Superguide Corp. v. Directv Enterprises, Inc.

Decision Date12 February 2004
Docket NumberNo. 02-1594.,No. 02-1561.,No. 02-1562.,02-1561.,02-1562.,02-1594.
Citation358 F.3d 870
PartiesSUPERGUIDE CORPORATION, Plaintiff-Appellant, v. DIRECTV ENTERPRISES, INC., DirecTV, Inc., DirecTV Operations, Inc., and Hughes Electronics Corporation, Defendants/Third Party Plaintiffs-Appellees, and Thomson Consumer Electronics, Inc., Defendant/Third Party Plaintiff-Cross Appellant, and Echostar Communications Corporation, Echostar Satellite Corporation, and Echostar Technologies Corporation, Defendants/Third Party Plaintiffs-Appellees, v. Gemstar Development Corporation, Third Party Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

John J. Barnhardt, III, Alston & Bird LLP, of Charlotte, NC, argued for plaintiff-appellant SuperGuide Corporation. Of counsel on the brief were A. Ward McKeithen and Everett J. Bowman, Robinson, Bradshaw & Hinson, P.A., of Charlotte, NC. Of counsel was John A. Wasleff, Alston & Bird.

Victor G. Savikas, Jones, Day, Reavis & Pogue, of Los Angeles, CA, argued for defendants/third party plaintiffs-appellees DirecTV Enterprises, Inc., et al. With him on the brief were Gregory A. Castanias, of Washington, DC; and Kevin G. McBride, of Los Angeles, CA. Of counsel were Elizabeth J. Hoult, of Washington, DC; and Michael John Newton, of Dallas, TX.

John P. Corrado, Morrison & Foerster LLP, of McLean, VA, argued for defendant/third party plaintiff-cross appellant Thomson Consumer Electronics, Inc. With him on the brief were Peter J. Davis and Charles C. Carson, of McLean, VA; and Harold J. McElhinny, of San Francisco, CA.

Lawrence K. Nodine, Needle & Rosenberg, P.C., of Atlanta, GA, argued for defendants/third party plaintiffs-appellees Echostar Communications Corporation, et al. With him on the brief were Nagendra Setty; and Larry McDevitt and W. Carleton Metcalf, Van Winkle, Buck, Wall, Starnes and Davis, of Asheville, NC.

William F. Lee, Hale & Dorr LLP, of Boston, MA, argued for third party defendant-appellant Gemstar Development Corporation. With him on the brief were James L. Quarles III and Mark G. Matuschak, of Washington, DC.

Before MAYER, Chief Judge, MICHEL, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST. Opinion concurring in the result filed by Circuit Judge MICHEL.

PROST, Circuit Judge.

SuperGuide Corporation ("SuperGuide") and Gemstar Development Corporation ("Gemstar") appeal the grant of summary judgment in favor of DirecTV Enterprises, Inc., DirecTV, Inc., DirecTV Operations, Inc. (collectively "DirecTV"); Hughes Electronics Corporation ("Hughes"); Thomson Consumer Electronics1 ("Thomson"); and EchoStar Communications Corporation, EchoStar Satellite Corporation, EchoStar Technologies Corporation (collectively "EchoStar"). The United States District Court for the Western District of North Carolina ruled that DirecTV, Hughes, Thomson and EchoStar did not infringe the asserted claims of United States Patent Nos. 4,751,578 ("the '578 patent"), 5,038,211 ("the '211 patent") and 5,293,357 ("the '357 patent"). SuperGuide Corp. v. DirecTV Enters., Inc., 211 F.Supp.2d 725 (W.D.N.C.2002). Because the district court erred in construing certain of the claims upon which its non-infringement judgment was based, we affirm-in-part and reverse-in-part the district court's claim construction, vacate the judgment, and remand this case for further proceedings consistent with this opinion.

I. BACKGROUND
A. The Patents

Program guides provide viewers with television program schedule information for upcoming programs. These program guides were initially available only in printed version. Broadcasters subsequently began transmitting online program guides to viewers' televisions. Viewers, however, could not perform a search of this information and had to wait until the desired information appeared on the television screen.

The patents in suit address this shortcoming by claiming a device that allows the user to display, on a television screen, only the program information desired by the user. These devices are hence commonly referred to as interactive electronic program guides ("IPG" or "IPGs"). The '578 patent claims the storage in IPG memory and subset searching of a large volume of program schedule information. The '211 patent claims the storage of only predesignated programming information until it is intentionally updated. The '357 patent claims a method for converting the electronic program guide information into event timer information sequences that may be used to control a recording device.

B. The Parties

SuperGuide owns the three patents in suit and Gemstar is an exclusive licensee of these patents in certain fields of use under a License Agreement entered into in August 1993. DirecTV operates a satellite-broadcasting network whose transmissions include program guide information that supports IPGs as part of the DirecTV subscription service. Hughes and Thomson manufacture systems that receive DirecTV broadcasts and process them for display on television. These systems include antennas, filters, and a module known as an Integrated Receiver/Decoder ("IRD"), which is typically packaged in a "set top box." EchoStar also broadcasts satellite transmissions, which include program guide information that supports IPGs. In addition, EchoStar manufactures systems, including IRDs, marketed commercially as "The Dish Network," which receive and process the broadcast information.

C. Proceedings Below

On June 27, 2000, SuperGuide filed an infringement suit against DirecTV, Hughes, Thomson, and EchoStar alleging infringement of the three patents at issue. Based on the License Agreement between SuperGuide and Gemstar, the district court granted the motions by defendants DirecTV and Hughes to implead Gemstar as a third-party defendant. Gemstar alleged that EchoStar infringes each of the asserted three patents, and cross-claimed against SuperGuide for breach of the License Agreement and declaratory relief. SuperGuide counterclaimed against Gemstar for a declaration of the field of use reserved in the License Agreement between the two. Thomson moved for summary judgment of non-infringement based upon a sublicense from Gemstar. The district court denied as premature Thomson's motion for summary judgment, ruling that it could not decide the motion without first construing the disputed claim language.

On October 25, 2001, the district court issued a decision construing the contested terms of the asserted claims in the three patents in suit. SuperGuide Corp. v. DirecTV Enters., Inc., 169 F.Supp.2d 492 (W.D.N.C.2001). Based on this claim construction decision, the defendants filed a joint motion for summary judgment of non-infringement with respect to each of the patents, and third-party defendant Gemstar cross-moved for summary judgment of infringement. Both SuperGuide and Gemstar opposed defendants' motion for summary judgment with respect to the '578 patent. With respect to the '357 and '211 patents, however, Gemstar opposed only EchoStar's motion for summary judgment of non-infringement, whereas SuperGuide opposed summary judgment as to all defendants. Thomson renewed its motion for summary judgment of non-infringement based on its license from Gemstar. On July 2, 2002, the district court issued a decision granting summary judgment of non-infringement in favor of all defendants as to all asserted claims and products with the exception of two EchoStar models. Because the court found no infringement by Thomson, it declined to decide Thomson's motion and denied it as moot. Id. at 777. The court dismissed all remaining claims, counterclaims, cross-claims, affirmative defenses, and defenses without prejudice, including Gemstar's request that its cross-claims against SuperGuide be tried before a jury.2 Id. at 777-78. On July 22, 2002, the parties then filed a stipulation that SuperGuide would be unable to establish infringement of the two EchoStar models if the district court's claim construction and summary judgment rulings were upheld on appeal. The district court entered final judgment on July 25, 2002, and the parties timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. RELEVANT LAW

We review the grant of summary judgments of noninfringement de novo. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir.2000).

A determination of infringement involves a two-step analysis, the first step being to properly construe the asserted claims. Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir.1993). Claim construction is a question of law that this court reviews without deference. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995).

There is a "heavy presumption" that the terms used in claims "mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art." Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002). Moreover, dictionaries are often helpful in ascertaining the plain and ordinary meaning of claim language. Id. at 1202-03; Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1378 (Fed.Cir.2002). We review the patent's written description and drawings to confirm that the patentee's use of the disputed term is consistent with the meaning given to it by the court. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir.2001). Specifically:

claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002); see Tex. Digital Sys., 308 F.3d at 1204. The written description,...

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