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ACTV, INC. v. THE WALT DISNEY CO.

May 14, 2002

ACTV, INC. AND HYPERTV NETWORKS, PLAINTIFFS, THE WALT DISNEY CO., ABC, INC., AND ESPN, INC., DEFENDANTS.


The opinion of the court was delivered by: Jed S. Rakoff, U.S.D.J.

MEMORANDUM

In this action, plaintiffs ACTV, Inc. and HyperTV Networks, Inc. (collectively, "ACTV"), the owners and exclusive licensees of U.S. Patents 5, 778, 181 (the "`181 patent"), 5,774,664 (the "`664 patent") and 6,018,768 (the "`768 patent") assert that defendants the Walt Disney Company, ABC, Inc., and ESPN, Inc. (collectively, "Disney") have infringed and continue to infringe each of the three named patents. In early October, 2001, the Court held a three day "Markman" hearing to address issues of patent claim construction, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and in late October, 2001, the Court issued two orders defining thirteen of the key terms in dispute. See Order, October 26, 2001; Supplemental Order, 01 Civ. 9622, October 31, 2001. This Memorandum briefly elaborates the reasons for these determinations.

As an initial matter, it should be noted that all of the disputed claims in this case are drafted in a "means plus function" format, that is, each element of each claim is described as a "means or step for performing a specified function." 35 U.S.C. § 112, ¶ 6. A claim so expressed "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Id.

In construing such a claim, therefore, the court must first identify the particular function claimed, and then, in that light, identify the corresponding structure. See Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001) Only by so doing can a court arrive at a definition of disputed terms that is neither so narrow that it would preclude the patentee from carrying out the functions and utilizing the associated structures described in the specifications, nor so broad as to imply a function well beyond the scope of that which could be performed by the specified structures or means. See Valmont Indus. Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993). Here, the function is to synchronize video and TV programming with web pages, not in every way possible but in ways corresponding to the kinds of structures described in the claims and illustrated, for example, by Figures 1, 2, and 4. All of this, moreover, is to be construed from the perspective of one with ordinary skill in the art at the time of the invention — here, one skilled in computer programming and possessing an understanding of computer networks as of 1996 or thereabouts. Finally, of course, all these perspectives are only relevant within the framework of the language of the claims themselves, the specifications thereunder, and the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996).

The claims here to be construed are claims 1, 12, and 14 of the `181 patent, claims 1, 2, and 3 of the `664 patent, and claims 1, 13, and 19 of the `768 patent. However, only certain terms of these claims are in dispute. For example, claim one of the `181 patent contains the following disputed terms (in boldface):

A system for presenting integrated television programming and corresponding related Internet information segments obtained from Web sites on the Internet, the system comprising:

Overall, the Court concludes that there are thirteen disputed terms that need to be defined in order to provide an adequate basis for construing the claims here in issue. The first nine will be considered in the order they appear in above-quoted claim, followed by the other four.

1. "programming" (`181 patent, claim 1, `664 patent, claims 1 and 3, `768 patent, claims 1 and 19)

While both sides are agreed that the term "programming" as used in the claims here in issue refers to a data stream containing signals, defendants argue that it specifically here refers, more narrowly, to a single integrated data stream that contains a video signal, an audio signal and one or more URLs, while plaintiffs argue that it refers, more broadly, to a data stream containing video signals, audio signals, and/or uniform resource locators, with no requirement that all the signals be contained in a single data stream. Plaintiffs' reading is the more natural one, and there is nothing in the function or structure of the patents that compels defendants' definition; on the contrary, such a construction would exclude the embodiment shown in Figure 4 of the `664 and `768 patents and described in the specification, as well as the means for receiving at the user's end as shown in Figure 2 and described in all of the patents in dispute. Accordingly, the Court rejects defendants' definition, see Dow Chemical v. Sumitomo Chemical Co.

257 F.3d 1364, 1378 (it is "well established that a clam construction that excludes a preferred embodiment is `rarely, if ever, correct.'") (citation omitted), and accepts plaintiffs'.

2. "Internet information segments" (`181 patent, claim 1; `664 patent, claims 1 and 3, `768 patent claims 1 and 19)

While here again defendants seek a narrow and hypertechnical definition of the term "Internet information segments," the specification in all three patents refers to various resources on the Internet, including audio clips, images, and Web pages. See `181 patent, col. 3, 1. 6, col., 6, 1. 12; `664 patent, col. 3, 1. 31, col. 8, 1. 32; `768 patent, col. 3, 1. 33, col. 8, 1. 55. The broad and straightforward language of the term, as further exemplified by the multiple examples in the specification, ...


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