Vizio et al v. ITC and Funai Electric Co. (CAFC 2009-1386) precedential

'074 was blessed as infringed, and not invalid, by the ITC, including infringement of supposed work-around products.

Claim Construction

'074 addressed the problem of "channel latency": delay in decoding a particular program stream. The problem arises because multiple programs are transmitted in a single stream, and so a single program must be fished out of a stream. Hence claim construction static of the claimed "channel map information."

The object of the invention is to accelerate the decoding process through a system that identifies and assembles a "channel map" that replicates from the MPEG-2 PMT ["Program Map Table"] all of the information necessary to identify and acquire a program.

The '074 patent does not define the term "channel map information," nor does this term appear to have any ordinary English meaning.

To create an opening for invalidity, defendants wanted a broad reading of the term.

Funai argues that the claim language here references "MPEG compatible program map information," and that "channel map information" must be construed with reference to the MPEG-2 standard. Appellants challenge the Commission's reliance on the MPEG-2 standard, and argue that there are several MPEG standards and that the '074 patent does not expressly limit itself to the MPEG-2 standard.

The MPEG-2 standard is specifically referenced in numerous places in the specification, and the specification makes no reference to any other MPEG standard. Appellants' own expert, Dr. Wechselberger, acknowledged that the multiple references in the '074 patent to the "MPEG standard" refer to the MPEG-2 standard. Moreover, we agree with the Commission that the fact that the MPEG-2 standard was the standard used for digital television broadcasts in the United States at the time of the filing of the patent itself suggests that one of ordinary skill in the art would understand the disputed claim terms of the '074 patent to refer to the MPEG-2 standard. See LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1375 (Fed. Cir. 2006) ("Although we have concluded that the patentee did not expressly adopt the . . . industry standard, that standard remains relevant in determining the meaning of the claim term to one of ordinary skill in the art at the time the patent application was filed, and it is treated as intrinsic evidence for claim construction purposes . . . ."), rev'd on other grounds, Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008).

Thus, we agree with the Commission that the claims require associating the program with all of the identifiers conveyed in the MPEG-2 program map information that are necessary to "constitute a program."

Defendants had argued claim differentiation as a basis for a broader construction, but neither the ITC nor CAFC tuned to that channel.

Next came a disclaimer dispute.

The second issue of claim construction is whether the claims preclude the use of information other than channel map information, and in particular whether they preclude the use of the MPEG PMT (i.e., the data used for decoding in the prior art). Appellants argue that the language "identifying channel map information . . . and assembling said identified information" in claims 1 and 23, '074 patent col.11 ll.31-33, col.14 ll.12-14, excludes use of the MPEG PMT, because the patentees disavowed any and all use of the PMT during the prosecution of the '074 patent. The Commission found no disavowal in either the '074 patent or the prosecution history. We agree with the Commission that there was no broad disclaimer of any and all use of the PMT. The inventions disclaimed only systems that require the use of the MPEG PMT.

The preamble of claims was found limiting, in a controversial decision.

The third issue of claim construction is whether the claims require that the device and method be capable of utilizing the channel map information. This relates to the interpretation of the terms "for identifying" and "suitable for use in identifying" in claims 1 and 23.

The language "for identifying" and "suitable for use" on their face suggest that channel map information must actually be capable of being used for the claimed function. Additionally, the preamble of claim 1 is addressed to an "[a]pparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data," '074 patent col.11 ll.27-29 (emphasis added), while the preamble of claim 23 encompasses "[a] method for decoding MPEG compatible packetized program information containing program map information to provide decoded program data," id. col.14 ll.9-11 (emphasis added). In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claim. Catalina Mktg. Int'l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed.Cir. 1999)). A preamble is not limiting "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).

Here, we conclude that the "for decoding" language in the preamble of claims 1 and 23 is properly construed as a claim limitation, and not merely a statement of purpose or intended use for the invention, because "decoding" is the essence or a fundamental characteristic of the claimed invention. See Poly-Amer., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004); Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003); Griffen v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002); Manning v. Paradis, 296 F.3d 1098, 1103 (Fed. Cir. 2002). In Griffen v. Bertina, we construed language in the preamble of the claim describing "[a] method for diagnosing an increased risk for thrombosis," 285 F.3d at 1031, and concluded that "[d]iagnosis is . . . the essence of this invention; its appearance in the count gives 'life and meaning' to the manipulative steps," id. at 1033. We noted that without the invention's intended purpose of diagnosis, "obtaining nucleic acid and assaying for a point mutation alone are merely academic exercises." Id. Similarly, here the apparatus of claim 1 and the method of claim 23 would have little meaning without the intended objective of decoding. The decoding requirement of the preamble does not "only add[] an intended use," Marrin v. Griffin, 599 F.3d 1290, 1294 (Fed. Cir. 2010), but rather, states an essential limitation to the claims.

Finally, in the context of justifying the need to construe "for identifying" and "suitable for use", the CAFC realized that "a construction that required only receipt and storage of the channel map information, and not the ability to decode using that information, could effectively broaden the claims to cover all devices and methods of decoding an A/65 compliant digital broadcast." Yet this still raises the fundamental question: so what? It's not the Court's place to introduce limitations to narrow claim scope, for whatever reason. Thus Judge Clevenger dissented, arguing that the majority had overreached on this facet of claim construction.

The "third issue of claim construction," Maj. Op. at 17, is not appealed. The majority thus reaches beyond the issues raised by the parties, both below and on appeal, to sua sponte issue a claim construction ruling on the phrases "for identifying" and "for decoding." Maj. Op. at 17-20. As that issue is not properly before us, we should instead affirm.

No party ever argued for constructions of "for identifying" and "for decoding" that require a device to perform a decoding step in the United States. That, of course, is because the parties recognized that claim 1 is an apparatus claim, yet the majority erroneously treats the claim as a method claim. A failure of the Commission to construe these phrases was not appealed. As we have stated before, litigants waive their right to present new claim construction disputes if they are not timely raised. See, e.g., Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006); Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1357 (Fed. Cir. 2003). Yet, in order to reach a conclusion that Appellants' "workaround" products indeed workaround the patented technology, the majority must find a place in the claim to read in a use requirement. This is incorrect as a matter of law.

Validity

The ITC found '074 not invalid as anticipated by the previous standard, A/55, or obvious when tacking 5,982,411 on to the A/55 standard. The CAFC agreed.

[N]one of the prior art references cited by Vizio, alone or in combination, discloses replication of the identifiers for all of the MPEG program map information required by the claims.

Infringement

Appellants do not challenge the Commission's finding of infringement by the legacy products under the claim construction we have adopted. We therefore affirm the finding of infringement of claims 1, 5, and 23 as to the legacy products.

However, we conclude that under our claim construction described above, the work-around products cannot infringe claims 1, 5, and 23, because regardless of which data fields they use from the VCT, it is conceded that they do not convert all of the channel map information from the VCT into useable format. Thus, the work-around products do not satisfy the "suitable for use," "for identifying," or "for decoding" limitations.

We affirm the Commission's finding of infringement as to the legacy products, reverse the Commission's determination of infringement as to the "work-around" products, and remand for an order consistent with this opinion.

Affirmed-in-part, reversed-in-part, and remanded.