Citations
- 801 F. Supp. 2d 465
Full opinion text
MEMORANDUM OPINION AND ORDER
RAYMOND A. JACKSON, District Judge.
This matter stems from ActiveVideo Networks, Inc.’s (“ActiveVideo”) claims against Verizon Communications Inc., Verizon Services Corp., Verizon Virginia Inc., and Verizon South Inc. (collectively, “Verizon”), alleging that Verizon has infringed five patents, in violation of 35 U.S.C. § 271(a)-(c), by making, using, providing, offering to sell, and/or selling within the United States interactive television systems, devices, and/or services, including the Verizon FiOS system and services, that are covered by one or more claims of ActiveVideo’s patents; and Verizon’s claims against ActiveVideo, alleging that ActiveVideo has infringed four patents, in violation of 35 U.S.C. § 271(a)-(c), by making, causing to be made, using, providing, offering to sell, and/or selling within the United States interactive television systems, devices, services, methods, and/or processes, including ActiveVideo’s CloudTV system, that are covered by one or more claims of Verizon’s patents.
The matter before the Court is the claim construction of several terms found in U.S. Patent Nos. 5,526,034 (the “'034 patent”), 5,550,578 (the “'578 patent”), 6,100,883 (the “'883 patent”), 6,034,678 (the “’678 patent”), and 6,205,582 (the “'582 patent”), held by ActiveVideo, and U.S. Patent Nos. 5,682,325 (the “'325 patent”), 6,169,542 (the “'542 patent”), 6,381,748 (the “'748 patent”), and 7,561,214 (the “'214 patent”), held by Verizon. The Court conducted a hearing on March 23, 2011 to construe the following terms: (1) “headend ”; (2) “assignable television communication ”; (3) “interactive controller ”; (4) “interactive session ”; (5) “node ”; (6) “individually assignable processors ”; (7) “common channel ”; (8) “level 1 gateway ”; (9) “level 2 gateway (10) “video still image (11) “data processing network information (12) “interactive element and (13) “multiplex channel associated with the first anchor channel The Court now construes the disputed terms as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
I. BACKGROUND AND PROCEDURAL HISTORY
This case involves cable television systems that have two-way communication capabilities with the user. Traditional cable television systems were unable to provide subscribers with interactive television services, such as video on demand, due in part to bandwidth limitations which are insufficient to provide individual subscribers with traditional television channels in addition to interactive information services that function independently from all other subscribers. Furthermore, the traditional systems, in which signals originated at the headend, would require complex switching mechanisms in order to provide separate interactive television services to thousands of subscribers simultaneously.
On July 16, 2010, ActiveVideo filed a First Amended Complaint in the United States District Court for the Eastern District of Virginia, alleging that the Verizon FiOS system, which provides interactive television services, infringes at least one claim of each of the '034, '578, '883, '678, and '582 patents, which are directed to methods and systems relating to interactive delivery of information services to subscriber televisions over a cable distribution network. On December 2, 2010, Verizon filed an Answer to ActiveVideo’s First Amended Complaint and First Amended Counterclaims against ActiveVideo, seeking, inter alia, declaratory judgments of non-infringement and invalidity of the '034, '578, '883, '678, and '582 patents and alleging that ActiveVideo infringed the '325, '542, '748, and '214 patents.
The '034 patent was issued to ActiveVideo in 1996. The '034 patent describes an interactive home information system having a node in television communication and data communication with a group of home interface controllers. The '034 patent includes forty (40) claims, but ActiveVideo only asserts infringement of Claims 1, 4, 8, and 11. The Parties dispute terms in Claims 1, 4, and 8, but Claim 1, the only independent claim asserted, is representative of the other claims.
Claim 1 provides as follows:
An interactive television information system, for providing interactive cable television service over a cable television system distribution network, the interactive television system comprising: an information source means for supplying a plurality of information services;
a plurality of home interface controller means, each such home interface controller means providing an output in communication with an associated subscriber television and having (i) a cable television system distribution network signal input for television information signals and input selection means for selecting a given one of the television information signals at the signal input and (ii) a data transceiver operative through the cable television system distribution network signal input for conducting data communications over the cable television system distribution network;
node means, in television communication with the information source means and in television communication and data communication with a group of the home interface controller means over the cable television system distribution network, for selecting and providing information services obtained from the information source means to each home interface controller means in the group based on data obtained over the cable television system distribution network from each such home interface controller means; wherein the node means includes (a) activity detection means for determining whether a given home interface controller means is to be placed in an interactive mode and (b) signal assignment means for causing, on an affirmative determination by the activity detection means, the input selection means of the given home interface controller means to select a given television information signal present at the signal input, so that signal assignment is accomplished on a demand basis for those home interface controllers determined to be placed in an interactive mode.
The '578 patent was also issued to ActiveVideo in 1996. The '578 patent describes an interactive television information system coupled to a cable television system having a headend for supplying information services and an information service distribution network for delivering information services to subscriber televisions. The '578 patent has ten (10) claims, but ActiveVideo only asserts infringement of Claims 8 and 9, and the Parties dispute terms in both claims. Claim 8, the only independent claim asserted, is representative.
Claim 8 provides as follows:
An interactive television information system coupled to a cable television system having (i) an information source means available at a headend for supplying a plurality of information services, and (ii) an information service distribution network, for delivering the information services to subscriber televisions, the system comprising;
a plurality of home interface controllers, one such home interface controller associated with each subscriber television, for providing an output in communication with the subscriber television and having (i) a signal output for television information signal and (ii) a data transceiver operative over a data communications link to the headend;
a plurality of subscriber selection devices, one device associated with each home interface controller and in communication with the data transceiver, for permitting subscriber interaction; and
a plurality of interactive controllers, disposed at the headend, each interactive controller (i) in television communication with the information source means and (ii) in assignable television communication over the network with an assigned home interface controller and (iii) in assignable data communication over the data communications link with the assigned home interface controller, so that the interactive controller furnishes the information service interactively over the network to the assigned home interface controller and its associated television.
The '883 patent was issued to ActiveVideo in 2000 and is a continuation of the '578 patent. The '883 patent has fifty-five (55) claims, but ActiveVideo only asserts infringement of Claims 1, 11, 13, 15, 22, 26 (which depends on independent Claim 24 and dependent Claim 25), and 30. The Parties dispute terms in Claims 1, 13, 24 and 25. Claims 1 and 13 are the only independent claims asserted and are representative of the other claims.
Claim 1 provides as follows:
A method for providing interactive service on a cable television system that distributes television signals from a cable headend over an information service distribution network to a plurality of subscriber television sets, said method comprising:
detecting at a node on the information service distribution network a request, from a home interface controller associated with one of the subscriber television sets, for an information service in an interactive mode; controlling at a processor in the node, in response to detection of the request, an interactive session with the requesting home interface controller; providing an information signal capable of full motion video responsive to the interactive session through the information service distribution network to the subscriber television set associated with the requesting home interface controller for display of an image produced by the information signal; and
receiving data communications at the processor from the requesting home interface controller during the interactive session representative of commands interactive with the image on the associated subscriber television set.
Claim 13 provides as follows:
An interactive television information system for use over an information service distribution network that delivers information services from a headend to subscriber televisions, the interactive television information system comprising:
a plurality of home interface controllers, each such home interface controller being associated with a subscriber television and having a data transceiver, the plurality of home interface controllers, each operative over a data communications link;
activity detection means, at a node on the information service distribution network, for determining from communications received over the data communication link whether a given home interface controller is to be placed in an interactive mode; and a processor, responsive to said activity detection means, coupled to the data communication link and in communication with the information service distribution network for providing an information signal, the information signal being capable of full motion video in the interactive mode, for transmission on the information service distribution network and viewable reception only in the subscriber television associated with the home interface controller to be placed in interactive mode, said processor controlling an interactive session with the home interface controller to be placed in interactive mode.
The '678 patent was also issued to ActiveVideo in 2000 and is a continuation of the '888 patent. The '678 patent has seven (7) claims, but ActiveVideo only asserts infringement of Claims 1 and 2. The Parties dispute terms in Claims 1, which is the only independent claim asserted.
Claim 1 provides as follows:
A method for interactive delivery of information services to subscriber televisions over a cable distribution network comprising the steps of:
receiving at a node over a data communication link a request for an interactive session from a home interface controller associated with a subscriber television;
assigning one of a plurality of television information signals carried by the cable distribution network to the requesting home interface controller to satisfy the request;
informing the requesting home interface controller of the assigned television information signal over the data communication link;
receiving at the node over the data communication link a request for an information service from the home interface controller associated with the subscriber television; and
putting the information service on the assigned television information signal.
The '582 patent was issued to ActiveVideo in 2001. The '582 patent describes an interactive cable system having a plurality of assignable interactive controllers which communicate with subscribers through an information service distribution network, a frame server is provided for interfacing with a plurality of subscribers. The '582 patent includes nine (9) claims, but ActiveVideo only asserts infringement of Claims 5, 6, 7, 8, and 9. The Parties dispute terms in claims 5, 8, and 9, but Claim 5, the only independent claim asserted, is representative of the other claims.
Claim 5 provides as follows:
An interactive cable system comprising:
(i) an information service distribution network, for delivering information services from a headend to subscriber television;
(ii) a plurality of home interface controllers, each home interface controller associated with a subscriber television and having a data transceiver operative over a data communications link to the headend;
(iii) a plurality of subscriber selection devices, each such device associated with a home interface controller and in communication with the data transceiver thereof;
(iv) a plurality of individually assignable processors, disposed at the headend, in assignable data communication with an assigned home interface controller and in television communication over the network with the subscriber television associated with the assigned home interface controller, and
(v) a frame server in communication with a plurality of home interface controllers each assigned to one of a plurality of processes running in said frame server for interactive service, said processes receiving data communications from the subscribers associated with their respective assigned home interface controllers, said frame server generating interactive pages responsive to the data communications and supplying the interactive pages to the subscriber televisions associated with the assigned home interface controllers in digitally encoded television signals over the information service distribution network.
The '325 patent was issued to Verizon in 1997. The '325 patent describes routing and access control and billing functionalities in a video distribution network capable of providing subscribers with access to multiple information services providers. The '325 patent includes thirty-one (31) claims, but Verizon only asserts infringement of Claims 1 and 28. The Parties dispute terms in both claims and both claims are independent. Claim 1 provides as follows:
A communication method comprising:
receiving a request for service from a subscriber’s terminal at a level 1 gateway control element of a broadband communication network;
in response to the request for service, generating menu information listing a plurality of broadband information service providers available through the broadband communication network;
transmitting said menu information from the level 1 gateway to the terminal;
visually displaying the menu to the subscriber;
receiving a selection of a service provider listed on the menu at the level 1 gateway; and
controlling the broadband communication network to establish a broadband communication though the network between a broadband server operated by the selected service provider and the subscriber’s terminal and signaling communication between the subscriber’s terminal and a level 2 gateway controlling operation of the server.
Claim 28 provides as follows:
In a system comprising:
communication network selectively providing broadband communications links;
a plurality of information service provider systems connected to the network, each provider system being capable of transmitting broadband digital information via a communication link through the network; and
a plurality of terminals for transmitting control signals upstream through the network in response to user inputs and for providing displays in response to information received through the network;
a gateway for:
(1) transmitting a menu of available service providers to one of the terminals for display,
(2) receiving a control signal from the one terminal representing a selection of one service provider from the menu, and
(3) controlling the network to establish a broadband communication link through the network between one of the information service provider systems associated with the selected service provider and the one terminal.
The '542 patent was issued to Verizon in 2001. The '542 patent describes a method of delivering advertising through an interactive video distribution system. The '542 patent includes twenty-six (26) claims, but Verizon only asserts infringement of Claims 1 and 6. The Parties dispute one term in independent Claim 1 only.
Claim 1 provides as follows:
A method of delivering advertising through a head end facility of an interactive video distribution system, said method comprising the steps of:
transmitting an advertisement to an interactive video subscriber unit in connection with an interactive video program;
receiving, at said head end facility over a return path, a request to register said advertisement in a menu; generating an entry for said advertisement in said menu;
communicating to said subscriber unit, said menu in a video still image; obtaining, at said head end facility over said return path, a selection request for said entry; and
providing to said subscriber unit, in response to said selection request, supplementary advertising information associated with said advertisement.
The '748 patent was issued to Verizon in 2002. The 748 patent describes methods and an apparatus for accessing a network, such as the Internet, using a television and set top box. The ’748 patent includes thirty-six (36) claims, but Verizon only asserts infringement of Claims 13 and 20. The Parties dispute terms in independent Claim 13 only.
Claim 13 provides as follows:
A method of retrieving and retransmitting data processing network information in response to a user selection request, comprising:
transmitting first selection information to be displayed on a television; receiving a user selection request based on the transmitted first selection information;
retrieving data processing network information, in a network format, corresponding to the user selection request;
transforming the data processing network information from the network format having a first interactive element to a television format having a second interactive element, and transmitting the data processing network information in the television format to the television.
The '214 patent was issued to Verizon in 2009. The '214 patent describes a two-dimensional channel navigation technique in which a channel up or down key is used to allow a viewer to sequence vertically through anchor channels of a number of different broadcast providers, while a channel right or left key is used to allow the viewer to sequence horizontally through one or more multiplex channels associated with a given anchor channel from a given broadcast provider. The '214 patent includes seventeen (17) claims, but Verizon only asserts infringement of Claim 9, which contains a number of disputed terms.
Claim 9 provides as follows:
A method of providing channel selection, comprising:
providing a set of channels; displaying a first anchor channel from the set of channels when selected;
providing a first indication that the first anchor channel is an anchor channel;
superimposing the fírst indication over the displag of the first anchor channel;
including with the first indication a second indication, wherein the second indication is included when there is at least one multiplex channel associated with the first anchor channel;
receiving a first command to select from the second indication a first multiplex channel of the at least one multiplex channel associated with the first anchor channel;
displaying the first multiplex channel; providing for the selection of a second anchor channel from the set of channels through the use of a second command of a different type than the first command; and
performing at least one of:
switching between multiplex channels associated with an anchor channel from the set of channels using commands of the same type as the first command;
switching between anchor channels from the set of channels using commands of the same type as the second command; and
switching from a multiplex channel associated with one anchor channel from the set of channels to a different anchor channel from the set of channels through a command of the same type as the second command.
II. LEGAL STANDARD
Claim construction is “a question of law, to be determined by the court.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In construing claims, the Court must first look first to the intrinsic evidence in the record, i.e. the claims, the specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction begins with determining how a person of ordinary skill in the art understands a claim term as of the filing date of the patent application. Phillips v. AWH Corp. et al., 415 F.8d 1803, 1313 (Fed.Cir.2005), cert. denied, 546 U.S. 1170, 126 S.Ct. 1332, 164 L.Ed.2d 49 (2006). In the unlikely event that the intrinsic evidence is insufficient to determine the acquired meaning of the claim language, the court may rely on extrinsic evidence, i.e. dictionaries, treatises, publications, and expert testimony. See id.; Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1585 (Fed.Cir.1996).
A. Claim Language
The Court’s claim construction analysis must begin with the words of the claim. “[T]he words of a claim ‘are generally given their ordinary and customary meaning’ ... the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (quoting Vitronics, 90 F.3d at 1582). This ordinary meaning “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.” Id. at 1313. Thus, the Court need not provide a new definition or rewrite a term when the Court finds the term’s plain and ordinary meaning is sufficient. 02 Micro Int'l. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed.Cir.2008).
If the meaning of a term is not immediately apparent, courts must look to the written description and prosecution history to provide guidance as to the meaning of the claim terms. Phillips, 415 F.3d at 1314. In analyzing the claim language, the Court must analyze the context in which the term appears and other claims of the patent to gain insight on the patentee’s intention for the claim definition. “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.” Id.
B. Specification
The specification contains a written description of the invention, the manner and process of making and using it, and the best mode contemplated by the inventor of carrying it out. See 35 U.S.C. § 112. “It is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.” Vitronics, 90 F.3d at 1582; see also Phillips, 415 F.3d at 1315. However, there is a distinction between using the specification to analyze claim terms and incorporating limitations from the specification into the claim language. Phillips, 415 F.3d at 1323; see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed.Cir.2004).
C. Prosecution History
The prosecution history contains the complete record of all proceedings before the Patent and Trademark Office (“PTO”), including any express representations made by the applicant regarding the scope of the claims. The prosecution history is useful in determining how the inventor understood the patent and invention, and may provide evidence that the inventor limited the invention during the course of prosecution, thus restricting the scope of the claim language. Phillips, 415 F.3d at 1317. However, the Court should not rely too heavily on the prosecution history because it “represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, [such that] it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id.
D. Extrinsic Evidence
A court may also consider extrinsic evidence, “which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317-19. However, extrinsic evidence should not be used “to contradict claim meaning that is unambiguous in the light of the intrinsic evidence.” Id. at 1324. Judges may consult such resources to better understand the underlying technology and to aid in construing claim terms, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” Id. at 1322-23. Extrinsic evidence has been found to be generally less reliable than intrinsic evidence and accordingly should be considered in light of the intrinsic evidence. If analysis of the intrinsic evidence will resolve any ambiguity, it is improper to consider extrinsic evidence in determining the meaning of the claims. Id. at 1320.
III. DISCUSSION
A. Stipulated Term Definitions
Prior to the Markman hearing, the Parties filed a Joint Pre-Hearing Markman Statement indicating that the Parties agreed to the definitions of eight (8) claim terms. Accordingly, the Court adopts the following term definitions:
1. The term “cable television system ” appears in Claims 1, 4, and 8 of the '034 patent, Claim 8 of the '578 patent, and Claims 1 and 24 of the '883 patent. The parties agree that a “cable television system ” is “an integrated system for delivery of any Information Service to subscribers for use in connection with their televisions, including conventional cable television systems utilizing coaxial cable for distribution primarily of broadcast and paid television programming, cable television systems using fiber optics and mixed fiber optic-coaxial cable, as well as other means for distribution of information services to subscribers.”
2. The term “information service ” appears in Claims 1 and 8 of the '034 patent, Claim 8 of the '578 patent, Claims 1, 13, 15, and 30 of the '883 patent, Claim 1 of the '678 patent, and Claims 5, 7, 8, and 9 of the '582 patent. The parties agree that an “information service ” is “a service capable of being furnished to a television viewer having an interface permitting (but not necessarily requiring) interaction with a facility of the cable provider, including but not limited to an interactive information service, video on demand, Internet access, local origination service, community event service, classified advertising services, newspapers, advertising, and televised catalogue ordering.”
3. The term “network manager means ” appears in Claim 8 of the '034 patent. The parties agree that the term “network manager means ” is governed by 35 U.S.C. § 112, ¶ and that its function is “assigning an available one of the multimedia processing means to furnish an information service, over the cable television distribution network, to one of the home interface controller means based on data obtained from the one of the home interface controller means over the cable television system distribution network, so that assignment of multimedia processing means is accomplished on a demand basis” and the corresponding structure is netfwork] manager 66a.
4. The term “television communication ” appears in Claim 8 of the '578 patent. The parties agree that “television communication ” means “providing an information service via a television information signal.”
5. The term “information signal ” appears in Claims 1, 11, 13, 22, 24, and 30 of the '883 patent. The parties agree that an “information signal ” is “a signal that may be utilized by a television, directly or via a home interface controller, such as a set-top box, for video display, regardless of the form, including a standard NTSC-modulated if carrier, an MPEG-compressed digital data stream, or any other format.”
6. The term “frame server ” appears in Claim 5 of the '582 patent. The parties agree that the term “frame server ” is fully defined by the language of the “frame server” limitation in the claim, and as such, does not require additional construction.
7. The term “interactive pages ” appears in Claim 5 of the '582 patent. The parties agree that “interactive pages ” are “pages that permit user interaction, including still video frame images or a multimedia short script for interpretation by a local process such as a typical page of HTML data as practiced by conventional web browsers.”
8. The term “television formal ” appears in Claim 13 of the 748 patent. The parties agree that a “television formal ” is “format for display on a television.”
B. Disputed Terms in ActiveVideo’s Patents
1. “headend ”
The term “headend” appears in Claim 4 of the '034 patent, Claim 8 of the '578 patent, Claims 1, 13, and 24 of the '883 patent, and Claim 5 of the '582 patent. ActiveVideo argues that a “head-end” is “a facility within the television distribution network from which Television Information Services or Signals are distributed,” while Verizon defines “head-end ” as a facility that originates and distributes broadcast television signals and potentially other signals.” Joint Pre-Hr’g Markman Statement App. A, at 7. The primary distinction between the Parties’ proposed constructions is whether broadcast television signals originate in the “headend.”
In construing this term, the Court first looks to the claim language to determine whether broadcast television signals must originate in the “headend ” or whether, as ActiveVideo claims, this definition unduly limits the term. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001) (“All intrinsic evidence is not equal however. First, we look to the claim language. Then we look to the rest of the intrinsic evidence, beginning with the specification and concluding with the prosecution history, if in evidence.” (internal citations omitted)); Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998) (“Even within the intrinsic evidence, however, there is a hierarchy of analytical tools. The actual words of the claim are the controlling focus.”). Claim 1 of the '883 patent is illustrative of the use of the term “headend ” in the other asserted claims and provides: “A method for providing interactive service on a cable television system that distributes television signals from a cable headend over an information service distribution network to a plurality of subscriber television sets ...”. Nothing within the claim language indicates that broadcast television signals must originate at the “headend; ” rather the claim reveals only that television signals in general are distributed from the “headend.”
Accordingly, the Court turns to the common specification to determine whether a deviation from the claim language is warranted. See Interactive Gift Express, 256 F.3d at 1331. The common specification does not speak to whether broadcast television signals must originate at the “head-end; ” however, Verizon alleges that because Figure 7 depicts broadcast signals as originating at the “headend” the definition of “headend ” must be so limited. See '034 patent fig. 7 (filed May 3, 1993). However, Verizon’s proposed construction would impermissibly limit the term “headend ” based on a drawn embodiment. See, e.g., Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 907 (Fed.Cir.2005) (“By its reliance on the figures, the district court improperly limited claim 1 to a preferred embodiment. We have consistently advised against this approach to claim construction. Claims of a patent may only be limited to a preferred embodiment by the express declaration of the patentee .... ” (internal citations omitted)). Furthermore, Figure 1, which depicts the preferred embodiment, clearly illustrates a television information system in which network signals, or broadcast television signals, originate at the National Processing Center rather than at the “headend ” '034 patent fig. 1, and a definition which would exclude the preferred embodiment is “rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case,” Vitronies, 90 F.3d at 1583.
Because intrinsic evidence clearly establishes the meaning of this disputed term, extrinsic evidence is unnecessary. Accordingly and in light of the intrinsic record, the Court finds that “headend ” is defined as “a facility within the television distribution network from which television information services or signals are distributed.”
2. “interactive controller ”
The term “interactive controller ” appears in Claim 8 of the '578 patent. ActiveVideo would define “interactive controller” to mean “equipment for providing Information Services and for communicating with a home interface controller.” Verizon, on the other hand, defines “interactive controller” as “a processing unit assigned on a one-to-one basis to a home interface controller for providing-two-way information services.” Pre-Hr’g Markman Statement App. A, at 8. The primary contention between the Parties is whether the “interactive controller ” must be assigned on a “one-to-one” basis to a particular home interface controller, or whether the “interactive controller ” may be assigned to multiple home interface controllers at one time.
Beginning with the patent claims, Claim 8 of the '578 patent provides; “An interactive television information system coupled to a cable television system ..., the system comprising: ... a plurality of interactive controllers, disposed at the headend, each interactive controller (i) in television communication with the information source means and (ii) in assignable television communication over the network with an assigned home interface controller and (iii) in assignable data communication over the data communications link with the assigned home interface controller, so that the interactive controller furnishes the information service interactively over the network to the assigned home interface controller and its associated television.” Verizon argues that because the “interactive controller ” is in assignable television communication with an home interface controller, and in assignable data communication with the home interface controller, the claim language indicates that each “interactive controller ” is assigned to only one home interface controller. However, it is well settled in patent law that the terms “an” and “the” do not suggest singularity. See, e.g., Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1350-51 (Fed.Cir.2005) (“Like the words ‘a’ and ‘an,’ the word ‘the’ is afforded the same presumptive meaning of ‘one or more’ when used with the transitional phrase ‘comprising.’ ”).
Furthermore, the construction that the “interactive controller ” is not limited to assignment to only one home interface controller is also supported by the doctrine of claim differentiation, as the '883 patent, which is a continuation of the '578 patent, contains a dependent claim that specifically provides for one-to-one assignment. See '883 patent claim 26 (filed Jun. 4, 1996) (“The interactive television information system according to claim 25 further comprising a network manager for assigning an available one of said processors to furnish interactive service to one of said home interface controllers in interactive mode based on data obtained from the data communication path so that assignment of processors to home interface controllers is accomplished on a demand basis.” (emphasis added)); see also Free Motion Fitness, 423 F.3d at 1351 (“The doctrine of claim differentiation ‘create[s] a presumption that each claim in a patent has a different scope.’” (quoting Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998))).
Verizon also urges the Court to consider the common specification which describes an embodiment where “an individual MMC is assigned on a demand basis to each requesting home interface controller.” '034 patent col. 7 ll. 24-28. However, the common specification also clearly describes a “party-line” embodiment in which multiple home interface controllers share the same MMC. See '034 patent col. 12 ll. 21-30 (“In the case of many types of interactive television service, the home interface controller will have exclusive use of the assigned MMC, a ‘private line’ to it over the data communications link and the interactive trunk 42b. In the case of near video on demand, however, several home interface controllers may share the same time slot on a movie, for example, and these subscribers would have a ‘party-line’ to the MMC.”). Accordingly, the Court finds that the term “interactive controllers” should be properly construed to include the described “party-line” embodiment. See, e.g., Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1364 (Fed.Cir.2001) (holding that where the patent specification contained examples of both single and multiple dose administrations, the district court’s refusal to read a single dose limitation from the specification into the claims was not error).
Because the Court finds that the intrinsic evidence supports a finding that the “interactive controller” need not be assigned on a “one-to-one” basis, the Court declines to consider any further extrinsic evidence in construing this term. Thus, the Court finds that “interactive controller” means “equipment for providing information services and for communicating with a home interface controller.”
3. “assignable television communication ”
The term “assignable television communication ” appears in Claim 8 of the '578 patent. ActiveVideo’s proposed construction of “assignable television communication ” is “an Information Service provided via a Television Information Signal capable of being assigned to a home interface controller, such as by addressed data packets,” while Verizon’s proposed construction defines the term as “communication over a television channel/frequency dedicated to the home interface controller in response to a request for service.” Pre-Hr’g Markman Statement App. A, at 8. The primary dispute among the parties is whether the communication must be delivered over a channel/frequency.
Beginning with the patent claims, Claim 8 of the '578 patent provides, in relevant part: “An interactive television information system coupled to a cable television system ..., the system comprising: ... a plurality of interactive controllers, disposed at the headend, each interactive controller (i) in television communication with the information source means and (ii) in assignable television communication over the network with an assigned home interface controller ...” ActiveVideo alleges that the term “television communication” is defined within the patent to mean “providing an information service via a television information signal” and therefore, the term “assignable television communication ” cannot be limited to a particular type of signal, such as frequency. Verizon, on the other hand, seeks to limit the signal assignment to a channel/frequency which would exclude assignment of other signals such as digital data streams or addressed packets.
Looking to the common specification, the term “television communication” is clearly defined to include provision of services through “television information signals.” '034 patent col. 5 ll. 32-33. The term “television information signal” is also specifically defined as “any signal that may be utilized by a television for video display, regardless of the form, including a standard NTSC-modulated rf carrier, an MPEG-compressed digital data stream, or any other format.” '034 patent col. 5 ll. 33-37. This express definition indicates that the assignable signals are not limited to frequencies as Verizon suggests. See Vitronics, 90 F.3d at 1582 (“Although words in a claim are generally given then-ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.”). Similarly, because “television information signals” are signals provided in any format, the Court sees no need to incorporate the additional modifier “such as by addressed data packets” to the definition of “assignable television communication.” See Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999) (“General descriptive terms will ordinarily be given their full meaning; modifiers will not be added to broad terms standing alone.”).
Turning to the adjective “assignable,” ActiveVideo argues that the Court should apply the plain and ordinary meaning of the term “assignable,” which merely means “capable of being assigned,” rather than the term “dedicated” as suggested by Verizon. Though the meaning of “television communication” has been clearly defined within the common specification and agreed upon by the Parties, see supra Part III.A, the Court must look to the ordinary meaning of the modifier “assignable” to determine the meaning of the entire claim term, see Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1372 (Fed.Cir.2003) (“[S]imply because a phrase as a whole lacks a common meaning does not compel a court to abandon its quest for a common meaning and disregard the established meanings of the individual words.”). “Dictionary definitions provide evidence of a claim term’s ‘ordinary meaning.’ ” Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1350 (Fed.Cir.2003); see also Phillips, 415 F.3d at 1314 (“In 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.” (citation omitted)).
The meaning of the word “assign” is “to set aside for a particular purpose” and the adjective prefix “-able” means “susceptible, capable, or worthy of a specified action.” Webster’s II New College Dictionary 67, 2 (2001). Therefore, the plain and ordinary meaning of “assignable” is “capable of being assigned” and not “dedicated” as Verizon suggests. As mentioned in supra Part III.B.2 above, nothing within the patent specification requires the television communication to be assigned on a one-to-one basis to a requesting home interface controller, an arrangement which is connoted by use of the term “dedicated.” See id. at 294 (defining the word “dedicated” as “used for a single, special electronic business application”). Accordingly, based on the patent claims and the term definitions as set forth in the common specification, the Court finds that the term “assignable television communication ” means “an information service provided via a television information signal capable of being assigned to a home interface controller.”
4. “interactive session ”
The term “interactive session ” appears in Claims 1 and 13 of the '883 patent and Claim 1 of the '678 patent. ActiveVideo defines “interactive session ” as a “two-way communication session between devices in a network that is established at a certain time and torn down at a later time.” Verizon defines “interactive session ” as “two-way communication over a channel/frequency assigned on a demand basis to an individual user.” Pre-Hr’g Markman Statement App. A, at 3. As with the term “assignable television communication,” the primary dispute between the parties is whether the provision of an “interactive session ” must be limited to the assignment of a channel/frequency.
As always, the Court begins by examining the claim language. Claim 1 of the '883 patent provides in relevant part:
A method for providing interactive service on a cable television system ..., said method comprising:
controlling at a processor in the node, in response to detection of the request, an interactive session with the requesting home interface controller; providing an information signal capable of full motion video responsive to the interactive session through the information service distribution network to the subscriber television set associated with the requesting home interface controller for display of an image produced by the information signal; and
receiving data communications at the processor from the requesting home interface controller during the interactive session representative of commands interactive with the image on the associated subscriber television set.
Similarly, Claim 1 of the '678 patent provides, in relevant part: “A method for interactive delivery of information services to subscriber televisions over a cable distribution network comprising the steps of: receiving at a node over a data communication link a request for an interactive session from a home interface controller associated with a subscriber television ...” In reviewing the claims, the Court finds that the claims do not shed light on whether the “interactive session ” must be limited to a channel/frequency assignment. Therefore, the Court must look to the common specification to ascertain the scope of the claim term “interactive session.” See Gart v. Logitech, Inc., 254 F.3d 1334, 1341 (Fed.Cir.2001) (noting that the court should consult the specification where “the language itself lacks sufficient clarity such that there is no means by which the scope of the claim may be ascertained from the language used”).
Verizon alleges that the common specification supports its definition of “interactive session ” because the it describes an embodiment that resolves assignment issues caused when multiple home interface controllers request to be placed in interactive mode simultaneously by allowing the first home interface controller to keep its assigned frequency until an interactive mode is no longer necessary. See '034 patent col. 3 ll. 13-21. However, the common specification also indicates that the assignment of a frequency is merely one embodiment, and that the information services can be provided “in a wide variety of formats.” '034 patent col. 9 ll. 145-65 (“FIG. 10 shows the allocation of frequency bands in the express trunks ... These frequency assignments are merely illustrative, however. Moreover, the television communications and the data communications between node and subscriber home can be achieved in a wide variety of formats .... [F]or example, the signal could be provided as a compressed digital data stream on a time-shared basis or as addressed packets.”). Therefore, the Court declines to limit the claim based upon the specific embodiment described in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1302-03 (Fed.Cir.2007) (“The mere fact that a specification’s examples of translation may involve a change in protocol from a higher to a lower level protocol does not establish that such a limitation should be imported into the claims”).
Verizon also urges the Court to consider the prosecution history in limiting an “interactive session ” to assignment of a channel/frequency. Verizon argues that the applicant distinguished the Kuribayashi prior art reference during prosecution of the '678 patent in order to avoid rejection of certain claims. However, upon close review of the prosecution history, the Court finds that the applicant distinguished the Kuribayashi reference on the grounds that Kuribayashi failed “to disclose requesting, establishing or engaging in an interactive session ” at all, and not that the Kuribayashi reference failed to disclose an “interactive session ” provided via a frequency/channel. See VanNorman Decl. Ex. 29, at AVNW00001201. Verizon also argues that the applicant distinguished the Lovett prior art reference based on the fact that Lovett fails to assign a channel for the provision of the “interactive session.” However, the prosecution history reveals that the applicant distinguished Lovett not on the basis of whether or not a channel is assigned, but rather on whether the channel must be dedicated, to a particular subscriber at all times, rather than being assigned on an on-demand basis. See VanNorman Decl. Ex. 30, at AVNW00001212-13. Therefore, neither the Kuribayashi nor the Lovett references cited to the patent examiner caused the applicant to disclaim an “interactive session ” provided using signals other than a channel/frequency.
Though not a major dispute, the Parties also disagree on what is meant by the term “session,” with ActiveVideo describing the session as being “established at a certain time and torn down at a later time,” and Verizon claiming that the “session” is provided “on a demand basis.” Nothing about ActiveVideo’s construction connotes that the session must be initiated by the subscriber, as described in the asserted claims and the common specification. See, e.g., '883 patent col. 19 ll. 52-55 (“detecting at a node on the information service distribution network a request, from a home interface controller associated with one of the subscriber television sets, for an information service in an interactive mode”). Accordingly, the Court finds that Verizon’s characterization of the “interactive session ” as being provided “on a demand basis” properly conveys what is meant by “interactive session.”
Having viewed all the intrinsic evidence, the Court finds that an “interactive session ” need not be limited to the assignment of a channel/frequency, but rather encompasses a wide variety of signals. The Court also finds that the intrinsic record supports Verizon’s claim that the “interactive session ” is initiated “on a demand basis” by a requesting subscriber. Furthermore, because the meaning of “Interactive session ” is clear from the intrinsic evidence, the Court declines to consider any further extrinsic evidence in construing this term. Thus, the Court finds that “interactive session ” means “two-way communication session between devices in a network that is established on a demand basis.”
5. “node ”
The term “node ” appears in Claims 1 and 13 of the '883 patent and Claim 1 of the '678 patent. ActiveVideo seeks to define “node” as “equipment in a cable distribution network that communicates with at least one home interface controller” while Verizon proposes to define “node” as “equipment that logically lies between and communicates with a cable headend and a small number of home interface controllers, that is physically connected and in close proximity to each subscriber through one or more feeders, and that contains a substantially identical copy of the data stored at a regional processing center.” Pre-Hr’g Markman Statement App. A, at 7. The difference in the Parties* proposed constructions reflects four disputes based upon the location of the “node” and the proximity to subscribers, the number of home interface controllers connected to the “node,” and whether the “node” is required to contain a copy of data stored at the regional processing center. The Court will address each of these proposed limitations in turn.
The Court begins by examining the language of the asserted claims to determine whether any of the limitations that Verizon asserts are apparent from the claim language. The relevant portion of Claim 1 of the '883 patent provides as follows:
A method for providing interactive service on a cable television system that distributes television signals from a cable headend over an information sexwice distribution network to a plurality of subscriber television sets, said method comprising:
detecting at a node on the information service distribution network a request, from a home interface controller associated with one of the subscriber television sets, for an information sendee in an interactive mode; controlling at a processor in the node, in response to detection of the request, an interactive session with the requesting home interface controller;
Similarly, Claim 1 of the '678 patent provides, in relevant part:
A method for interactive delivery of information services to subscriber televisions over a cable distribution network comprising the steps of:
receiving at a node over a data communication link a request for an interactive session from a home interface controller associated with a subscriber television;
receiving at the node over the data communication link a request for an information sexwice from the home interface controller associated with the subscriber television; ...
Verizon first argues that the “node ” “logically lies between” the headend and the home interface controllers and that the “node ” is “physically connected and in close proximity” to each subscriber. Claim 1 of the '883 patent clearly indicates that communication between the cable headend and the subscribers takes place through the “node ” however the claim language does not indicate where the “node ” must be located or how the “node ” is connected to each subscriber. Accordingly, the Court looks to the common specification for guidance on the location of the “node ” within the cable distribution system.
Verizon argues that Figure 1 illustrates the “node ” lying in between the headend and the home interface controllers within the distribution network. See '034 patent fig. 1. Though Verizon concedes that Figure 7 depicts an embodiment where the “node ” is located at the headend rather than between the headend and the home interface controllers, Verizon draws a distinction between logical location and physical location, noting that the “node ” in Figure 7 is nevertheless “logically” located between the headend and the subscribers. See '034 patent fig. 7. The Court finds that Verizon’s distinction between “logical” and “physical” location is only likely to confuse, rather than clarify, the term for the jury. See Suker Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed.Cir.2004) (“The meaning and scope of patent claim terms, as determined by a district court’s claim construction rulings, are legal issues central to most patent cases. Thus, the district court nonnally will need to provide the jury in a patent ease with instructions adequate to ensure that the jury fully understands the court’s claim construction rulings and what the patentee covered by the claims.”). Accordingly, the Court finds that Verizon’s proposed “logically located” construction is equally conveyed by consti’uing the teim “node ” to require communication between the headend and the home interface controllers. Furthermore, given the depiction in Figure 7, which places the “node ” at the headend, the Court declines to construe the “node ” as being in close proximity to the each subscriber.
In seeking to limit the term “node ” to communicating with only a “small number” of subscribers, Verizon relies on language in the specification of U.S. Patent No. 5,220,420 (the “'420 patent”), a parent patent to the patents-in-suit, which indicates that the “node ” serves a “small group of homes.” See '420 patent col. 2 11. 52-58. Though it is unclear whether the applicant of the '420 patent specifically disclaimed a “node ” that is connected to more than a “small number” of subscribers, the Court need not engage in that inquiry because “[t]he specification that is relevant to claim construction is the specification of the patent in which the claims reside.” Young Dental Mfg. Co., Inc. v. QS Special Prods., Inc., 112 F.3d 1137, 1143 (Fed.Cir.1997). Looking to the common specification, the summary of the invention provides that the “node ” is in communication with “a group” of home interface controllers, but fails to comment on the relative size of the group. Therefore the Court declines to limit the term “node ” to communicating with only a small group of subscribers. Furthermore, the Court does not adopt ActiveVideo’s proposed limitation that the “node ” communicate with “at least one” subscriber, as a group connotes more than one, rather than at least one.
Finally, Verizon seeks to impose the additional limitation that the “node ” store “a substantially identical copy of the data stored at a regional processing center” by relying upon statements made in the specification of and during the prosecution of several parent applications to the patents-in-suit. As previously mentioned, the most relevant specification is the one in which the disputed claim is contained. See Young Dental Mfg., 112 F.3d at 1143. Furthermore, “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553 (Fed.Cir.1996). The common specification makes no mention of data stored at the “node ” nor is this limitation reflected in the asserted claims. Thus, the Court declines to impute this limitation from the specification of the parent application, where the storage feature was specifically claimed, to the asserted claims in this case.
Verizon also argues that the applicant distinguished at least 16 separate prior art references based upon the feature of storage at the “node ” during the prosecution of U.S. Patent No. 5,093,718 (the “718 patent”), a parent application to the patents-in-suit. Although the prosecution history of a parent application may be used to disclaim the scope of a child application, disclaimer is not warranted where the claim language that was the subject of the disclaimer in the parent is not present in the child. See, e.g., Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed.Cir.2007) (“The fact that the prosecution history relied upon was created in connection with the parent application would be unimportant if the claim language at issue were present in both patent applications.”). As in Saunders, the claim language in the 718 patent specifically provided for a system that contained the limitation that each “node ” contain “a complete copy of said video picture information which said subscriber associated with said node can display and interact with.” '718 patent claim 1. In fact, the abstract of the '718 patent specifically indicates that each “node ” contains “a substantially identical copy of the interactive video picture information and related data from a regional processing center.” Accordingly, “[w]hen the purported disclaimers are directed to specific claim terms that have been omitted or materially altered in subsequent applications (rather than to the invention itself), those disclaimers do not apply.” Saunders Grp., 492 F.3d at 1333. In the patents-in-suit, rather than storing the data at the “node ” the interactive system is achieved by using an interactive controller or processor, such as the MMC. Furthermore, limiting the “node ” to storing a copy of the data would be at odds with the requirement that the “node ” be in communication with the headend in delivering interactive services to the subscriber.