05
Oct
By Eric Schweibenz
Further to our September 20, 2010 post, on September 29, 2010 ALJ E. James Gildea issued the public version of the Final Initial Determination and Recommended Determination on Remedy and Bond (“ID”) (dated September 17, 2010) in Certain Video Displays, Components Thereof, and Products Containing Same (Inv. No. 337-TA-687).

According to the ID, ALJ Gildea determined that no violation of Section 337 had occurred by Vizio, Inc. (“Vizio”), AmTran Technology Co., Ltd., and AmTran Logistics, Inc. (“AmTran”) (collectively, the “Respondents”) in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain liquid crystal display (“LCD”) and plasma flat screen televisions by reason of infringement of one or more of claims 24 and 25 of U.S. Patent No. 5,790,096 (the ‘096 patent), claim 1 of U.S. Patent No. 5,459,522 (the ‘522 patent), and claims 1, 4, 5 and 11-13 of U.S. Patent No. 7,154,564 (the ‘564 patent).  However, ALJ Gildea found that a violation had occurred with respect to infringement of claims 4, 6 and 7 of U.S. Patent No. 5,537,612 (the ‘612 patent), and that a domestic industry exists that practices the ‘612 patent, the ‘522 patent and the ‘564 patent, but not the ‘096 patent.

By way of background, the Complainant in this investigation is LG Electronics, Inc. (“LG”).  LG accused AmTran of making and importing – and Vizio of selling – LCD and plasma flat screen televisions having certain elements of display start up and operation, as well as user services that selectively disrupt the video display and that display program guide information.  LG grouped the accused products into four categories (Groups 1-4), each of which contained an exemplary product.

The ‘096 Patent

The ‘096 patent relates to an electrical control system that will accommodate a range of video types and formats for a flat panel display.  Asserted claims 24 and 25 recite methods for powering-up and powering down the display.

With respect to claim construction, ALJ Gildea rejected LG’s argument that claim 24 did not require sequencing and concluded that one of ordinary skill in the art would understand the term “T1 seconds after . . . T2 seconds after . . . T3 seconds after” to mean “a sequence of events, designated T1, T2, and T3, that occurs after power is supplied to the flat panel display, in which the event designated T1 precedes the event designated T2, which precedes the event designated T3.”  ALJ Gildea determined that the term “T4 seconds after . . . T5 seconds after . . . T6 seconds after” means “a sequence or concurrence of events, designated T4, T5, and T6, that occurs after power is turned off to the backlight inverter power supply means, in which the event designated T4 either precedes or concurs with the events designated T5 and T6, and the event designated T5 either precedes the event designated T6 or concurs with it and with the event designated T4.”  Further, ALJ Gildea agreed with LG and the Commission Investigative Staff (“OUII”) that “video source” means “a generator of video signals.”  ALJ Gildea also construed the term “backlight inverter power supply means” to mean “source of power for backlight inverter.”  ALJ Gildea further agreed with LG that the term “digital transition signals” means “digital signals that control transitions (e.g., color transformations) for a video image.”  ALJ Gildea also determined that the term “applying said digital color signals and said digital transition signals from said memory system to said flat panel display” means “sending said digital color signals and digital transition signals [from said memory system] to said flat panel display.”  Finally, ALJ Gildea construed the term “turning power . . . off” to mean “removing power to.”

On the basis of this claim construction, ALJ Gildea determined there was no infringement of claims 24-25 of the ‘096 patent because the evidence, specifically the testimony of LG’s expert, did not support a finding that (1) the accused products include two distinct timing control systems as described in claim 24; (2) that the memory systems of the accused devices were in communication with the two timing control systems; (3) that those accused products using LED backlights convert direct current to alternating current as required by the “backlight inverter power supply means;” or (4) that the accused products performed the steps T1, T2 and T3 of the power-up sequence in the order described, or the power down sequence.

ALJ Gildea concluded that the evidence was not sufficient to show clearly and convincingly that a data sheet for the 65535 High Performance Flat Panel/CRT VGA Controller anticipated claims 24-25 of the ‘096 patent as argued by Respondents.  ALJ Gildea also concluded that U.S. Patent No. 6,348,910 (the ‘910 patent) did not anticipate claims 24-25 of the ‘096 patent.  Regarding obviousness, ALJ Gildea found that the testimony of Respondents’ expert was conclusory and lacking in description of what combinations or modifications one skilled in the art would have been motivated to make to arrive at the claimed invention.

With respect to domestic industry, having already determined that LG satisfied the economic prong for the four asserted patents based on its warranty activities and significant employment of labor and capital in the U.S. (see our June 9, 2010 post), ALJ Gildea found that LG’s representative products alleged to practice the ‘096 patent did not satisfy the technical prong because the evidence by way of its expert did not show that these products practice the power-up sequence of independent claim 24 as construed above.

The ‘612 Patent

Asserted claims 1-2 and 4-9 of the ‘612 patent relate to methods for disrupting the normal operation of a television receiver with a user operated remote control.

With respect to claim construction, ALJ Gildea agreed with Respondents that the term “audio-visual display device” was not limited to a television and may include a set-top box.  ALJ Gildea construed the terms “a series of codes” and “an entry code” to mean “a sequence of user commands entered on a remote control keyboard.”  ALJ Gildea also construed the term “recognizing the series of codes within the audio-visual display device” to mean “interpreting and processing the series of codes within the audio-visual display device.”  In addition, ALJ Gildea construed the term “changing the state of operations of the audio-visual display device from normal to disrupted” to mean “altering the configuration of the audio-visual display device so as to interrupt or disable the ability of the device to present audio or video that the device otherwise would be capable of presenting.”  Further, ALJ Gildea agreed with LG that the terms “upon recognition” and “substantially the entire” should be given their plain and ordinary meaning.  ALJ Gildea also determined that the term “an activation sequence of codes” means “a sequence of user commands that enable the subroutine for disrupting the normal operation of the audio-visual display device.”  Finally, ALJ Gildea concluded that the term “a command code” means “a user command that activates the change of the state of operations of the audio-visual display device from normal to disrupted.”

On the basis of this claim construction, ALJ Gildea found that the accused products literally met every limitation of claims 1-2 and 4-9 of the ‘612 patent.  ALJ Gildea also determined that Respondents induced infringement of the asserted claims by providing end users of their televisions with a user manual and intending that the users follow the instructions therein.

ALJ Gildea concluded that claim 1 of the ‘612 patent was anticipated by U.S. Patent No. 4,930,160 (“the ‘160 patent”), which discloses a method for automatically censoring video games.  In particular, ALJ Gildea determined that the ‘160 patent clearly and convincingly teaches the transmission of a series of codes from a keyboard or remote, a television that recognizes the series of codes and changes the state of operations of the audio-visual display device from normal to disrupted upon recognition of the series of codes, and storing an indication of the state of operations in nonvolatile memory within the display device as required by claim 1.  ALJ Gildea also concluded that the ‘160 patent’s teaching that the “alternative material” displayed during censorship periods may be “a suitable pattern generator tuned to an unused television channel” to create “electronic wallpaper” or “may also be simply a black signal generator” discloses display of a solid color visual display as required by claim 2.  Further, ALJ Gildea found that the SET CLASSIFICATION and DISABLE keys disclosed by the ‘160 patent are an entry code and command code respectively, such that claims 8-9 are anticipated.  However, ALJ Gildea determined that the evidence failed to show whether or how the ‘160 patent discloses that the single hue covers substantially the entire (but not the entire) field of display as required by claim 4.  ALJ Gildea further determined that the ‘160 patent fails to disclose disruption of the audio output or a closed caption function, and thus does not anticipate claims 5-6.  In addition, ALJ Gildea found claim 7 not anticipated because the ‘160 patent did not disclose requiring that the same series of codes be entered to disrupt and resume normal operations.

ALJ Gildea also concluded that claim 1 of the ‘612 patent is anticipated by U.S. Patent No. 4,510,623 (“the ‘623 patent”), which discloses an electronically tuned television receiver “with a channel lockout feature to control view program selection.”  Specifically, ALJ Gildea determined that the ‘623 patent clearly and convincingly teaches (1) that after entering a series of codes, the channels to be blocked and the clear button, the PIN, and the ENTER key, the microprocessor respond to the lockout code by storing in nonvolatile memory the channel(s) to be inhibited for a predetermined period; and (2) that the configuration of the audio-visual display device of the ‘623 patent was altered, so as to interrupt the ability of the device to present audio or video on the inhibited channel(s) that the device otherwise would be capable of presenting, by disrupting the tuning operation.  ALJ Gildea also found that claim 8 was anticipated by the ‘623 patent’s teaching that entry of channel 99 by pressing 99 ENTER is the “entry code” to activate the disruption subroutine, and that entry of the channel number(s) and PIN serves as the activation sequence of codes that enable the disruption subroutine.  Further, ALJ Gildea determined that claim 9 was anticipated by the ‘623 patent’s teaching that when the user pushes the ENTER key after entry of the PIN, the user was pushing the “command code” that activates the disruption of the disclosed ‘623 device.  However, ALJ Gildea concluded that the evidence failed to show by clear and convincing evidence that claims 5-7 were anticipated by the ‘623 patent.

ALJ Gildea further determined that claim 1 of the ‘612 patent is anticipated by U.S. Patent No. 4,896,354 (“the ‘354 patent”), which discloses an image reception system that provides a reception block control.  In particular, ALJ Gildea found that the ‘354 patent discloses a set-top box that connects to an audio-visual display device, which anticipates because claim 1 is not limited to a television and may include a set-top box as mentioned above.  However, ALJ Gildea concluded that the evidence was not sufficient to show that the remaining asserted claims were anticipated by the ‘354 patent.

In addition, ALJ Gildea concluded that claims 1 and 5 of the ‘612 patent are anticipated by U.S. Patent No. 5,033,085 (“the ‘085 patent”), which discloses a method of controlling television video and audio through the use of a code that would prevent unauthorized viewers from using the television.  Specifically, ALJ Gildea determined that the ‘085 patent discloses (1) a television that operates normally when powered on unless a code N1 has been detected, upon which it enters a disrupted state; and (2) blocking of the audio output.  However, ALJ Gildea found that the evidence failed to show that the remaining asserted claims are anticipated by the ‘085 patent.

Finally, ALJ Gildea determined that the CableData HTU prior art discloses all the method steps of claim 1 of the ‘612 patent, and that “a solid color visual display” is shown when the television is tuned to a restricted channel such that claim 2 is likewise anticipated.

Regarding obviousness, ALJ Gildea again determined that Respondents failed to specifically set forth a combination of invalidating references or other theory with respect to the predictable use of prior art elements.

Further, having determined there was no requirement that all channels of the audio-visual display device must be disrupted to perform the method of claim 1, ALJ Gildea found that it was undisputed that the LG products practice claim 1 such that the technical domestic industry requirement is met for the ‘612 patent.

The ‘522 Patent

The ‘522 patent relates to a method for acquisition and display of an on-screen program guide.  Asserted claim 1 recites a method for translating raw program guide data into a displayable screen signal.

With respect to claim construction, ALJ Gildea determined that the term “program guide” means “information relating to television programming that includes such data as dates, times, and program names.”  ALJ Gildea agreed with LG and the OUII that the term “raw data” should be given its plain and ordinary meaning – “information that has not yet been processed.”  ALJ Gildea also agreed with LG that the terms “the data necessary” and “necessary data” should be given their plain and ordinary meaning – “required information.”  ALJ Gildea construed the terms “generic screen,” “generic program guide screen” and “generic virtual screen of a program guide” to mean “a screen format consisting of ‘primitives,’ i.e., descriptors of shapes, their colors and borders, alphanumerics and icons contained therein, etc. without putting these descriptors into a language which the display electronics 23 can understand.”  ALJ Gildea also agreed with LG and the OUII that the term “constructing a generic virtual screen” should be given its plain and ordinary meaning – “creating from the required information a screen format consisting of primitives.”  Finally, ALJ Gildea construed the term “translating the generic screen” to mean “converting the screen format consisting of primitives (to a displayable screen).”

On the basis of this claim construction, ALJ Gildea determined that the accused products literally met every limitation of claim 1 of the ‘522 patent.  ALJ Gildea also determined that circumstantial evidence such as user manuals that directed users to the channel information display, Respondents’ knowledge of the ‘522 patent, and Respondents seeking to alter at least one accused product out of a concern for the ‘522 patent was sufficient to show that Respondents knew or should have known that customer use of the accused products would induce actual direct infringement.

ALJ Gildea concluded that claim 1 of the ‘522 patent is anticipated by U.S. Patent No. 5,990,927 (“the ‘927 patent”), which discloses a set-top terminal for providing an on-screen program guide for television viewing.  In particular, ALJ Gildea found that the ‘927 patent teaches a generic screen as disclosed in claim 1.  Regarding obviousness, ALJ Gildea determined that the OUII’s “scant discussion” of the combination of the ‘927 patent and the StarSight System, in addition to the lack of any discussion of the Graham factors, fell short of the clear and convincing evidence necessary to invalidate claim 1.

ALJ Gildea also rejected Respondents’ § 112 argument that there is insufficient description in the ‘522 specification of how the display formatter formats raw program guide data or how the translation step should be performed, noting that Respondents’ own expert was able to render a number of opinions as to how the formatting and translating steps of claim 1 function.

In addition, ALJ Gildea rejected Respondents’ derivation and joint inventorship arguments under § 102(f), determining that Respondents’ failed to show clearly and convincingly that anyone else conceived of – or contributed to the conception of – the claimed subject matter besides the named inventor.

ALJ Gildea also rejected Vizio’s argument that it is protected from infringement of the ‘522 patent by its license with Gemstar-TV Guide International, Inc., which also granted a license to LG.

With respect to domestic industry, ALJ Gildea determined that the representative LG products employ the method for acquisition and display of an on-screen program guide on a television in claim 1 as construed such that the technical domestic industry requirement is met for the ‘522 patent.

The ‘564 Patent

The ‘564 patent relates to a method for controlling channel tuning of a digital television.  Asserted claims 1, 4-5 and 11-13 recite methods for channel tuning, both analog and digital, either directly or by referring to stored channel data.

With respect to claim construction, ALJ Gildea agreed with the OUII that the term “making a decision” means “considering user input in determining whether [to search].”  ALJ Gildea also agreed with the OUII that the term “channel map” means “an ordered compilation of information, such as information organized in related tables, containing channel-related information.”  ALJ Gildea construed the term “channel data” to mean “data associated with a channel, including information required for tuning and decoding audio-visual content.”  ALJ Gildea agreed with Respondents and the OUII that the term “updating channel data” means “modifying data associated with the minor channels of the tuned major channel.”  ALJ Gildea also construed the term “a channel data of the minor number” to mean “data associated with the second portion of an ATSC channel number, including information required for tuning and decoding audio-visual content.”  ALJ Gildea further determined that the term “tuning an analog channel” means “adjusting a tuner to receive an NTSC channel.”  ALJ Gildea agreed with the OUII that the term “directly tune” means “tune with an RF channel number.”  In addition, ALJ Gildea agreed with LG that the term “a major number” means a “first portion of an ATSC channel number or an NTSC channel number,” and that the term “a minor number” means a “second portion of an ATSC channel number.”  ALJ Gildea also construed the term “a corresponding major channel” to mean “a digital channel associated with a first portion of an ATSC channel number input by the user,” and the term “a corresponding minor channel” to mean “a digital channel associated with a second portion of an ATSC channel number input by the user.”  ALJ Gildea agreed with LG that the term “decoding digital streams” means “converting packetized data streams into interpretable data.”  ALJ Gildea further determined that the term “tuning” means “adjusting an RF tuner to receive a radio frequency.”  Finally, ALJ Gildea agreed with LG and the OUII that the term “a major number or a minor number” means “a major number and a minor number.”

On the basis of this claim construction, ALJ Gildea concluded there was no infringement of claims 1, 4 or 5 of the ‘564 patent because the accused products (1) never make a decision whether to search a previously stored channel map as required by independent claim 1, and instead always search the previously stored channel map upon a user’s input of a channel number; and (2) do not tune according to a major number input by a user that corresponds to a major number appearing in a previously stored channel map as required by independent claim 5.  However, ALJ Gildea determined that the accused products in Groups 1-3 literally met all the limitations of claims 11-13.  ALJ Gildea further determined that the circumstantial evidence (i.e., user manuals, knowledge of the patent) was again sufficient to show that Respondents knew or should have known that customer use of the accused products would induce actual direct infringement.

ALJ Gildea concluded that claims 1 and 4 were not anticipated by either U.S. Patent No. 7,024,676 (“the ‘676 patent”) or the Sony Model KW-34HDI TV (“Sony TV”) because neither prior art reference discloses the “making a decision to search” limitation required by claim 1.  However, ALJ Gildea determined that references disclose every limitation of claims 5 and 11-13.
Regarding obviousness, ALJ Gildea determined that the testimony of Respondents’ expert that it would have been obvious for one of ordinary skill in the art to combine analog tuning with the teachings of the ‘676 patent to arrive at the “making a decision” aspect of the invention falls short of the clear and convincing evidence necessary to invalidate claims 1 and 4.  In addition, ALJ Gildea concluded that inasmuch as Respondents did not offer any additional arguments as to why the ‘676 patent renders obvious claim 5 (other than with respect to anticipation), in the event the investigation ultimately concludes that the ‘676 patent does not anticipate claim 5, Respondents have not demonstrated clearly and convincingly their separate allegation that the ‘676 patent renders obvious claim 5.

ALJ Gildea likewise concluded that claims 1 and 4 are not rendered obvious by the Sony TV because the testimony of Respondents’ expert that it would have been obvious to add a non-search feature for analog channels in a channel tuning method for digital television does not outweigh the testimony of LG’s expert that it would not have been obvious to do so.  ALJ Gildea further stated that the Sony TV does not render obvious claim 5 for the same reasons that the ‘676 patent does not render claim 5 obvious.

With respect to domestic industry, ALJ Gildea concluded that the representative LG products practice all the elements of claims 1, 4-5 and 11 as construed such that the technical domestic industry requirement is met for the ‘564 patent.

Remedy and Bond

No remedy was recommended by ALJ Gildea with respect to the ‘096, ‘522 and ‘564 patents since no violation of Section 337 was found.  However, regarding the ‘612 patent, ALJ Gildea determined that a limited exclusion order against Respondents and their affiliated companies for certain accused products would be appropriate.  ALJ Gildea also found that Respondents have a commercially significant inventory in the U.S., and that cease and desist orders against Vizio and AmTran Logistics, Inc. are therefore warranted.  Finally, noting that features within the accused products are at issue rather than the products themselves, ALJ Gildea recommended that bond be set based on a reasonably royalty of $9.00 per unit.
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