Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`2017 WL 3447989
`United States District Court, S.D. New York.
`
`ROVI GUIDES, INC.; Rovi Technologies
`Corp.; and Veveo, Inc., Plaintiffs,
`v.
`COMCAST CORPORATION; Comcast Cable
`Communications, LLC; Comcast Cable
`Communications Management, LLC; Comcast of
`Houston, LLC; Comcast Business Communications,
`LLC; Comcast Holdings Corporation; and
`Comcast Shared Services, LLC, Defendants.
`
`16-CV-9278 (JPO)
`|
`Signed 08/10/2017
`
`West Headnotes (2)
`
`[1]
`
`[2]
`
`Patents
`In general; utility
`US Patent 7,895,218, US Patent 7,996,864,
`US Patent 8,122,034, US Patent 8,433,696,
`US Patent 8,713,595, US Patent 9,172,987.
`Construed.
`
`1 Cases that cite this headnote
`
`Patents
`In general; utility
`US Patent 6,725,281, US Patent 8,621,512, US
`Patent 8,755,666. Cited.
`
`Cases that cite this headnote
`
`Go to Markman Construed Terms
`
`Attorneys and Law Firms
`
`CA, Andrew Townsend Radsch, Jesse J. Jenner, Ropes
`& Gray, LLP, Gayle Rosenstein Klein, Lauren Lee
`Fornarotto, McKool Smith, New York, NY, Christopher
`Thor Bovenkamp, Mitchell Reed Sibley, Richard Alan
`Kamprath, Douglas Aaron Cawley, McKool Smith, P.C.,
`Dallas, TX, James R. Batchelder, Mark D. Rowland,
`Mark Daniel Rowland, Ropes & Gray, LLP, East
`Palo Alto, CA, Joshua Wright Budwin, Kristina Scurry
`Baehr, McKool Smith, PC, Austin, TX, Roderick George
`Dorman, Miller Law LLC, Chicago, IL, for Plaintiffs.
`
`Anthony I. Fenwick, Davis Polk & Wardwell, Alyse
`L. Katz, Andrew D. Yaphe, David J. Lisson, Gareth
`Edward Dewalt, Matthew B. Lehr, Matthew Burke Lehr,
`Micah G. Block, Philip Sheng, Philip T. Sheng, Davis
`Polk & Wardwell, Louis L. Campbell, Winston & Strawn
`LLP, Menlo Park, CA, Dana Meredith Seshens, Craig
`Matthew Reiser, Gary Tsun Kai Lo, Christopher Philip
`Lynch, Julien Bruce Du Vergier, Neal Alan Potischman,
`Vesna Cuk, Davis Polk & Wardwell LLP, Krishnan
`Padmanabhan, Michael Martin Murray, Winston &
`Strawn LLP, Frederick L. Whitmer, Kilpatrick Townsend
`& Stockton LLP, New York, NY, Deron R. Dacus, The
`Dacus Firm, PC, Tyler, TX, Jeremiah Egger, Winston
`& Strawn LLP, Washington, DC, Michael L. Brody,
`Schiff Hardin & Waite, Chicago, IL, Jennifer Lynne
`Graf, Kilpatrick Townsend & Stockton LLP, Dallas, TX,
`Joshua H. Lee, Michael J. Turton, Mitchell G. Stockwell,
`Kilpatrick Townsend & Stockton LLP, Atlanta, GA, for
`Defendants.
`
`CLAIM CONSTRUCTION OPINION AND ORDER
`
`J. PAUL OETKEN, United States District Judge
`
`*1 This is a patent infringement action brought by
`Plaintiff Rovi Guides, Inc. and its subsidiaries (together,
`“Rovi”) against the Comcast Defendants. 1 Currently
`pending before the Court are the parties' memoranda on
`claim construction. (See Dkt. No. 283; Dkt. No. 288;
`Dkt. No. 293.) The Court held a Markman hearing on
`July 7, 2017, to determine the proper construction of
`the disputed terms in this case. (See Minute Entry, July
`7, 2017.) Having considered the parties' arguments and
`briefing on claim construction, the Court construes the
`disputed terms as set forth below.
`
`Alan Peter Block, Lawrence Milton Hadley, Phillip Lee,
`Phillip J. Lee, McKool Smith Hennigan, PC, Los Angeles,
`
`I. Background
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`Comcast, Ex. 1115
`
`

`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`There are six patents at issue in this case. They are U.S.
`Patent Nos. 8,713,595 (“the '595 patent”), 9,172,987 (“the
`'987 patent”), 8,433,696 (“the '696 patent”), 7,895,218
`(“the '218 patent”), 8,122,034 (“the '034 patent”), and
`7,996,864 (“the '864 patent”). 2 The parties dispute a total
`of twenty-nine of the claim terms that appear in these six
`patents. (See Dkt. No. 306.) The patents cover a number
`of different fields, including interactive program guides
`(“IPGs”), remote control, and content searching.
`
`Rovi’s expert, Dr. Shamos, posits that a person of
`ordinary skill in the relevant art (“POSITA”) would have
`a bachelor’s degree in “electrical engineering, computer
`engineering, or computer science, and two to three years
`of experience relating to electronic content delivery, such
`as experience with design or technical analysis of cable
`or satellite television systems, set-top boxes, multimedia
`systems or electronic program guides, or any equivalent
`knowledge, training, and/or experience.” (Dkt. No. 283 at
`1; Dkt. No. 283-7 ¶ 5 (“Shamos Decl.”).)
`
`Comcast’s experts, Dr. Bederson and Dr. Kelly, also offer
`opinions regarding the level of skill in the art for the
`particular patents. For the '864 patent, Dr. Bederson states
`that the relevant field of art is “television user interfaces,”
`and that a POSITA “at the time of the alleged invention
`of the '864 patent would have been someone with at
`least a bachelor’s degree in computer science, electrical
`engineering, computer engineering, or a similar discipline,
`and at least two to three years of experience or familiarity
`with electronic program guides, television video signal
`processing, graphical user interfaces, and associated
`software.” (Dkt. No. 289 ¶ 14–15 (“Bederson Decl.”).)
`For the '218 and '034 patents, Dr. Kelly contends that the
`relevant field of art is “data search techniques,” and that
`a POSITA “at the time of the claimed inventions would
`have a minimum of: (i) a bachelor’s degree in computer
`science, computer engineering, applied mathematics, or a
`related field of study; and (ii) two or more years of industry
`experience relating to designing and implementing systems
`that utilize data search techniques. Additional graduate
`experience could substitute for professional experience,
`or significant experience in the field could substitute
`for formal education.” (Dkt. No. 290 ¶ 13–14 (“Kelly
`Decl.”).)
`
`*2 The Court does not perceive significant differences
`between these formulations and the parties did not
`dispute this matter in their briefs or at oral argument.
`
`Each of the parties' experts believes that a person of
`skill in the art would have a bachelor’s degree and
`two or more years of industry experience. The Court
`therefore concludes that a POSITA for the six patents-
`in-suit would have a bachelor’s degree in electrical
`engineering, computer engineering, computer science,
`or applied mathematics as well as two or more years
`of relevant industry experience, including in electronic
`content delivery, electronic program guides, television
`video signal processing, graphical user interfaces, cable
`or satellite television systems, set-top boxes, multimedia
`systems, or data search techniques.
`
`II. Legal Standard
`This Court’s claim construction analysis is substantially
`guided by the Federal Circuit’s decisions in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc),
`and Markman v. Westview Instruments, Inc., 52 F.3d 967
`(Fed. Cir. 1995) (en banc). Claim construction is an issue
`of law properly decided by the Court. Markman, 52 F.3d
`at 970–71. “It is a ‘bedrock principle’ of patent law that
`‘the claims of a patent define the invention to which the
`patentee is entitled the right to exclude.’ ” Phillips, 415
`F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari
`Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`2004)). “[I]n all aspects of claim construction, ‘the name
`of the game is the claim.’ ” Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled on other
`grounds by Williamson v. Citrix Online, LLC, 792 F.3d
`1339 (Fed. Cir. 2015) (en banc) (quoting In re Hiniker Co.,
`150 F.3d 1362, 1369 (Fed. Cir. 1998)).
`
`To determine the meaning of the claims, courts begin by
`considering the intrinsic evidence, the primary source for
`determining claim meaning. Phillips, 415 F.3d at 1313;
`C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861
`(Fed. Cir. 2004) (collecting cases). The intrinsic evidence
`includes the claims themselves, the specification, and the
`prosecution history. See Phillips, 415 F.3d at 1313–14;
`C.R. Bard, Inc., 388 F.3d at 861. The general rule—subject
`to certain specific exceptions discussed below—is that
`each claim term is construed according to its ordinary and
`accustomed meaning as understood by one of ordinary
`skill in the art at the time of the invention in the context
`of the patent and intrinsic evidence. Phillips, 415 F.3d at
`1312–13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361,
`1368 (Fed. Cir. 2003). “There is a heavy presumption that
`claim terms are to be given their ordinary and customary
`meaning.” Massachusetts Inst. of Tech. v. Shire Pharm.,
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
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`

`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`Inc., 839 F.3d 1111, 1118 (Fed. Cir. 2016) (quoting Aventis
`Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373
`(Fed. Cir. 2013) (internal quotation marks omitted)).
`
`There are “only two exceptions to [the] general rule”
`that claim terms are construed according to their plain
`and ordinary meaning: “1) when a patentee sets out a
`definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of the claim term
`either in the specification or during prosecution.” 3 Golden
`Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed.
`Cir. 2014) (quoting Thorner v. Sony Computer Entm't
`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see
`also GE Lighting Solutions, LLC v. AgiLight, Inc., 750
`F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and
`prosecution history only compel departure from the plain
`meaning in two instances: lexicography and disavowal.”).
`The standards for finding lexicography or disavowal are
`“exacting.” GE Lighting Solutions, 750 F.3d at 1309.
`
`*3 As to lexicography, it is well settled that “patentees
`may choose their own descriptive terms as long as those
`terms adequately divulge a reasonably clear meaning to
`one of skill in the art.” Hockerson-Halberstadt, Inc. v.
`Converse Inc., 183 F.3d 1369, 1375 (Fed. Cir. 1999). To
`act as his or her own lexicographer, the patentee must
`“clearly set forth a definition of the disputed claim term,”
`and “clearly express an intent to define the term.” GE
`Lighting Solutions, 750 F.3d at 1309 (quoting SciMed Life
`Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
`1337, 1341 (Fed. Cir. 2001)). Departing from the ordinary
`meaning of the claim terms requires the patentee to set
`forth his or her lexicography “with reasonable clarity,
`deliberateness, and precision.” Renishaw PLC v. Marposs
`Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998);
`see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994) (“Although an inventor is indeed free to define the
`specific terms used to describe his or her invention, this
`must be done with reasonable clarity, deliberateness, and
`precision.”). “Where an inventor chooses to be his own
`lexicographer and to give terms uncommon meanings, he
`must set out his uncommon definition in some manner
`within the patent disclosure so as to give one of ordinary
`skill in the art notice of the change.” Id. at 1480 (quoting
`Intellicall, Inc., v. Phonometrics, Inc., 952 F.2d 1384, 1387–
`88 (Fed. Cir. 1992) (internal quotation marks omitted)).
`“Absent implied or explicit lexicography or disavowal,”
`the plain meaning of the claim terms governs. Trustees of
`
`Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364
`n.2 (Fed. Cir. 2016).
`
`The Federal Circuit, in Phillips, rejected any claim
`construction approach that sacrificed the intrinsic record
`—including the specification—in favor of extrinsic
`evidence, such as dictionary definitions or expert
`testimony. The en banc court disavowed the suggestion
`made by Texas Digital Systems, Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002), that a court should
`discern the ordinary meaning of the claim terms—
`through dictionaries or otherwise—before turning to the
`specification. Phillips, 415 F.3d at 1319–24. Phillips does
`not, however, preclude all uses of dictionaries in claim
`construction proceedings. Instead, the court assigned
`dictionaries a role subordinate to that of the intrinsic
`record. The Phillips court noted that, “[i]n some cases,
`the ordinary meaning of claim language as understood
`by a person of skill in the art may be readily apparent
`even to lay judges, and claim construction in such cases
`involves little more than the application of the widely
`accepted meaning of commonly understood words. In
`such circumstances, general purpose dictionaries may be
`helpful.” Id. at 1314 (citation omitted).
`
`The Federal Circuit did not impose any particular
`sequence of steps for a district court to follow when it
`considers disputed claim language. Id. at 1323–24. Rather,
`Phillips held that a court must attach the appropriate
`weight to the intrinsic sources offered in support of a
`proposed claim construction, bearing in mind the general
`rule that the claims measure the scope of the patent grant.
`Id. at 1324.
`
`III. Discussion
`
`A. The '595 Patent Claim Terms
`The '595 Patent, titled “Interactive Program Guide
`Systems and Processes,” “relates to television program
`guide systems and particularly to interactive television
`program guide systems and related processes that can
`automatically tune a television, or program a video
`cassette recorder (VCR), based on program selections
`made from program schedule information displayed on a
`television or other suitable video monitor.” ('595 patent
`col. 1 ll. 18–23.) Simply put, by way of this invention, one
`can use an IPG to control tuners, allowing a user to record
`multiple programs even if the programs are scheduled at
`the same time.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`1. “Tuner”
`
`Term
`
`
`Claim(s)
`
`
`tuner
`
`
`'595 Patent Claims 1, 9,
`13, 14, 17, 21, & 22
`
`
`Rovi's Proposed
`Construction
`
`no construction is
`necessary, plain and
`ordinary meaning
`
`
`Comcast's Proposed
`Construction
`
`an electronic circuit used
`to selectively receive
`RF signals in a desired
`frequency channel
`
`a particular signal out of a set of incoming signals. (Dkt.
`No. 288 at 5.)
`
`*4 Rovi argues that no construction is necessary for
`this term. In the alternative, Rovi urges the Court
`to adopt Comcast’s proposed construction for “tuner”
`in U.S. Patent No. 8,621,512 (“the '512 patent”), for
`which it argued at the United States International Trade
`Commission: “an electronic circuit used to selectively
`receive RF signals in a desired frequency channel and
`convert them into audio and video signals.” (Dkt. No. 283
`at 3–5.)
`
`Comcast argues that it is improper to import limitations
`from a different patent—the '512 patent—into the term
`“tuner” as used in the '595 patent. (Dkt. No. 288 at 5–
`6.) The '512 patent describes the “[t]uner outputs” as
`“connected to audio/video output.” ('512 patent col. 7
`ll. 33–35.) Rovi’s proposal to add a requirement that
`the tuner “convert [RF signals] into audio and video
`signals” does not find similar support in the '595 patent,
`which describes “tuning circuitry” that “processes the
`incoming signals in a conventional manner to extract the
`program schedule information, operational parameters,
`and software modules.” ('595 patent col. 7 ll. 20–23.)
`
`video recorder
`
`
`'595 Patent Claims 1,
`9, 13, 14, 17, 21, & 22
`
`
`Comcast’s construction is consistent with both Rovi’s own
`expert’s understanding and the specification’s description
`of the tuner. Rovi’s expert, Dr. Shamos, stated that
`“[a] tuner is an electronic circuit that enables a device
`to selectively receive a signal out of a selection of a
`plurality of signals.” (Shamos Decl. ¶ 7.) This comports
`with Comcast’s proposed construction. Moreover, the
`specification of the '595 patent repeatedly describes the
`user making selections that “caus[e] the tuning circuitry ...
`to tune to the channel.” ('595 patent col. 22 ll. 46–47; see
`also id. col. 4 ll. 37–41; col. 7 ll. 43–46; col. 19 ll. 56–60.)
`
`The term “tuner” is not overly technical, but some
`explanation of the term may be helpful for the fact-
`finder. Comcast’s proposed construction is consistent
`with the terms plain and ordinary meaning, describes
`the function of a tuner as used in the specification,
`and is endorsed by Rovi’s expert. As such, the Court
`adopts Comcast’s proposed construction for “tuner”: “an
`electronic circuit used to selectively receive RF signals in
`a desired frequency channel.”
`
`2. “Video Recorder”
`
`Comcast's Proposed
`Construction
`
`video cassette recorder
`
`
`argues that this is merely a preferred embodiment of the
`invention, which should not limit the claims. (Dkt. No.
`293 at 1.)
`
`In this case, Comcast is concerned that if the term is given
`no construction, Rovi will argue that modern technology
`in the accused products falls within the scope of the '595
`patent. In particular, some of the accused products utilize
`“full-band capture” technology, as opposed to capturing
`Term
`Claim(s)
`Rovi's Proposed
`Construction
`
`
`
`no construction is
`necessary, plain and
`ordinary meaning
`
`Rovi argues that no construction is necessary for the term
`“video recorder.” (Dkt. No. 283 at 15–16.) While the
`specification of the '595 patent discusses video recorders
`only in the context of “video cassette recorders,” Rovi
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`Comcast contends that Rovi’s “plain and ordinary
`meaning” is an attempt to expand the scope of the claims
`to encompass modern technology not contemplated by the
`'595 patent, including “digital video recording.” (Dkt. No.
`288 at 4.)
`
`*5 Comcast also notes that the term “video recorder”
`does not appear anywhere in the specification of the '595
`patent. (Id. at 3.) In fact, the only device disclosed in
`the patent that is capable of recording video is a “video
`cassette recorder.” (Id.)
`
`In support of its limiting construction, Comcast relies
`on Regents of University of Minnesota v. AGA Medical
`Corp., where the Federal Circuit held that if “every
`single embodiment disclosed in the ... patent’s drawings
`and its written description is made up of” a particular
`embodiment—here a VCR—and the patent describes the
`“invention” as having that embodiment, “this description
`limits the scope of the invention.” 717 F.3d 929, 936 (Fed.
`Cir. 2013). In that case, however, the Federal Circuit
`also held that “[t]he claim language fully support[ed]” the
`construction as described in the specification. Id. This is
`not the case here, where the claim term “video recorder”—
`an unambiguous term—does not support the limiting
`construction urged by Comcast.
`Term
`Claim(s)
`
`
`
`interactive television
`program guide
`
`
`'595 Patent Claims 1,
`9–17, 21, 23, & 24
`
`
`'595 Patent Claims 9
`
`
`user equipment
`having an interactive
`television program
`guide implemented
`thereon
`
`There are two systems that are currently accused of
`infringement: the older, “Legacy” system and the newer,
`“X1” system. (Dkt. No. 288 at 6.) The Legacy system runs
`
`Comcast has not met the high burden of demonstrating
`lexicography or estoppel to otherwise limit the scope of
`this term. The Federal Circuit “has expressly rejected
`the contention that if a patent describes only a single
`embodiment, the claims of the patent must be construed
`as being limited to that embodiment.” Liebel–Flarsheim
`Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)
`(collecting cases). Indeed, “[e]ven when the specification
`describes only a single embodiment, the claims of the
`patent will not be read restrictively unless the patentee
`has demonstrated a clear intention to limit the claim
`scope using ‘words or expressions of manifest exclusion or
`restriction.’ ” Id. (quoting Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)).
`
`The '595 patent does not exclude or restrict the otherwise
`easily understood term “video recorder.” Accordingly, the
`Court affords this term its plain and ordinary meaning.
`
`3. “Interactive Television Program Guide”
`and “User Equipment Having an Interactive
`Program Guide Implemented Thereon”
`
`Rovi's Proposed
`Construction
`
`
`guide that allows
`user navigation
`through and
`interaction with
`television program
`listings and causes
`display of program
`information on user
`television equipment
`based on user
`commands
`
`
`no construction is
`necessary, plain and
`ordinary meaning
`
`
`Comcast's
`Proposed
`Construction
`
`an application
`that causes the
`display of a set of
`screen displays, at
`least one of them
`presenting schedule
`information for
`television programs,
`and at least one
`screen display being
`responsive to user
`input.
`
`equipment at a user
`site that stores and
`runs the interactive
`television program
`guide
`
`its interactive program guide directly on the set-top box
`while the X1 system utilizes a distributed cloud server to
`store the guide software. (Id.) Comcast argues that Rovi
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`is attempting to broaden the meaning of the claim terms
`to capture the X1 system.
`
`*6 For the “interactive television program guide” term,
`Comcast indicates in its brief to this Court that it
`disputes only whether the term refers to a “guide” or “an
`application,” and otherwise agrees to the remainder of
`Rovi’s proposed construction. (Dkt. No. 288 at 7 n.5.)
`
`Rovi disputes Comcast’s proposed construction to the
`extent that it (1) limits the guide to “an application,” as
`opposed to multiple applications; 4 and (2) limits the guide
`to run on “equipment at a user site.” (Dkt. No. 293 at 2.)
`
`Comcast’s proposed construction, however, is consistent
`with the disclosures of the '595 patent. Throughout,
`the '595 patent treats the term “interactive television
`program guide” as an application that is implemented
`on a set-top box, which is located at the user site. For
`example, the Abstract of the '595 patent explains that “the
`interactive program guide is preferably implemented using
`a microprocessor-controlled set-top box that is coupled
`to the viewer’s television set.” ('595 patent at Abstract.)
`Figure 1 of the patent, depicted below, goes on to describe
`“a system 50 which provides the interactive program guide
`of the present invention.” (Id. col. 5 ll. 64–65.)
`
`That system includes “a data center 52 and a headend
`telecasting center 54,” which transmits a “set of program
`schedule information ... on a cable network 68” that is
`received by “[a] plurality of set-top boxes 70 coupled to
`the cable network 68 [to] receive the television program
`signals and the program schedule information.” (Id. col.
`6 ll. 5–6, 46–55.) The '595 patent refers to “a set-top box
`suitable for implementing the interactive program guide
`of the present invention.” (Id. col. 5 ll. 46–48.)
`
`In this way, the '595 patent contemplates a distributed
`system that provides the “interactive television program
`guide” to a set-top box, which then
`implements
`the “interactive television program guide.” This is
`consistent with Comcast’s description of the “interactive
`television program guide” as “an application” and with
`Comcast’s description of “user equipment” as referring to
`“equipment at a user site,” (i.e., on the set-top box coupled
`to the viewer’s television set). The '595 patent does not
`disclose an “interactive television program guide” that is
`stored or run at a location other than the user site, such as
`on remote servers or elsewhere.
`
`Rovi’s expert opines that the specification of the '595
`patent “make[s] it clear that the interactive television
`program guide ... can be distributed applications that run
`on, or are implemented on, different items of equipment
`that can be geographically distant.” (Shamos Decl. ¶
`15.) But neither Rovi nor Dr. Shamos specifically points
`to where in the '595 patent there is any support for
`finding that the “interactive television program guide” is
`a distributed application run on geographically distant
`units. Instead, Dr. Shamos cites to a number of passages
`in the specification of the '595 patent that generally
`refer to the interactive television program guide, but do
`not otherwise support his position that the application
`runs on multiple, geographically distant units. (See id.)
`Moreover, Dr. Shamos himself refers to the “guide” as
`an “application[ ],” which supports Comcast’s proposed
`construction of the “guide” as “an application.” (Id.)
`
`*7 In further support of Comcast’s construction, Claim
`9 describes the “user equipment” as “comprising a display
`device, a first tuner, a second tuner, a memory, a set-top
`box, and a video recorder.” ('595 patent col. 31 ll. 51–53.)
`All of these items are present at the user site. (See id. col.
`7 l. 15–col. 8 l. 46; id. at Figure 2; id. col. 4 ll. 14–17 (“The
`interactive program guide is implemented preferably using
`a microprocessor-controlled set-top box that is coupled to
`the viewer’s television set.”).)
`
`Comcast’s proposed constructions are consistent with the
`specification and will clarify the nature of the “interactive
`television program guide” contemplated by the patent
`to the fact finder. See United Video Properties, Inc. v.
`Amazon.com, Inc., No. 11 Civ. 003, 2012 WL 2370318, at
`*13 (D. Del. June 22, 2012), aff'd, 561 Fed.Appx. 914 (Fed.
`Cir. 2014) (construing “interactive program guide” as
`“an application that produces interactive display screens
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`

`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`that include television program schedules and channel
`information”).
`
`The Court, therefore, construes “interactive television
`program guide” to mean “an application that allows
`user navigation through and interaction with television
`program
`listings and causes display of program
`information on user television equipment based on user
`Term
`Claim(s)
`
`
`
`'595 Patent Claims 1,
`9, & 17
`
`
`receiv[ing] ...
`program schedule
`information
`
`Rovi argues that it is improper to import the term “in
`the set-top box” into the claim, which (1) alters its plain
`meaning and (2) creates antecedent basis issues in reading
`the claim term if implemented. (Dkt. No. 293 at 3.)
`
`Comcast argues that the claim term “receiv[ing] ...
`program schedule information” should be construed as
`limited to receipt of such information only “in the set-top
`box,” as opposed to in a remote server or other remote
`device. (See Dkt. No. 288 at 8.)
`
`The specification of the '595 patent explains that “[a]
`plurality of set-top boxes 70 coupled to the cable network
`68 receive the television program signals and the program
`schedule information.” ('595 patent col. 6 ll. 53–55;
`see also id. col. 4 ll. 17–19 (“The set-top box receives
`program schedule information and software from a
`headend telecasting center.”).) And Comcast notes that
`the examiner relied on the limitation that the “receiver
`receives” certain information to overcome a particular
`prior art reference. (Dkt. No. 288 at 8 (citing Dkt. No.
`291-12 at 3.))
`Term
`
`
`Claim(s)
`
`
`markup
`language
`
`
`'987 Patent Claims 1,
`8, 9, & 16
`
`
`commands.” The Court construes “user equipment having
`an interactive television program guide implemented
`thereon” as “equipment at a user site that stores and runs
`the interactive television program guide.”
`
`4. “Receiv[ing] ... Program Schedule Information”
`
`Rovi's Proposed
`Construction
`
`
`no construction is
`necessary, plain and
`ordinary meaning
`
`
`Comcast's
`Proposed
`Construction
`
`receiv[ing] program
`schedule information
`in the set-top box
`
`
`Neither Comcast’s citation to the specification to show
`lexicography nor its reference to the prosecution history
`to show disavowal meets the high standard required for
`the Court to deviate from the plain and ordinary meaning
`for this term by adding the proposed limitation. See
`Thorner, 669 F.3d at 1365–66 (describing the standards for
`lexicography and disavowal as “exacting”). As such, the
`Court adopts the plain and ordinary meaning for the term
`“receiv[ing] ... program schedule information.”
`
`B. The '987 Patent Claim Terms
`The '987 patent, titled “Methods and Systems for
`Updating Functionality of a Set-Top Box Using Markup
`Language,” covers an
`invention
`in which markup
`language documents are used to update and modify the
`functionality of a program guide.
`
`1. “Markup Language”
`
`Comcast's Proposed
`Construction
`
`system for marking or
`tagging a document
`so that the document
`arranges user display
`screen layout and
`styling and indicates
`functionality
`
`markup language used may be any suitable markup
`language or system of marking up, or tagging, a document
`
`Rovi's Proposed
`Construction
`
`computer language for
`specifying the format
`of a file for printing or
`display
`
`
`*8 Comcast’s proposed construction
`is from the
`specification of the '987 patent, which states that “[t]he
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`

`

`Rovi Guides, Inc. v. Comcast Corporation, Not Reported in Fed. Supp. (2017)
`2017 WL 3447989, 2017 Markman 3447989
`
`(e.g., text file) so that the document indicates user
`display screen layout and styling and program guide
`functionality.” ('987 patent col. 2 ll. 30–34 (emphasis
`added).) Comcast describes this as “lexicography.” (Dkt.
`No. 288 at 19–20.) Comcast disagrees with Rovi’s
`proposed construction because it does not include the
`concept of “tagging” or “marking up.” (Id. at 20–21.)
`
`Rovi argues that the addition of the word “system” is
`inappropriate since (1) “system” has a special definition in
`patent law—indicating an apparatus claim (Dkt. No. 293
`at 3); and (2) a “markup language” is a language, not a
`system (Dkt. No. 283 at 14).
`
`Indeed, the passage that Comcast relies upon describes
`the markup language as a “markup language or system
`of marking up.” ('987 patent col. 2 ll. 30–31 (emphasis
`added).) Even assuming that this passage constitutes
`lexicography, Comcast’s definition impermissibly reads
`out the “markup language” aspect in favor of the “system
`of marking” aspect. But this passage does not constitute
`lexicography because Comcast has failed to demonstrate
`Term
`Claim(s)
`
`
`
`markup language
`document
`
`
`'987 Patent Claims 1,
`8, 9, & 16
`
`
`Dynamic Hyper Text
`Markup Language
`document
`
`
`'987 Patent Claims 8
`& 16
`
`
`The crux of the dispute over this term is Comcast’s
`inclusion of the “self-contained” limitation in its proposed
`construction. Rovi relies upon a dictionary definition of
`“Dynamic Hyper Text Markup Language”: “Of all the
`Web-related technologies, DHTML is perhaps the most
`poorly named. A reference to ‘the dynamic hypertext
`markup language’ leads one to think of a self-contained
`language, perhaps a big brother of HTML, used to enable
`dynamic interactive effects. But DHTML is not a self-
`contained language.” (Dkt. No. 283-1 at 4.)
`
`*9 Comcast, in turn, relies on a dictionary definition of
`“document”: “Any self-contained piece of work created
`with an application program and, if saved on disk, given a
`
`that the patentee, “with reasonable clarity, deliberateness,
`and precision,” departed from the ordinary meaning of the
`claim term. Paulsen, 30 F.3d at 1480.
`
`Rovi’s expert relies on the 2002 edition of the Microsoft
`Computer Dictionary to argue that the “usual definition”
`of “markup language” is a “set of codes in a text file
`that instructs a computer how to format the file on a
`printer or video display or how to index and link its
`contents.” (Shamos Decl. ¶ 13.) This is more consistent
`with Rovi’s proposed construction than Comcast’s.
`
`Rovi’s definition is consistent with the plain meaning,
`the specification, and the dictionary definition relied
`upon by its own expert. As such, the Court construes
`“markup language” as “computer language for specifying
`the format of a file for printing or display.”
`
`2. “Markup Language Document” and “Dynamic Hyper
`Text Markup Language [“DHTML”] Document”
`
`Rovi's Proposed
`Construction
`
`
`Comcast's
`Proposed
`Construction
`
`self-contained file
`tagged using markup
`language code
`
`self-contained
`file tagged using
`Dynamic Hyper Text
`Markup Language
`code
`
`unique filename by which it can be retrieved.” (Dkt. No.
`291-21 at 4.)
`
`No construction
`necessary, plain and
`ordinary meaning
`
`computer file
`containing Dynamic
`Hypertext Markup
`Language
`
`
`The incorporation of the “self-contained” limitation from
`Comcast’s definition of “document” into the construction
`of “Dynamic Hyper Text Markup Language document”
`would create confusion. The language in question is not
`self-contained. Referring to it as suc