IP Law Daily, PATENT—Fed. Cir.: Noninfringement judgment in commercial-skipping patent dispute affirmed, (May 28, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court did not err in its claim construction, and the evidence at trial was insufficient to sustain the jury’s infringement verdict on either of the patents.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s decision granting motion for judgment as a matter of law (JMOL) of noninfringement of ClearPlay, Inc.’s patents covering technologies that allow viewers to automatically skip commercials in previously-recorded television broadcasts. The Federal Circuit determined that there was no error in the claim constructions employed by the district court in granting JMOL (ClearPlay, Inc. v. Dish Network L.L.C., No. 23-2134 (Fed. Cir. May 26, 2026)).

Background. ClearPlay, Inc. (ClearPlay) is the owner of U.S. Patents Nos. 7,577,970 (the ’970 patent) and 6,898,799 (the ’799 patent), which allow the skipping of commercials in previously recorded television broadcasts. In 2014, ClearPlay sued DISH Network, LLC and Echostar Technologies LLC (collectively, DISH) accusing its AutoHop feature available on its Hopper 1, Hopper 2, and Hopper 3 set-top boxes of infringing both patents. The case was tried by a jury. During trial, DISH moved for JMOL of noninfringement. The district court reserved ruling until after trial. In March 2023, a jury found infringement of both patents and awarded damages to ClearPlay. Following the jury verdict, the district court granted DISH’s JMOL motion for noninfringement of claims 28 and 33 of the ’970 Patent and claim 12 of the ’799 Patent. ClearPlay appealed arguing that in granting JMOL, the district court (1) applied claim constructions not given to the jury, and (2) applied the wrong standard to its review of the trial evidence.

Claim construction. ClearPlay argued that the JMOL order used a different construction of the “disabling” limitation of the ’970 Patent from the one used in the jury instructions. The Federal Circuit noted that the jury was instructed that the ’970 Patent required “directly disabling a navigation object so that its filtering action is ignored, as opposed to disabling something other than the navigation object that results in the navigation object’s filtering action being ignored.” In the JMOL order, the district court pointed out that the limitation did not include “acting on or disabling something else that indirectly affects the segment bookmark or simply results in the segment bookmarks being ignored.” The Federal Circuit concluded that this further explanation did not change the claim construction being applied. It simply restated, with slightly different phrasing, the same distinction between acting on an object itself and acting on something upstream of the object.

ClearPlay also argued that the JMOL order deviated from the jury instructions in its construction of the “object store” limitation of the ’799 Patent. The Federal Circuit found that argument unpersuasive because the jury was instructed that a “navigation object” within the meaning of that patent required “the start, stop, and filter elements that comprise the navigation object to be contained within the same object, file, or data structure,” and that a “configuration identifier” within the meaning of that patent needed “to be contained within the navigation object.” The JMOL order required “each particular navigation object to define its own start position, stop position, and filtering action, and contain its own configuration identifier,” and referred to this construction as a “single-object approach.” Neither the addition of “its own” nor the reference to a “single-object approach” changed the operative claim construction. The Federal Circuit determined that these were superficial differences in word choice that did not alter the underlying meaning of the claim constructions that every navigation object needed to contain a start position, a stop position, a filtering action, and a configuration identifier within itself, as opposed to those elements being defined outside of the navigation object. Thus, the Federal Circuit found no meaningful difference between the jury instructions and the JMOL order language for either patent.

JMOL. On appeal, ClearPlay argued that there was adequate evidence at trial to support the jury verdict regarding the infringement of the ’970 Patent and the ’799 Patent.

ClearPlay argued that AutoHop infringed the ’970 Patent’s disabling-navigation-objects limitation because AutoHop’s commercial skipping can be negated, either by not enabling it in the first place, resulting in all commercials playing, or by fast-forwarding or rewinding into a commercial, thus allowing that particular commercial to play. The trial evidence established that the AutoHop code runs in the background even when a viewer has not enabled the AutoHop feature, but that AutoHop only skips commercials if (1) a user has enabled it prior to starting an episode and (2) the episode is playing, not in fast-forward or rewind. These two conditions (AutoHop on and episode playing) are encoded in separate variables within the AutoHop source code. When AutoHop encounters a segment bookmark, it checks whether both conditions are satisfied. If the user has enabled commercial skipping and the device is not in rewind or fast-forward, AutoHop skips the commercial; otherwise, it lets the commercial play. Thus, the evidence permitted only one conclusion that AutoHop did not provide for the direct disablement of navigation objects. At the end of a given segment, AutoHop does not check whether the next commercial has been enabled or disabled, it checks whether commercial skipping is enabled writ large and if the device is in play mode. Those background conditions, rather than the direct disablement of particular segments, determine AutoHop’s behavior, and for that reason, AutoHop does not directly disable navigation objects.

Next, ClearPlay argued that AutoHop infringed the ’799 Patent’s method of transmitting navigation objects in an “object store” structure, because the AutoHop announcement files contain all of the elements of an object store. The Federal Circuit found that the evidence at trial established that the segment bookmark pairs identified points with the first being when AutoHop would skip ahead (at the “end” marker of one segment) and the second being when it would resume (at the “start” marker of the next segment). However, no evidence was introduced in support of the conclusion that each segment bookmark pair was actually accompanied by an individual configuration identifier and filtering action. Rather, ClearPlay’s expert witness noted that each announcement file contained a single configuration identifier that matched that announcement file to the particular set-top box, and that the code did not check this pairing again each time a new segment bookmark was encountered. Further, the expert witness testified that it would be inefficient to write code that repeatedly defined the same filtering method and configuration identifier, and that to avoid that inefficiency, each segment bookmark pair relied on the same filtering action and configuration identifier, both of which were contained in the announcement file itself. The Federal Circuit noted that crediting that testimony, it was not possible to conclude that AutoHop infringed the ’799 Patent, because the operative claim construction required that each navigation object “contain” a filtering action and configuration identifier. If those objects are simply inherited or implied from another part of the code, they do not fit that limitation. Nor is it possible to set aside that distinction under the doctrine of equivalents, as ClearPlay argued in the alternative.

The Federal Circuit found that the trial record did not contain any other “particularized testimony and linking argument as to the insubstantiality of the differences between” AutoHop’s announcement files and the structure described by the ’799 Patent. Moreover, ClearPlay’s theory would erase the claims’ meaningful structural and functional distinction between a “single-object” approach and one that shares elements across multiple objects, even though the ’799 Patent treats that distinction as one “in kind,” not degree. Thus, the Federal Circuit rejected ClearPlay’s alternative argument.

Accordingly, the Federal Circuit affirmed the district court’s decision granting JMOL of noninfringement.

The Case is No. 23-2134.

Judge: Burroughs, T.

Attorneys: Alan Grayson Laquer (Knobbe, Martens, Olson & Bear, LLP) for Clearplay, Inc. Eric Shumsky (Orrick, Herrington & Sutcliffe LLP) for Dish Network L.L.C.

Companies: Clearplay, Inc.; Dish Network L.L.C.

Cases: Patent FedCirNews TechnologyInternet