Processing All Things Federal Circuit
July 13, 2021 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (July 5-9): What Happens When the Federal Circuit Looks to Define the Undefined

Last Week in the Federal Circuit (July 5-9): What Happens When the Federal Circuit Looks to Define the Undefined

Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1 

Non-precedential opinions: 4

Rule 36: 3 

Longest and shortest (non-Rule 36) pending case from argument: Rudisill v. McDonough, No. 20-1637 (211 days) 

Case of the week: TVnGO Ltd. (BVI) v. LG Electronics, Inc., No. 20-1837

Panel: Judges Prost, Schall, and Reyna, with Judge Prost writing the opinion

You should read this case if: you have a matter involving indefiniteness, particularly as it relates to claim construction 

Do you know what the phrases “overlay activation criterion” and “overlay activation signal” mean? If not, you’re not alone. This week’s case-of-the-week involves a look at how federal courts treat disputed claim terms that are not defined in a patent and do not have an ordinary and customary meaning. 

TVnGO owns a family of patents related to a system for merging broadcast TV signals with internet signals, which a user can control at home. For instance, picture a TV broadcasting the Olympics with smaller icons on the sides of the screen directing you to internet-based content such as Netflix or Spotify. TVnGO alleged that LGE’s “Smart TVs” infringe their asserted patents. The district court issued a claim construction opinion concluding that two of the phrases in the asserted claims are indefinite, thereby rendering the asserted claims invalid. Those two phrases, as you may have guessed, are “overlay activation criterion” and “overlay activation signal.” 

On appeal, the Federal Circuit reviewed the district court’s conclusion of indefiniteness de novo. The Court looked for intrinsic evidence about what the phrases meant, for ordinary meaning in the art, and for consistencies, or inconsistencies, in how these phrases, or words within the phrases, are used in the patents.

In reading the claims, it was evident that these phrases relate generally to producing “overlays” of broadcast TV with internet content, but there was uncertainty regarding their precise meaning. The parties agreed that neither of these phrases has an ordinary meaning in the art. But TVnGO argued that meaning could be gleaned from splicing together the meaning of each individual word in these phrases. The Federal Circuit rejected this argument. The intrinsic patent record was also not helpful to TVnGO since neither of these phrases was even mentioned, let alone defined, in the specification. Rather, they were merely added to the claims during prosecution without clear meaning behind them. As the Court continued its search for reasonable certainty in the meaning of these phrases, the meaning of these terms became even less clear.

The Federal Circuit pointed to intra-patent inconsistency between the specification and the claims when describing the result of each phrase. These inconsistencies were identified, in part, by looking at the patent’s use of “activates” or “activating.” The Court found that the use of these words in the specification pointed to one result (display of internet content associated with a pre-existing overlay) while the claims pointed to a different result (display of an overlay in the first place), thereby instilling doubt as to which is the “correct” result.

The Federal Circuit then pointed to a second type of intra-patent inconsistency—an inconsistency within the claims themselves—for one of the phrases. Specifically, the independent claims indicated that an “overlap activation criterion” is provided over the internet to the user’s premises, while the dependent claims indicated that an “overlap activation criterion” can originate from the user’s premises through the remote control. The Court concluded that a person of ordinary skill in the art would lack reasonable certainty about whether the source of an “overlap activation criterion” is the internet or the user’s premises.

As you might expect, the Federal Circuit affirmed the district court’s conclusion of indefiniteness because of a lack of reasonable certainty for what these phrases mean. Not only did the specification lack any definition, but there also was no ordinary meaning associated with these phrases, and further digging into the patents only caused more confusion due to intra-patent inconsistencies.