IP Law Daily, TOP STORY—Fed. Cir.: Amazon did not infringe patents relating to electronic television program guide, (Apr 8, 2014)

By Peter Reap, J.D., LL.M.

Amazon.com, Inc. and its subsidiary IMDb.com, Inc., did not infringe two patents held by United Video Properties, Inc., TV Guide Online, LLC, and TV Guide Online, Inc., subsidiaries of Rovi Corp. (collectively “Rovi”) relating to electronic television program guides, the U.S. Court of Appeals for the Federal Circuit has decided (United Video Properties, Inc. v. Amazon.com, Inc., April 8, 2014, Lourie, A.). The federal district court in Wilmington, Delaware, did not err in construing disputed claim terms in the patents asserted by Rovi and in its judgment of noninfringement. Thus, the lower court’s ruling was affirmed.

Background. Rovi offers program guide products to cable providers and other television distributors, and licenses its patent portfolio to various companies. Rovi owns U.S. Patent 6,769,128 (the “'128 patent”) and U.S. Patent 7,603,690 (the “'690 patent”). The '128 patent is directed to an electronic schedule system (i.e., an electronic program guide on a television screen) with access to both stored television schedule information and status information for live programs, such as sporting events and news stories, received through “data feeds.” The '690 patent describes a system that allows a user to select and immediately purchase a pay program from an “interactive program guide.”

Amazon offers on-demand television programming through its “Amazon Instant Video” service, which can be accessed on Amazon.com or through certain devices running the Amazon Instant Video application. IMDb.com offers a similar service entitled “IMDb Video.” Rovi sued Amazon and its subsidiary in the District of Delaware, alleging infringement of five patents, including the '128 and '690 patents.

The district court construed several disputed claim terms, including “data feed” in the '128 patent claims and “interactive program guide” in the '690 patent claims. The 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. After the court construed the term “data feed,” Rovi stipulated to noninfringement of claims reciting that limitation.

The court initially construed “interactive program guide” to mean “an application that produces interactive display screens that include television program schedules and channel information.” Rovi sought clarification whether that term limited the interactive program guide to displaying current and “forward-looking” programs, i.e., shows that are currently on TV or would air in the immediate future. In response to the motion, the court amended its construction of interactive program guide to “an application that produces interactive display screens identifying the channels and times on which television programs will air.” After clarification, Rovi stipulated to noninfringement of claims reciting that limitation. Rovi thus stipulated to noninfringement of all asserted claims in the litigation.

Rovi timely appealed the claim construction and hence the judgment of noninfringement.

Analysis. Rovi argued that the district court erred in its construction of the “data feed” limitation in the '128 patent and the “interactive program guide” limitation in the '690 patent. Rovi argued 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.

Amazon responded that the Rovi’s amendments, removing “Internet delivered data” during prosecution in response to the PTO examiner’s written description rejection, acted as a clear disavowal of the data feed being delivered to the users via the Internet. Amazon asserted that the amendments made clear that a remote facility could receive Internet data, but the final delivery occurs over conventional television channels.

The appellate court agreed with Amazon. The claims at issue originally called for the data feed to be delivered via “Internet delivered data,” the court noted. However, Rovi 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, the court held.

Although Rovi pointed 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 could not overcome the clear disavowal that occurred during prosecution, the Federal Circuit explained.

As for the “interactive program guide,” Rovi argued 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. Additionally, Rovi contended that the written description of the '690 patent distinguishes between scheduled programming and paid programming, suggesting that paid programming does not have to be scheduled.

The appellate court agreed with Amazon that the written description and figures of the '690 patent show that the interactive program guide is concerned with scheduled programming. Here, the '690 patent describes “interactive program guides” as allowing users to view “television program listings.” Additionally, 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. Those references to setting reminders reinforced the understanding that the pay programming of the interactive program guide is scheduled programming, i.e., that it is forward-looking, the court observed.

Accordingly, the 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.”

Therefore, the decisions of the district court construing the claim terms “data feed” in the '128 patent and “interactive program guide” in the '690 patent, and hence the judgment of noninfringement, were affirmed.

The case is No. 2013-1396.

Attorneys: Mark A. Lemley (Durie Tangri LLP) for United Video Properties. Gregory G. Gare (Latham & Watkins LLP) for Amazon.com, Inc.

Companies: United Video Properties; Amazon.com, Inc.

MainStory: TopStory Patent FedCir