Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 1 of 29(cid:10)
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`2:04-CV-1-DF
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`§§
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`§§
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`§
`§
` §
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`§§
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`§
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`TIVO INC.,
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`Plaintiff,
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`v.
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`ECHOSTAR COMMUNICATIONS
`CORP., et al.
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`Defendants.
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`CLAIM CONSTRUCTION ORDER
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`Before the Court are EchoStar’s Opening Claim Construction Brief (Dkt. No. 79),
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`filed April 11, 2005, TiVo Inc.’s Opening Brief on Claim Construction (Dkt. No. 80),
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`filed April 11, 2005, TiVo Inc.’s Opposition Brief on Claim Construction (Dkt. No. 97),
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`filed May 12, 2005, and EchoStar’s Response to TiVo’s Opening Brief on Claim
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`Construction (Dkt. No. 98), filed May 12, 2005. The Court conducted a claim
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`construction hearing on May 23, 2005. The Parties provided the Court with copies of
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`their slide presentations from the hearing and a Joint Claim Construction Chart (Dkt. No.
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`120), filed June 7, 2005. The Court now issues this Order to resolve the Parties’ claim
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`construction disputes.
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`I.
`FACTUAL AND PROCEDURAL BACKGROUND
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`SAMSUNG 1011
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 2 of 29(cid:10)
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`Plaintiff TiVo, Inc. (hereafter “TiVo”) filed suit against defendants on January 5,
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`2004, for alleged infringement of U.S. Patent No. 6,233,389 (the “’389 patent”).
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`Defendants (collectively referred to as “EchoStar”) are a group of inter-related companies
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`who together operate or support a satellite television service called the Dish Network in
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`combination with digital video recorders (“DVRs”). TiVo alleges that EchoStar, by
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`making, using, offering to sell, and/or selling digital video recording devices, digital
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`video recording device software, and/or personal television services in the United States,
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`is infringing, has infringed, and/or has contributed to and induced infringement of one or
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`more claims of the ’389 patent. In addition, TiVo alleges that such infringement has been
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`willful and deliberate. See Amended Complaint for Patent Infringement (Dkt. No. 3), at
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`¶¶ 11-12 (filed Jan. 15, 2004).
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`The ’389 patent, entitled “MULTIMEDIA TIME WARPING SYSTEM,”
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`describes a digital video recorder system that digitally records television signals from
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`analog and digital sources such as cable and satellite television providers. In their briefing
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`and during the claim construction hearing, the parties focused their presentations on
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`claims 1, 31, 32, and 61 of the ’389 patent. Clams 1 and 31 are process claims, and
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`claims 32 and 61 are the apparatus claims that respectively correspond to claims 1 and
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`31. Accordingly, the parties request the Court to construe terms that appear in these
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`claims. The text of each of the claims at issue is set forth below:
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`1. A process for the simultaneous storage and play back of multimedia
`data, comprising the steps of:
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`accepting television (TV) broadcast signals, wherein said TV signals are
`based on a multitude of standards, including, but not limited to, National
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 3 of 29(cid:10)
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`Television Standards Committee (NTSC) broadcast, PAL broadcast,
`satellite transmission, DSS, DBS, or ATSC;
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`tuning said TV signals to a specific program;
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`providing at least one Input Section, wherein said Input Section converts
`said specific program to an Moving Pictures Experts Group (MPEG)
`formatted stream for internal transfer and manipulation;
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`providing a Media Switch, wherein said Media Switch parses said MPEG
`stream, said MPEG stream is separated into its video and audio
`components;
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`storing said video and audio components on a storage device;
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`providing at least one Output Section, wherein said Output Section
`extracts said video and audio components from said storage device;
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`wherein said Output Section assembles said video and audio components
`into an MPEG stream;
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`wherein said Output Section sends said MPEG stream to a decoder;
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`wherein said decoder converts said MPEG stream into TV output signals;
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`wherein said decoder delivers said TV output signals to a TV receiver; and
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`accepting control commands from a user, wherein said control commands
`are sent through the system and affect the flow of said MPEG stream.
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`31. A process for the simultaneous storage and play back of multimedia
`data, comprising the steps of:
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`providing a physical data source, wherein said physical data source
`accepts broadcast data from an input device, parses video and audio data
`from said broadcast data, and temporarily stores said video and audio data;
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`providing a source object, wherein said source object extracts video and
`audio data from said physical data source;
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`providing a transform object, wherein said transform object stores and
`retrieves data streams onto a storage device;
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`wherein said source object obtains a buffer from said transform object,
`said source object converts video data into data streams and fills said
`buffer with said streams;
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`wherein said source object is automatically flow controlled by said
`transform object;
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`providing a sink object, wherein said sink object obtains data stream
`buffers from said transform object and outputs said streams to a video and
`audio decoder;
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`wherein said decoder converts said streams into display signals and sends
`said signals to a display;
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`wherein said sink object is automatically flow controlled by said transform
`object;
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`providing a control object, wherein said control object receives commands
`from a user, said commands control the flow of the broadcast data through
`the system; and
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`wherein said control object sends flow command events to said source,
`transform, and sink objects.
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`32. An apparatus for the simultaneous storage and play back of
`multimedia data, comprising:
`
`a module for accepting television (TV) broadcast signals, wherein said TV
`signals are based on a multitude of standards, including, but not limited to,
`National Television Standards Committee (NTSC) broadcast, PAL
`broadcast, satellite transmission, DSS, DBS, or ATSC;
`
`a module for tuning said TV signals to a specific program;
`
`at least one Input Section, wherein said Input Section converts said
`specific program to an Moving Pictures Experts Group (MPEG) formatted
`stream for internal transfer and manipulation;
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`a Media Switch, wherein said Media Switch parses said MPEG stream,
`said MPEG stream is separated into its video and audio components;
`
`a module for storing said video and audio components on a storage device;
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 5 of 29(cid:10)
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`at least one Output Section, wherein said Output Section extracts said
`video and audio components from said storage device;
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`wherein said Output Section assembles said video and audio components
`into an MPEG stream;
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`wherein said Output Section sends said MPEG stream to a decoder;
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`wherein said decoder converts said MPEG stream into TV output signals;
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`wherein said decoder delivers said TV output signals to a TV receiver; and
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`accepting control commands from a user, wherein said control commands
`are sent through the system and affect the flow of said MPEG stream.
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`61. An apparatus for the simultaneous storage and play back of
`multimedia data, comprising:
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`a physical data source, wherein said physical data source accepts
`broadcast data from an input device, parses video and audio data from said
`broadcast data, and temporarily stores said video and audio data;
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`a source object, wherein said source object extracts video and audio data
`from said physical data source;
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`a transform object, wherein said transform object stores and retrieves data
`streams onto a storage device;
`
`wherein said source object obtains a buffer from said transform object,
`said source object converts video data into data streams and fills said
`buffer with said streams;
`
`wherein said source object is automatically flow controlled by said
`transform object;
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`a sink object, wherein said sink object obtains data stream buffers from
`said transform object and outputs said streams to a video and audio
`decoder;
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`wherein said decoder converts said streams into display signals and sends
`said signals to a display;
`
`wherein said sink object is automatically flow controlled by said transform
`object;
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`a control object, wherein said control object receives commands from a
`user, said commands control the flow of the broadcast data through the
`system; and
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`wherein said control object sends flow command events to said source,
`transform, and sink objects.
`
`II.
`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
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`A determination of patent infringement involves two steps. First, the patent
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`claims are construed, and, second, the claims are compared to the allegedly infringing
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`device. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed.Cir.1998) (en banc).
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`The legal principles of claim construction were recently reexamined by the
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`Federal Circuit in Phillips v. AWH Corp., --- F.3d --- , 2005 WL 1620331 (Fed. Cir., July
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`12, 2005). Reversing a summary judgment of non-infringement, an en banc panel
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`specifically identified the question before it as: “the extent to which [the court] should
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`resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its
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`claims.” Id. at *4. Addressing this question, the Federal Circuit specifically focused on
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`the confusion that had amassed from its recent decisions on the weight afforded
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`dictionaries and related extrinsic evidence as compared to intrinsic evidence. Ultimately,
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`the court found that the specification, “informed, as needed, by the prosecution history,”
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`is the “best source for understanding a technical term.” Id. at *7 (quoting Multiform
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`Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). However, the
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`court was mindful of its decision and quick to point out that Phillips is not the swan song
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`of extrinsic evidence, stating:
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`[W]e recognized that there is no magic formula or catechism for
`conducting claim construction. Nor is the court barred from considering
`any particular sources or required to analyze sources in any specific
`sequence, as long as those sources are not used to contradict claim
`meaning that is unambiguous in light of the intrinsic evidence.
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`Phillips, 2005 WL 1620331, *16 (citations omitted). Consequently, this Court’s reading
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`of Phillips is that the Federal Circuit has returned to the state of the law prior to its
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`decision in Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), allotting
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`far greater deference to the intrinsic record than to extrinsic evidence.
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`Additionally, the Federal Circuit in Phillips expressly reaffirmed the principles of
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`claim construction as set forth in Markman v. Westview Instruments, Inc., 52 F.3d 967
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`(Fed. Cir.1995) (en banc), aff’d, 517 U.S. 370 (1996), Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576 (Fed. Cir. 1996), and Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004). Thus, the law of claim construction
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`remains intact. Claim construction is a legal question for the courts. Markman, 52 F.3d at
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`979. The claims of a patent define that which “the patentee is entitled the right to
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`exclude.” Innova, 381 F.3d at 1115. When construing claim language, claim terms are
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`generally given their ordinary and customary meaning as they would be understood by “a
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`person of ordinary skill in the art in question at the time of the invention, i.e., as of the
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`effective filing date of the patent application.” Phillips, 2005 WL 1620331, *5; PC
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`Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005)(“A
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`claim cannot have different meanings at different times; its meaning must be interpreted
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`as of its effective filing date.”); see Vitronics, 90 F.3d at 1582. However, the Federal
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`Circuit stressed the importance of recognizing that the person of ordinary skill in the art
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`“is deemed to read the claim term not only in the context of the particular claim in which
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`the disputed term appears, but in the context of the entire patent, including the
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`specification.” Phillips, 2005 WL 1620331 at *5.
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`Advancing the emphasis on the intrinsic evidence, the Phillips decision explains
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`how each source, the claims, the specification as a whole, and the prosecution history,
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`should be used by courts in determining how a skilled artesian would understand the
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`disputed claim term. See, generally, id. at *6-*9. The court noted that the claims
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`themselves can provide substantial guidance, particularly through claim differentiation.
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`Using an example taken from the claim language at issue in Phillips, the Federal Circuit
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`observed that “the claim in this case refers to ‘steel baffles,’ which strongly implies that
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`the term ‘baffles’ does not inherently mean objects made of steel.” Id. at *6. Thus, the
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`“context in which a term is used in the asserted claim can often illuminate the meaning of
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`the same term in other claims.” Id. Likewise, other claims of the asserted patent can be
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`enlightening, for example, “the presence of a dependent claim that adds a particular
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`limitation gives rise to a presumption that the limitation in question is not present in the
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`independent claim.” Id. at *7.
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`Still, the claims “must be read in view of the specification, of which they are
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`part.” Markman, 52 F.3d at 978. In Phillips, the Federal Circuit reiterated the importance
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`of the specification, noting that “the specification ‘is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
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`of a disputed term.’ ” Phillips, 2005 WL 1620331 at *7 (quoting Vitronics, 90 F.3d at
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`1582). To emphasize this position, the court cites extensive case law, as well as “the
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`statutory directive that the inventor provide a ‘full’ and ‘exact’ description of the claimed
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`invention.” Id. at *8, see also 35 U.S.C. § 112, para. 1. Consistent with these principles,
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`the court reaffirmed that an inventor’s own lexicography and any express disavowal of
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`claim scope is dispositive. Id. at *8. Concluding this point, the court noted the
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`consistency with this approach and the issuance of a patent from the Patent and
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`Trademark Office and found that “[i]t is therefore entirely appropriate for a court, when
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`conducting claim construction, to rely heavily on the written description for guidance as
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`to the meaning of the claims.” Id. at *9.
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`Finally, the Federal Circuit curtailed the role of extrinsic evidence in construing
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`claims. In pointing out the less reliable nature of extrinsic evidence, the court reasoned
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`that such evidence (1) is by definition not part of the patent, (2) does not necessarily
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`reflect the views or understanding of a person of ordinary skill in the relevant art, (3) is
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`often produced specifically for litigation, (4) is far reaching to the extent that it may
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`encompass several views, and (5) may distort the true meaning intended by the inventor.
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`See id. at *11. Consequently, the Federal Circuit expressly disclaimed the approach
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`taken in Texas Digital. While noting the Texas Digital court’s concern with regard to
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`importing limitations from the written description – “one of the cardinal sins of patent
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`law,” the Federal Circuit found that “the methodology it adopted placed too much
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`reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too
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`little on intrinsic sources, in particular the specification and prosecution history.” Id. at
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`*13. Thus, the court renewed its emphasis on the specification’s role in claims
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`construction.
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`In light of Phillips, this Court will resort to extrinsic evidence only if unable to
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`reach a claim construction based upon the intrinsic record. Vitronics, 90 F.3d at 1584
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`(“Only if there were still some genuine ambiguity in the claims, after consideration of all
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`available intrinsic evidence, should the trial court have resorted to extrinsic evidence…”).
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`Where it is necessary to consider extrinsic evidence to arrive at a construction, such
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`evidence should be used with caution.
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`Many other principles of claims construction, though not addressed in Phillips,
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`remain significant in guiding this Court’s charge in claim construction. The Court is
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`mindful that there is a “heavy presumption” in favor of construing claim language as it
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`would be plainly understood by one of ordinary skill in the art. Johnson Worldwide
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`Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). Words in patent claims
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`are given their ordinary meaning in the usage of the field of the invention, unless the text
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`of the patent makes clear that a word was used with a special meaning. See Multiform
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`Desiccants, Inc., 133 F.3d at 1477. Though a patentee may choose to act as his own
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`lexicographer, the intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim
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`term so as to put one reasonably skilled in the art on notice that the patentee intended to
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`so redefine the claim term. Bell Atl. Network Servs., Inc. v. Covad Communs. Group,
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`Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001)(internal citations omitted).
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`Claim construction is not meant to change the scope of the claims but only to
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`clarify their meaning. Embrex, Inc. v. Service Eng’g Corp., 216 F.3d 1343, 1347 (Fed.
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`Cir. 2000)(“In claim construction the words of the claims are construed independent of
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`the accused product, in light of the specification, the prosecution history, and the prior
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 11 of 29(cid:10)
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`art. . . . The construction of claims is simply a way of elaborating the normally terse
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`claim language[] in order to understand and explain, but not to change, the scope of the
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`claims.”)(citations and internal quotations omitted). Though a claim or claim term may
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`be used according to its plain meaning, where appropriate, this Court offers claim
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`construction for clarification.
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`Each term used in a claim is presumed to have meaning. Innova, 381 F.3d at
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`1119 (“While not an absolute rule, all claim terms are presumed to have meaning in a
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`claim.”). Thus, a claim construction that would render terms meaningless or redundant is
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`presumably incorrect. Where different terms are used in a claim, a court can infer that
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`the patentee intended that the terms have different meanings. Id. Similarly, a claim term
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`is generally given the same construction throughout the specification and the claims. See
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`id.; Phillips, 2005 WL 1620331 at *7 (“Because claim terms are normally used
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`consistently throughout the patent, the usage of a term in one claim can often illuminate
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`the meaning of the same term in other claims. Differences among claims can also be a
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`useful guide in understanding the meaning of particular claim terms.”).
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`III.
`DISCUSSION
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`
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`Having reviewed the principles of claims construction, the Court now turns to a
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`discussion of the patent in suit and the disputed terms that appear in claims 1, 31, 32, and
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`61.
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`A.
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`Claims 1 and 32
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`1.
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`“accepting television (TV) broadcast signals, wherein said TV signals
`are based on a multitude of standards”
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`TiVo argues no construction is needed for this limitation, or, if construed, should
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`be defined as “accepting transmitted television programming that is based on one or more
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`established specifications.” See TiVo’s Op. Br. 5-7; TiVo’s Markman Slides at 51-60.
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`EchoStar argues “multitude” means “a large number.” EchoStar’s Opening Br. at
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`6-8; EchoStar’s Slide Presentation at 49-53. During the claims construction hearing,
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`EchoStar stated that “the plain meaning of multitude [is] many, a large number… It is not
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`a specific technical term.” 5/23/05 Hr. Tr. at 92:14-17. EchoStar further argues
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`“accepting television (TV) broadcast signals, wherein said TV signals are based on a
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`multitude of standards” means “accepting for processing a large number of different TV
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`broadcast signals formatted in conformance with different TV broadcast signal
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`standards.” EchoStar’s Opening Br. at 6-8; EchoStar’s Slide Presentation at 49-53.
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`Though “multitude” is a term that is understood by persons of skill in the art, for
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`clarification purposes, the Court defines it as “numerous.” The construction proposed by
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`defendant, “a great number,” does not clarify the meaning of the term “multitude” and
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`instead only adds ambiguity as the term “great” is a term of degree in need of further
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`construction. The Court’s construction accords with the plain meaning of the term
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`“multitude” and with the use of the term in the patent claims and the patent specification.
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`‘389 patent at col. 2:4-10; 3:32-37; see also ‘389 patent Abstract. Further, as written, the
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`claim language requires an invention that accepts TV broadcast signals that are based on
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`a multitude of standards – not that the invention actually process a multitude of TV
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`broadcast standards. See TiVo Op. Br. at 6-7.
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 13 of 29(cid:10)
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`Though not determinative in the Court’s decision, it is of note that construing
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`“multitude” as “numerous” further accords with extrinsic evidence proffered by
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`defendant. See EchoStar’s Opening Br. at 6-7 citing Exh. D, THE AM. HERITAGE
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`DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000) at 1156 (“multitude. n.: 1. the
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`condition or quality of being numerous”) and Exh. E, the OXFORD ENGLISH DICTIONARY
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`ONLINE, 2004 (“multitude. n. 1. A mass noun: the character, quality, or condition of
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`being many; numerous”).
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`The Court finds that the remaining terms do not require construction.1 Therefore,
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`the Court construes “accepting television (TV) broadcast signals, wherein said TV signals
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`are based on a multitude of standards” as “accepting television (TV) broadcast signals,
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`wherein said TV signals are based on numerous standards.”
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`2.
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`“tuning said TV signals to a specific program”
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`TiVo argues no construction is needed for these terms, or, if construed, should
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`mean “adjusting the system to receive signals at a particular frequency or a particular
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`program.” See TiVo’s Op. Br. at 7-8; ’389 patent at col. 3:37-46; TiVo’s Markman
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`Slides at 61-68.
`
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`1 EchoStar argues that the claim term “standards” is indefinite and renders the entire claim invalid.
`EchoStar Opening Br. at 2, 20-22. Whether or not the claim is indefinite, however, is an invalidity question
`and should be raised in the context of a summary judgment motion. Patents are presumed valid. 35 U.S.C.
`§ 282. During claim construction, courts will construe claims unless, because of an ambiguity, one of
`ordinary skill in the art could not reasonably understand the scope of the claim. See Exxon Research and
`Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001); see also Phillips, 2005 WL 1620331 at
`*19 (noting that a validity analysis is not a regular component of claim construction). Presently, this Court
`finds the term “standards” is not so ambiguous that the claim cannot be construed.
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 14 of 29(cid:10)
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`EchoStar argues these terms should be defined as “using a tuner to select a radio
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`frequency bandwidth that carries exactly one television program at a time.” EchoStar’s
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`Opening Br. at 8-9; EchoStar’s Response Br. at 15; EchoStar’s Slide Presentation at 54-
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`58.
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`The specification does not explicitly define “a specific program.” The claim term
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`“a specific program” does not appear in the specification. Based, however, on its use in
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`the claims, the Court finds that one of ordinary skill in the art would understand “a
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`specific program” is to mean “a specified frequency range.” The Court finds that the
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`claim term “tuning” was used according to its plain meaning in the ’389 patent and does
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`not require further construction.
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`Therefore, the Court defines “tuning said TV signals to a specific program” as
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`“tuning said TV signals to a specified frequency range.”
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`3.
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`“Input Section” and “converts said specific program to an Moving Pictures
`Experts Group (MPEG) formatted stream”
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`TiVo argues no construction of these terms is needed, or, if construed, should be
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`limited to the definition of “Input Section” as “hardware and/or code that changes or
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`adapts the form or function of the TV program data to an MPEG format suitable for
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`internal transfer and manipulation.” See TiVo’s Op. Br. at 8-11; ’389 patent at cols.
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`2:13-14, 3:30-4:2, 6:26-27, 6:30-33, 12:40-42, 12:44-47; TiVo’s Markman Slides at 69-
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`84.
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`EchoStar argues “Input Section” is specially defined by the ‘389 patent as “a
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`separate module that obtains input from outside an assembly, tunes to a signal carrying a
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 15 of 29(cid:10)
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`particular television program, and includes an MPEG encoder that encodes the program
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`into MPEG.”2 ‘389 patent at cols. 3:32-33, 3:43-52, 4:15, & Fig. 1; EchoStar’s Opening
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`Br. at 16-17; EchoStar’s Response Br. at 15; EchoStar’s Slide Presentation at 99-104.
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`EchoStar further argues “said Input Section converts said specific program to an
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`Moving Pictures Experts Group (MPEG) formatted stream” means “the Input Section
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`changes the format of the TV program data signal from non-MPEG to MPEG.” See ‘389
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`patent at col. 2:10-14; EchoStar’s Opening Br. at 9-11, 16-17; EchoStar’s Response Br. at
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`15; EchoStar’s Slide Presentation at 59-75.
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`The Court need look no further than the claims themselves to define these terms,
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`as the specification does not explicitly define them. See ’389 patent at cols. 12:43-46,
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`15:25-28. The plain and ordinary meaning of an “Input Section” is “the portion of a
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`device that receives inputs.” The claim term “converts” needs no further construction.
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`Though EchoStar argued in favor of construing “convert” as “change,” no such
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`construction is necessary.3
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`2 In support of its proffered construction, EchoStar argues that the capitalization of terms in a patent
`indicates that the terms were specially defined by the patentee and therefore must be given a special
`meaning instead of their plain meaning. EchoStar argues that because three terms in the ‘389 patent were
`capitalized – Input Section, Media Switch, and Output Section – the patentee necessarily acted as his own
`lexicographer and that these terms cannot be construed to have a plain meaning. EchoStar Opening Br. at
`15 (“By using terms that are proper nouns and not generic terms of art, the applicants acted as their own
`lexicographers… In order to understand what was intended by the capitalized terms, therefore, one must
`refer to the specification.”). Notably, EchoStar does not cite any patent cases for this proposition and
`instead, draws an analogy to contract law wherein, EchoStar argues, capitalization of a term indicates the
`creation of a term of art. Id. This Court has not found this rule in patent case law and does not here create
`such a rule. Instead, this Court will follow Federal Circuit precedent in determining whether or not a
`patentee chose act as his own lexicographer. Bell Atl. Network Servs., Inc. v. Covad Communs. Group,
`Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).
`3 EchoStar cites Superguide Corp. v. DirectTV Eters., Inc., 358 F.3d 870, 891 (Fed. Cir. 2004) in support of
`its proposed construction of “convert.” EchoStar argues that in that case, the Federal Circuit “[held] that in
`the television broadcasting field, the ordinary meaning of ‘convert’ is ‘changing from one form or format to
`another.’” In Superguide, the Federal Circuit considered the construction of a claim phrase containing the
`term “converting.” In support of their respective proposed constructions, the two parties each proposed
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`Page 15 of 29
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 16 of 29(cid:10)
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`Therefore, the Court construes “providing at least one Input Section, wherein said
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`Input Section converts said specific program to an Moving Pictures Experts Group
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`(MPEG) formatted stream for internal transfer and manipulation” as “providing at least
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`one portion of a device that receives inputs, wherein said portion of the device that
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`receives inputs converts said specified frequency range to an Moving Picture
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`Experts Group (MPEG) formatted stream for internal transfer and manipulation.”
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`4.
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`“Media Switch” and “parses said MPEG stream, said MPEG stream is
`separated into its video and audio components”
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`TiVo argues “Media Switch” means “hardware and/or code that connects with
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`CPU and memory.” TiVo’s Opening Br. at 8-9; TiVo’s Op. Br. at 19-21; ‘389 patent at
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`col. 3:62-64 (“The Media Switch 102 mediates between a microprocessor CPU 106, hard
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`disk or storage device 105, and memory 104.”); id. at cols. 2:22-25, 6:59-63, 7:5-23,
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`14:21-22; TiVo’s Markman Slides at 85-97.
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`EchoStar argues “Media Switch” is specially defined by the ‘389 patent as “a
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`hardware module that is separate from the computer’s CPU, is connected to temporary
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`memory, receives MPEG data representing a television program from one or more Input
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`Sections, parses data into separate video and audio components, using a parser that
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`detects the start of all important events in a video or audio stream and the start of all
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`frames, sends the data to a storage device, retrieves the data from the storage device, and
`
`
`constructions of “converting” that used the term “change” and the district court’s final construction of the
`term construed “conversion” as “change.” The construction of this term, however, was not squarely before
`the court. Further, though the Federal Circuit, affirmed the district court’s claim construction, the court did
`not hold generally that the ordinary meaning of “conversion” in the television broadcasting field is
`“change.”
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`Page 16 of 29
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 17 of 29(cid:10)
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`sends it to one or more Output Sections.” See ‘389 patent at cols. 3:62-4:2, 5:51-64,
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`6:16-46, 6:59-65; 7:19-26; 8:44, & Figs. 1, 2, 7 & 13; EchoStar’s Response Br. at 4-7;
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`EchoStar’s Slide Presentation at 99-112.
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`The Court finds that the specification is the best guide to the meaning of the term
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`“Media Switch.”
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` As used
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`in
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`the
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`‘389 patent,
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`“Media Switch”
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`is
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`hardware and/or code that mediates between a microprocessor CPU, hard-disk or storage
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`device, and memory.” This definition is consistent with the use of the term in the patent
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`claims and specification. See ‘389 patent at col. 3:62-4:2, 4:34-36, 4:55-58, 5:34-36,
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`6:16-27, 6:59-65, 7:5-11. Neither the claims nor specification limit the Media Switch to
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`a physical device.
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`Regarding the term “parse”, TiVo construes “parse” as “analyze” arguing that
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`“parses said MPEG stream, said MPEG stream is separated into its video and audio
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`components” means “analyzes an MPEG stream, the MPEG stream having distinguished
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`video and audio components.” TiVo’s Opening Br. at 9-11; TiVo’s Op. Br. at 11-13;
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`‘389 patent at cols. 4:26-30, 5:3-6, 5:33-36, 6:36-58, & Figs. 6 & 13; TiVo’s Markman
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`Slides at 98-112.
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`EchoStar argues “parses” means “separates,” and “said Media Switch parses said
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`MPEG stream, said MPEG stream is separated into its video and audio components”
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`means “the Media Switch must analyze the content of an MPEG Systems stream carrying
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`one television program and from it output two distinct streams: one video MPEG stream
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`and one audio MPEG stream.” See ‘389 patent at Fig. 3 & col. 4:23-29; EchoStar’s
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`Page 17 of 29
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`Case 2:04-cv-00001-DF Document 185 Filed 08/18/2005 Page 18 of 29(cid:10)
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`Openi