Claim Construction and Doctrine of Equivalents: NexStep v. Comcast
Bo Xiao | December 5, 2024
Case Name: Claim Construction and Doctrine of Equivalents: NexStep v. Comcast
Date of Decision: October 24, 2024
Panel: Before: REYNA, TARANTO, and CHEN, Circuit Judges.
Summary
The Federal Circuit affirmed the District Court’s rulings in favor of Comcast Cable Communications, LLC, in a patent infringement suit brought by NexStep, Inc. The court upheld the findings of non-infringement, affirming the District Court’s claim construction and judgment as a matter of law.
Background
NexStep filed a suit alleging that Comcast’s products infringed multiple patents, with U.S. Patent Nos. 8,885,802 (the ’802 patent) and 8,280,009 (the ’009 patent) at the center of the disputes.
The ’802 patent is directed to a “digital butler” system that enables audio-based control of devices using Voice over Internet Protocol (VoIP). The key issue revolved around the interpretation of the term “VoIP” as represented in claim 1 of the ’802 patent:
1. A remote control device with slaved audio input, the device including:
a wireless link transceiver;
at least one slaved audio input built into the remote control;
a navigation control built into the remote control;
hardware resources coupled between the wireless link transceiver, the slaved audio input and the navigation control;
a stack running on the hardware resources and exchanging packets with a master device; and
an encoder logic running on the hardware resources, logically coupled to the stack, adapted to encode signals from the slaved audio input into a remote control audio format, and adapted to send audio packets in the remote control audio format to the master device;
wherein the remote control depends on the master device to transcode input from the slaved audio input to VoIP from the remote control device format and relies on the master device to respond to control signals sent by the remote control device in the packets.
NexStep argued for a broad interpretation of the term “VoIP,” asserting that it should encompass any audio data transmission, not limited to two-way voice communication. This interpretation would set the scope of the ’802 patent’s claims to include Comcast’s products, which utilized one-way audio communication protocols. In contrast, Comcast argued for an industry-standard interpretation of VoIP as requiring two-way voice communication. The District Court adopted Comcast’s interpretation, concluding that VoIP referred specifically to two-way communication protocols, which excluded NexStep’s infringement claims and led to a summary judgment of non-infringement.
The ’009 patent describes a “concierge device” designed to initiate technical support for a consumer device with a single user action. Claim 1 of the ’009 patent is representative::
1. A method of initiating a support session for a consumer device using a concierge device, the method including:
associating the concierge device with a selected consumer device;
responsive to a single action performed by a user, the concierge device communicating with a home gateway, including
causing the home gateway to buffer consumer device identification information for the selected consumer device and determine a support center for a support session; and
causing the home gateway to initiate the support session for the consumer device and to forward automatically the consumer device identification information during the support session, thereby allowing the support session either
to bypass an automated attendant or interactive voice recognition system or
to initiate an automated support protocol.
NexStep claimed that Comcast’s app infringed this patent under the doctrine of equivalents. NexStep argued that the app’s multi-step troubleshooting processes were equivalent to the “single action” requirement described in the patent. The District Court found NexStep’s evidence insufficient, concluding that the expert testimony failed to provide the specific and detailed analysis required under the doctrine of equivalents. As a result, the District Court entered a judgment as a matter of law in favor of Comcast.
Discussion
A key issue in the ’802 patent was the construction of the term “VoIP.” The District Court adopted Comcast’s narrower interpretation, relying on intrinsic evidence, including the patent’s specification and claims, as well as extrinsic sources like technical dictionaries. The specification consistently associated “VoIP” with two-way communication, analogous to traditional telephony services. NexStep had also conceded during earlier proceedings that “VoIP” was a term of art with an industry-standard meaning, which undermined its argument for a broader construction at trial.
The Federal Circuit upheld the District Court’s construction, finding no clear error in its reliance on both intrinsic and extrinsic evidence. The Federal Circuit also rejected NexStep’s argument that the ’802 patent supported an unconventional definition of “VoIP,” noting that this argument was forfeited because it had not been raised earlier. The court further noted that NexStep’s contentions regarding the intrinsic evidence were plainly incorrect, as the written description consistently associates VoIP with telephony services that require the capability for two-way voice communication.
This construction was decisive for the infringement claims under the ’802 patent. Comcast’s products used one-way communication protocols that transmitted voice commands to its servers via HTTP, a method incapable of supporting two-way voice conversations. As a result, they did not meet the claim limitations under the District Court’s interpretation, leading to a summary judgment of non-infringement. The Federal Circuit affirmed this judgment, concluding that the interpretation of “VoIP” aligned with industry norms and the intrinsic record.
The dispute over the ’009 patent centered on the “single action” limitation, a key feature of the patent’s claims describing a “concierge device” designed to simplify the process of initiating customer support. NexStep argued that Comcast’s products infringed the ’009 patent under the doctrine of equivalents. It claimed that even if Comcast’s processes required multiple steps, they were equivalent to the claimed “single action” because they achieved the same result of initiating a customer support session..
At trial, NexStep relied on the testimony of its expert, Dr. Ted Selker, to establish equivalence. However, the District Court found the testimony deficient, describing it as overly conclusory and lacking the specificity needed to support a finding of infringement under the doctrine of equivalents. Dr. Selker failed to provide detailed comparisons between the accused multi-step processes and the claimed single action. Instead, he offered generalized statements about overall functionality, asserting that several user actions could collectively be viewed as a single action without substantiating this claim with particularized evidence showing how the accused products met the criteria of equivalency.
The District Court set aside the jury’s finding of infringement under the doctrine of equivalents and granted Comcast judgment as a matter of law. On appeal, the Federal Circuit affirmed this decision, emphasizing that the doctrine of equivalents requires rigorous proof, including a limitation-by-limitation analysis supported by detailed expert testimony. The court emphasized that NexStep’s evidence was insufficient to demonstrate that Comcast’s multi-step processes performed the same function, in the same way, to achieve the same result as the “single action” limitation in the patent claims. Without this specificity, the jury’s verdict lacked a proper evidentiary foundation.
The Federal Circuit emphasized the importance of presenting clear and particularized evidence to establish equivalency for each claim limitation. The court further noted, “Consistent with our precedent, the patentee was required to provide ‘particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.’ ”
Takeaways
- Claim terms should align with established industry meanings unless explicitly redefined in the specification.
- The doctrine of equivalents requires detailed, particularized testimony to demonstrate equivalency for each claim limitation.
Standing Reminder for Inter Partes Review Decisions
Stephen G. Adrian | October 28, 2024
Case Name: LATINUM OPTICS TECHNOLOGY INC. V. VIAVI SOLUTIONS INC.
Date of Decision: August 16, 2024
Panel: Moore, Taranto and Cecchi (sitting by designation)
Summary
This decision serves as a reminder that standing to appeal a decision of the Patent Trial and Appeal Board (PTAB) can be lost in an inter partes review (IPR). This is because the Federal Circuit’s jurisdiction to review final decisions of the PTAB is limited to cases and controversies under Article III of the U.S. Constitution. If a civil action is dismissed before a final decision in an IPR, it is necessary to show that there is still an injury in fact so that an appeal can be taken to the CAFC.
Background
Viavi owns U.S. patent no. 9,354,369 which relates to optical fibers. Viavi sued Platinum Optics Technology (PTOT) for infringement in two civil suits in the Northern District of California. Thereafter, PTOT filed an IPR of the ‘369 patent. In the civil suits, the patent infringement claims were dismissed with prejudice. The PTAB subsequently issued a final written decision holding that PTOT failed to show the challenged claims in the ‘369 patent were unpatentable. PTOT appealed the decision to the Federal Circuit.
Discussion
A party does not need to establish Article III standing to appear before an administrative agency (such as the PTAB), as set forth in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 279 (2016). However, standing is required when the party seeks review of an agency’s final decision in a federal court (Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171–72 (Fed. Cir. 2017)). The party seeking judicial review bears the burden of proving standing (JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 2018)). As set forth in JTEKT “[o]ur cases establish that typically in order to demonstrate the requisite injury in an IPR appeal, the appellant/petitioner must show that it is engaged or will likely engage ‘in an activity that would give rise to a possible infringement suit,’…or has contractual rights that are affected by a determination of patent validity”.
PTOT asserts that it has standing based on potential infringement liability stemming from supplying its bandpass filters accused in one of the civil suits to parts integrators overseas and due to developing new models of bandpass filters. A declaration from the Deputy Director of Operations Management of PTOT was submitted to support the argument of injury in fact based on development of new bandpass filters.
Although Viavi dismissed the patent infringement suits, PTOT maintains that it has suffered an injury in fact based on its continued distribution of bandpass filters. In support of this argument, PTOT relies on a letter sent by Viavi sent prior to the first and second civil suits being filed, and PTOT’s expectation that Viavi would sue a third time. The CAFC pointed out that mere speculation about the possibility of another suit, without more, is insufficient to confer standing, particularly since the letters were sent prior to the first two civil actions which were subsequently dismissed.
Regarding the declaration submitted to the record, there was no explanation regarding detailed plans for development of new filters, nor any details regarding the particulars of the new filters or how they might relate to the ‘369 patent. The CAFC acknowledged that IPR petitioners do not need to concede infringement but need to at least establish that its development activities “will cause a substantial risk of infringement or will likely cause Viavi to assert a claim of infringement.” As such, PTOT has failed to establish an injury in fact to confer standing.
Takeaways
Although 35 U.S.C. §141(c)) statutorily authorizes appeal of an adverse IPR decision to the Court of Appeals for the Federal Circuit, the court requires Article III injury in fact to establish standing.
If the civil suit(s) are dismissed, an injury in fact needs to be established to appeal a PTAB decision to the CAFC.
A declaration can be sufficient to establish standing if it identifies specific, concrete plans to develop a product which may implicate a patent in suit.
Liberal construction for pro se litigants does not mean ignoring the pleading requirements under the FRCP
Sung-Hoon Kim | October 28, 2024
Case Name: MASSOUD HEIDARY v. AMAZON.COM, INC., RING, LLC.
Decided: October 15, 2024
Panel: LOURIE, PROST, and STARK, Circuit Judges.
Summary:
The Federal Circuit affirmed the district court’s decision to dismiss a patent infringement claim for improper venue and failure to state a claim by a pro se litigant against Amazon.com, Inc. and Ring, LLC. The Federal Circuit held that a liberal construction of pleadings by pro se litigants does not mean ignoring the pleading requirements under the FRCP.
Details:
Massoud Heidary (“Heidary”) appeals from a decision of the U.S. District Court for the District of Maryland dismissing his patent infringement claims for improper venue and failure to state a claim.
Heidary owns U.S. Patent No. 10,380,862 (“the ’862 patent”). This patent is directed to a “fire protection system” for suppressing fire spread by shutting of the fan in an HVAC system when a fire is detected by a smoke detector.
Claim 1 of the ’862 patent reads as follows:
1. A system for suppressing fire in a building, the system comprising:
a plurality of smoke detector units,
each smoke detector unit comprising:
a smoke detector,
a power supply,
an auxiliary power supply,
a camera connected to the smoke detector, and
a wireless transmission unit connected to the camera
a normally closed relay,
a fan controller connected to an HVAC unit,
a thermostat,
a display unit,
a micro-controller for display unit,
a wireless receiver for the micro-controller,
a telephone system,
wherein upon detection of a smoke by any one of the smoke detectors, the respective smoke detector passes a signal to a normally closed relay to open and to cut-off the power supply to the thermostat as well as fan controller thereby shutting off the fan unit; and activates the respective camera and the wireless transmission unit to transmit a signal to a wireless receiver connected to the micro-controller so as to display the location of the fire on the display unit connected to the micro-controller.
District Court
Heidary filed a patent infringement suit against Amazon.com, Inc. (“Amazon”) and Ring, LLC (“Ring”) on September 13, 2022. Heidary argued that Amazon sells two products that meet each and every limitation of claim 1 of the ’862 patent.
Ring filed a motion to dismiss Heidary’s complaint for improper venue under Rule 12(b)(3) and both Ring and Amazon filed a motion to dismiss for failure to state a claim under Rule 12(b)(6) of the FRCP.
The District Court granted Amazon and Ring’s motion and dismissed the complaint without prejudice.
CAFC
Heidary appealed the district court’s decision to dismiss the complaint for each of improper venue as to Ring and failure to state a claim.
Improper Venue
Under § 1400(b), “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). It is the plaintiff’s burden to establish proper venue. Westech, 927 F.3d at 1382.
A “domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 262 (2017).
If the defendant does not reside in the relevant district, then venue is only proper if each of the following requirements are met: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.” In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
The Federal Circuit agreed with the district court decision that Heidary failed to establish that venue is proper for Ring because as a Delaware entity, Ring does not reside in the District of Maryland for patent venue purposes.
In addition, the Federal Circuit found that Heidary pleaded no facts and made no showing that Ring has a physical place of business in the District of Maryland.
Direct Infringement
With regard to pro se litigants, the Federal Circuit held that pleadings must be “construe[d] . . . liberally” for pro se litigants. Bing, 959 F.3d at 618.
However, the Federal Circuit that this liberal construction does not mean “overlooking the pleading requirements under the Federal Rules of Civil Procedure.” Id. (citing Weidman v. Exxon Mobil Corp., 776 F.3d 214, 219 (4th Cir. 2015)).
Therefore, the Federal Circuit held that a pro se litigant still must plead “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)).
The Federal Circuit held that Heidary’s complaint merely lists what he contends are the limitations of the patent and asserts that Amazon makes, sells, uses, offers to sell, or imports in the U.S. products that meet each and every limitation of claim 1 of his patent.
The Federal Circuit held that a screenshot that merely describes one of the accused products and summarily concludes that the accused products infringe claim 1 is not sufficient.
In addition, the Federal Circuit held that there is an apparent disconnect between the patent and the accused products because while the ’862 patent recites a system with multiple components, the accused products consist of only smoke detector.
Therefore, the Federal Circuit agreed with the district court decision that Heidary failed to state a claim of direct infringement.
Takeaway:
- Plaintiff needs to sufficiently show that if the defendant does not reside in the relevant district, venue is only proper if each of the following requirements are met: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.
- Even pro se litigants are not immune to the pleading requirements under the FRCP.
When to Apply Printed Matter Doctrine to Communications and Program Code
John Kong | May 15, 2024
Case Name: IOENGINE v. INGENICO
Date of Decision: May 3, 2024
Panel: : Lourie, Chen, and Stoll
Summary:
The Federal Circuit reversed the Board’s preclusion of patentable weight to the limitations involving “encrypted communications” and “program code” under the printed matter doctrine. The court determined that neither “encrypted communications” nor “program code” constitute “printed matter” because these terms do not recite the communicative content or informational content of the “encrypted communications” and “program code.”
Procedural History:
This is a consolidated appeal of several Final Written Decisions in several inter partes reviews (IPRs) in which the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (the Board) found numerous claims in U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703 unpatentable. Most of the Board’s unpatentability determinations were affirmed. However, the Federal Circuit reversed the Board’s unpatentability of a subset of the claims due to an error in the Board’s application of the printed matter doctrine.
Decision:
Representative claims 4 and 7 of the ‘969 patent (and claims 1 and 2 from which they depend) are as follows:
1. A portable device configured to communicate with a terminal comprising a processor, an input component, an output component, a network communication interface, and a memory configured to store executable program code, including first program code which, when executed by the terminal processor, is configured to present an interactive user interface on the terminal output component, and second program code which, when executed by the terminal processor, is configured to provide a communications node on the terminal to facilitate communications to the portable device and to a communications network node through the terminal network communication interface, the portable device comprising:
(a) an external communication interface configured to enable the transmission of communications between the portable device and the terminal;
(b) a processor; and
(c) a memory having executable program code stored thereon, including:
(1) third program code which, when executed by the portable device processor, is configured to provide a communications node on the portable device to coordinate with the communications node on the terminal and establish a communications link between the portable device and the terminal, and facilitate communications to the terminal and to a communications network node through the terminal network communication interface; and
(2) fourth program code which is configured to be executed by the portable device processor in response to a communication received by the portable device resulting from user interaction with the interactive user interface;
wherein the portable device is configured to facilitate communications through the communication node on the terminal and the terminal network interface to a communications network node.
2. The portable device according to claim 1, wherein the fourth program code which, when executed by the portable device processor, is configured to cause a communication to be transmitted to the communication network node.
4. The portable device according to claim 2, wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.
7. The portable device according to claim 2, wherein the communication network node comprises a database and the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal.
The Board held that certain claims were anticipated by one of the cited references because no patentable weight was given to limitations that recite “encrypted communication” and “program code” (illustrative claims 4 and 7 reproduced above) under the printed matter doctrine.
The Federal Circuit reversed the Board’s determination of unpatentability of such claims because the Board erred in applying the printed matter doctrine to “encrypted communication” and “program code.”
Refresher on The Printed Matter Doctrine:
- “printed matter” is not patentable subject matter, and limitations that recite “printed matter” are not given patentable weight
- while this doctrine started out with literally “printed” material (information printed on paper), it has evolved over time to encompass “conveyance of information using any medium,” and “any information claimed for its communicative content”
- the printed matter doctrine prohibits patenting printed matter unless it is “functionally related” to its “substrate” (“substate” includes the structural elements of the claim)
- To determine the existence of a functional relationship, the court considers whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.
The Federal Circuit applied a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine.
Step 1: determine whether the limitation in question is directed toward printed matter. The focus is on whether the limitation is claiming certain informational content or “matter claimed for what it communicates.”
Examples of “printed matter” provided by the court include: an FDA label providing dosage instructions for using a medical product; a label instructing a patient to take a drug with food; instructions on how to perform a DNA test; and numbers printed on a wristband.
Only if the limitation in question is determined to be “printed matter,” then Step 2 asks “whether the printed matter nevertheless should be given patentable weight … if the claimed informational content has a functional or structural relation to the substrate.”
Here, claims 4 and 7 are illustrative of the issue regarding application of the printed matter doctrine. Claim 4 depends from claim 2 which causes a communication to be transmitted from the portable device to a communication network node. Claim 4 recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” The Board held that the “encrypted communications” in claim 4 claimed only the communicative content (i.e., “printed matter”) whose transmission is being facilitated and there is “no functional relationship of the encrypted data to the communication carrying it.”
However, the Federal Circuit disagreed. The court clarified that “printed matter is matter that is claimed for its communicative content – i.e., the content specifically being communicated.”
The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated – the content or information being communicated – rather than the act of a communication itself.
With regard to claim 7, the Board likewise applied the printed matter doctrine to decline giving patentable weight to the “program code” limitation. Claim 7 also depends from claim 2 and recites that “the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the [portable device’s] terminal.” The Board held that the “program code” is printed matter “because it claims the content of the information that is downloaded” and that downloaded code has no functional relationship with the portable device or the portable device’s terminal.
Again, the Federal Circuit disagreed. The court found that the “program code” is not being claimed for its communicative content. No informational content contained within the “program code” is being claimed. Nothing is recited about the contents of the claimed “program code.”
Takeaways:
For application of the printed matter doctrine to preclude patentable weight for a limitation containing the printed matter, the focus is on whether the claim reciting, or relies on, the communicative content of that “printed matter” – “the content specifically being communicated.” This case draws a clear distinction between “communication” or “program code” versus the communicative content or information being communicated or conveyed in that “communication” or “program code.”
