IP Law Daily, PATENT—Fed. Cir.: 16-year old targeted ad method patent could apply in Internet context, (May 31, 2016)

By Cheryl Beise, J.D.

The federal district court in Wilmington, Delaware, unduly limited a patent for delivering targeted advertisements to consumers to use in the television context based on erroneous construction of the claim term “head end system,” the U.S. Court of Appeals for the Federal Circuit has held. The stipulated judgments of noninfringement in eight cases against Internet-based video content providers were vacated and the cases remanded (HBAC Matchmaker Media Inc. v. Google Inc., May 31, 2016, Stoll, K.).

HBAC Matchmaker Media Inc. (“HBAC”) owns U.S. Patent No. 6,002,393 (the ’393 patent), which was filed in 1995, issued on December 14, 1999, and is titled “System and Method for Delivering Targeted Advertisements to Consumers Using Direct Commands.” In eight similar complaints, HBAC alleged that several providers of Internet-based video delivery infringed the ’393 patent and a related patent—U.S. Patent No. 5,774,170 (the ’170 patent).

Each asserted independent claim the ’393 patent recited a system or a method for targeting advertisements from “a head end system” to consumers. The district court construed the term “head end system” to mean “[t]he point in a TV system at which all programming is collected and formatted for placement on the TV system.” The court subsequently clarified the construction to specify that “‘TV system’ necessarily utilizes a conventional television set and/or set-top box for selecting from (and displaying) multiple channels of TV programming.”

Based on the court’s construction, the parties in each case stipulated to judgment of noninfringement of the ’393 patent. The court stayed the actions as to the ’170 patent pending this appeal.

The Federal Circuit held that the district court erred in construing the term “head end system” to require a TV system that “necessarily utilizes” a conventional television set or set-top box. First, the claims did not limit “head end system” to a TV system, the court observed. In fact, independent claims 55 and 56 specifically added a TV limitation, reciting “a method for targeting TV advertisements from a head end system.” Thus, the district court’s construction introduced avoidable redundancy into the language of the claims. A “claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so,” the court said.

Second, because the term “head end system” was not defined or recited in the specification, it was appropriate to look to contemporaneous dictionaries or other extrinsic sources to aid in arriving at the plain meaning of the term to a person of ordinary skill in the art at the time of the invention. The court pointed out that several technical dictionaries published in 1995 demonstrated that “head end” was broadly understood as the origination point in a communication system and was not limited to a conventional TV or cable system.

Finally, while the specification disclosed and the figures depicted a preferred embodiment in which the invention was used in a conventional TV system, the specification did not disclaim or disavow the use of a “head end system” with the Internet as a video-content delivery system, the court said.

Based on the claims, specification, and contemporaneous extrinsic evidence, the Federal Circuit held that the term “head end system” was properly construed as “the origination point in a communication system.” However, this construction did not determine the actual scope of the invention in application, the court noted. On remand, the district court could consider in the first instance whether the claims, as properly construed, were invalid for lack of written description or enablement under 35 U.S.C. §112.

The case is Nos. 2015-1447, 2015-1478, 2015-1479, 2015-1480, 2015-1481, 2015-1521, 2015-1522, and 2015-1523.

Attorneys: Brian David Ledahl and John Eric Carsten (Russ August & Kabat) for HBAC Matchmaker Media, Inc. Andrew John Pincus (Mayer Brown LLP) for Google Inc., YouTube, LLC, ESPN, Inc., Yahoo! Inc., Bravo Media LLC, NBC Entertainment, Universal Television Networks, CBS Interactive, Inc., Disney Online, American Broadcasting Companies, Inc., Vevo LLC, Viacom International Inc., and Blip Networks, Inc. Paul Whitfield Hughes (Mayer Brown LLP) for Google Inc. and YouTube, LLC. Michael J. Malecek and Timothy Chao (Kaye Scholer LLP) for Google Inc. Edward R. Reines (Weil, Gotshal & Manges LLP) for ESPN, Inc., Yahoo! Inc., Bravo Media LLC, NBC Entertainment, Universal Television Networks, CBS Interactive, Inc., Disney Online, and American Broadcasting Companies, Inc. Milton Springut (Springut Law PC) for Vevo LLC, Viacom International Inc., and Blip Networks, Inc. James F. Valentine and Eric Wei Hoong Ow (Perkins Coie, LLP) for Blip Networks, Inc.

Companies: HBAC Matchmaker Media, Inc.; Google Inc.; YouTube, LLC; ESPN, Inc.; Yahoo! Inc.; Bravo Media LLC; NBC Entertainment; Universal Television Networks; CBS Interactive, Inc.; Disney Online; American Broadcasting Companies, Inc.; Vevo LLC; Viacom International Inc.; Blip Networks, Inc.

Cases: Patent TechnologyInternet FedCirNews