05/01/2014

United Video Properties, Inc. v. Amazon.com: Clear Disavowal to Overcome Rejection Surrenders Claim Scope


Category: Claim Construction 
 
 
 
By: John Kirkpatrick, Contributor
 
TitleUnited Video Properties, Inc. v. Amazon.com, No. 2013-1396 (Fed. Cir. April 8, 2014) (non-precedential).
Issue
[1] [Does] removing “Internet delivered data” [from the disputed claim] during prosecution in response to the PTO examiner’s written description rejection, act as a clear disavowal of the [claimed] data feed being delivered to the users via the Internet[?] United Video Properties at *7 (text added).
[2] [W]hether [the term "schedules"] limited the interactive program guide to displaying current and “forward-looking” programs.
Id. at *5 (text added).
Holdings
[1] We do not rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal.
Id. at *7.
[2] The words of a claim are generally given their ordinary and customary meaning, which is the meaning that a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. [...] The intrinsic record includes the claims, the specification, and the prosecution history.
Id. at *9 (text added, internal citation omitted).
 
 
 

Procedural HistoryUnited Video Properties [et al.,] (collectively “Rovi”), appeal from the judgment of noninfringement of U.S. Patent 6,769,128 (the “’128 patent”) and U.S. Patent 7,603,690 (the “’690 patent”) [both owned by United Video Properties] by the United States District Court for the District of Delaware following claim construction.
United Video Properties at *2 (text added).

 

 

Legal Reasoning (Lourie, Mayer, and Chen)
[1]  ’128 Patent
Representative Claim

Specifically, the claim at issue was amended as follows:

42. (Currently Amended) A multimedia informational system for displaying program schedule information and Internet delivered data comprising:

a remote facility for receiving Internet data from the Internet and populating a data feed with the internet data; and

user equipment comprising:

a video display generator;

a receiver for receiving program schedule information and Internet delivered data and the data feed; . . . .

United Video Properties at *3-4.

Prosecution History[The] examiner rejected a claim [in the ’128 patent] that included limitations for receiving “Internet delivered data” under 35 U.S.C. § 112, ¶1, because “nowhere in the specification mentions or hints that the information is delivered to the users via Internet.” [...] Rovi amended the application to “more particularly define the invention” by adding that “Internet data is received from the Internet at a ‘remote facility’ and that a ‘data feed’ is populated with the Internet data at the remote facility.” [...] The examiner allowed the amended claim.
Id. (text added, internal citations omitted).
District Court Claim ConstructionThe court construed the “data feed” limitation to mean “an updatable transmission of data sent by a television programming provider over television signals.” [...] The court excluded transmission of data over the Internet due to the applicant’s removal of “Internet delivered data” limitations in response to the PTO examiner’s written description rejection during prosecution.
Id. at *5 (text added, internal citations omitted).
Rovi Clearly Disavowed Delivering Data in Data Feeds Via the InternetRovi argues that the plain meaning of the term “data feed” is supplying data from a source to a receiver, without concern for the path which that data feed takes. [...] Rovi thus had to amend its claims to remove delivery via the Internet in order to secure its patent, and, as a result, clearly disavowed delivering data in data feeds via the Internet. Although Rovi points to references within the written description stating that “[t]hose of skill in the art will understand that numerous other transmission schemes can be used to transmit the data stream,” [...] a vague statement such as that does not overcome the clear disavowal that occurred during prosecution.
Id. at *7-8 (text added, internal citations omitted).
[2] ’690 Patent
District Court Claim ConstructionThe ’690 patent describes a system that allows a user to select and immediately purchase a pay program from an “interactive program guide.” [...] The interactive program guide [...] allows a user to purchase television packages, and will automatically set reminders to inform the user “[j]ust before the scheduled broadcast time of each program in the package.”
Id. at *4 (text added, internal citations omitted).

[T]he court [construed "interactive program guide"] to [mean] “an application that produces interactive display screens identifying the channels and times on which television programs will air.” [...] The court [...] wanted to make clear that the “interactive program guide” was meant to provide current and forward-looking program schedules and channel information.
Id. at *5-6 (text added, internal citations omitted).
Specification Describes the Interactive Programming Guide as Forward-LookingRovi argues that the plain meaning of a program guide is simply a guide to finding television shows and that nothing in the specification requires it to be limited to forward-looking time and channel information. [For example,] the written description [...] distinguishes between scheduled programming and paid programming, suggesting that paid programming does not have to be scheduled, and that the interactive program guide [...] does not consist only of forward-looking time and channel information.
Id. at *8-9 (text added).

[However, the] patent describes traditional printed television program schedules as containing the broadcast time of programs, and that recently, “electronic television program guides” have been developed to display this information directly on the television screen. [...] The ’690 patent further describes the interactive program guide as issuing reminders to the user before a program that has been purchased is being broadcast [reinforcing] the understanding that the pay programming of the interactive program guide [...] is forward-looking.
Id. at *9-10 (text added, internal citations omitted).
Conclusion
[1] The district court thus was correct in construing the “data feed” limitation of the ’128 patent to mean “an updatable transmission of data sent by a television programming provider over television signals.”
United Video Properties at *8.
[2] [T]he district court was correct in construing the “interactive program guide” limitation of the ’690 patent to mean “an application that produces interactive display screens identifying the channels and times on which television programs will air.”
Id. at *10 (text added).

 

 

 Image Attribution Statement: Brickey, E.M., “Horse-drawn wagon driving through a hole cut in a Big Tree in Mariposa Grove in Yosemite National Park,” available as a public domain due to expired copyright, http://commons.wikimedia.org/wiki/File:Horse-drawn_wagon_driving_through_a_hole_cut_in_a_Big_Tree_in_Mariposa_Grove_in_Yosemite_National_Park,_California,_ca.1900_(CHS-1695).jpg (last viewed April 29, 2014) (image edited).

 

 

 

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