ITC Infringement Finding Upheld as to Imported Digital Televisions, but Not “Work−Around” Digital Televisions
May 26, 2010
Last Month at the Federal Circuit - June 2010
Judges: Mayer, Clevenger (dissenting−in−part), Dyk (author)
[Appealed from: ITC]
In Vizio, Inc. v. International Trade Commission, No. 09−1386 (Fed. Cir. May 26, 2010), the Federal Circuit affirmed the ITC’s construction of the term “channel map information” as well as its determination that U.S. Patent No. 6,115,074 (“the ’074 patent”) is not invalid as anticipated or obvious. The Court also affirmed the ITC’s determination that the ’074 patent is infringed by digital televisions being imported at the time that Funai Electric Company, Ltd. of Japan and Funai Corporation of New Jersey (collectively “Funai”) filed its complaint, but reversed the ITC’s determination that “work−around products” infringe the patent.
Funai owns the ’074 patent, which is directed to decoding a digital television user’s selected program in a digital transmission. The Moving Picture Experts Group (“MPEG”) developed a standard, called
MPEG−2, which governs the “packetization of digital data for transmission and subsequent decoding.” Slip op. at 4. The MPEG−2 standard defines a map, called Program Map Table (“PMT”), that instructs the decoder “which packets need to be extracted for a given program.” Id. at 5. This PMT includes several different data fields, including program number, PCR_PID, elementary_PID, and stream_type identifier. Using the MPEG−2 standard as the basis, the American Television System Committee (“ATSC”) published A/55 and A/56 standards that added “additional layers of information to facilitate decoding.” Id.
The inventors of the ’074 patent developed a system that identified a “channel map” that replicated from the MPEG PMT “all of the information necessary to identify and acquire a program being transmitted on a selected subchannel.” Id. at 6. The asserted claims of the ’074 patent are directed to the replication of this channel map information.
Funai sued Vizio, Inc. (“Vizio”), alleging violation of 19 U.S.C. § 1337 through importation or sale of certain digital televisions that infringe the ’074 patent. After claim construction, the ALJ concluded that the asserted claims require only the identification and assembly of channel map information, not actual use of the channel map once created. The ALJ also held that “work−around products” that ‘“skip[ped] over’ parts of the [channel map] and left parts of the [channel map] in transmission (encoded) format” nonetheless infringed the ’074 patent. Id. at 8 (first alteration in original). The ITC in large part adopted the ALJ’s findings, ruling in favor of Funai, and issued a limited exclusion order and a cease and desist order. Vizio appealed.
On appeal, the Federal Circuit first reviewed the construction of the term “channel map information.” The ITC had construed this term in reference to the MPEG−2 standard, finding that the channel map must replicate four data fields—program number, PCR_PID, elementary_PID, and stream_type data. Vizio, however, argued that the ’074 patent does not expressly limit itself to the MPEG−2 standard.
The Federal Circuit found that the specification’s reference to the “MPEG compatible program map information” must refer to the MPEG−2 standard and that only the MPEG−2 standard is specifically referenced throughout the specification. Expert testimony also suggested that one of ordinary skill in the art would understand the ’074 patent to refer to the MPEG−2 standard. Accordingly, the Federal Circuit agreed with the ITC that the “channel map information” of the ’074 patent includes all four data fields.
The Federal Circuit next considered whether the asserted claims preclude the use of information other than channel map information—particularly the MPEG PMT, which was used for decoding in the prior art. Vizio argued that the ’074 patent excluded use of the MPEG PMT because Funai disavowed any use of the PMT during prosecution. The Court again agreed with the ITC in finding no disavowal in the ’074 patent or its prosecution history. During prosecution, the applicants had argued that the invention was not dependent on the MPEG PMT. That language, according to the Court, did not disclaim “any and all use of the PMT,” and the Court found “no basis for concluding that the patentees intended a sweeping disclaimer of any and all use of the MPEG PMT.” Id. at 16−17.
The Federal Circuit next considered whether “the claims require[d] that the device and method be capable of utilizing the channel map information.” Id. at 17. The ITC concluded that mere identification, assembly, and storage of the channel map information was sufficient to satisfy the requirements of the claims. Vizio argued, and the Federal Circuit agreed, that the channel map information must also be capable of being used to identify the desired program.
The Court found that the preamble of claim 1 addressed “an apparatus for decoding” and the preamble of claim 23 addressed a “method for decoding” MPEG−compatible, packetized program information. Id. at 19. The Court reminded that, in general, a preamble limits the invention if it recites essential structure and does not limit if it only states a purpose or intended use for the invention. Accordingly, the Court held that the “for decoding” language used in claims 1 and 23 is properly construed as a claim limitation because ‘“decoding’ is the essence” of the claimed invention. Id. at 20. Additionally, the Court noted that interpreting the claims as requiring only receipt and storage of the channel map information, without the ability to decode using that information, would broaden the scope of the claims, and such interpretation would essentially include all receivers capable of receiving broadcasts. Thus, the Court concluded that the claimed method and apparatus “must actually be capable of using the channel map information to decode the datastream of MPEG program information.” Id. at 21.
Next, the Federal Circuit addressed the validity of the ’074 patent. The Court found that the A/55 standard does not anticipate the ’074 patent because the A/55 standard does not disclose two data fields—program number and PCR_PID—necessary for channel map information as claimed in the invention. The Court also found the ’074 patent nonobvious because the cited prior art references did not teach “any replication of MPEG PMT data.” Id. at 24. Specifically, the Court found that “none of the prior art references cited by Vizio, alone or in combination, disclose[d] replication of the identifiers for all of the MPEG program map information required by the claims. Id.
Finally, the Court addressed infringement. While upholding the infringement finding with regard to products being imported at the time Funai filed its complaint, the Court disagreed with the ITC that the work−around products infringed the ’074 patent. The Court found that the work−around products “do not convert all of the channel map information from the VCT into useable format,” thus not satisfying the “suitable for use,” “for identifying,” or “for decoding” limitations. Id. at 25.
Judge Clevenger dissented on the issue of infringement by the work−around products. According to Judge Clevenger, the third claim construction issue considered by the Court—“whether the claims require that the device and method be capable of utilizing the channel map information”—was not appealed and was not properly before the Court. Clevenger Dissent at 2. Because Judge Clevenger did not find a “use requirement” in the claim to support the majority’s conclusion that the work−around products “indeed workaround the patented technology,” he agreed with the ITC’s determination that the work−around products infringed the ’074 patent. Id. at 4.
Summary authored by Mukta Jhalani, Esq.