CAFC Clarifies Infringement Analysis and Vacates a Finding of Noninfringement for Hulu

“Although there is no per se rule against ‘negative constructions,’ which in some cases can be enough to resolve the relevant dispute, the [district] court’s construction here was inadequate for the second step of an infringement analysis.”

Federal CircuitOn May 11, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the claim construction and decision of the United States District Court for the Central District of California to exclude evidence relating to damages but vacated its infringement determination and remanded a case alleging that Hulu, Inc. infringed Sound View Innovations, Inc.’s patent for data streaming technology.

Sound View is the owner of expired U.S. Patent No. 6,708,213 (the ‘213 patent), which discloses “methods which improve the caching and streaming of multimedia data (e.g., audio and video data) from a content provider over a network to a client’s computer.” In June 2017, Sound View sued Hulu, alleging that its “Hulu Streaming Video on Demand products” infringed six Sound View patents, though only claim 16 of the ‘213 patent remained at issue on appeal. Regarding claim 16 specifically, Sound View argued that “Hulu directed or controlled the content delivery networks to allocate a local buffe at an edge server (the claimed “helper server”) to cache at least a portion of a Hulu video and download that video to a client while concurrently pre-fetching (i.e., retrieving) another portion of the video.”

The dispute turned on the meaning of the downloading/retrieving limitation of claim 16. Sound View urged the disputed limitation to be construed according to the ordinary meaning of its words, which do not include the term “buffer,” i.e., “do not require that concurrent sending out (downloading) and receiving (retrieving) involve the same buffer.” Alternatively, Hulu argued, relying on the prosecution history, that “the concurrent-function requirement must involve the same buffer.” During prosecution, the applicants added the downloading/retrieving limitation to claim 16 to overcome a rejection based on U.S. Patent No. 6,438,630 (DeMoney). The lower court agreed with Hulu, concluding that the statements and accompanying amendments during prosecution disclaimed the full scope of the downloading/retrieving limitation. Following claim construction, Hulu sought summary judgment of non-infringement based on the fact that the accused “edge servers” that Sound View identified as helper servers do not download and retrieve subsequent portions of the same video in the “same buffer.” The court granted Hulu’s summary judgment motion, which Sound View appealed.

Also at dispute on appeal was the court’s refusal to admit the testimony of Sound View’s expert witness which sought to establish the appropriate damages figure. Sound View urged the district court to admit the testimony of David Yurkerwich to show the value of the invention to a video streaming provider based partially on a study titled “Empirical Evaluation of HTTP Adaptive Streaming under Vehicular Mobility” (the Yao study). Hulu moved to exclude this evidence alleging that Yurkerwich did not have a sufficient basis to rely upon the Yao study, noting that the study did not account for the fact that many of Hulu’s customers use stationary devices and a WiFi or wired connection. The district court granted this motion and Sound View sought to admit an amended version of Yurkerwich’s testimony which was also excluded.

Claim Construction

On appeal, the CAFC first reviewed the claim construction issue. Citing World Class Technology, the CAFC noted that “[w]e generally give words of a claim their ordinary meaning in the context of the claim and the whole patent document; the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities; and even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition.” World Class Technology Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014). At the outset, the CAFC recognized that this case is not one in which the claim language and specification establish a truly plain meaning that is contrary to the meaning asserted by the prosecution history. Instead, the downloading/retrieving limitation does not expressly refer to “buffers” and contains no affirmative language making clear that different buffers in the helper server may be utilized to concurrently send out and retrieve portions of a video.

During prosecution, the examiner rejected claim 16 of the ‘213 patent which was identical to current claim in all respects except that it lacked the downloading/retrieving limitation. The applicants added this limitation to overcome the DeMoney reference, noting in their reply that the limitation “recited additional features that the applicants consider as being inventive.” The applicants argued that the invention covered by claim 16 as currently amended allows for a content to be concurrently downloaded and retrieved, whereas DeMoney only retrieves after all of the content has been downloaded. The CAFC, in view of the applicant’s statements during prosecution concluded that claim 16 of the ‘213 patent had been limited “to using the same buffer for the required concurrent downloading and retrieval portions of the requested SM.”

Sound View argued that its view of separate buffers doing concurrent actions, i.e., downloading and retrieving, would also distinguish DeMoney because, in its view, DeMoney did not disclose concurrent actions. Sound View cited to a portion of the DeMoney patent which “allows future [storage] requests to be satisfied during lulls.” The CAFC was unpersuaded by this line of reasoning, noting that the legal inquiry must focus on what the applicants said about the prior art. Here, the CAFC reasoned, the applicants did not cite that passage of the application in overcoming the rejection, and that even if it did, that passage did not support what Sound View urged. Accordingly, the CAFC affirmed the claim construction.

Summary Judgment

After affirming the lower court’s claim construction, the CAFC turned to the challenged summary judgment finding non-infringement. Citing Comm Scope, the CAFC recognized that “[w]hether an accused device infringes requires a two-step analysis—the court first ‘determines the scope and meaning of the patent claims asserted, and then the properly construed claims are compared to the allegedly infringing device.” CommScope Technologies LLC v. Dali Wireless Inc., 10

F.4th 1289, 1295 (Fed. Cir. 2021). The district court determined that the “buffers” and “caches” described in the ‘213 patent were distinct physical components. Based on this determination, the court concluded that Hulu could not infringe the ‘213 patent because Sound View identified certain components in the accused edge severs labeled “caches” as meeting the “buffer” limitations, and in its view a “cache” cannot be the same as a “buffer.”

Citing Intel, the CAFC recognized that “although there is no per se rule against ‘negative constructions,’ which in some cases can be enough to resolve the relevant dispute,” the district court’s construction here was inadequate for the second step of an infringement analysis. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021). Further, the CAFC noted that the district court did not conduct an affirmative construction of what constitutes a “buffer” in the ‘213 patent. According to the CAFC “an affirmative construction of “buffer”—which could then be compared to the accused-component “caches” based on more than mere name” was required. Citing further extrinsic evidence, the CAFC concluded that “it appears” the term “buffer” should be given the ordinary meaning proposed by Sound View. Hulu argued that even if the edge servers’ caches could satisfy the buffer limitation, claim 16 would still not be infringed. Declining to rule on this contention in the first instance, the CAFC vacated the district court’s summary judgment of non-infringement and remanded the case.

Damages Evidence

The CAFC reviewed the district court’s pair of rulings, which excluded Sound View’s damages testimony for a clear abuse of discretion.  The CAFC found no clear abuse of discretion in excluding either of Yurkerwich’s damages opinions. The CAFC noted that the first damages opinion relied on the Yao study which “sought to emulate bandwidth variation on commuting routes in Sydney in order to assess how Hypertext Transfer Protocol (HTTP) adaptive streaming performs under a typical high-speed vehicular environment.” The CAFC concluded that the district court reasonably determined that Yurkerwich’s opinion failed to account for the “substantial differences between the circumstances studied by Yao and the circumstances of Hulu’s accused streaming services.” Similarly, the CAFC found that the district court reasonably determined that the second damages opinion improperly relied on a study discussed in a press release without ever viewing the underlying study.

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