By Tom Fisher
Further to our November 27, 2009 post, on May 26, 2010, the Federal Circuit issued its decision in Vizio, Inc. v. Int’l Trade Comm’n, No. 2009-1386.  In the decision, the Federal Circuit affirmed-in-part and reversed-in-part the International Trade Commission’s (“the Commission”) final determination in Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617), and remanded.

By way of background, on October 15, 2007, Funai Electric Co., Ltd. and Funai Corporation (collectively, “Funai”) filed a complaint alleging violations of Section 337 through importation or sale of certain digital televisions that infringed several claims 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, Inc., Top Victory Electronics 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 not invalid and infringed by both Appellants’ legacy and work-around products.  ALJ Charneski found no violation with respect to the ‘369 patent.

The ’074 patent relates to apparatuses and methods by which television decoder devices identify and assemble specific “channel map information” carried in an MPEG compatible datastream in order to decode a digital television user’s selected program in a digital transmission.  The asserted claims of the ‘074 patent relate to the replication of this “channel map information.”  In the ID, ALJ Charneski construed the claim term “channel map information” to include at a minimum 4 specific data fields (program number, PCR_PID, elementary_PID, and stream_type) and that in order for the claimed apparatus to operate under an MPEG standard, certain Program Map Table (“PMT”) information must also be used.

On February 11, 2009, the Commission determined to review the ID in part.  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 with respect to 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.  Appellants then timely filed an appeal to the Federal Circuit.

On appeal, in an opinion written by Judge Dyk, the Federal Circuit first addressed three issues of claim construction.  The first issue was whether “channel map information” must replicate the four specific data fields named in ALJ Charneski’s ID and by the Commission.  Appellants argued that only one of the four data fields was required.  The Federal Circuit concluded that, based on intrinsic evidence and the understanding of one of ordinary skill in the art, the claims reciting “MPEG compatible channel map information” referred to the MPEG-2 standard.  These claims thus required associating the program with all of the identifiers conveyed in the MPEG-2 program map information that are necessary to constitute a program, specifically all four minimum data fields identified by ALJ Charneski and the Commission.

The second claim construction issue considered was whether the claims precluded the use of information other than “channel map information,” particularly whether they precluded the use of the MPEG PMT (i.e., the data used for decoding in the prior art).  Appellants argued that the patentees had disavowed any and all use of the PMT during prosecution of the ‘074 patent.  The Federal Circuit found that the cited statements from the ‘074 patent’s prosecution history merely explained the benefits of the patented invention over the prior art, namely, that it did not require the use of the MPEG PMT.  Thus, the Federal Circuit agreed with the Commission, concluding that there had been no broad disclaimer of any and all use of the PMT, only a disclaimer of systems that required the use of the MPEG PMT.

The third claim construction issue addressed was whether the claims required that the device and method be capable of utilizing the “channel map information,” or whether mere receipt and storage of the “channel map information” is sufficient.  The Federal Circuit agreed with appellants that the “channel map information” must be capable of being used.  Funai argued that even if the “channel map information” must be used for decoding, only some, not all, of the data need be suitable for use.  The Federal Circuit disagreed, finding that all 4 minimum data fields of the “channel map information” must be suitable for use in decoding.

Using this claim construction, the Federal Circuit affirmed the Commission’s determination that the asserted claims were not invalid.

With regard to infringement, the Federal Circuit found that although Appellants’ legacy products infringed under the adopted claim construction, Appellants’ work-around products did not.  The Federal Circuit concluded that the work-around products did not convert all the necessary “channel map information” into a useable format, and thus did not meet the requirements identified in the construction of the third claim construction issue discussed above.  The Federal Circuit found no infringement by the work-around products, reversing the Commission’s determination in that respect and remanding.

In dissent, Judge Clevenger disagreed with the majority’s finding of non-infringement with regard to the work-around products.  Judge Clevenger stated that the third claim construction issue identified by the majority was not raised by the parties, and thus was not appealed.  Therefore, Judge Clevenger expressed his opinion that, as that issue was not properly before the Federal Circuit, it should instead affirm.