Revised Claim Construction Sends Set-Top Box Dispute Back to ITC
September 16, 2004
Last Month at the Federal Circuit - October 2004
Judges: Linn (author), Clevenger, and Michel
In Gemstar-TV Guide International, Inc. v. International Trade Commission, No. 03-1052 (Fed. Cir. Sept. 16, 2004), the Federal Circuit reviewed the ITC’s claim construction and findings of noninfringement of Gemstar-TV Guide International, Inc.’s (“Gemstar”) U.S. Patent Nos. 5,479,268 (“the ‘268 patent”), 5,809,204 (“the ‘204 patent”), and 4,706,121 (“the ‘121 patent”), and the finding that the ‘121 patent was unenforceable for failure to join a coinventor.
The Court found error with the ITC’s construction of several claim limitations and with the ITC’s finding on inventorship. The patents-in-suit concern interactive-program guides in digital-cable television set-top boxes that enable viewer searching of scheduled television programs and preselection for recording and viewing. Specifically, the ‘268 and ‘204 patents are directed to a user interface for displaying grid-format televisionschedule listings. The ‘121 patent teaches how to control a television set with an electronic system that receives program-schedule information.
The Federal Circuit first reviewed the ITC’s construction and infringement analysis of a means-plus-function claim limitation in the ‘268 patent. The dispute centered on whether the function dictated by the ‘268 patent claim language, a “means . . . for displaying the television schedule,” required a video switcher to be included in the corresponding structure. The Federal Circuit affirmed the ITC’s conclusion that the video switcher was integral to performing the claimed function of the ‘268 patent. Because the accused infringers used an alternative approach instead of video switchers, the Court affirmed that there was no infringement of the ‘268 patent, either literally or under the DOE.
Concerning the ‘204 patent, the ITC had construed “visual identification” as an innovative cursor because Gemstar had disclaimed a conventional cursor in the written description. The Federal Circuit disagreed with that construction, noting that the ITC exclusively looked to the written description and failed to examine the ordinary meaning of the claim term. The Court further noted that although the written description states that the innovative cursor is required, the statement is made in the context of discussing the preferred embodiment, which does not limit the claims absent the use of words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.
Similarly, the ITC erred in construing the claim term “moving . . . between . . . cells” because it again relied on language in the written description of the preferred embodiment to import a limitation. The Federal Circuit brushed aside the ITC’s reliance on figures and statements in the abstract as being misplaced.
With regard to the ‘121 patent, the Federal Circuit concluded that the ITC had erred in construing all disputed claim terms. The first claim term at issue—“storage means in a data processor” was construed by the ITC in a piecemeal fashion. Using relevant evidence from the abstract and written description, the ITC concluded that a data processor is a CPU and that “storage means” refers to five buffers of the CPU. The Federal Circuit found this construction erroneous because (1) it was premised on the grounds that “storage means” did not have a clear meaning to one of ordinary skill in the art, and (2) such claim construction failed to consider whether the term “data processor” had an ordinary meaning to one skilled in the art. Referencing both terms in technical dictionaries, the Court defined the entire claim limitation as “a device capable of retaining data located within a data processing device or system.”
The Court also construed “information identifying” to include both the storage of actual data and separate references to the location of actual data; construed “combining” to encompass any logical combination of user selection criteria; and construed “said user selection criteria” as referring to any parameters chosen by the user to search for a program, not merely limited to theme, channel, and prime time, but excluding a specific program choice. Pointing to its prior claim construction of the term “combining,” which requires the combination of user selection criteria to occur prior to any program search, the Court reasoned that inclusion of a specific program choice among the criteria would be incorrect. Accordingly, the Court vacated the noninfringement order.
Finally, the Federal Circuit reversed the ITC’s ruling that the ‘121 patent is “unenforceable” for failure to join a coinventor. In holding that there was an unnamed coinventor in the ‘121 patent, the ITC considered the testimony of both the named inventor and the allegedly unnamed coinventor, their educational and employment backgrounds, and the content of two product-disclosure documents—one original product-disclosure document and a second version of that document. With regard to the testimony of both individuals, the ITC found the alleged coinventor’s testimony more credible and straightforward. The Court, however, stated that this alone did not rise to the level of clear and convincing evidence.
With regard to the two productdisclosure documents, the Federal Circuit noted that although each document contained an annotation listing the alleged coinventor by name, neither document explicitly stated what subject matter he had contributed.