ClearPlay v. Dish Network LLC et al

Filing 367

MEMORANDUM DECISION AND ORDER denying 355 Motion re Supplemental Claim Construction. Signed by Judge David Nuffer on 3/1/22 (alt)

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8964 Page 1 of 9

THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
CLEARPLAY, INC.,
Plaintiff,

v.

DISH NETWORK, LLC, and
ECHOSTAR TECHNOLOGIES, LLC,
Defendants.

MEMORANDUM DECISION
AND ORDER DENYING MOTION
REGARDING SUPPLEMENTAL
CLAIM CONSTRUCTION
Case No. 2:14-cv-00191-DN
District Judge David Nuffer

A claim construction hearing was held on August 13, 2019 (“Markman hearing”)
regarding terms in four patents: U.S. Patent Nos. 7,577,970 (“’970 Patent”); 7,526,784;
7,543,318; and 6,898,799 (collectively, the “Asserted Patents”). 1 The parties’ stipulated
construction of the term “navigation object” was adopted at the Markman hearing. 2 And after
presenting argument, the parties agreed to construction of the term “filtering action.” 3 The
parties also agreed to construction of the term “configuration identifier” following the Markman
hearing after being directed to respond to a proposed construction. 4 The parties could not agree
to construction of the term “defin[e/ed/es/ing],” so the term was construed by the court. 5
Defendants DISH Network, LLC and EchoStar Technologies, LLC (collectively,
“DISH”) have now filed a motion seeking supplemental claim construction regarding the terms

Memorandum Decision and Order Regarding Claim Construction (“Claim Construction Order”) at 1, docket no.
309, filed August 26, 2019.

1

2

Id. at 5.

3

Id. at 9–10.

4

Id. at 12–13.

5

Id. at 17–18.

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8965 Page 2 of 9

(1) “navigation object,” (2) “defining . . . a specified filtering action,” and (3) “configuration
identifier” (“DISH’s Motion”). 6 DISH argues that Plaintiff ClearPlay, Inc. (“ClearPlay”) has
taken inconsistent positions regarding these terms 7 requiring their supplemental construction
pursuant to O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co. (“O2 Micro”). 8
Because DISH fails to establish an actual dispute regarding the proper construction of
claim terms, DISH’s Motion 9 is DENIED.
DISCUSSION
DISH seeks supplemental claim construction pursuant to O2 Micro. 10 In O2 Micro, the
Federal Circuit Court of Appeals held that “[w]hen the parties present a fundamental dispute
regarding the scope of a claim term, it is the court’s duty to resolve it.” 11 Claim construction is a
matter of law. 12 But there is no requirement to construe a claim term when there is no actual
dispute about its meaning. 13
Following O2 Micro, the Federal Circuit Court of Appeals clarified that a party becoming
“dissatisfied with its own proposed construction and s[eeking] a new one does not give rise to an
O2 Micro violation.” 14 And there is also not an actual dispute “[w]here a district court has
resolved the questions about claim scope that were raised by the parties[.]” 15

Motion Re: Supplemental Claim Construction Pursuant to O2 Micro (“DISH’s Motion”) at 1, docket no. 355, filed
July 14, 2021.
6

7

Id.

8

521 F.3d 1351 (Fed. Cir. 2008).

9

Docket no. 355, filed July 14, 2021.

10

Id.

11

O2 Micro, 521 F.3d at 1362.

12

Id. at 1360.

13

Id. at 1362.

14

Nuance Commc’n, Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368, 1373 (Fed. Cir. 2016).

15

GPNE Corp. v. Apple, Inc., 830 F.3d 1365, 1372 (Fed. Cir. 2016).

2

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8966 Page 3 of 9

DISH fails to establish an actual dispute
regarding the term “navigation object”
At the heart of DISH’s Motion is an asserted dispute over the term “navigation object.”
DISH argues that “ClearPlay has asserted conflicting broad and narrow interpretations of
‘navigation object[.]’” 16 DISH seeks supplemental claim construction of the terms “navigation
object,” “defining . . . a specified filtering action,” and “configuration identifier” to capture the
narrow interpretation of “navigation object.” 17 However, no actual dispute exists regarding these
terms. Supplemental claim construction is therefore not required.
The parties agreed to construction of “navigation object” prior to the Markman hearing. 18
Indeed, it was DISH that requested ClearPlay stipulate to a “plain and ordinary meaning (as
defined by the terms of the claims themselves)” construction for “navigation object.” 19 This
stipulated construction was confirmed and adopted at the Markman hearing:
THE COURT: I want to go back to navigation object. You both agreed that it was the
plain and ordinary meaning.
MR. CHACHKES [(DISH’S COUNSEL)]: Yes, Your Honor.
THE COURT: Okay. It’s navigation object, then. There’s nothing to give the jury
in addition? No gloss, no help, nothing?
MR. CHACHKES [(DISH’S COUNSEL)]: Navigation is always internally
defined in every claim. So it says navigation object, which is start, stop.
THE COURT: All right. 20

16

DISH’s Motion at 13.

17

Id. at 13–19.

18

Claim Construction Order at 5.

ClearPlay, Inc.’s Response to DISH Network LLC’s Motion for Supplemental Claim Construction at 1–2, docket
no. 363, filed August 6, 2021.
19

Claims Construction Hearing Transcript at 66:20-67:8, docket no. 314, filed March 9, 2020; Claim Construction
Order at 5.

20

3

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8967 Page 4 of 9

DISH now proposes that “navigation object” be construed as: “In addition to the
definitions set forth in the claims, each navigation object must contain its own ‘start position,’
‘stop position,’ and distinct ‘filtering action’ within a single file or data structure.” 21 DISH
argues that this construction is necessary because ClearPlay’s use of varying interpretations of
the term. 22 But regardless of DISH’s argument, the stipulated and adopted construction of
“navigation object” is entirely consistent with the Asserted Patents’ claims.
Each time “navigation object” is used in the Asserted Patents, the term is defined by the
claims. For example, Claim 1 of the ‘970 Patent states:
loading a plurality of navigation objects into the memory of the consumer
computer system, each of which defines a portion of the multimedia content that
is to be filtered by defining a start position and a duration from the start position
and a filtering action to be performed on the portion of the multimedia content
defined by the start and the duration from the start position for that portion. 23
The scope of “navigation object” is plainly within the claim language. There is no dispute over
the term’s scope because it is defined by the claims. DISH’s newly proposed construction of
“navigation object” goes beyond this scope. And DISH is attempting to manufacture a dispute
where it has become dissatisfied with the construction that it originally proposed and to which
ClearPlay stipulated. Merely becoming dissatisfied with the construction of a claim term is not a
basis for supplemental claim construction. 24
Additionally, DISH’s newly proposed construction of “navigation object” runs afoul of
the District of Utah’s Local Rules of Patent Practice. Local Rule 4.1(b) provides that “[n]o more
than 10 terms or phrases may be presented to the court for construction prior leave of court upon

21

DISH’s Motion at 16.

22

Id. at 13–16.

23

U.S. Patent No. 7,577,970 (emphasis added).

24

Nuance Communications, Inc., 813 F.3d at 1373; GPNE Corp., 830 F.3d at 1372.

4

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8968 Page 5 of 9

a showing of good cause.” 25 The parties have already submitted 10 terms for construction. 26
“Navigation object” would be an eleventh term for construction without prior leave or a showing
of good cause. And DISH’s attempt to avoid the Local Rule by combining the terms
“defin[e/ed/es/ing]” and “filtering action” into a single phrase does not rectify the problem. As
discussed, 27 DISH fails to establish good cause or a sufficient justification for combining these
terms or for their supplemental construction.
Therefore, because no actual dispute exists regarding “navigation object,” and because
the addition of “navigation object” as a term for construction would violate Local Rule 4.1(b),
supplemental claim construction of the term is not required or appropriate.
DISH fails to establish an actual dispute
regarding the term “configuration identifier”
Following the Markman hearing, the parties were directed to respond to a proposed
construction of “configuration identifier.” 28 The parties subsequently agreed to the following
construction of the term: “An identifier of the consumer system (including hardware and
software) that is used to determine if the navigation objects apply to the particular consumer
system.” 29 This stipulated construction was adopted. 30 The construction gives ordinary and
customary meaning to the term as understood by a person of ordinary skill in the art at the time
of the invention. 31

25

LPR 4.1(b).

26

Claim Construction Order at 6.

27

Infra, Discussion at 6–8.

28

Claim Construction Order at 13.

29

Id.

30

Id.

31

Id.

5

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8969 Page 6 of 9

DISH now proposes that “configuration identifier” be construed as: “An identifier of the
hardware and software configuration of a consumer system to which the navigation object
applies, which is located within its navigation object and must contain at least a version number
corresponding to that portion’s specific encoding scheme.” 32 This newly proposed
construction—where a configuration identifier “is located within its navigation object”—flows
from and relies on DISH’s proposed supplemental construction of “navigation object.” 33 But no
actual dispute exists regarding the scope of “navigation object,” and the term’s supplemental
construction is neither necessary or appropriate. 34 DISH has merely become dissatisfied with the
stipulated and adopted constructions of “navigation object” and “configuration identifier.”
Therefore, there is no actual dispute or basis for supplemental construction of “configuration
identifier” 35 and its supplemental construction is not required or appropriate.
DISH fails to establish an actual dispute regarding
the term “defining . . . a specified filtering action”
The disputed term “defin[e/ed/es/ing]” was construed at the Markman hearing after
consideration of the parties’ arguments. 36 The parties also agreed to a construction of “filtering
action” at the Markman hearing. 37 DISH now proposes supplemental construction of the phrase
“defining . . . a specified filtering action” as: “Describing or specifying a distinct filtering
operation.” 38 DISH fails to demonstrate a sufficient basis for this supplemental construction.

32

DISH’s Motion at 18.

33

Id. at 13–18.

34

Supra, Discussion at 3–5.

35

Nuance Communications, Inc., 813 F.3d at 1373; GPNE Corp., 830 F.3d at 1372.

36

Claim Construction Order at 9.

37

Id. at 17.

38

DISH’s Motion at 19.

6

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8970 Page 7 of 9

As an initial matter, DISH offers no justification or need for combining the terms
“defin[e/ed/es/ing]” and “filtering action” into a single phrase for construction. There is also no
apparent justification for this, other than to permit construction of “navigation object” by
circumventing Local Patent Rule 4.1(b)’s limitation on the number of terms or phrases that may
be presented for construction. “[D]istrict courts are not (and should not be) required to construe
every limitation present in a patent’s asserted claims.” 39 Because DISH fails to demonstrate good
cause or a sufficient justification for combining the terms into a single phrase for construction,
supplemental construction of the phrase is not required or appropriate.
Regardless, no actual dispute exists regarding the terms within the phrase “defining . . . a
specified filtering action” to require the phrase’s supplemental construction. At the Markman
hearing, “defin[e/ed/es/ing]” was a disputed term that required construction. 40 DISH’s proposed
construction of the term included “specify.” 41 ClearPlay’s proposed construction of
“defin[e/ed/es/ing]” included “assign, describe, or specify.” 42 Both parties ultimately agreed that
describe” lacked specificity and was overbroad. 43 Clearplay then argued that the term include
both “assign” and “specify,” while DISH argued the term include “assign” or “specify” but not
both. 44 The term was construed as: “Assign or specify [a start position, stop position, or filtering

39

O2 Micro, 521 F.3d at 1362.

40

Claim Construction Order at 17–18.

41

Id. at 17.

42

Id.

43

Id. at 18.

Id. Without explanation for its change in course, DISH’s newly proposed construction reintroduces “describing”
into the definition of “defining,” and removes “assign” while retaining “specifying.” DISH’s Motion at 19. DISH’s
prior concession that “describe” lacked specificity and was overbroad precludes a supplemental construction that
includes “describing” where DISH has merely become dissatisfied with a term’s construction. Nuance
Communications, Inc., 813 F.3d at 1373; GPNE Corp., 830 F.3d at 1372.
44

7

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8971 Page 8 of 9

action].” 45 Because the term was construed at the Markman hearing, its scope has been
determined. 46 No actual dispute regarding the term remains. 47
There is also no actual dispute regarding the scope of the term “filtering action.” The
term was initially disputed by the parties. 48 But after presenting argument and receiving feedback
at the Markman hearing, the parties agreed to construe the term as: “An action that edits or
rejects some multimedia content while allowing other multimedia content to be unchanged.” 49
The stipulated construction was adopted because it gives ordinary and customary meaning to the
term as understood by a person of ordinary skill in the art at the time of the invention. 50 DISH’s
dissatisfaction with the stipulated and adopted construction is not a sufficient basis for
supplemental construction. 51 And regardless, DISH’s newly proposed construction does not add
to an understanding of the term’s scope. Rather, it creates confusion in term’s meaning because it
only substitutes “operation” for “action” without describing that action or operation. 52
Because DISH fails to demonstrate good cause or a sufficient justification for combining
the terms “defin[e/ed/es/ing]” or “filtering action” into a single phrase for construction, and
because no actual dispute exists regarding the terms, supplemental construction of the terms is
not required or appropriate.

45

Claim Construction Order at 18.

46

GPNE Corp. v. Apple Inc., 830 F.3d at 1372.

47

Id.

48

Claim Construction Order at 9.

49

Id.

50

Id. at 9–10, 18.

51

Nuance Communications, Inc., 813 F.3d at 1373; GPNE Corp., 830 F.3d at 1372.

52

DISH’s Motion at 19.

8

Case 2:14-cv-00191-DN-CMR Document 367 Filed 03/01/22 PageID.8972 Page 9 of 9

ORDER
IT IS HEREBY ORDERED that DISH’s Motion 53 is DENIED.
IT IS FURTHER ORDERED that by no later than March 18, 2022, the parties must meet,
confer, and jointly submit a proposed amended scheduling order for moving this case to
disposition.
Signed March 1, 2022.
BY THE COURT
________________________________________
David Nuffer
United States District Judge

53

Docket no. 355, filed July 14, 2021.

9