ClearPlay v. Dish Network LLC et al

Filing 652

Redacted MEMORANDUM DECISION AND ORDER granting in part and denying in part 409 Motion for Summary Judgment. Signed by Judge David Nuffer on 1/30/23 (alt)

THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH

v.

**REDACTED**
MEMORANDUM DECISION AND
ORDER GRANTING IN PART
AND DENYING IN PART DISH’S
MOTION FOR SUMMARY JUDGMENT

DISH NETWORK, LLC, and ECHOSTAR
TECHNOLOGIES, LLC,

Case No. 2:14-cv-00191-DN-CMR

CLEARPLAY, INC.,
Plaintiff,

Defendants.

District Judge David Nuffer
Magistrate Judge Cecilia M. Romero

Defendants Dish Network, LLC and EchoStar Technologies, LLC (collectively, “Dish”)
seek summary judgment 1 of noninfringement regarding Plaintiff ClearPlay, Inc.’s (“ClearPlay”)
Asserted Patents. 2
OVERVIEW
Single Object vs Multi-Object Approaches: This court’s claim construction and the
ordinary and customary meaning of ClearPlay’s Asserted Patents preclude a “multi-object”
approach to the claim term “navigation object.” Therefore, Dish is entitled to summary judgment
of noninfringement as a matter of law on ClearPlay’s literal infringement theories that rely on a
theory that a navigation object defines or comprises elements from multiple sources or locations
(“multi-object approach”). However, genuine issues of material fact preclude summary judgment
on ClearPlay’s literal infringement theories that rely on the court’s claim construction that a
1

Defendants’ Motion for Summary Judgment (“Dish’s Motion”), docket no. 409, filed July 21, 2022.

ClearPlay’s Asserted Patents are U.S. Patent No. 6,898,799 (“’799 Patent”), docket no. 418-4, filed under seal July
21, 2022; US. Patent No. 7,526,784 (“’784 Patent”), docket no. 418-2, filed under seal July 21, 2022; U.S. Patent
No. 7,543,318 (“’318 Patent”), docket no. 418-3, filed under seal July 21, 2022; and U.S. Patent No. 7,577,970
(“’970 Patent”), docket no. 418-1, filed under seal July 21, 2022.
2

navigation object, including its elements, must be one object (“single-object approach”). Also,
genuine issues of material fact preclude summary judgment on ClearPlay’s infringement theories
under the doctrine of equivalents for the alleged navigation objects.
Configuration Identifier: The Asserted Patents contain some claims that have a
“configuration identifier” limitation (“Configuration Identifier Claims”). The undisputed
material facts demonstrate that other than Dish’s

, no alleged navigation object

“defines” or “compris[es]” the alleged configuration identifier. Therefore, Dish is entitled to
summary judgment of noninfringement as a matter of law on ClearPlay’s literal infringement
theories for the Configuration Identifier Claims, except for the theories that rely on the
as the alleged navigation object. Genuine issues of material fact preclude
summary judgment on ClearPlay’s infringement theories under the doctrine of equivalents for
the alleged configuration identifier.
Disabling Claims: Regarding the Asserted Patents’ claims that have a navigation object
disabling limitation (“Disabling Claims”), ClearPlay fails to present evidence sufficient to create
a triable issue that any alleged navigation object, other than Dish’s

, is

disabled. Therefore, Dish is entitled to summary judgment of noninfringement as a matter of law
on ClearPlay’s infringement theories for the Disabling Claims, except for the theories that rely
on the

as the alleged navigation object.
Joey Device: The undisputed material facts demonstrate that the Asserted Patents do not

read on the Joey device. Therefore, Dish is entitled to summary judgment of noninfringement as
a matter of law regarding the accused Joey device.

2

Requests to Server; Willfulness: Finally, the existence of genuine issues of material fact
precludes summary judgment on ClearPlay’s claims that Dish’s server receives requests for
navigation objects from consumer systems, and that any infringement by Dish was willful.
Therefore, Dish’s Motion 3 is GRANTED in part and DENIED in part.
Contents
OVERVIEW ................................................................................................................................... 1
STANDARD OF REVIEW ............................................................................................................ 3
UNDISPUTED MATERIAL FACTS ............................................................................................ 4
DISCUSSION ................................................................................................................................. 9
This court’s claim construction and the ordinary and customary meaning of the Asserted
Patents do not support a multi-object approach to navigation object ................... 10
ClearPlay’s literal infringement theories that rely on the multi-object approach to
navigation object fail as a matter of law ................................................... 14
Genuine issues of material fact preclude summary judgment on ClearPlay’s literal
infringement theories that rely on the single-object approach to navigation
object ......................................................................................................... 15
Genuine issues of material fact preclude summary judgment on ClearPlay’s
infringement theories under the doctrine of equivalents........................... 17
ClearPlay’s literal infringement theories that rely on an alleged navigation object other
than the
fail as a matter of law on the Configuration Identifier
Claims ................................................................................................................... 20
ClearPlay’s infringement theories that rely on an alleged navigation object other than the
fail as a matter of law on the Disabling Claims .................... 23
The accused Joey device does not infringe the Asserted Patents as a matter of law ........ 25
Genuine issues of material fact preclude summary judgment on whether Dish’s server
receives requests for navigation objects from consumer systems ........................ 27
Genuine issues of material fact preclude summary judgment on whether any infringement
by Dish was willful ............................................................................................... 28
ORDER ......................................................................................................................................... 29

STANDARD OF REVIEW
Summary judgment is appropriate if “there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law.” 4 A factual dispute is genuine when

3

Docket no. 409, filed July 21, 2022.

4

FED. R. CIV. P. 56(a).

3

“there is sufficient evidence on each side so that a rational trier of fact could resolve the issue
either way” 5 or “if a reasonable jury could return a verdict for the nonmoving party.” 6 A fact is
material if “it is essential to the proper disposition of [a] claim.” 7 And in ruling on a motion for
summary judgment, the factual record and all reasonable inferences drawn therefrom are viewed
in a light most favorably to the nonmoving party. 8
The moving party “bears the initial burden of making a prima facie demonstration of the
absence of a genuine issue of material fact and entitlement to judgment as a matter of law.” 9 If
the moving party carries this initial burden, the nonmoving party “may not rest upon mere
allegations or denials of [the] pleading[s], but must set forth specific facts showing that there is a
genuine issue for trial as to those dispositive matters for which it carries the burden of proof.” 10
“The mere existence of a scintilla of evidence in support of the [nonmovant’s] position will be
insufficient to defeat a properly supported motion for summary judgment.” 11
UNDISPUTED MATERIAL FACTS 12
1.

ClearPlay accuses the operation of AutoHop on Dish’s set top boxes (“STBs”),

specifically the Hopper 1, Hopper 2, Hopper 3, and a remote client box, the Joey, that only works

5

Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998).

Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1529 (10th Cir. 1994) (internal quotations
omitted).

6

7

Adler, 144 F.3d at 670.

8

Id.

9

Id. at 670-671.

10

Universal Money Ctrs., Inc., 22 F.3d at 1529 (internal quotations and citations omitted; emphasis in original).

11

Id. (internal quotations omitted).

Those facts, or portions thereof, identified in the parties’ briefing that do not appear in these Undisputed Material
Facts are either disputed; not supported by cited evidence; not material; or are not facts, but rather, are
characterization of facts or legal argument. Additionally, some material facts presented by the parties are
undisputed, but are not listed among these Undisputed Material Facts. Such undisputed material facts relate to larger
factual issues that are disputed (such as how Dish’s AutoHop works and whether any infringement by Dish was
willful, Infra Discussion at 14-15, 28) and are insufficient to entitle Dish to judgment as a matter of law.
12

4

with the Hooper line of STBs to support additional televisions, of infringing the Asserted
Patents. No other feature is accused, including Dish’s own parental control software. 13
2.

ClearPlay asserts 11 claims from the Asserted Patents (claim 12 of the ’799

Patent; claims 16, 17, 24, 28, 31-33, and 37 of the ’970 Patent; claim 23 of the ’318 Patent; and
claim 3 of the ’784 Patent) are infringed (“Asserted Claims”). The Asserted Claims share nearly
identical specifications, drawings, and descriptions. 14
3.

Each of the Asserted Claims requires a “navigation object” used to filter

multimedia content during playback by removing objectionable content such as “violence,
sexuality, or language.” 15
4.

The “navigation object” in every Asserted Claim must “define” a “start position,”

a “stop position,” and a “specific filtering action” applicable to the multimedia content between
that starting and stopping point, except claim 23 of the ’318 Patent, in which the “navigation
object” “compris[es]” an associated “start indicator,” “end indicator,” and “filtering action.” All
Asserted Claims have limitations regarding “a plurality of navigation objects,” except claim 23
of the ’318 Patent, which requires one. An exemplary navigation object 320a, containing start
position 321a, stop position 323a, and filtering action 325a, and configuration identifier 329a, is
highlighted below: 16

13

Dish’s Motion ¶ 1 at 3-4; Complaint for Patent Infringement, docket no. 2, filed Mar. 13, 2014.

Dish’s Motion ¶ 7 at 6; Plaintiff ClearPlay, Inc.’s Final Infringement Contentions (Amended) at 2, docket no.
418-20, filed under seal July 21, 2022; ’970 Patent; ’784 Patent; ’318 Patent; ’799 Patent.
14

15

Dish’s Motion ¶ 8 at 6; see e.g., ’970 Patent at 1:22-44, 21:29-35.

Dish’s Motion ¶ 9 at 7; see e.g., ’970 Patent at Sheet 3 (Figure 3A), 21:21-61; ’318 Patent at 20:67-21:7,
22:11-13.

16

5

5.

The filtering actions discussed in the Asserted Patents include skip, reframe, and

6

Two of the Asserted Claims require “assigning a configuration identifier to the

mute. 17

decoder” and “comparing the configuration identifier of the particular navigation object with the
configuration identifier of the decoder” (claim 12 the ’799 Patent and claim 16 of the ’970
Patent), and one of the Asserted Claims requires that the “navigation object” “compris[e]” a
“configuration identifier” (claim 23 the ’318 Patent) (collectively, the “Configuration Identifier
Claims”). 18
7.

Eight of the Asserted Claims have limitations regarding disabling the navigation

object (claims 17, 24, 28, 31-33, and 37 of the ’970 Patent and claim 3 of the ’784 Patent)
(collectively, the “Disabling Claims”). 19

17

Dish’s Motion ¶ 10 at 7; see e.g., ’970 Patent at 5:1-52.

18

Dish’s Motion ¶ 12 at 8; ’970 Patent at 21:21-61; ’799 Patent at 21:49-22:26; ’318 Patent at 22:11-13.

19
Dish’s Motion ¶ 13 at 8; ’970 Patent at 21:62-22:41, 23:13-17, 23:59-61, 24:3-16, 24:31-34; ’784 Patent at
20:27-31.

6

. 22
11.

23

12.
. 24
13.

. 25

Dish’s Motion ¶ 17 at 9; First Report of Nick Feamster, Ph.D. (“Feamster Rpt.”) ¶ 68 at 19-20, docket no. 418-8,
filed under seal July 21, 2022; Feamster Suppl. Rpt. ¶ 68 at 19-20.
22

Dish’s Motion ¶ 18 at 9-10; Declaration of Dr. Benjamin Goldberg in Support of Defendants’ Motion for
Summary Judgment (“Goldberg Decl.”) ¶ 45 at 36, ¶ 116 at 66, ¶ 141 at 75, ¶ 148 at 78, ¶ 163 at 83, docket no.
418-9, filed under seal July 21, 2022; Feamster Rpt. ¶¶ 122-126 at 35-36.
23

24

Dish’s Motion ¶ 19 at 10; Feamster Rpt. ¶¶ 144-147 at 40.

Dish’s Motion ¶ 6 at 6, ¶ 21 at 10; Declaration of Dan Minnick ¶ 13 at 4-5, docket no. 418-7, filed under seal July
21, 2022; Goldberg Decl. ¶ 39 at 27, ¶¶ 41-42 at 29-33, ¶ 99 at 58-59; Feamster Rpt. ¶ 69 at 20; Feamster Depo. at
253:13-255:16.
25

8

DISCUSSION
Dish seeks summary judgment of noninfringement regarding ClearPlay’s Asserted
Patents. 26 Determining infringement requires a two-step analysis. 27 “First, the claim[s] must be
properly construed to determine [their] scope and meaning.” 28 “[T]he words of a claim are
generally given their ordinary and customary meaning.” 29 And “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.” 30 “Claim construction is a question of law.” 31
“Second, the claim[s] as properly construed must be compared to the accused device[s] or
process[es].” 32 “To prove direct infringement, the [patent owner] must establish by a
preponderance of the evidence that one or more claims of the patent read on the accused device
literally or under the doctrine of equivalents.” 33 “Literal infringement requires that each and
every limitation set forth in a claim appear in an accused product.” 34 “A finding of infringement
under the doctrine of equivalents requires a showing that the difference between the claimed
invention and the accused product or method was insubstantial or that the accused product or
method performs the substantially same function in substantially the same way with substantially

26

Dish’s Motion at 15-40.

27

Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).

28

Id. (internal quotations omitted).

29

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotations omitted).

30

Id. at 1313.

31

Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1302 (Fed. Cir. 2005).

32

Ethicon Endo-Surgery, Inc., 149 F.3d at 1315 (internal quotations omitted).

33

Cross Med. Prods., Inc., 424 F.3d at 1310.

34

Id. (internal quotations omitted)

9

the same result as each claim limitation of the patented product or method.” 35 “Infringement,
either literal or under the doctrine of equivalents, is a question of fact.” 36
This court’s claim construction and the ordinary and customary meaning of
the Asserted Patents do not support a multi-object approach to navigation object
Dish argues that it is entitled to summary judgment of noninfringement because its
accused devices do not use “navigation objects.” 37 Before this argument may be addressed it is
necessary discuss the parties’ dispute over the Asserted Claims’ proper scope and meaning. The
dispute stems from what is characterized as the “single-object” and “multi-object” (or “scatteredobject”) approaches to the claim term “navigation object.” 38 Under the single-object approach,
the elements that a navigation object “defines” or “comprises” are contained within the same
object, file, or data structure (that being the navigation object). Under the multi-object approach,
the elements are not necessarily within the same object, file, or data structure—they may be
located or contained in multiple sources having an association with or a link to the navigation
object.
This court construed “navigation object” as: “Plain and ordinary meaning (as defined by
the terms of the claims themselves).” 39 There is no disputed that this is the proper construction of
the term. It is also undisputed that each of the Asserted Claims requires a “navigation object.” 40
And it is undisputed that the “navigation object” in every Asserted Claim must “define” a “start

35

AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1326 (Fed. Cir. 2007).

36

Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1345 (Fed. Cir. 2013).

37

Dish’s Motion at 15-24.

Id. at 15-16; Plaintiff ClearPlay, Inc.’s Opposition to Defendant Dish Network’s Motion for Summary Judgment
(“ClearPlay’s Response”) at 2-3, 29-32, docket no. 451, filed Aug. 25, 2022.
38

Memorandum Decision and Order Regarding Claim Construction (“Claim Construction Order”) at 5, 18, docket
no. 309, filed Aug. 26, 2019.

39

40

Supra Undisputed Material Facts ¶ 3 at 5.

10

position,” a “stop position,” and a “specific filtering action.” 41 The only exception to this is claim
23 of the ’318 Patent, which requires a “navigation object” “comprising” an associated “start
indicator,” “end indicator,” and “filtering action.” 42
This court construed “defin[e/es/ed/ing]” as: “Assign or specify [a start position, stop
position, or filtering action].” 43 “Comprising” was not construed during claim construction. But
under the Asserted Patents’ ordinary and customary meaning, there is no meaningful difference
between the term “comprising” in claim 23 of the ’318 Patent and the term “define” in the other
Asserted Claims for purposes of a navigation object’s scope. It is clear from the Asserted
Patents’ language, as properly construed and consistent with this court’s claim construction, that
the single-object approach to navigation object is the only reasonable approach to navigation
object. The multi-object approach is precluded by this court’s claim construction and the
ordinary and customary meaning of the Asserted Patents.
The term “navigation object” identifies itself as an “object.” This is not meaningless. In
context of the Asserted Patents, an “object” is not an abstract and it is singular. It is not a
formless assigning or specifying of associated or linked information from multiple sources. It is a
structured object. It is an object that defines (assigns or specifies) or comprises specific elements
used to filter portions of multimedia content during playback. 44 These elements must be
contained within the navigation object. Otherwise, the navigation object ceases to be an object.

41

Id. ¶ 4 at 5-6.

42

Id.

43

Claim Construction Order at 17-19.

44

Supra Undisputed Material Facts ¶¶ 3-4 at 4-5.

11

This scope is further confirmed by the Asserted Claims’ inclusion of limitations
regarding “a plurality of navigation objects.” 45 The plurality of navigation objects limitation has
no meaningful purpose in the Asserted Patents if a navigation object does not contain all its
elements. If a navigation object only assigns or specifies elements from various sources used to
filter multimedia content, a single navigation object would also be a plurality of navigation
objects. ClearPlay concedes as much: “a single programming item could be associated with
multiple start and stop times, thereby assigning or specifying to skip at each associated start and
stop time.” 46
Consider claim 23 of the ’318 Patent, which does not have the plurality of navigation
objects limitation and uses different language than the other Asserted Claims. 47 Claim 23 of the
’318 Patent relates to a single navigation object “comprising” an associated “start indicator,”
“end indicator,” and “filtering action.” 48 The ordinary and customary meaning of the term
“comprising” is not “defining,” “assigning,” or “specifying.” Its meaning is “including” or
“containing.” Thus, for claim 23 of the ’318 Patent, a navigation object must include or contain
all its essential elements.
Because claim 23 of the ’318 Patent refers to only one navigation object containing all its
elements, the claim’s language is tailored to be precise to that navigation object. It is unnecessary
of the claim’s language to account for multiple navigation objects, each containing their own
elements. The other Asserted Claims (which have the plurality of navigation objects limitations)
account for the plurality with language (“define”—assign or specify) capable of describing each
45

Id. ¶ 4 at 4-5.

Appendix A Response to Additional Material Facts Alleged in Dish’s Argument at 4, docket no. 454-1, filed
under seal Aug. 25, 2022.
46

47

Supra Undisputed Material Facts ¶ 4 at 4-5.

48

Id.

12

navigation object in the plurality as containing its own specific elements. And by doing so, the
plurality of navigation objects limitation is given meaningful purpose, and each navigation object
is capable of being distinguished from the others in the plurality. 49 The multi-object approach to
navigation object does not account for this language and is unreasonable in light of the plurality
of navigation objects limitations.
The single-object approach to navigation object is also unmistakably demonstrated in the
undisputed exemplary navigation object. 50 This exemplary is a high-level block diagram
showing the basic components of one potential embodiment. But it, as well as other drawings of
the Asserted Patents, 51 are consistent in their representation of all of a navigation object’s
elements being contained within the navigation object.
To support the multi-object approach, ClearPlay relies on language from the Asserted
Patents’ drawings and specification indicating that exemplary embodiments are not meant to
limit the invention’s scope. 52 But that other embodiments are permitted or anticipated, does not
mean that those other embodiments include the multi-object approach. ClearPlay fails to identify
sufficient language within the specification to support a multi-object embodiment of the
navigation object. And while “claims must be read in view of the specification,” 53 “[i]t is a
bedrock principle of patent law that the claims of a patent define the invention to which the

Claim 17 of the ’970 Patent (of which claim 24 of the ’970 Patent is dependent), expressly provides for
“displaying a representation of the plurality of navigation objects, the representation including a description of each
of the plurality of navigation objects.” ’970 Patent at 21:31-33, 23:13-14.
49

50

Undisputed Material Facts ¶ 4 at 4-5.

51

See e.g., ’970 Patent at Sheets 1-11.

52

ClearPlay’s Response at 9-10, 30.

53

Phillips, 414 F.3d at 1315.

13

patentee is entitled the right to exclude.” 54 ClearPlay fails to identify to sufficient language
within the Asserted Claims to support the multi-object approach to navigation object.
Indeed, ClearPlay’s perpetuation of the multi-object approach comes from its
misunderstanding of an order that denied supplemental claim construction. 55 Properly construed
and consistent with this court’s claim construction, the single-object approach to navigation
object is the only reasonable approach to the Asserted Claims’ scope. The multi-object approach
is unreasonable and is inconsistent with and precluded by this court’s claim construction and the
Asserted Patents’ ordinary and customary meaning. Therefore, the elements a navigation object
“defines” or “comprises” are contained within the same object, file, or data structure (that being
the navigation object).
ClearPlay’s literal infringement theories that rely on the multi-object approach to
navigation object fail as a matter of law
With this properly construed scope and meaning of navigation object in hand, Dish’s
argument that its accused devices do not use navigation objects may now be addressed. It is
undisputed that ClearPlay asserts eight theories that Dish’s accused devices infringe the Asserted
Claims’ navigation object. 56 Because the multi-object approach to navigation object is precluded
by this court’s claim construction and the Asserted Patents’ language, 57 any literal infringement
theory that relies on the multi-object approach necessarily fails as a matter of law.

54

Id. at 1312.

ClearPlay’s Response at 31-32; Memorandum Decision and Order Denying Motion Regarding Supplemental
Claim Construction, docket no. 367, filed Mar. 1, 2022; Memorandum Decision and Order Re: ClearPlay’s Daubert
Motions at 7-9, docket no. 605, filed Jan. 6, 2023 (recognizing and discussing ClearPlay’s misunderstanding).
55

56

Supra Undisputed Material Facts ¶ 9 at 7.

57

Supra Discussion at 10-14.

14

Dish argues that ClearPlay’s first three theories of infringement rely on the multi-object
approach to navigation object. 58 The undisputed material facts demonstrate that ClearPlay’s first
and second theories do rely on the multi-object approach. 59 This is because it is undisputed that
the alleged element that causes a filtering action in these theories (the
) is not contained within the theories’ alleged navigation object (the
and

, respectively). 60 However, genuine issues of material fact remain

regarding ClearPlay’s third infringement theory. 61 It is disputed whether the alleged element that
causes a filtering action in the third theory (the
theory’s alleged navigation object (the

) is contained within the
).

Therefore, ClearPlay’s literal infringement theories that undisputedly rely on the
multi-object approach to navigation object (ClearPlay’s first and second theories 62) fail as a
matter of law regarding literal infringement. Dish is entitled to summary judgment of
noninfringement on these literal infringement theories for all Asserted Claims.
Genuine issues of material fact preclude summary judgment on ClearPlay’s literal
infringement theories that rely on the single-object approach to navigation object
Dish argues that ClearPlay’s infringement theories that rely on the single-object approach
to navigation object (ClearPlay’s third theory for which the single-object approach is disputed,
and its fourth through eighth theories 63) fail because the alleged elements that cause a filtering
action do not actually cause a filtering action in Dish’s accused devices. 64 Dish asserts several
58

Dish’s Motion at 15-16, 18-19.

59

Supra Undisputed Material Facts ¶¶ 9-10 at 7-8.

60

Id.

61

Id. ¶ 9 at 7.

62

Id.

63

Id.

64

Dish’s Motion at 19-22.

15

material facts attempting to demonstrate how its technology works and what the alleged filtering
action elements do in Dish’s accused devices. 65 ClearPlay has sufficiently disputed many of
these facts, 66 and presented several additional material facts regarding how Dish’s technology
and its elements work in Dish’s accused devices. 67 And Dish disputes many of ClearPlay’s
additional facts. 68
As recognized in the order that denied ClearPlay’s motion that sought summary judgment
on Dish’s infringement, 69 it is interesting that the parties represent that they agree on the facts
regarding how Dish’s technology works. 70 The parties do not agree. The parties characterize the
operation of Dish’s technology in very different ways and point to conflicting evidence
(including expert opinions) to support their respective positions. The disputed material facts
illuminate a fundamental factual disagreement among the parties regarding how Dish’s
technology works, and whether the patents (when properly construed) read on Dish’s technology.
These factual disputes preclude summary judgment on ClearPlay’s literal infringement theories
that rely on the single-object approach to navigation object (ClearPlay’s third theory for which
the single-object approach is disputed, and its fourth through eighth theories 71).

65

Id. at ¶¶ 2-5 at 4-5, ¶¶ 16-18 at 9.

66

ClearPlay’s Response at 5-13; Appendix A – Response to Additional Material Facts Alleged in Dish’s Argument.

67

Id. ¶¶ 1-6 at 19-21, ¶¶ 8-35 at 21-28.

Appendix A Reply to ClearPlay’s Statement of Additional Facts, docket no. 516, filed under seal Sept. 22, 2022;
Appendix B Reply to ClearPlay’s Appendix A, docket no. 516-1, filed under seal Sept. 22, 2022.
68

Memorandum Decision and Order Denying ClearPlay’s Motion for Summary Judgment at 8, docket no. 618, filed
Jan. 24, 2023.
69

Defendants’ Reply in Support of Defendants’ Motion for Summary Judgment (“Dish’s Reply”) at 1, docket no.
514, filed Sept. 22, 2022.
70

71

Supra Undisputed Material Facts ¶ 9 at 7.

16

Genuine issues of material fact preclude summary judgment on ClearPlay’s infringement
theories under the doctrine of equivalents
As an alternative to its literal infringement theories, ClearPlay alleges that the Dish
infringes the Asserted Patents’ navigation object under the doctrine of equivalents. “A finding of
infringement under the doctrine of equivalents requires a showing that the difference between the
claimed invention and the accused product or method was insubstantial or that the accused
product or method performs the substantially same function in substantially the same way with
substantially the same result as each claim limitation of the patented product or method.” 72
Dish argues that application of the vitiation doctrine entitles it to summary judgment of
noninfringement on ClearPlay’s infringement theories under the doctrine of equivalents. 73 A
doctrine of equivalents infringement theory “fails [due to vitiation] if it renders a claim limitation
inconsequential or ineffective.” 74 “Th[e] vitiation doctrine ensures [that] the application of the
doctrine of equivalents does not effectively eliminate a claim element in its entirety.” 75 “Claim
vitiation is a legal determination that the evidence is such that no reasonable jury could
determine two elements to be equivalent.” 76
“Vitiation has its clearest application where the accused device contains the antithesis of
the claimed structure,” 77 or “when the alleged equivalent is ‘diametrically opposed’ to the
missing claim element.” 78 “When the accused structure has an element that is the opposite of the

72

AquaTex Indus., Inc., 479 F.3d at 1326.

73

Dish’s Motion at 22-24.

Edgewell Personal Care Brands, LLC v. Munchkin, Inc., 998 F.3d 917, 923 (Fed. Cir. 2021) (internal quotations
omitted).
74

75

Id. (internal quotations and punctuation omitted).

76

Id. (internal quotations omitted).

77

Id. (internal quotations and punctuation omitted).

78

Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d 1353, 1367 (Fed. Cir. 2020).

17

claimed element, it is more difficult for a patentee to succeed on a theory of equivalents.” 79
Succeeding on a theory of equivalents is also made more difficult “where the specification or
prosecution history highlights the differences.” 80 And “[i]f the claimed and accused elements are
recognized by those of skill in the art to be opposing way of doing something, they are likely not
insubstantially different.” 81
“But . . . courts should be cautious not to shortcut this inquiry by identifying a binary
choice in which an element is either present or not present.” 82 “[T]he vitiation test cannot be
satisfied by simply noting that an element is missing from the claimed structure or process
because the doctrine of equivalents, by definition, recognizes that an element is missing that
must be supplied by the equivalent substitute.” 83 Thus, “[t]he vitiation test cannot be satisfied
merely by noting that the equivalent substitute is outside the claimed limitation’s literal scope.” 84
“Rather, vitiation applies when one of skill in the art would understand that the literal and
substitute limitations are not interchangeable, not insubstantially different, and when they do not
perform substantially the same function in substantially the same way, to accomplish
substantially the same result.” 85
The single-object and multi-object approaches to navigation object appear to be
diametrically opposed—one versus many. And as discussed, the multi-object approach is
precluded by this court’s claim construction and the Asserted Patents’ ordinary and customary

79

Id. (internal quotations and punctuation omitted).

80

Brilliant Instruments, Inc., 707 F.3d at 1347.

81

Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d at 1367 (internal quotations and punctuation omitted).

82

Edgewell Personal Care Brands, LLC, 998 F.3d at 924 (internal quotations omitted).

83

Brilliant Instruments, Inc., 707 F.3d at 1347 (internal quotations omitted).

84

Id.

85

Id.

18

meaning. 86 But this is not enough, on the summary judgment standard of review, to entitle Dish
to judgment of noninfringement on ClearPlay’s doctrine of equivalents theories as a matter of
law.
Dish cites to prosecution history (though not in its statement of undisputed material facts)
strongly suggesting that the differences between the single-object and multi-object approaches
was highlighted and a significant factor in the proceedings before the United States Patent and
Trademark Office. 87 But this prosecution history was not set forth as undisputed material fact; is
insufficiently documented; and is disputed by ClearPlay.
There are also numerous fundamental factual disputes regarding how Dish’s technology
works and whether the patents read on Dish’s technology. 88 And ClearPlay has presented expert
opinion that “[f]rom the view point [sic] of a person of ordinary skill in the art, there is an
insubstantial difference between storing all the information in one data structure versus multiple
associated data structures.” 89 Dish has not cited or sufficiently discussed contrary expert opinion.
The summary judgment standard of review demands that the factual record and all
reasonable inferences drawn therefrom be viewed in a light most favorably to the nonmoving
party. 90 The record, as insufficiently presented and argued in the briefing on Dish’s Motion,
compels the denial of Dish’s Motion on the doctrine of equivalents issue. The undisputed
material facts (and reasonable inferences drawn therefrom) viewed in a light most favorable to
ClearPlay are not such that no reasonable jury could determine the single-object and multi-object

86

Supra Discussion at 10-14.

87

Dish’s Motion at 24; Dish’s Reply at 5.

88

Supra Discussion at 15-16.

89

Expert Declaration of Prof. Nick Feamster, Ph.D. ¶ 61 at 23, docket no. 416-23, filed under seal July 21, 2022.

90

Adler, 144 F.3d at 670.

19

approaches to navigation object are equivalent. Therefore, genuine issues of material fact
preclude summary judgment on ClearPlay’s infringement theories under the doctrine of
equivalents for the alleged navigation objects. But at trial, after the presentation of evidence and
before the jury is given its final instructions, different standards will apply that may well compel
a different result than on summary judgment.
ClearPlay’s literal infringement theories that rely on an
alleged navigation object other than the
fail as a matter of law on the Configuration Identifier Claims
Dish next seeks summary judgment of noninfringement on the Asserted Patents’
Configuration Identifier Claims. 91 It is undisputed that the only alleged configuration identifier
ClearPlay identifies in Dish’s accused devices is the
. 92 Dish argues that because the

identifies

only Dish’s STB hardware, and not the version of software the STBs are running, the
cannot be a “configuration identifier” as construed by this court. 93
This court construed “configuration identifier” as: “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.” 94 Dish attempts to assert as undisputed fact that the
does not identify particular software versions running in Dish’s
STBs. 95 However, Dish’s cited evidence does not sufficiently support that fact. And even if it
did, the cited evidence also demonstrates that the

91

Dish’s Motion at 25-26.

92

Supra Undisputed Material Facts ¶ 11 at 8.

93

Dish’s Motion at 25-26.

94

Claim Construction Order at 12-13, 19.

95

Dish’s Motion ¶ 18 at 9-10.

identifies Dish

20

STBs that have AutoHop functionality. 96 It unclear whether the

can

differentiate between Dish’s STBs that have AutoHop functionality and those that do not. But it
is reasonable to infer 97 that the

identifies STBs that have AutoHop

functionality because their hardware and software allows for AutoHop functionality (regardless
of the software version that is running). Therefore, genuine issues of material fact exist regarding
whether the

satisfies this court’s construction of “configuration

identifier.” And these disputed facts preclude summary judgment on ClearPlay’s infringement
theories under the doctrine of equivalents for the alleged configuration identifier. 98
However, these genuine issues of material fact to not save all of ClearPlay’s literal
infringement theories from failing as a matter of law. This is because the Configuration Identifier
Claims are a recurrence of the single-object approach to navigation object. It is undisputed that
claim 12 of the ’799 Patent and claim 16 of the ’790 Patent require “assigning a configuration
identifier to the decoder” and “comparing the configuration identifier of the particular navigation
object with the configuration identifier of the decoder.” 99 It is also undisputed that claim 23 of
the ’318 Patent requires that the “navigation object” “compris[e]” a “configuration identifier.” 100
Claim 12 of the ’799 Patent and claim 16 of the ’790 Patent do not expressly identify
what is “assigning” a configuration identifier to the decoder. However, the language identifies
“the configuration identifier of the particular navigation object.” The term “of” has an ordinary
and customary meaning that expresses the relationship between a part and a whole. For claim 12

96

Dish’s Motion ¶ 18 at 9-10.

97
On summary judgment the record and all reasonable inference drawn therefrom are viewed in a light most
favorable to the nonmoving part. Adler, 144 F.3d at 670.
98

Supra Discussion at 16-20.

99

Supra Undisputed Material Facts ¶ 6 at 6.

100

Id.

21

of the ’799 Patent and claim 16 of the ’790 Patent, the part is the configuration identifier and the
whole is the navigation object. Therefore, claim 12 of the ’799 Patent and claim 16 of the ’790
Patent require the configuration identifier to be contained within the navigation object.
This scope is consistent with the single-object approach regarding the navigation object’s
other elements. 101 The single-object approach to navigation object for the configuration identifier
element is further confirmed by claim 23 of the ’318 Patent’s use of the term “comprising,” the
ordinary and customary meaning of which is “including” or “containing.” 102 A multi-object
approach to navigation object for the configuration identifier element is unreasonable and
inconsistent with the Configuration Identifier Claims. The Configuration Identifier Claims
require that the alleged configuration identifier must be contained within the alleged navigation
object.
It is undisputed that the
navigation object, except for Dish’s

is not contained within any alleged
. 103 Therefore, the existence of genuine

issues of material fact precludes summary judgment on ClearPlay’s literal infringement theories
of the Configuration Identifier Claims that allege the

as the navigation object

(ClearPlay’s third, fourth, and fifth theories 104). But ClearPlay’s literal infringement theories of
the Configuration Identifier Claims that allege the

as

navigation objects (ClearPlay’s second, sixth, seventh, and eighth theories 105) fail as a matter of

101

Supra Discussion at 10-14.

102

Id. at 12.

103

Supra Undisputed Material Facts ¶ 11 at 8.

Id. ¶ 9 at 7. ClearPlay’s first theory is not listed here because it has already been determined to fail as a matter of
law regarding literal infringement for all Asserted Claims. Supra Discussion at 14-15
104

105

Supra Undisputed Material Facts ¶ 9 at 7.

22

law. Dish is entitled to summary judgment of noninfringement on these literal infringement
theories of the Configuration Identifier Claims.
ClearPlay’s infringement theories that rely on an
alleged navigation object other than the
fail as a matter of law on the Disabling Claims
Dish next seeks summary judgment of noninfringement on the Asserted Patents’
Disabling Claims. 106 Dish argues that the Disabling Claims cannot be infringed by Dish’s
accused devices because Dish’s technology does not contain, and ClearPlay cannot present
evidence showing, any feature that disables an alleged navigation object. 107 ClearPlay
mischaracterizes Dish’s argument as improperly seeking claim construction of the term
“disabling.” 108 But such claim construction is not requested and is unnecessary. The issue is
whether the Disabling Claims (as properly construed) read on Dish’s accused devices as a matter
of law.
The Disabling Claims provide for disabling one or more navigation objects such that the
specific filtering action specified by the disabled navigation object is ignored. 109 The Asserted
Patents’ specification provides insight for how disabling a navigation object may occur:
Navigation objects may be disabled by including an indication within the
navigation objects that they should not be part of the filtering process. The act of
retrieving navigation objects . . . may ignore navigation object that have been
marked as disabled so they are not retrieved. Alternatively, a separate act could be

106

Dish’s Motion at 26-28.

107

Id.

108

ClearPlay’s Response at 40-42.

109
Supra Undisputed Material Facts ¶ 7 at 6; ’970 Patent at claims 21:62-22:41, 23:13-17, 23:59-61, 24:3-16,
24:31-34; ’784 Patent at 20:27-31.

23

performed to eliminate disabled navigation objects from being used in filtering
multimedia content. 110
But a specification cannot create an additional limitation for the Disabling Claims. 111
Clear from the ordinary and customary meaning and scope of the Disabling Claims, and
supported by the specification’s language, is that some action must be taken to disable a
navigation object so that its filtering action is ignored. It is undisputed that

. 112 Specifically, ClearPlay asserts that

. 113 These theories point to
features that

. But

is broader than the Disabling Claims’ limitations for disabling navigation objects.
by the user unplugging the Dish STB, or by the
user choosing not to record or watch

. Neither of these actions

could reasonably be viewed as satisfying the Disabling Claims’ limitations. Nor can
be reasonably viewed as satisfying the
Disabling Claims’ limitations. Rather, to satisfy the Disabling Claims’ limitations, the alleged
disabling feature must disable a navigation object so that its filtering action is ignored.

110

’970 Patent at 18:64-19:4; ’784 Patent at 19:6-13.

111

Phillips, 415 F.3d at 1323-1324.

112

Supra Undisputed Material Facts ¶ 12 at 8.

113

ClearPlay’s Response at 42.

24

ClearPlay presents sufficient evidence to create a genuine issue of fact regarding whether
the alleged

navigation object (ClearPlay’s seventh, and eighth theories 114) is

disabled such that its alleged filtering action is ignored. 115 However, ClearPlay fails to present
sufficient evidence of any other alleged navigation object being disabled to create a triable issue
that the Disabling Claims read on Dish’s accused devices. Therefore, except for ClearPlay’s
infringement theories that rely on the

as the alleged navigation object

(ClearPlay’s seventh and eighth theories 116), Dish is entitled to summary judgment of
noninfringement as a matter of law on the Asserted Patents’ Disabling Claims.
The accused Joey device does not infringe
the Asserted Patents as a matter of law
Dish next seeks summary judgment of noninfringement regarding the accused Joey
device. 117 Dish argues that the Joey is incapable of infringing the Asserted Patents, and that
ClearPlay cannot present evidence sufficient to create a triable issue regarding the Joey’ alleged
infringement. 118 ClearPlay argues that the Joey infringes the Asserted Patents because

. 119 This argument fails in the face
of the undisputed material facts.

Supra Undisputed Material Facts ¶ 9 at 7. ClearPlay’s second theory is not listed here because it has already been
determined to fail as a matter of law regarding literal infringement for all Asserted Claims. Supra Discussion at
14-15.
114

115

ClearPlay’s Response ¶¶ 34-35 at 27-28.

Supra Undisputed Material Facts ¶ 9 at 7. ClearPlay’s second theory is not listed here because it has already been
determined to fail as a matter of law regarding literal infringement for all Asserted Claims. Supra Discussion at
14-15.

116

117

Dish’s Motion at 31-32.

118

Id.

119

ClearPlay’s Response at 44.

25

It is undisputed that
. 120

. 121 It is
also undisputed that
. 122 And it is undisputed that
. 123
These undisputed material facts demonstrate that
. The Joey’s function
and what the Joey does

.

. If ClearPlay’s argument were accepted, other
devices
, would infringe the
Asserted Patents. The Asserted Patents cannot be read so unreasonably broad to permit such an
absurd result.
Based on the undisputed material facts, ClearPlay’s Asserted Patents do not read on the
accused Joey device as a matter of law. And ClearPlay fails to present sufficient evidence to

120

Supra Undisputed Material Facts ¶ 13 at 8.

121

Id.

122

Id.

123

Id.

26

create a triable issue regarding the Joey device. Therefore, Dish is entitled to summary judgment
of noninfringement regarding its accused Joey device.
Genuine issues of material fact preclude summary judgment on whether
Dish’s server receives requests for navigation objects from consumer systems
Dish next seeks summary judgment of noninfringement of claim 3 of the ’784 Patent. 124
Claim 3 of the ’784 Patent requires a “server system linked to a consumer system through a
communication link,” where the server receives “a request for one or more navigation objects
from the consumer system.” 125 Dish argues that its accused devices never “request” any of the
alleged navigation objects. 126 Dish asserts a single numbered paragraph material fact to support
this argument. 127 But Dish’s cited evidence does not adequately support the statement of fact.
And ClearPlay cites sufficient evidence to dispute the fact. 128
Dish did not meet its initial burden on summary judgment of making a prima facie
demonstration of the absence of a genuine issue of material fact and entitlement to judgment as a
matter of law regarding noninfringement of claim 3 of the ’784 Patent. 129 And the existence of
genuine issues of material fact precludes summary judgment on whether Dish’s server receives
requests for navigation objects from consumer systems for purposes of claim 3 of the ’784
Patent.

124

Dish’s Motion at 28-30.

125

Supra Undisputed Material Facts ¶ 8 at 7.

126

Dish’s Motion at 28-30.

127

Dish’s Motion ¶ 2.c. at 4.

128

ClearPlay’s Response at 6, 44.

129

Adler, 144 F.3d at 670-671.

27

Genuine issues of material fact preclude summary judgment
on whether any infringement by Dish was willful
Finally, Dish seeks summary judgment that it has not willfully infringed ClearPlay’s
Asserted Patents. 130 Dish argues that ClearPlay’s pre-suit dealings with Dish are insufficient to
demonstrate Dish’s knowledge of infringement, and that Dish’s continued use of the alleged
infringing AutoHop feature is insufficient to support post-suit willfulness. 131 Dish asserts
numerous material facts regarding the willfulness issue. 132 But ClearPlay has sufficiently
disputed many of these facts. 133
The existence of genuine issues of material fact precludes summary judgment on whether
any infringement by Dish was willful.

130

Dish’s Motion at 32-40.

131

Id.

132

Id. ¶¶ 22-47 at 11-14.

133

ClearPlay’s Response at 15-19.

28

ORDER
IT IS HEREBY ORDERED that Dish’s Motion 134 is GRANTED in part as follows:
•

Dish is entitled to summary judgment of noninfringement on ClearPlay’s literal

infringement theories that rely on a multi-object approach (ClearPlay’s first and second theories
of infringement 135) for all Asserted Claims.
•

Dish is entitled to summary judgment of noninfringement on the Configuration

Identifier Claims for ClearPlay’s literal infringement theories that do not rely on the
as the allege navigation object (ClearPlay’s second, sixth, seventh, and eighth
theories 136).
•

Dish is entitled to summary judgment of noninfringement on the Disabling

Claims for ClearPlay’s infringement theories that do not rely on the

as the

alleged navigation object (ClearPlay’s first and third through sixth theories 137).
•

Dish is entitled to summary judgment of noninfringement regarding the accused

Joey device.

134

Docket no. 409, filed July 21, 2022.

135

Supra Undisputed Material Facts ¶ 9 at 7.

136

Id.

137

Supra Undisputed Material Facts ¶ 9 at 7.

29

IT IS FURTHER ORDERED that Dish’s Motion 138 is DENIED in part regarding the
following issues:
•

ClearPlay’s literal infringement theories that rely on a “single-object” approach to

navigation object (ClearPlay’s third theory for which the single-object approach is disputed, and
its fourth through eighth theories 139);
•

ClearPlay’s infringement theories under the doctrine of equivalents for the alleged

navigation objects;
•

whether the

satisfies this court’s construction of

“configuration identifier;”
•

ClearPlay’s infringement theories under the doctrine of equivalents for the alleged

configuration identifier;
•

ClearPlay’s literal infringement theories on the Configuration Identifier Claims

that rely on the

as the alleged navigation object (ClearPlay’s third, fourth, and

fifth theories 140);
•

ClearPlay’s infringement theories on the Disabling Claims that rely on the
as the alleged navigation object (ClearPlay’s seventh and eighth theories 141);

138

Docket no. 409, filed July 21, 2022.

139

Supra Undisputed Material Facts ¶ 9 at 7.

140
Id. ¶ 9 at 7. ClearPlay’s first theory is not listed here because it has already been determined to fail as a matter of
law regarding literal infringement for all Asserted Claims. Supra Discussion at 14-15

Supra Undisputed Material Facts ¶ 9 at 7. ClearPlay’s second theory is not listed here because it has already been
determined to fail as a matter of law regarding literal infringement for all Asserted Claims. Supra Discussion at
14-15.
141

30

•

whether Dish’s server receives requests for navigation objects from consumer

systems for purposes of claim 3 of the ’784 Patent; and
•

whether any infringement by Dish was willful.

Signed January 30, 2023.
BY THE COURT
________________________________________
David Nuffer
United States District Judge

31