Promptu Systems Corporation v. Comcast Corporation, Appeal No. 2022-1939 (Fed. Cir. Feb. 16, 2024)

Our Case of the Week focuses on a district court’s claim construction rulings in a patent case brought against Comcast concerning speech recognition technology used in cable television networks.

The complaint in this case was filed in 2016. From 2018 to 2020, the case was stayed pending disposition of inter partes reviews related to the patents. Appeals from those IPRs have been heard by the Federal Circuit. Back at the district court, during the Markman process, which took place before the completion of discovery, the district court largely adopted Comcast’s proposed constructions. The parties then stipulated to a dismissal of the case, pending appeal of the claim construction decisions.

The Court held the district court had too narrowly construed the term “back channel” by limiting it to “a fixed band of frequencies or time slots for transmitting signals to a speech processing system or engine.” The Court noted that “back” refers to the direction (upstream) of transmission, but that there was nothing that limited the term to “a fixed band of frequencies or time slots.” Not only did the patent specification not limit the term in that way, but a separate patent incorporated by reference used back channel communications that were not fixed. Although the patent referred to fixed frequencies or time slots, the Court held that the use of a fixed frequency band or time slots in the patent “is no more than exemplary, not required.” “Our case law has long recognized that particular features recited in the specification merely as aspects of embodiments, and not expressly or even implicitly identifying requirements of the invention, do not narrow a claim term that is otherwise broader in its ordinary meaning.”

The parties also disputed the meaning of the term “channel” within the term “back channel.” However, the Court declined to resolve that dispute, and left it for further consideration on remand. The Court noted that only limited attention was given to that issue in the appellate briefing, and that it was unclear how significant the issue was in the broader context of the parties’ disputes in the case.

The Court also rejected the district court’s construction of “multiplicity of received identified speech channels,” because the district court’s construction of that phrase was premised on its erroneous construction of “back channels.”

In addition, the Court rejected the district court’s construction of “speech recognition system coupled to a wireline node,” finding that its construction erroneously construed the constituent terms “speech recognition system,” “coupled to,” and “wireline node.” The Court held that the district court improperly constrained these terms without support in the patent specification. The Court construed the second and third terms, while leaving a proper construction of the first term for further development before the district court.

Likewise, the Court rejected the district court’s construction of “centralized processing station,” finding that the district court improperly read a location requirement into the term (i.e., that it must be “at a cable-TV network head-end unit”). The district court relied on a specific embodiment that was preceded by the words “for example,” and “[s]uch a limitation would read embodiment features into a claim term that is not so limited.”

The Court accordingly vacated the district court’s entry of final judgment and remanded the case back to the district court for further proceedings.

The opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

Promptu Systems Corporation v. Comcast Corporation, Appeal No. 2022-1093 (Fed. Cir. Feb. 16, 2024)

In a separate order, the Court admonished an attorney at Weil, Gotschal, representing Comcast, for violating court rules by incorporating by reference portions of briefs within other briefs before the Court, which would have resulted in Comcast exceeding the word limits set by the Federal Circuit. The Court relied on Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 910 (Fed. Cir. 2014), in which the same law firm was admonished for precisely the same violation. The Court found the attorneys’ explanation of being unaware of the rule unreasonable. However, it declined to order sanctions. It did provide this cautionary, precedential note to “future litigants”:

(1) it is improper to incorporate material from one brief by reference into another unless in compliance with Fed. R. App. P. 28; (2) in no event is such incorporation permitted if it would result in exceeding the applicable word count; and (3) violating these provisions in the future will likely result in sanctions.

The opinion can be found here.

By Nika Aldrich