27
Nov
By Barry Herman
On December 10, 2009, the Federal Circuit is scheduled to hear oral argument in Vizio, Inc. v. ITC, (2009-1386).

On October 15, 2007, Funai Electric Co., Ltd. and Funai Corporation (collectively, “Funai”) filed a complaint alleging violations of Section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain digital televisions by reason of infringement of U.S. Patent Nos. 6,115,074 (the “‘074 patent”) and 5,329,369 (the ‘‘369 patent”).  The complaint named Vizio, Inc.; AmTran Technology Co., Ltd.; TPV Technology Ltd.; TPV International (USA), Inc.; Top Victory Electronics (Taiwan) Co., Ltd.; and Envision Peripherals, Inc. (collectively, “Appellants”) as respondents.  On November 15, 2007, the Commission instituted an investigation (Inv. No. 337-TA-617).  ALJ Carl C. Charneski held an evidentiary hearing in August 2008 and issued an Initial Determination (“ID”) on November 17, 2008.  In his ID, ALJ Charneski found a violation of Section 337 with respect to the ‘074 patent and concluded that the asserted claims of the ‘074 patent were valid and infringed by both Appellants’ legacy and work around products.  ALJ Charneski found no violation with respect to the ‘369 patent.

On February 11, 2009, the Commission determined to review the ID in part, specifically whether (1) Appellants directly infringe claim 23 of the ‘074 patent through certain testing activities in the United States; and (2) Appellants induced infringement of claim 23 of the ‘074 patent.  On April 10, 2009, the Commission issued a Final Determination overturning ALJ Charneski’s finding of direct infringement by testing as to some respondents, but otherwise affirming ALJ Charneski’s findings of infringement and validity.  The Commission also accepted ALJ Charneski’s recommendations concerning remedy, which included the issuance of a limited exclusion order and cease-and-desist orders.

According to the Appellants’ opening and reply briefs, Appellants raise four issues on appeal.  First, Appellants assert that ALJ Charneski improperly construed the term “identifying channel map information . . . and assembling said identified information” as encompassing use of Program Map Table (“PMT”).  In particular, Appellants assert that the use of PMT was disclaimed during the prosecution of the ‘074 patent to overcome the examiner’s anticipation rejection.  If construed as not to encompass the use of PMT, then the accused product would not be found to infringe the ‘074 patent.   Second, Appellants assert that ALJ Charneski improperly relied on “inapposite evidence dealing with suitability for transmission, not suitability for identification” thus reading the “identifying” limitation out of the claims.  Third, Appellants assert that ALJ Charneski improperly focused on extrinsic evidence and expert testimony rather than the claim language and written description thereby erroneously construing “channel map information” to require four types of data which appeared as exemplars in the specification.  Fourth, Appellants assert that if “channel map information” were to be construed not to require the four types of data, then the claims are invalid as anticipated by the A/55 standard.  Further, even if ALJ Charneski’s construction of “channel map information” were correct, the claims are invalid under Section 103 in view of the combination of the A/55 standard and U.S. Patent No. 5,982,411.

With respect to Appellants’ first argument, the Commission asserted in its brief that the asserted claims do not preclude use of the PMT.  In particular, the Commission asserts that the claims include only step/functions of “identifying” and “assembling” the PMT, and no step/function for using the PMT.  Further, in response to the Appellants’ disavowal argument, the Commission asserts that the statements made during prosecution, and relied on by Appellants, only discuss one advantage of the invention (i.e., the PMT being “NOT needed”) and “did not in any way state that the PMT is unallowable.”  Regarding the Appellants’ second issue, the Commission asserts that Appellants improperly divorced the term “suitable for use” from surrounding claim language and that there is ample evidence to support ALJ Charneski’s construction that content, rather than the format of the channel map, determines suitability for use.  In response to Appellants’ third argument, the Commission asserts that ALJ Charneski’s construction involved “a detailed examination of the claim language, the specification, the prosecution history including the MPEG standard and expert testimony regarding the perspective of one of ordinary skill in the art.”  Finally, in response to the Appellants’ invalidity arguments, the Commission asserts that ALJ Charneski correctly observed that the A/55 Standard’s “channel number,” which is a 10-bit field, does not anticipate the MPEG program number, which is a 16-bit field.  In addition, with respect to the obviousness arguments, the Commission asserts that ALJ Charneski correctly determined that “even if all the elements were known in the prior art, it would not have necessarily been obvious to combine them.”

In Funai’s Intervenor brief, Funai asserts that (1) the claims of the ‘074 patent “say nothing about use or receipt of the PMT,”  nor can any support be found in the specification or prosecution history for Appellants’ disavowal argument; (2) the ALJ correctly found that the “question of usability, or suitability, related to the ‘channel map’ and its content”; (3) the Commission correctly found that the channel map information includes all of the MPEG compatible program information needed to constitute a program, “including the program number, elementary PIDs, stream types, and PCR_PID replicated from the MPEG Program Map Table”; and (4) Appellants failed to show (i) “that the A/55 Standard meets each of the limitations required by the claims” of the ‘074 patent to be an anticipatory reference, and (ii) “where every element of the claims appears in the prior art” for purposes of demonstrating obviousness under Section 103.
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