Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Nagravision SA v. Comcast Cable Communications LLC

United States District Court, E.D. Texas, Marshall Division

November 13, 2017

NAGRAVISION SA and NAGRA FRANCE SAS,
v.
COMCAST CABLE COMMUNICATIONS LLC,

          CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

          RODNEY GILSTRAP UNITED STATES DISTRICT JUDGE

         Before the Court is Plaintiffs Nagravision SA and Nagra France SAS's (“Plaintiffs' or “Nagravision's”) Opening Claim Construction Brief (Dkt. No. 125). Also before the Court are Defendant Comcast Cable Communications LLC's (“Defendant's” or “Comcast's”) Responsive Claim Construction Brief (Dkt. No. 130) and Plaintiffs' reply (Dkt. No. 136).

         The Court held a claim construction hearing on November 1, 2017.

         Table of Contents

         I. BACKGROUND ....................................................................................................................... 2

         II. LEGAL PRINCIPLES ........................................................................................................... 3

         III. AGREED TERMS ................................................................................................................. 8

         IV. DISPUTED TERMS .............................................................................................................. 8

         A. “factory key” ......................................................................................................................... 8

         B. “processing the data” and “processed data” ........................................................................ 17

         V. CONCLUSION ...................................................................................................................... 22

         I. BACKGROUND

         Plaintiffs bring suit alleging infringement of United States Patents No. 7, 725, 740 (“the '740 Patent”), 8, 356, 188 (“the '188 Patent”), and RE40, 334 (collectively, the “patents-in-suit”) (Dkt. No. 125, Exs. 1-3).[1]

         The '740 Patent, titled “Generating a Root Key for Decryption of a Transmission Key Allowing Secure Communications, ” issued on May 25, 2010, and bears an earliest priority date of May 28, 2003. Plaintiffs submit: “The invention of the '740 Patent protects the integrity of software installed on an STB [(set-top box)] by confirming-each time the STB is started up- that the installed software is authentic and has not been tampered with.” (Dkt. No. 125, at 3; see Dkt. No. 136, at 1.) Defendant disagrees with Plaintiffs' characterization, and Defendant submits that “the asserted claims of [the] '740 patent are not directed to ‘confirming . . . that the installed software is authentic' on a STB, see [Dkt. No. 125, ] at 3, which the claimed invention does not facilitate in any way, but rather to one particular method of generating a root key in a secure module using secret information, and using that root key for a particular purpose.” (Dkt. No. 130, at 4; see id., at 2-3.) The Abstract of the '740 Patent states:

A method is used to restore the security of a secure assembly such as a chip card, after the contents of its second memory zone have been read by a third party. The method is for generating a security key implemented by a secure module comprising a central unit, a first conditional access memory zone and at least one second memory zone containing all or part of the user program. The method includes reading of all or part of the second memory zone, and generation of at least one root key based on all or part of the second zone data and on at least one item of secret information stored in the first memory zone.

         The '188 Patent, titled “Secure System-on-Chip, ” issued on January 15, 2013, and bears an earliest priority date of December 23, 2005. Plaintiffs submit that “the invention described in the '188 Patent allows for secure storage of data within a system-on-chip by applying a layer of encryption to the information before storing it in memory.” (Dkt. No. 125, at 3-4; see Dkt. No. 136, at 1.) Defendant submits that “[t]he '188 patent aims ‘to provide a secure system-on-chip for processing data' by adding an internal encryption layer to data on the chip.” (Dkt. No. 130, at 4.) The Abstract of the '188 Patent states:

The aim of the present invention is to provide a secure system-on-chip for processing data, this system-on-chip comprising at least a central processing unit, an input and an output channel, an encryption/decryption engine and a memory, characterized in that, said input channel comprises an input encryption module to encrypt all incoming data, said output channel comprising an output decryption module to decrypt all outgoing data, said central processing unit receiving the encrypted data from the input encryption module and storing them in the memory, and while processing the stored data, said central processing unit reading the stored data from the memory, requesting decryption of same in the encryption/decryption engine, processing the data and requesting encryption of the result by the encryption/decryption engine and storing the encrypted result, outputting the result to the output decryption module for decryption purpose and exiting the decrypted result via the output channel.

         Plaintiffs have asserted Claims 1 and 2 of the '740 Patent. (See Dkt. No. 125, Ex. 4, Aug. 23, 2017 Rubin Decl., at ¶ 22; see also Dkt. No. 130, at 3.)

         Plaintiffs have asserted Claims 9 and 11 of the '188 Patent. (See Dkt. No. 125, Ex. 4, Aug. 23, 2017 Rubin Decl., at ¶ 32.)

         II. LEGAL PRINCIPLES

         It is understood that “[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).

         “In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary underpinnings' of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).

         To ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. “One purpose for examining the specification is to determine if the patentee has limited the scope of the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).

         Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

         This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.

         Despite the importance of claim terms, Phillips made clear that “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):

Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.

         The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file history, however, “represents an ongoing negotiation between the PTO and the applicant, ” it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).

         Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes.

         Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.

         Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.

         The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120.

         III. AGREED TERMS

         In their August 23, 2017 Joint Claim Construction Chart and Prehearing Statement (Dkt.

         No. 105, at 1) and their October 18, 2017 Joint Claim Construction Chart (Dkt. No. 140, at 2-3), the parties have set forth agreements as to the following terms in the patents-in-suit:

Term

Agreement

“eliminating the secret information from the first portion of the second memory zone” ('740 Patent, Claim 1)

“rendering inaccessible the secret information in the first portion of the second memory zone”

“management center” ('740 Patent, Claim 1)

“a computer system for providing encrypted data and keys to a remote device”

         IV. DISPUTED TERMS

         A. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.