above-quoted claim language redundant (or would potentially be inconsistent therewith),
Defendants’ proposed construction is disfavored. See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1237 (Fed. Cir. 2016) (“Ideally, claim constructions give meaning to all of a claim’s terms.
Construing a claim term to include features of that term already recited in the claims would make
those expressly recited features redundant.”) (citing Merck & Co. v. Teva Pharm. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005)).
Defendants have cited disclosure in the specification regarding “preprogrammed”:
Microcomputer, 205, is preprogrammed to receive said input of signals at its
asynchronous communications adapter and to respond in a predetermined fashion
to [] signals embedded in the [] programming transmission.
’217 Patent at 11:58–12:2 (emphasis added); see id. at 21:4–17 (“decoders are preprogrammed”)
& 47:1–18 (“All subscriber station apparatus are fully preprogrammed to perform automatically
each step of each example. No manual step is required at any station.”). Defendants argue that
“[i]f the receiver station was unaware of the ‘predetermined identifier’ before receiving the
incoming signal, the microcomputer within the receiver would not be preprogrammed and could
not respond in a predetermined fashion.” (Dkt. No. 57, at 17.)

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Yet, whereas Defendants’ proposal apparently would require the identifier to be
determined prior to receiving any signals at the receiver, above-quoted Claim 1 recites that “said
predetermined identifier is determined at a time prior to receiving said plurality of signals.”
Defendants have also urged that the predetermined identifier must be resident on the
receiver station. (Dkt. No. 57, at 16 (“Since the resources used to make the determination about
received content are ‘resident on said computer at said receiver station,’ the predetermined
identifier must itself be resident at said receiver station.”).) But whereas above-quoted Claim 1
recites “processor instructions resident on said computer at said receiver station,” no such
limitation is recited as to the predetermined identifier. The Court therefore rejects Defendants’
argument in this regard.
Finally, Plaintiff has proposed that the predetermined identifier must be digital, but no
such limitation is apparent in the claim language, and Plaintiff has not shown any definition or
disclaimer. For example, Plaintiff has not shown that disclosures regarding microprocessors,
programming, and digital signals necessarily require a digital predetermined identifier. See ’217
Patent at 8:15–34 (“signals may convey information in discrete words”), 12:29–32 (“Decoder,
203, detects the embedded instruction information, corrects it as required, converts it into digital
signals usable by microcomputer, 205, and transmits said signals to microcomputer, 205.”) &
19:57–60 (“microprocessor control instructions”); see also ’490 Patent at 11:18–24 (“each
discrete unit of programing identified with a unique program code”) & 18:44–59 (“In a
predetermined fashion, microcomputer, 205, instructs signal processor, 200, to hold examples of
the sought for unique signals in its buffer/comparator, 8, and compare them with all incoming
signals.”). Further, even if disclosures in the specifications were interpreted as disclosing a

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digital predetermined identifier, the claims should not be limited to this specific feature of
particular disclosed embodiments. See Phillips, 415 F.3d at 1323.
Based on all of the foregoing, the Court hereby expressly rejects Defendants’ proposed
construction, which would require the identifier to be resident on the receiver and determined
prior to receiving any signals at the receiver. The Court also hereby expressly rejects Plaintiff’s
proposal of “digital” as lacking support in the intrinsic record, as discussed above. No further
construction is necessary in light of the context provided by express recitals in the claims. See
U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction
is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary
to explain what the patentee covered by the claims, for use in the determination of infringement.
It is not an obligatory exercise in redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and
should not be) required to construe every limitation present in a patent’s asserted claims.”);
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2
Micro, where the court failed to resolve the parties’ quarrel, the district court rejected
Defendants’ construction.”); ActiveVideo Networks, Inc. v. Verizon Commcn’s, Inc., 694 F.3d
1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291
(Fed. Cir. 2015).
The Court accordingly hereby construes “predetermined identifier” to have its plain
meaning.

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E. “among said plurality of programmable processors”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Between some or all of the programmable
processors.

Among each of the plurality of programmable
processors3

(Dkt. No. 46, Ex. B, at 8; Dkt. No. 54, at 5; Dkt. No. 57, at 19; Dkt. No. 59-1, at 1.) The parties
submit that this term appears in claims of the ’885 Patent. (Dkt. No. 46, Ex. B, at 8.)
(1) The Parties’ Positions
Plaintiff argues that “‘among’ does not mean ‘each,’” and Plaintiff urges that the
prosecution history contains no disclaimer in this regard. (Dkt. No. 54, at 6.) Plaintiff also
argues that “[t]here is nothing in the patent or its prosecution history that suggests the
programmable processors must be limited to being located ‘in the receiver station.’” (Dkt.
No. 54, at 6.)
Defendants respond by revising their proposal so as to be identical to the Court’s Phase 2
construction. (Dkt. No. 57, at 19.) Defendants argue that “TCL’s proposed construction
including ‘each’ is clearly in line with what the ʼ217 patent’s applicant argued to distinguish his
invention from the prior art [during prosecution] and thus serves as a disclaimer of claim scope.”
(Id., at 20.)
Plaintiff replies that the prosecution history cited by Defendants does not “limit[] [the]
claim[s] to addressing ‘each’ programmable processor within the plurality, rather than just some
or all.” (Dkt. No. 58, at 6.) Plaintiff argues: “The prosecution history upon which TCL premises
its entire argument: 1) clearly recognizes the distinction between ‘each’ and ‘among’; and

Defendants previously proposed: “Among each of the plurality of programmable processors in
the receiver station.” (Dkt. No. 46, Ex. B, at 8 (emphasis added).)
3

- 25 -

2) references only each plurality of programmable processors to denote a group of more than one
processor, and not each individual programmable processor within that group.” (Id., at 6–7.)
(2) Analysis
Claims 102, 109, and 110 of the ’885 Patent recite (emphasis added):
102. A method of processing signals in a video receiver, said video receiver
having a plurality of programmable processors, said method comprising the steps
of:
receiving a video signal;
detecting a stream of digital data in said video signal;
passing a first portion of said stream of digital data among said plurality of
programmable processors in a first passing fashion;
passing a control portion of said stream of digital data to a programmable
control processor;
controlling, with said programmable control processor, the passing of a
second portion of said stream of digital video data among said plurality of
programmable processors in a second passing fashion in response to said passed
control portion;
processing said passed second portion of said stream of digital data and
outputting processed information from said plurality of programmable processors
to a video display apparatus; and
displaying video at said video display apparatus based on said outputted
processed information from said plurality of programmable processors.
In Phase 2, the Court found as follows regarding Claim 102 of the ’885 Patent:
As drafted, the plain claim language could arguably take on one of two meanings:
“some or all” or “each.” Each party points to the intrinsic record as support for
their position. Though claim language varying among terms is indicative of the
differing meanings, it is not an absolute rule. See Marine Polymer Tech., Inc. v.
HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012) (claim differentiation cannot
“overcome . . . a contrary construction dictated by the written description or
prosecution history.”). Here, the applicants twice prescribed in prosecution a
meaning to “among” as used in the asserted claim. That such meaning was
“mistakenly” made is not clear in the record. The applicants’ statements,
however, do clearly reference “among” in the context of “each” processor with
regard to the asserted claim.
The Court construes “among said plurality of programmable processors” to mean
“among each of the plurality of programmable processors.”

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Phase 2 at 56–57. In so finding, the Court considered the prosecution history and also
considered that Claims 109 and 110 use “each.” (See id. at 54–57; see also Dkt. No. 54, Ex. 14,
Jan. 15, 2014 Response, at 49.)
Plaintiff’s arguments against the Phase 2 analysis are unpersuasive. See, e.g., Tech.
Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1359 (Fed. Cir. 2017) (“[T]he scope of
surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees
may surrender more than necessary. When this happens, we hold patentees to the actual
arguments made, not the arguments that could have been made. The question is what a person of
ordinary skill would understand the patentee to have disclaimed during prosecution, not what a
person of ordinary skill would think the patentee needed to disclaim during prosecution.”)
(citations omitted); Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed.
Cir. 2003) (“If the applicant mistakenly disclaimed coverage of the claimed invention, then the
applicant should have amended the file to reflect the error, as the applicant is the party in the best
position to do so.”); see Marine Polymer, 672 F.3d at 1359 (claim differentiation cannot
“overcome . . . a contrary construction dictated by the written description or prosecution
history”).
The Court therefore hereby construes “among said plurality of programmable
processors” to mean “among each of the plurality of programmable processors.”
F. “command[s]”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Signal that causes performance of a function.

An instance of signal information that is
addressed to a particular subscriber station
apparatus and that causes said apparatus to
perform a particular function or functions, and
that always includes at least a header and an
execution segment.

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(Dkt. No. 46, Ex. B, at 9; Dkt. No. 54, at 6; Dkt. No. 57, at 23; Dkt. No. 59-1, at 3.) The parties
submit that this term appears in claims of the ’650 Patent. (Dkt. No. 46, Ex. B, at 9.)
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposal “runs afoul of the cardinal rule of claim
construction that preferred embodiments should not be excluded.” (Dkt. No. 54, at 7.) Further,
Plaintiff argues that “the level of granularity of Defendants’ construction would be needlessly
confusing to a jury.” (Id.)
Defendants respond that they propose the definition set forth in the specification and
adopted by the Court in Phase 2. (Dkt. No. 57, at 23.) Defendants submit: “PMC urges the
Court to depart from its previous construction and the patentee’s definition for ‘command’ based
on the disclosure of a ‘pseudo command’ and a ‘meter command’ elsewhere in the specification,
but the Court already rejected this same argument in the previous litigation.” (Id., at 24.)
Further, Defendants argue that “the patentee explicitly defined a claim term in the patent
specification, and regardless of PMC’s belief that the chosen language is confusing, the
patentee’s lexicography should govern.” (Id., at 25‒26.)
Plaintiff replies that “in view of the language surrounding ‘command[s]’ in claims 1
and 18, the limitations set forth in the specification are subsumed within the meaning and
definitions of the claim terms themselves,” and “to import the limitations in the specification into
the claim itself will create unnecessary confusion.” (Dkt. No. 58, at 7.)
(2) Analysis
In Phase 2, the Court construed “command[s]” to mean “an instance of signal
information that is addressed to particular subscriber station apparatus and that causes said
apparatus to perform a particular function or functions. A command is always constituted of at
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least a header and an execution segment.” Phase 2 at 61. The Phase 2 analysis cited the
following disclosures in the specification (see id. at 59–60):
A command is an instance of signal information that is addressed to particular
subscriber station apparatus and that causes said apparatus to perform a particular
function or functions. A command is always constituted of at least a header and
an execution segment. With respect to any given command, its execution
segment contains information that specifies the apparatus that said command
addresses and specifies a particular function or functions that said command
causes said apparatus to perform. (Hereinafter, functions that execution segment
information causes subscriber station apparatus to perform are called “controlled
functions.”)
’217 Patent at 23:34–43. The Court found that this disclosure defines the term “command.” See
Phase 2 at 60; see also Phillips, 415 F.3d at 1316 (“[O]ur cases recognize that the specification
may reveal a special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.”).
Phase 2 also found that this definition was not contradicted in the following disclosure
regarding a “pseudo command” (see Phase 2 at 60):
The preferred embodiment includes one appropriate command (hereinafter called
the “pseudo command”) that is addressed to no apparatus and one command that
is addressed to URS signal processors, 200, (hereinafter, the “meter command”)
but does not instruct said processors, 200, to perform any controlled function.
These commands are always transmitted with meter-monitor segment data that
receiver station apparatus automatically process and record. By transmitting
pseudo command and meter command signals, transmission stations cause
receiver station apparatus to record meter-monitor segment information without
executing controlled functions. The pseudo command enables a so-called ratings
service to use the same system for gathering ratings on conventional
programming transmissions that it uses for combined media without causing
combined media apparatus to execute controlled functions at inappropriate times
(eg., combine overlays onto displays of conventional television programming).
The meter command causes apparatus such as controller, 12, of FIG. 2D to
transmit meter information to buffer/comparator, 14, without performing any
controlled function.
’217 Patent at 25:33–53. In particular, Phase 2 found that a “pseudo command” is an exception
and is different from a “command.” Phase 2 at 61.
- 29 -

Plaintiff has argued that certain “details” “should be excluded from construction to save
the jury from unnecessary confusion” (Dkt. No. 54, at 8), but “[w]hen a patentee explicitly
defines a claim term in the patent specification, the patentee’s definition controls.” Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009).
Finally, in the present case, Plaintiff has further cited disclosure regarding “specified
condition commands”:
Particular commands (called, hereinafter, “specified condition commands”)
always contain meter-monitor segments. Said commands cause addressed
apparatus to perform controlled functions only when specified conditions exist,
and meter-monitor information of said commands specifies the conditions that
must exist.
’217 Patent at 23:52–57. Plaintiff has not shown, however, any inconsistency between this
disclosure and the patentee’s above-reproduced definition. See id. at 23:34–43. In sum, Plaintiff
has not justified departing from the Court’s construction in Phase 2.
The Court accordingly hereby construes “command” to mean “an instance of signal
information that is addressed to particular subscriber station apparatus and that causes
said apparatus to perform a particular function or functions. A command is always
constituted of at least a header and an execution segment.”
G. “control[ling] said digital switch”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term does not require construction
beyond its plain and ordinary meaning.

Directly controlling said digital switch.

(Dkt. No. 46, Ex. B, at 10; Dkt. No. 54, at 8.) The parties submit that this term appears in claims
of the ’650 Patent. (Dkt. No. 46, Ex. B, at 10.)
Defendants have submitted: “Upon further consideration, and in the interest of narrowing
disputes for the Court to resolve, TCL agrees the phrase ‘control[ling] said digital switch’ does
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not require construction.” (Dkt. No. 57, at 26.) Plaintiff has replied: “TCL has withdrawn its
dispute over this term and now agrees that it does not require construction beyond its plain and
ordinary meaning.” (Dkt. No. 58, at 7.)
The parties’ June 15, 2018 Joint Claim Construction Chart Pursuant to P.R. 4-5(d)
confirms the parties’ agreement in this regard. (Dkt. No. 59-1, at 8.)
The Court therefore hereby construes “control[ling] said digital switch” to have its
“plain and ordinary meaning.” (Id.)
H. Order of Steps of Claim 9 of the ’6649 Patent
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

The steps of claim 9 of the [’6]649 patent
need not be performed in the order disclosed.

“Programming” step is performed prior to the
“inputting logic” step.
“Receiving one or more instruct signals[”]
step[] is performed prior to the “inputting
logic” step.
“Inputting logic” step is performed prior to
the “Receiving a plurality of discrete signals”
step.

(Dkt. No. 46, Ex. B, at 11‒12; Dkt. No. 54, at 9; Dkt. No. 57, at 26; Dkt. No. 59-1, at 22–23.)
(1) The Parties’ Positions
Plaintiff argues that, here as in Phase 1, the Court should find that the claimed method
could be performed in various ways and should not be limited to the order of steps proposed by
Defendants. (Dkt. No. 54, at 9.)
Defendants respond that “the sequential and dependent nature of the claim language is
apparent from the limitations as written, thus requiring them to be performed in a certain order,
and there is nothing in the specification that suggests otherwise.” (Dkt. No. 57, at 27.)

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Plaintiff replies that the “inputting” and “programming” steps “are preparatory steps at
the receiver station and neither depends on the other step generating specific information or
performing any other condition precedent.” (Dkt. No. 58, at 7–8.) Plaintiff also emphasizes that
“the inputting logic step has the purpose of ‘enabl[ing] said receiver station to receive and
identify said variable formats in accordance with one or more said instruct signals,’” and
Plaintiff argues:
Nothing in the claim language suggests that enabling the station to receive and
identify formats in accordance with instruct signals requires knowing in advance
what the instruct signals are, much less actually receiving them. Indeed, it would
make at least as much sense for the enabling step to occur before receiving the
instruct signals, rather than after.
(Id., at 8.)
(2) Analysis
“As a general rule, ‘[u]nless the steps of a method [claim] actually recite an order, the
steps are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research in
Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (quoting Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)).
Courts apply a two-part test to determine whether a particular order of steps is required:
“First, we look to the claim language to determine if, as a matter of logic or grammar, they must
be performed in the order written,” and “[i]f not, we next look to the rest of the specification to
determine whether it directly or implicitly requires such a narrow construction.” Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003) (citation omitted); see Mantech Envtl.
Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1376 (Fed. Cir. 1998) (“the sequential nature
of the claim steps is apparent from the plain meaning of the claim language”); see also E-Pass
Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007) (“[B]ecause the language of

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most of the steps of its method claim refer to the completed results of the prior step, E–Pass must
show that all of those steps were performed in order.”).
Claim 9 of the ’6649 Patent recites (formatting modified; emphasis added):
9. A method for receiving and outputting television programming at a
programmable receiver station, said receiver station having a television receiver, a
tuner, a tuner controller, a detector, a processor or computer, and a television
monitor, said tuner controller receiving instructions from said processor or
computer to control said tuner to frequency select television signals, said detector
for detecting digital signals, said method comprising the step of:
programming said programmable receiver station with multiple signal
processing schemes to process television programming signals encoded in
variable formats in accordance with said multiple signal processing schemes, said
variable formats including at least two of varying locations, varying timing
lengths and varying encryption schemes;
receiving one or more instruct signals;
inputting logic into said processor or computer to enable said receiver
station to receive and identify said variable formats in accordance with said one
or more instruct signals;
receiving a plurality of discrete signals identified according to a particular
format of said variable formats, said plurality of discrete signals delivering at
least a portion of television programming;
processing said plurality of discrete signals according to one of said
multiple signal processing schemes implemented by said one or more instruct
signals to identify said particular format of said variable formats and demodulate
or demultiplex said at least a portion of said television programming; and
outputting said at least a portion of said television programming.
In Phase 2, the defendants proposed the same construction that Defendants here propose,
and in Phase 2 the Court found:
Ordinarily, a method claim is not construed to require that its constituent steps be
performed in a particular order unless the claim recites an order. Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). A
method claim that does not recite an order may nonetheless be construed to
require that the claim’s steps be performed in a particular order if (1) the claim
language, “as a matter of logic or grammar” requires that the steps be performed
in a particular order, or (2) the specification “directly or implicitly requires such a
narrow construction.” See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–
70 (Fed. Cir. 2003). Defendants have pointed out neither. There is no reason (in
the claims or specification) that the inputting logic step could not be performed
before the programming step or the receiving one or more instruct signals step.
Similarly, there is no reason that the receiving a plurality of discrete signals step
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could not be performed before the inputting logic step. Defendants’ specific
ordering requirements are rejected.
The Court finds that the steps of 6’649 Patent claim 9 need not be performed in
the recited order.
Phase 2 at 74–75.
Defendants have not justified departing from the Court’s construction in Phase 2. For
example, Defendants have not shown that any order is required with regard to the “enabl[ing]”
set forth in the step of “inputting logic into said processor or computer to enable said receiver
station to receive and identify said variable formats in accordance with said one or more instruct
signals.” Nothing in the claim restricts whether this enabling occurs before or after receiving
“instruct signals” or “discrete signals.”4
The Court therefore hereby expressly rejects Defendants’ proposal and finds that the
steps of Claim 9 of the ’6649 Patent need not be performed in the recited order.
I. Order of Steps of Claim 10 of the ’6649 Patent
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

The steps of claim 10 of the [’6]649 patent
need not be performed in the order disclosed.

“Programming” step is performed prior to the
“inputting logic” step.
“Receiving one or more instruct signals[”]
step[] is performed prior to the “inputting
logic” step.
“Inputting logic” step is performed prior to
the “Receiving a plurality of discrete signals”
step.

4

Defendants have also argued that Plaintiff admitted an order of steps in what Defendants have
attached as their Exhibit C, Personalized Media Communications, LLC v. Samsung Electronics
America, Inc., et al., 2:15-CV-1754, Dkt. No. 35, at 15–16 (Response in Opposition to the
Samsung Defendants’ Rule 12(b)(6) Motion to Dismiss for Failure to State a Claim), but no
relevant admission or estoppel has been shown.
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(Dkt. No. 46, Ex. B, at 13; Dkt. No. 54, at 10; Dkt. No. 57, at 26; Dkt. No. 59-1, at 23–24.)
(1) The Parties’ Positions
Plaintiff submits that Claim 10 of the ’6649 Patent is dependent from Claim 9 and that
the steps at issue in Defendants’ proposal appear in Claim 9. (Dkt. No. 54, at 10‒11.) Plaintiff
argues that “there is nothing additional or different in claim 10 that would warrant departing
from the presumptive rule, and this Court’s previous ruling.” (Id., at 11.)
Defendants present the same arguments for Claim 10 as for above-discussed Claim 9.
(See Dkt. No. 57, at 26 n.26 (“Claim 10 includes the elements of claim 9, and the parties advance
the same constructions in both instances.”).)
Plaintiff replies: “TCL does not argue that there is any additional basis to require ordering
of claim 10. For the reasons stated above, claim 10 also does not require that the steps be
performed in a particular order.” (Dkt. No. 58, at 8.)
(2) Analysis
For the same reasons set forth above as to Claim 9 of the ’6649 Patent, the Court hereby
expressly rejects Defendants’ proposal and finds that the steps of Claim 10 of the ’6649 Patent
need not be performed in the recited order.
V. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patent-in-suit, and in reaching conclusions the Court has considered extrinsic evidence. The
Court’s constructions thus include subsidiary findings of fact based upon the extrinsic evidence
presented by the parties in these claim construction proceedings. See Teva, 135 S. Ct. at 841.
The parties are ordered that they may not refer, directly or indirectly, to each other’s
claim construction positions in the presence of the jury. Likewise, the parties are ordered to

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refrain from mentioning any portion of this opinion, other than the actual definitions adopted by
the Court, in the presence of the jury. Any reference to claim construction proceedings is limited
to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel (with lead and
local counsel present and participating) and by at least one corporate officer possessing sufficient

.
authority and control to unilaterally make binding decisions for the corporation adequate to
address any good faith offer or counteroffer of settlement that might arise during such mediation.
Failure to do so shall be deemed by the Court as a failure to mediate in good faith and may
subject that party to such sanctions as the Court deems appropriate. No participant shall leave
the mediation without the approval of the mediator.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of June, 2018.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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