Gemstar-Tv Guide v. International Trade Com'n
| Decision Date | 16 September 2004 |
| Docket Number | No. 03-1052.,03-1052. |
| Citation | 383 F.3d 1352 |
| Parties | GEMSTAR-TV GUIDE INTERNATIONAL, INC. and Starsight Telecast, Inc., Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Scientific-Atlanta, Inc., Intervenor. |
| Court | U.S. Court of Appeals — Federal Circuit |
William F. Lee, Hale and Dorr LLP, of Boston, MA, argued for appellants. With him on the brief was James L. Quarles, III. Of counsel on the brief were Morris Waisbrot and William F. Haigney, Hogan & Hartson LLP, of New York, NY. Of counsel were Mark G. Matuschak, Hale and Dorr LLP, of Boston, MA, and Joseph R. Baldwin, of Washington, DC; and Douglas A. Donofrio, Hogan & Hartson LLP, of New York, NY.
Wayne Herrington, Attorney, Office of the General Counsel, United States International
Trade Commission, of Washington, DC, argued for appellee. On the brief were Lyn M. Schlitt, General Counsel, James M. Lyons, Deputy General Counsel, and Michael Liberman, Attorney. Of counsel was David I. Wilson, Attorney.
Harold J. McElhinny, Morrison & Foerster LLP, for intervenors EchoStar Communications Corporation and SCI Systems, Inc., argued for all intervenors.* Also on the brief for EchoStar, et al., were Rachel Krevans, Ronald P. Flynn, and Zachariah A. Higgins; Stephen S. Dunham, of Denver, CO; Charles S. Barquist, of Los Angeles, CA; and John L. Kolakowski, of McLean, VA. Of counsel on the brief were F. David Foster and Sturgis M. Sobin, Miller & Chevalier Chartered, of Washington, DC. On the brief for intervenors Pioneer Corporation, Pioneer Digital Technologies, Inc., Pioneer North America, Inc., and Pioneer Electronics (USA) Inc. were David P. Swenson and John T. Battaglia, Kirkland & Ellis, of Washington, DC; Robert G. Krupka, Alexander F. MacKinnon, and Lillian L. Lai, of Los Angeles, CA; Laura A. TenBroeck, of Chicago, IL; and Eric R. Lamison, of San Francisco, CA. On the brief for Scientific-Atlanta, Inc., was Joseph R. Bankoff, King & Spalding, of Atlanta, GA. Of counsel on the brief were V. James Adduci, II, Adduci, Mastriani & Schaumberg, LLP, of Washington, DC; Joseph M. Potenza, Banner & Witcoff, Ltd., of Washington, DC; and Louis Norwood Jameson, Duane Morris LLP, of Atlanta, GA. Of counsel were Tom M. Schaumberg, Barbara A. Murphy, and Maureen F. Browne, Adduci, Mastriani & Schaumberg, LLP, of Washington, DC; and Frederic M. Meeker, Nina L. Medlock, Steve S. Chang, and Christopher B. Roth, Banner & Witcoff, Ltd., of Washington, DC.
Before MICHEL, CLEVENGER, and LINN, Circuit Judges.**
Gemstar-TV Guide International, Inc. and Starsight Telecast, Inc. (collectively "Gemstar") appeal from a final order of the United States International Trade Commission ("ITC"), concluding that Scientific-Atlanta, Inc. ("Scientific-Atlanta") did not infringe Gemstar's U.S. Patents Nos. 5,479,268 ("the '268 patent"), 5,809,204 ("the '204 patent"), and 4,706,121 ("the '121 patent") (collectively "the patents-in-suit") and that the '121 patent was unenforceable for failure to join Dr. Edward Neil ("Neil") as a co-inventor.1 In re Certain Set Top Boxes and Components Thereof, Inv. No. 337-TA-454 (Int'l Trade Comm'n Aug. 30, 2002).
Because the ITC correctly construed the "means ... for displaying the television schedule" limitation of the '268 patent and correctly found that Scientific-Atlanta did not infringe under its construction, we affirm the decision as to the '268 patent. Because the ITC erred in construing the "visual identification" and "moving" limitations of the '204 patent, we vacate its finding that Scientific-Atlanta did not infringe the '204 patent or satisfy the domestic industry requirement and remand that aspect of the case for further proceedings. Because the ITC erred in construing the "storage means in a data processor," "information identifying," "combining," and "said user selection criteria" limitations of the '121 patent, we vacate its finding that Scientific-Atlanta did not infringe the '121 patent or satisfy the domestic industry requirement, and remand that aspect of the case for further proceedings. Because the ITC erred in determining that Neil was an unnamed co-inventor of the '121 patent and, thus, that the '121 patent was "unenforceable," we reverse those determinations. Accordingly, we affirm-in-part, vacate-in-part, reverse-in-part, and remand for further proceedings.
The technology at issue concerns interactive program guides in digital cable television set-top boxes that enable viewers to search through television program schedule information and pre-select programs for viewing or recording.
Gemstar owns the '268 and '204 patents, directed to a user interface for displaying grid-format television schedule listings on a television screen. Grid-format television schedule listings, such as those found in newspapers, typically contain program information in addition to program titles, such as program synopses or movie ratings. '268 patent, col. 2, ll. 17-22; '204 patent, col. 2, ll. 16-21. Displaying such information on a television is limited by the size and resolution of the television screen. '268 patent, col. 2, ll. 22-25; '204 patent, col. 2, ll. 21-24. The '268 and '204 patents teach the display of basic program schedule information in grid format on a television screen with supplemental information presented in overlays. ' 268 patent, col. 2, ll. 46-49; '204 patent, col. 2, ll. 45-48. Program listings are placed in a two-dimensional grid with time arranged in one dimension and channel in the other. Each grid cell contains a program title and has an irregular length corresponding to program duration. '268 patent, col. 2, ll. 5-8; '204 patent, col. 2, ll. 4-7. Using a remote control, a viewer can highlight a program on the grid and push a button to watch, record, or obtain supplemental information about a program. The '268 and '204 patents are both continuations of now-abandoned U.S. Patent Application No. 579,555 and share a common parent application and specification. The patents respectively issued in 1995 and 1998.
Independent claim 1 of the '268 patent is representative and recites, with the disputed claim terms highlighted:
1. An interactive television schedule system, which comprises:
a tuner coupled to said user input means for tuning to the desired program, and
means coupled to said means for displaying the television schedule for displaying a program note overlay including a program description for the desired program on said television display.
'268 patent, col. 14, l. 42-col. 15, l. 4 (emphases added).
Independent claim 31 of the '204 patent is representative and states, with the disputed claim terms indicated:
31. An interactive process for operating a television schedule system, which comprises:
tuning a programmable tuner to a select channel based on position of said visual identification for the desired program, and
displaying an overlay containing information relating to a television program being shown on said television set when a channel being shown on the television set is changed.
'204 patent, col. 19, l. 64-col. 20, l. 18 (emphases added).
The '121 patent teaches the control of a television set by an electronic system, which receives television program schedule information for electronic manipulation and display. '121 patent, col. 1, ll. 11-24. In operation, program schedule information is supplied to the system, program selection criteria are provided by the user, and the system responds by causing program listings satisfying the criteria to be displayed on the television screen. Id. at col. 3, ll. 3-7; id. at col. 4, ll. 53-58. The '121 patent is a continuation-in-part of now-abandoned U.S. Patent Application No. 754,630 and issued on November 10, 1987. A request for reexamination of the '121 patent was filed on December 6, 1991, and the reexamined patent ("the Re'121 patent") was issued on December 14, 1993, adding some claims and amending the specification and some of the original claims.2
The disputed claims of the '121 patent recite, with the disputed claim terms highlighted:
18. (amended during reexamination) A process for controlling the...
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