throbber
Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 1 of 111 PageID #:
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF HAWAII
`______________________________
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`Broadband iTV, Inc.,
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`Plaintiff,
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`vs.
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`) Civ. Nos. 14-00169 ACK-RLP,
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`) 15-00131 ACK-RLP
`Hawaiian Telcom, Inc.,
`) (consolidated)
`_____________________________ )
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`) CLAIM CONSTRUCTION ORDER
`Broadband iTV, Inc.,
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`Plaintiff,
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`vs.
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`Oceanic Time Warner
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`Cable, LLC, and Time Warner )
`Cable, Inc.,
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`Defendants.
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`_____________________________ )
`The Court construes the disputed terms of U.S. Patent
`Number 7,631,336 B2 (the “‘336 patent”) according to the
`findings set forth below.
`FACTUAL AND PROCEDURAL HISTORY
`On December 8, 2009, the United States Patent and
`Trademark Office (“USPTO”) issued the ‘336 Patent, entitled
`“Method for Converting, Navigating and Displaying Video
`Content Uploaded from the Internet to a Digital TV Video-
`on-Demand Platform.” Am. Compl. ¶ 19, Ex. A, ECF Nos. 100,
`100-1. The patent was issued in the name of Milton Diaz
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`Perez (“Diaz Perez”)1 and based on United States Patent
`Application No. 11/685,188, which was assigned to Broadband
`iTV, Inc. (“BBiTV” or “Plaintiff”). Id. ¶ 18.
`The ‘336 patent discloses and claims various novel
`features relating to the delivery of video-on-demand
`(“VOD”)2 content to a VOD server. Id. ¶ 21. According to
`the patent itself, the invention is intended to facilitate
`“the provision of video content to viewers through digital
`TV infrastructure.” ‘336 Patent at Col. 1, ln. 17-
`18.3 Specifically, it relates to a method for “converting,
`navigating and displaying video content uploaded from the
`Internet on a digital TV video-on-demand platform.” Id. at
`Col. 1, ln. 19-21. The patent includes eleven claims, out
`of which Claim 1 is independent and Claims 2-10 are
`dependent. See id. at Col. 21-22.
`On April 9, 2014, BBiTV filed a Complaint against
`Defendants Oceanic Time Warner Cable, LLC, Time Warner
`1Diaz Perez serves as Chief Technology Officer for
`Broadband iTV, Inc. See Declaration of Milton Diaz Perez
`¶ 1, ECF No. 77-1.
`2“Video-on-demand” is defined in the Amended Complaint
`as “delivery of [] video content predicated upon a specific
`request by the user or customer.” Am. Compl. ¶ 15, ECF No.
`100.
`
`3Copies of the ‘336 patent appear in the record as Plf.
`Br. Ex. A, ECF No. 174-1 and Gerovac Decl. Ex. 2, ECF No.
`175-7.
`
`2
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`Cable, Inc., Time Warner Entertainment Company, LP4
`(collectively, “TWC”), and Hawaiian Telcom, Inc. (“HTI”)
`(collectively, “Defendants”). Compl., ECF No. 1. The
`Complaint was amended on December 5, 2014. Am. Compl., ECF
`No. 100. The Amended Complaint accuses Defendants of
`infringing the ‘336 patent by “making, using, offering for
`sale and selling the ‘336 patent’s claimed method for
`converting, navigating and displaying video content in
`connection with their providing, selling and offering for
`sale digital television services.” Id. ¶ 22. Defendants
`deny that they infringe the ‘336 patent. Def. HTI’s Answer
`and Affirmative Defenses to Plf. BBiTV’s Am. Compl. ¶ 22,
`ECF No. 104; Def. TWC’s Answer to Am. Compl. ¶ 22, ECF No.
`106.
`Pursuant to the parties’ stipulation, the Court
`ordered the severance of the cases against TWC and HTI on
`April 16, 2015. The severed cases were consolidated “for
`all pre-trial purposes, including claim construction.”
`Stipulation and Order at 2, ECF No. 164.
`The parties requested a claim construction hearing
`pursuant to Markman v. Westview Instruments, Inc., 517 U.S.
`370, 372 (1996). The parties filed a Joint Claim
`
`4Time Warner Entertainment Company, LP has been
`dismissed from this action. ECF No. 94.
`3
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`Construction and Prehearing Statement on March 20,
`2015. ECF No. 140. On April 8, 2015, the parties filed an
`Amended Joint Claim Construction and Prehearing
`Statement. ECF No. 153. On the same day, the Court
`directed the parties to meet and confer in order to agree
`to a list of ten terms, without subparts, for claim
`construction in the instant case. Minute Order at 2, ECF
`No. 155.
`An unsigned Second Amended Joint Claim Construction
`and Prehearing Statement was filed as an attachment to
`counsel’s correspondence to U.S. Magistrate Judge Richard
`L. Puglisi on April 17, 2015. ECF No. 170. A signed
`Second Amended Joint Claim Construction and Prehearing
`Statement was filed on May 28, 2015. ECF No. 232.
`On April 22, 2015, Plaintiff filed a Memorandum in
`Support of Its Proposed Claim Construction (“Plf. Br.”),
`ECF No. 174. Defendants filed their Claim Construction
`Brief (“Def. Br.”), ECF No. 175, on the same day. On May
`18, 2015, Plaintiff filed its Memorandum in Response to
`Defendants’ Claim Construction Brief (“Plf. Resp.”), ECF
`No. 210. Defendants filed a Responsive Claim Construction
`Brief (“Def. Resp.”), ECF No. 211, on the same day.
`
`4
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`A technology tutorial regarding the invention at issue
`in this case was held on June 3, 2015.5 On June 4, 2015,
`the Court held a claim construction hearing regarding the
`disputed terms in the ‘336 Patent.
`STANDARD
`“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.” Innova/Pure
`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
`1111, 1115 (Fed. Cir. 2004). The goal of claim
`construction is therefore to “determin[e] the meaning and
`scope of the patent claims asserted to be infringed.” O2
`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
`1351, 1360 (Fed. Cir. 2008) (quotation omitted)). The
`construction of patent claim terms is a question of
`law. Markman, 517 U.S. at 372. However, “[o]nly those
`terms need be construed that are in controversy, and only
`to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (citing U.S. Surgical Corp. v. Ethicon,
`Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)).
`
`5The parties agreed that the June 3, 2015 technology
`tutorial would be held off the record.
`5
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`The Court sets forth below a summary of the legal
`principles governing claim construction.
`I.
`Claim Construction Generally Seeks to
`Determine the “Ordinary and Customary”
`Meaning of Terms from the Perspective of
`Persons Having Ordinary Skill in the Art
`The terms in patent claims are generally “given their
`ordinary and customary meaning as understood by a person
`having ordinary skill in the art when read in the context
`of the specification and prosecution history.” Thorner v.
`Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
`(Fed. Cir. 2005) (en banc)); see also Multiform Dessicants,
`Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)
`(“It is the person of ordinary skill in the field of the
`invention through whose eyes the claims are construed.”).
`To determine how a person having ordinary skill in the
`art (“PHOSITA”) would understand a claim term, the Court is
`to consider “any special meaning and usage in the field”
`and read the claim term “in the context of the entire
`patent, including the specification.” Phillips, 415 F.3d
`at 1313 (citation omitted).
`In some cases, the ordinary meaning that a term would
`have to a PHOSITA will be “readily apparent even to lay
`judges, and claim construction in such cases involves
`6
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`little more than the application of the widely accepted
`meaning of commonly understood words.” Id. at
`1314. “There is a heavy presumption that the plain meaning
`of the claim language controls.” Bell Commc’ns Research,
`Inc. v. Fore Sys., Inc., 62 Fed. App’x 951, 961 (Fed. Cir.
`2003) (citing CSS Fitness, Inc. v. Brunswick Corp., 288
`F.3d 1359, 1366 (Fed. Cir. 2002)).
`The Court therefore need not provide any additional
`construction for a claim term that “is non-technical, is in
`plain English, and derives no special meaning from the
`patent and its prosecution history.” Kowalski v. Anova
`Food, LLC, Civ. No. 11-00795 HG-BMK, 2014 WL 1321100 * 10
`(D. Haw. Mar. 31, 2014) (citing O2 Micro Int’l, 521 F.3d at
`1360). In such instances, the Court should avoid “merely
`paraphrasing claim language with less accurate terminology”
`and honor the “ordinary” meaning of the patent terms. Id.
`(citation omitted); see also, e.g., Mentor H/S, Inc. v.
`Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir.
`2001) (finding no error in court’s instruction that jury
`should give the terms “irritating” and “frictional heat”
`their “ordinary meanings”).
`On the other hand, where a patent term does not have a
`plain and ordinary meaning that is “readily apparent,”
`courts look to “those sources available to the public that
`7
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`show what a person of skill in the art would have
`understood disputed claim language to mean.” Innova, 381
`F.3d at 1116. These sources include two forms of evidence:
`“intrinsic” and “extrinsic.”
`Intrinsic evidence includes the patent claims
`themselves, the patent specification, and the patent
`prosecution history, if it is in evidence. Biogen Idec,
`Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir.
`2013). This type of evidence is of the greatest
`significance in determining the “legally operative meaning
`of claim language.” Phillips, 415 F.3d at 1317 (citations
`omitted).
`“The appropriate starting point . . . is always with
`the language of the asserted claim itself.” Comark
`Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.
`Cir. 1998) (citation omitted). Comparisons to other claims
`in the patent can also suggest meaning. “Because claim
`terms are normally used consistently throughout the patent,
`the usage of a term in one claim can often illuminate the
`meaning of the same term in other claims.” Phillips, 415
`F.3d at 1314 (citation omitted). Conversely, the presence
`of a dependent claim that adds a particular limitation
`creates a presumption that the limitation is not implied in
`
`8
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`the independent claim. Id. (citing Liebel-Flarsheim Co. v.
`Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2014)).
`The specification is also “highly relevant to the
`claim construction analysis.” “Usually, it is dispositive;
`it is the single best guide to the meaning of a disputed
`term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1582 (Fed. Cir. 1996); see also Fenner Investments,
`Ltd. v. Cellco Partnership, 778 F.3d 1320, 1323 (Fed. Cir.
`2015) (“The foundation of judicial claim construction is
`the ‘written description’ in the specification.”). For
`example, the specification may reveal a special definition
`given to a term by the patentee or an intentional
`disclaimer of broader scope. Phillips, 415 F.3d at 1316.
`On the other hand, the general rule is that “claims of
`a patent are not limited to the preferred embodiment.”
`Chem. Co. v. U.S., 226 F.3d 1334, 1342 (Fed. Cir. 2000).
`Accordingly, “although a patent’s written description may
`assist construction of a claim term, [courts] will decline
`to import into the claims limitations, examples, or
`embodiments appearing only in the written description.”
`Winbond Electronics Corp. v. Int’l Trade Commission, 4 Fed.
`App’x 832, 838 (Fed. Cir. 2001) (citing Comark, 156 F.3d at
`1186-87).
`
`9
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`The patent prosecution history may also “inform the
`meaning of the claim language by demonstrating how the
`inventor understood the invention and whether the inventor
`limited the invention in the course of prosecution, making
`the claim scope narrower than it would otherwise
`be.” Phillips, 415 F.3d at 1317. The patent prosecution
`history may, in some cases, “lack[] the clarity” of other
`intrinsic sources, because it represents an ongoing
`negotiation between the USPTO and the patent
`applicant. Id. However, the prosecution history may be
`given “substantial weight” in construing a term that was
`added by amendment, because the very patentability of the
`claim hinged upon such revision. Bd. of Regents of the
`Univ. of Texas Sys. v. BENQ Am. Corp., 553 F.3d 1362, 1369
`(Fed. Cir. 2008).
`Although “less significant” than intrinsic evidence,
`extrinsic evidence may also be considered during claim
`construction. Phillips, 415 F.3d at 1317. Extrinsic
`evidence “consists of all evidence external to the patent
`and prosecution history, including expert and inventor
`testimony, dictionaries, and learned treatises.” Id.
`(citing Markman v. Westview Instruments, Inc., 52 F.3d 967,
`980 (Fed. Cir. 1995) (further citation omitted)).
`
`10
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`The Federal Circuit has explained that, among these
`forms of evidence, technical dictionaries and treatises may
`be especially helpful in assisting courts to better
`understand the underlying technology and the way in which a
`PHOSITA would understand claim terms. Id. at
`1318. However, a court may not rely on a dictionary
`definition that would “contradict any definition found in
`or ascertained by a reading of the patent documents.” Id.
`(citing Vitronics, 90 F.3d at 1584 n.6).
`Expert testimony may also assist the Court by
`providing background information on the technology at
`issue, explaining how an invention works, ensuring that the
`Court’s understanding of “the technical aspects of the
`patent is consistent with that of a [PHOSITA],” and
`establishing “that a particular term in the patent or the
`prior art has a particular meaning in the pertinent
`field.” Id. (citing Pitney Bowes, Inc. v. Hewlett-Packard
`Co., 182 F.3d 1298, 1308-09 (Fed. Cir. 1999); Key Pharms.
`v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
`1998)). However, courts must reject “conclusory,
`unsupported assertions by experts as to the definition of a
`claim term” and any testimony “‘that is clearly at odds
`with the claim construction mandated by the claims
`
`11
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`themselves, the written description, and the prosecution
`history.’” Id. (quoting Key Pharms., 161 F.3d at 716).
`II. The Court Will Not Construe Terms to Reflect
`“Ordinary and Customary” Meaning Where the
`Patentee Acted as His Own Lexicographer or
`Disavowed the Full Scope of Claims
`In two circumstances, courts will depart from the
`usual rule that a patent term should be given its “ordinary
`and customary meaning”: lexicography and disavowal. Pacing
`Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024
`(Fed. Cir. 2015); Thorner, 669 F.3d at 1365. The standards
`for finding either lexicography or disavowal are
`“exacting.” Pacing Techs., 778 F.3d at 1024 (citing GE
`Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304,
`1309 (Fed. Cir. 2014)).
`First, to act as his own lexicographer, the patentee
`must “‘clearly set forth a definition of the disputed claim
`term’ other than its plain and ordinary meaning.” In so
`doing, he must “‘clearly express an intent’ to redefine the
`term.” Thorner, 669 F.3d at 1365 (citing CCS Fitness, 288
`F.3d at 1366; Hemsderfer v. Bobrick Washroom Equip, Inc.,
`527 F.3d 1379, 1381 (Fed. Cir. 2008)); see also, e.g., 3M
`Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d
`1365, 1369 (Fed. Cir. 2004) (patentee acted as its own
`lexicographer where specification explicitly stated:
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`“‘Multiple embossed’ means two or more embossing patterns
`are superimposed on the web to create a complex pattern of
`differing depths of embossing”).
`Second, a patentee may demonstrate an intention to
`deviate from the customary meaning of a claim term by
`“including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of
`claim scope.” Thorner, 669 F.3d at 1366. Such a disavowal
`means that “the invention does not include a particular
`feature . . . even though the language of the claims, read
`without reference to the specification, might be considered
`broad enough to encompass the feature in question.” SciMed
`Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`F.3d 1337, 1341 (Fed. Cir. 2001) (patentee disavowed claim
`scope with respect to “dual lumen” catheters where
`specification consistently disparaged such design and
`described another design for “all embodiments of the
`present invention”).
`Mere criticism of a particular embodiment, however,
`does not rise to the level of disavowal. Thorner, 669 F.3d
`at 1366 (citation omitted).
`
`13
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`III. Terms Are Indefinite Where They Fail to
`Inform Those Skilled in the Art about the
`Scope of the Invention with Reasonable
`Certainty
`The Court may also consider during claim construction
`whether challenged patent terms are “indefinite.” Interval
`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1377-78 (Fed.
`Cir. 2014) (upholding district court judgment of invalidity
`due to indefiniteness reached during claim construction).
`The Patent Act’s “definiteness requirement” mandates that a
`patentee “particularly point[] out and distinctly claim[]”
`his invention. 35 U.S.C. § 112(b). An indefinite claim is
`invalid and cannot be unlawfully infringed. 35 U.S.C. §
`282(b)(3). Like claim construction, indefiniteness is a
`question of law. Takeda Pharm. Co. v. Zydus Pharm. USA,
`Inc., 743 F.3d 1359, 1366 (Fed. Cir. 2014).
`Last year, the Supreme Court held that a patent will
`meet the Patent Act’s definiteness requirement only where
`its “claims, viewed in light of the specification and
`prosecution history, inform those skilled in the art about
`the scope of the invention with reasonable certainty.”6
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
`6Prior to Nautilus, the Federal Circuit had held that
`patent claims were indefinite only if they were “not
`amenable to construction or insolubly ambiguous.” Biosig
`Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 898
`(Fed. Cir. 2013).
`
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`2120, 2129 (2014). Although the Supreme Court did not
`define “reasonable certainty,” it cautioned that “a patent
`must be precise enough to afford clear notice of what is
`claimed, thereby apprising the public of what is still open
`to them.” Id. (citing Markman, 517 U.S. at 373). It is
`not enough that “a court can ascribe some meaning to a
`patent’s claims.” Id. at 2130 (emphasis in original).
`A patent is, however, “presumed valid.” 35 U.S.C.
`§ 282(a). It is therefore the burden of the alleged
`infringer to prove indefiniteness by “clear and convincing”
`evidence demonstrating that a PHOSITA could not discern the
`boundaries of the claim based on the claim language, the
`specification, the prosecution history, and her knowledge
`of the relevant art.7 Halliburton Energy Servs., Inc. v. M-
`I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008).
`
`7 Nautilus explicitly left open whether the Federal
`Circuit’s existing “clear and convincing evidence” standard
`should continue to apply to proof of facts supporting the
`Court’s indefiniteness conclusions. Nautilus, 134 S. Ct.
`at 2130 n.10. Without binding precedent to the contrary,
`this Court joins those district courts that have, since
`Nautilus, continued to apply the clear and convincing
`standard to evidence offered to prove indefiniteness. See,
`e.g., California Inst. of Tech. v. Hughes Commc’ns, 35 F.
`Supp. 3d 1176, 1182 n.4 (C.D. Cal. 2014); StrikeForce
`Techs., Inc. v. PhoneFactor, Inc., Civ. A. No. 13-490-RGA-
`MPT, 2015 WL 393727 * 5 (D. Del. Jan. 29, 2015) (“Despite
`the Court’s newly enunciated standard for determining
`indefiniteness, it remains the case that the [defendant]
`. . . must make that showing by clear and convincing
`
`
`
`
`
`
`
`
` (continued…)
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`Construing claims and evaluating indefiniteness are
`distinct tasks: “what [a] term means to a person of
`ordinary skill in the art is a separate question from
`whether it is sufficiently definite to put others in the
`field on notice regarding the bounds of the claims.”
`Chiron Corp. v. Genetech, Inc., No. Civ. S-00-1252 WBSGGH,
`2002 WL 32123928 * 2 (E.D. Cal. June 24, 2002). Courts
`generally disfavor making indefiniteness determinations at
`the claim construction stage of patent litigation. See,
`e.g., Gilead Sciences, Inc. v. Mylan, Inc., Civil Action
`No. 1:14-cv-99, 2015 WL 1534067 * 2 (N.D.W.Va. Apr. 6,
`2015) (citation omitted). This disfavor reflects the high
`burden of proof on the challenger, the fact that claims are
`not indefinite merely because the parties dispute their
`evidence.” (quotation omitted)); see also Microsoft Corp.
`v. i4i P’ship, 131 S. Ct. 2238, 2242 (2011) (indefiniteness
`is a question of law, but it must be supported by factual
`findings based on clear and convincing evidence).
`Such evidence includes, for example, expert testimony
`regarding whether PHOSITAs would be “reasonably certain” of
`claim scope. See, e.g., Asetek Danmark A/S v. CMI USA,
`Inc., Case No. 13-cv-00457-JST, 2015 WL 1848967 * 17 (N.D.
`Cal. Apr. 21, 2015) (explaining that “evidence from experts
`is necessary to help the Court assess what a [PHOSITA]
`would know or find indefinite,” and that such evidence must
`be “clear and convincing”); StrikeForce Techs., 2015 WL
`393727 at * 5 (evidence of indefiniteness must be clear and
`convincing, and “typically expert testimony will be
`necessary in cases involving complex technology”); Sprint
`Commc’ns Co. L.P. v. Comcast Cable Commc’ns LLC, Nos. 11-
`2684-JWL, 11-2685-JWL, 11-2686-JWL, 2014 WL 5089402 * 4, 7,
`20-21 (Oct. 9, 2014).
`
`16
`
`DISH Ex. 1017, p. 16
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 17 of 111 PageID #:
`4373
`
`meanings, and the dispositive effect of indefiniteness
`findings. See id. (citing CBS-Sys. Int’l Inc. v. SAP Am.,
`Inc., Civil Action No. 10-2156, 2011 WL 3240838 * 17-18
`(E.D. Pa. July 28, 2011)).
`Nonetheless, courts have also recognized that “[w]hen
`a claim is asserted to be indefinite because it has no
`meaning to a person skilled in the art, an indefiniteness
`decision at the claim construction stage may be practically
`unavoidable.” Cipher Pharm. Inc. v. Actavis Labs. FL,
`Inc., Civil No. 13-6502 (JEI/AMD), 2015 WL 1768593 * 4
`(D.N.J. Apr. 20, 2015) (emphasis in original).
`Post-Nautilus, indefiniteness may be found in one of
`two ways when raised at the claim construction stage: (1)
`if a term “is not amenable to construction,” or (2) if,
`after being construed, it still would not provide a PHOSITA
`who has read the specification and prosecution history with
`reasonable certainty of the correct claim scope.8
`
`8An illustrative example of the latter form of
`indefiniteness challenge appears in Cipher Pharmaceuticals
`related to the patent term “about 1-10%.” There, the Court
`construed “about” as “approximately.” 2015 WL 1768593 at
`* 9. Defendants argued that the construed term was
`indefinite “not because a person skilled in the art would
`not understand the term,” but because he “would not know
`where to draw the line between several readily
`understandable alternatives” in implementing it even as
`construed – for example, “does ‘about 1%’ include .9%?
`.85%? .5%? etc.” Id.
`
`17
`
`DISH Ex. 1017, p. 17
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 18 of 111 PageID #:
`4374
`
`California Inst. of Tech., 35 F. Supp. 3d at 1181. A claim
`is not amenable to construction if a PHOSITA “would
`determine that there are multiple equally plausible but
`materially dissimilar constructions.” Id. (emphasis
`added); see also Interval Licensing, 766 F.3d at 1371
`(“Although absolute or mathematical precision is not
`required . . . there is an indefiniteness problem if the
`claim language might mean several different things and no
`informed and confident choice is available among contending
`definitions.”).
`
`DISCUSSION
`The Court construes the ‘336 patent terms in dispute
`between the parties as follows:
`“Enabling [the converting, navigating and
`1(a).
`displaying of] video content from a video
`content provider on an open online network
`to a discrete digital TV service provider
`network which is of the type employing a
`closed system of pre-screened and pre-
`programmed video content selectable for
`viewing . . . .”9 (Claim 1 preamble10)
`
`9Defendants purport not to request construction of the
`bracketed words in this term. Both parties request
`construction of the remaining bolded words. The
`surrounding claim language is recited to provide context.
`10All parties agree that the preamble is limiting.
`18
`
`DISH Ex. 1017, p. 18
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 19 of 111 PageID #:
`4375
`
`Plaintiff’s
`Construction
`“Making it possible
`to transfer video
`content from a
`provider of the
`video content using
`a wide-area network
`or network of
`networks (e.g.,
`Internet)”
`
`Defendants’
`Construction
`“Giving
`permission to
`all users
`anywhere on the
`Internet to
`transfer any
`video content
`they choose”
`
`Court’s
`Construction
`“Making it
`possible to
`transfer video
`content from a
`provider of the
`video content on
`an open online
`network, including
`the Internet”
`
`Plaintiff proposes that the words in the subject term
`be construed, in the aggregate, as “making it possible to
`transfer video content from a provider of the video content
`using a wide-area network or network of networks (e.g.,
`Internet).” Second Am. Joint Claim Constr. & Prehearing
`Statement Ex. A at 1, ECF No. 232-1.
`Defendants propose that they be construed as “giving
`permission to all users anywhere on the Internet to
`transfer any video content they choose.” Id.
`Three preliminary matters bear noting at the outset of
`the Court’s analysis. First, the parties are reminded that
`“[o]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve
`the controversy.” Vivid Techs., 200 F.3d at 803. District
`courts “are not (and should not be) required to construe
`every limitation in a patent’s asserted claims.” O2 Micro
`19
`
`DISH Ex. 1017, p. 19
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 20 of 111 PageID #:
`4376
`
`Int’l, 521 F.3d at 1362 (emphasis in original). It was for
`this reason that the Court, confronted by requests for the
`construction of as many as 23 terms or phrases and distinct
`subparts thereof, directed the parties to meet and confer
`in order to reach a “list of no more than ten (10) proposed
`terms, without subparts, for claim construction in the
`instant case.” Minute Order of Apr. 8, 2015 at 2, ECF No.
`155.
`
`The subject “term” submitted for construction,
`however, is a startling nineteen words in length. This is
`inappropriate. “The focus of the courts in recent years
`has been to analyze either ‘a single word or at most a
`short phrase.’” Oplus Techs., Ltd. v. Vizio, Inc., No.
`2:12-cv-05707-MRP-E, 2012 WL 5519198 * 1 (C.D. Cal. Oct.
`31, 2012) (citation omitted). The subject term well
`exceeds the outer bounds of what the Court could consider
`“a short phrase.”
`Second, and in view of its length, the Court finds
`that the subject term must be construed by reference to
`certain component words and phrases. Neither party has
`submitted evidence that the term in its entirety would have
`any customary meaning to a PHOSITA. Both parties’ briefs
`also break down the 19-word subject term into certain
`component parts that constitute their proposed
`20
`
`DISH Ex. 1017, p. 20
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 21 of 111 PageID #:
`4377
`
`constructions. See Plf. Br. at 13-19, ECF No. 174; Def.
`Br. at 12, ECF No. 175. The Court therefore construes the
`subject term by examining below the meanings of certain
`component words and phrases contained therein.11 Altiris
`Inc. v. Symantec Corp., 318 F.3d 1363, 1372 (Fed. Cir.
`2003).
`Third, the Court recognizes that Defendants’ proposed
`constructions for the component parts of Term 1(a) are tied
`to an overarching interpretive theory of the subject term
`that Defendants propose should inform the Court’s full
`
`11Defendants suggest that this approach would be error,
`even though Defendants themselves propose a construction
`based on component words and phrases within the subject
`term. See Def. Br. at 12, ECF No. 175. Referring to
`Altiris, they assert that “the Federal Circuit subsequently
`rejected that entire approach to claim construction.” Id.
`at 6-7.
` What the Federal Circuit rejected in Altiris was
`reliance on extrinsic dictionary definitions for individual
`words where intrinsic meaning could be derived from the
`specification. The problem was “elevating the dictionary
`to such prominence” that a court would overlook the
`“meaning of claim terms within the context of the patent”
`itself. Phillips, 415 F.3d at 1321. This is hardly to say
`that this Court should not still attempt to use the
`available evidence to discern the “established meanings of
`the individual words” when a claim phrase “as a whole lacks
`a common meaning.” Altiris, 318 F.3d at 1372.
`District courts have continued to cite Altiris
`favorably for this basic proposition. See, e.g., PCT
`Int’l, Inc. v. Holland Electronics LLC, No. CV-12-01797-
`PHX-JAT, 2014 WL 683876 * 8 (D. Ariz. Feb. 21, 2014);
`Imperium (IP) Holdings, Inc. v. Apple, Inc., Civil Action
`No. 4:11-cv-163, 2012 WL 6949611 * 6 (E.D. Tex. July 2,
`2012).
`
`21
`
`DISH Ex. 1017, p. 21
` DISH v. BBiTV
` IPR2020-01280
`
`

`

`Case 1:14-cv-00169-ACK-RLP Document 290 Filed 06/24/15 Page 22 of 111 PageID #:
`4378
`
`construction. The Court therefore summarizes Defendants’
`argument here, referring back to the summary in the
`sections that follow.
`D

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