Patent Law

Trying to Change the Channel

By Gary Odom and Jordan Kuhn

TiVo successfully sued EchoStar for infringing 6,233,389, claiming time-shifted TV program recording and playback; a jury finding finding infringement for both software and hardware claims, awarding $74 million in damages. EchoStar had an injunction stayed pending appeal. On appeal, EchoStar did its best to tweak the claim construction to avert disaster.

TiVo v. EchoStar (2006-1574)

On appeal, the TiVo / EchoStar hardware claim construction scorecard read 3 to 2.

"accepting... a multitude of standards" - TiVo
"tuning... to a specific program" - TiVo
"converts" - TiVo
"separated into its video and audio components" - EchoStar
"assembles... into an MPEG stream" - EchoStar

Parsing what "assembles... into an MPEG stream" meant in the context of the claim hinged on the possible plurality of 'an'.

As a general rule, the words ?a? or ?an? in a patent claim carry the meaning of ?one or more.? Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 2007-1262, slip op. at 7 (Fed. Cir. Jan. 15, 2008). That is particularly true when those words are used in combination with the open-ended antecedent ?comprising.? See, e.g., Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). However, the question whether ?a? or ?an? is treated as singular or plural depends heavily on the context of its use. See Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1359 (Fed. Cir. 2005). The general rule does not apply when the context clearly evidences that the usage is limited to the singular. Baldwin Graphic, slip op. at 10.

Unlike the case in Baldwin Graphic, where the claims and the written description could be read to encompass either a singular or plural interpretation of ?a? or ?an,? the claims and written description in this case make clear that the singular meaning applies.

The "assembles" and "separated" constructions going to EchoStar's favor resulted in a reversal of literal infringement of the hardware claims. The case was remanded to resolve the contention of infringement under the doctrine of equivalents, for which there was insufficient information for the CAFC to make a determination.

EchoStar failed to find a chink in the claim construction of software claims adopted at the district court, and the appeals court was unmoved by EchoStar's other whining.

Even with the hardware claims back up for riposte, the CAFC let the damages award stand. That effectively rendered the hardware claim spat moot.

Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury?s verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.

EchoStar faces an injunction, and additional damages.

The district court?s injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect.

TiVo v. EchoStar has been an epic patent battle. EchoStar tried everything it could, but in the end was simply holding a losing hand.

Previous Patent Prospector coverage: Privilege & Discovery; Desperate Victory.

Full post as published by The Patent Prospector on January 31, 2008 (boomark / email).