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Judge Oetken Construes Twenty-Nine Claim Terms in “Relatively Large” Markman Opinion

On August 10, 2017, District Judge Paul Oetken (S.D.N.Y.) construed 29 claim terms in a dispute between Defendant Comcast Corporation, et al. (“Comcast”) and Plaintiff Rovi Guides, Inc. and its subsidiaries (“Rovi”).  The claim terms were construed pursuant to the ongoing litigation between Comcast on Rovi concerning the alleged infringement by Comcast of six patents, U.S. Patent Nos. 8,713,595, 9,172,987, 8,433,696, 7,895,218, 8,122,034, and 7,966,864 (the “’595,” “’987,” “’696,” “’218,” “’034,” and “’864” patents, respectively).  The patents covered “a number of different fields, including interactive program guides (“IPGs”), remote control, and content searching.” 

The Court adopted Rovi’s construction for 17 of the 29 claim terms; Comcast’s construction for nine of the claim terms; and neither construction for three of the claim terms.  The breakdown per patent is provided below:

Patent Adopted Rovi’s
Adopted Comcast’s
Adopted Neither
‘595 patent 6 terms 2 terms 0 terms
‘987 patent 3 terms 0 terms 2 terms
‘218 patent 0 terms 1 term 1 term
‘696 patent 1 term 1 term 0 terms
‘034 patent 2 terms 3 terms 0 terms
‘864 patent 5 terms
2 terms
0 terms
17 terms
9 terms 3 terms

In construing the claims, the Court also addressed Comcast’s indefiniteness arguments.  The Court found that claims 1 and 19 of the 218 patent were indeed indefinite due to the limitation “relatively large set of . . . content items” which, the court held, “is a term of degree” informed by the specification.  In this case, the specification disclosed sets of between 1,500 and 150,000 content items and had no description of what was considered “small, large, or average.”  “Accordingly,” the Court found, “the written description does not provide sufficient support to inform with reasonable certainty those skilled in the art about the scope of the invention.” 

The Court rejected Comcast’s other indefiniteness arguments based on 35 U.S.C. § 112(f) (a “means-plus-function” argument) and 35 U.S.C § 112 ¶ 2 (a “mixed statutory classes” argument).

-By Ryan Mott and Lewis Popovski

Case: Comcast Corporation, et al. v. Rovi Corporation, et al., No. 16 Civ. 9278, 2017 BL 281631 (S.D.N.Y. August 10, 2017).