Hbac Matchmaker Media, Inc. v. Google Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

HBAC MATCHMAKER MEDIA, INC.,

Plaintiff-Appellant

v.

GOOGLE INC., YOUTUBE, LLC, ESPN, INC.,

YAHOO! INC., BRAVO MEDIA LLC, NBC

ENTERTAINMENT, UNIVERSAL TELEVISION

NETWORKS, CBS INTERACTIVE, INC., DISNEY

ONLINE, AMERICAN BROADCASTING

COMPANIES, INC., VEVO LLC, VIACOM

INTERNATIONAL INC., BLIP NETWORKS, INC.,

Defendants-Appellees

______________________

2015-1447, 2015-1478, 2015-1479, 2015-1480,

2015-1481, 2015-1521, 2015-1522, 2015-1523

______________________

Appeals from the United States District Court for the

District of Delaware in Nos. 1:13-cv-00428-SLR-SRF,

1:13-cv-00429-SLR-SRF, 1:13-cv-00430-SLR-SRF, 1:13-cv-

00433-SLR-SRF, 1:13-cv-00436-SLR-SRF, 1:13-cv-00437-

SLR-SRF, 1:13-cv-00438-SLR-SRF, 1:13-cv-00962-SLR-

SRF, Judge Sue L. Robinson.

______________________

Decided: May 31, 2016

______________________

2 HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC.

BRIAN DAVID LEDAHL, Russ August & Kabat, Los An-

geles, CA, argued for plaintiff-appellant. Also represented

by ERIC JOHN CARSTEN.

ANDREW JOHN PINCUS, Mayer Brown LLP, Washing-

ton, DC, argued for all defendants-appellees. Defendants-

appellees Google Inc., YouTube, LLC also represented by

PAUL WHITFIELD HUGHES. Defendant-appellee Google Inc.

also represented by MICHAEL J. MALECEK, TIMOTHY CHAO,

Kaye Scholer LLP, Palo Alto, CA.

EDWARD R. REINES, Weil, Gotshal & Manges LLP,

Redwood Shores, CA, for defendants-appellees ESPN,

Inc., Yahoo! Inc., Bravo Media LLC, NBC Entertainment,

Universal Television Networks, CBS Interactive, Inc.,

Disney Online, American Broadcasting Companies, Inc.

MILTON SPRINGUT, Springut Law PC, New York, NY,

for defendants-appellees Vevo LLC, Viacom International

Inc., Blip Networks, Inc. Defendant-appellee Blip Net-

works, Inc. also represented by JAMES F. VALENTINE, ERIC

WEI HOONG OW, Perkins Coie, LLP, Palo Alto, CA.

______________________

Before PROST, Chief Judge, DYK, and STOLL, Circuit

Judges.

STOLL, Circuit Judge.

HBAC Matchmaker Media, Inc. appeals from stipu-

lated final judgments of noninfringement entered by the

United States District Court for the District of Delaware

following claim construction of U.S. Patent No. 6,002,393

(the “ ’393 patent”). Because the district court erred in

construing the term “head end system,” we vacate the

stipulated judgments of noninfringement and remand for

further proceedings consistent with this opinion.

BACKGROUND

HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC. 3

HBAC owns the ’393 patent, which was filed in 1995

and is titled “System and Method for Delivering Targeted

Advertisements to Consumers Using Direct Commands.”

In eight similar complaints, HBAC alleged that several

providers of internet-based video delivery infringe the

’393 patent and U.S. Patent No. 5,774,170 (the “ ’170

patent”). 1 The asserted patents relate to systems and

methods for delivering targeted advertising to consumers’

digital devices.

The term “head end system” appears in each asserted

independent claim of the ’393 patent. Claim 1 is repre-

sentative:

1. A system for delivery of targeted advertise-

ments from a head end system to individual con-

sumers at at least one consumer display site

comprising:

(a) a control device at the at least one consum-

er display site; and

(b) a controller at the head end system for

sending a signal to the control device at the at

least one display site for causing an advertise-

ment to be displayed at said at least one display

site intended for a particular consumer;

(c) the controller at the head end system in-

cluding a program database supplying program

materials and a commercial database supplying

advertisements for display at the at least one dis-

play site, the commercial database further storing

information concerning the type of each adver-

tisement; the head end system further including a

1 The district court stayed the claims and counter-

claims regarding the ’170 patent during this appeal.

Accordingly, only the ’393 patent is before us.

4 HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC.

consumer database having information about a

consumer at the at least one display site, and an

instruction formatter having inputs from the con-

sumer database, the program database and the

commercial database for generating an instruction

for the control device at the at least one display

site, the instruction being generated based on the

type information stored in the commercial data-

base and the information about the consumer at

the at least one display site and optionally a char-

acteristic of the program materials; the controller

at the head end system further downloading the

instruction to the control device at the at least one

display site to command the control device to se-

lect an advertisement from the head end system

intended for display at the at least one display

site.

’393 patent col. 13 ll. 28–57 (emphases added).

Following briefing and argument, on June 3, 2014, the

district court construed the term “head end system” and,

on June 30, 2014, issued an order clarifying that construc-

tion. The district court construed “head end system” to

mean “[t]he point in a TV system at which all program-

ming is collected and formatted for placement on the TV

system.” Joint Appendix (“J.A.”) 23. The district court

subsequently clarified the construction to specify that

“ ‘TV system’ necessarily utilizes a conventional television

set and/or set-top box for selecting from (and displaying)

multiple channels of TV programming.” J.A. 30. The

court reasoned that “[w]hile plaintiff argues for a broader

construction of this limitation (to include the internet),

the specification consistently refers to ‘cable TV,’ ‘televi-

sion,’ and ‘VCR.’ ” J.A. 23. In its view, both the ’393

patent and the term “head end system” “are directed to

the specific technology platforms disclosed in the specifi-

cation, i.e., conventional television systems, especially

cable TV systems and other multichannel TV systems.”

HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC. 5

J.A. 30. The district court also noted that “the figures in

the ’393 patent represent TV systems and more particu-

larly cable television.” J.A. 24.

Based on the district court’s construction of the term

“head end system” to specifically exclude advertisement

delivery over the internet, the parties agreed to judg-

ments of noninfringement of all asserted claims of the

’393 patent in each of the eight cases. HBAC reserved the

right to appeal the district court’s claim construction.

Pursuant to the stipulations, the district court entered

final judgments under Rule 54(b) of the Federal Rules of

Civil Procedure, and HBAC now appeals. The cases have

been consolidated for purposes of our review. We have

jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

A. Standard of Review

“[W]hen the district court reviews only evidence in-

trinsic to the patent (the patent claims and specifications,

along with the patent’s prosecution history), the judge’s

determination will amount solely to a determination of

law, and the Court of Appeals will review that construc-

tion de novo.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135

S.Ct. 831, 841 (2015). “On the other hand, in considering

extrinsic evidence, we review the subsidiary factual

findings underlying the district court’s claim construction

for clear error.” Vasudevan Software, Inc. v. MicroStrate-

gy, Inc., 782 F.3d 671, 676 (Fed. Cir. 2015) (citing Teva,

135 S.Ct. at 840).

B. Claim Construction

Claim construction begins with the words of the

claim. Imaginal Systematic, LLC v. Leggett & Platt, Inc.,

805 F.3d 1102, 1108 (Fed. Cir. 2015). The words of a

claim are generally given their ordinary and customary

meaning, which is the meaning that the term would have

to a person of ordinary skill in the art at the time of the

6 HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC.

invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13

(Fed. Cir. 2005) (en banc). “The ordinary meaning of a

claim term may be determined by reviewing a variety of

sources, including the claims themselves, other intrinsic

evidence including the written description and the prose-

cution history, and dictionaries and treatises.” Teleflex,

Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.

2002) (internal citations omitted). The claims “must be

read in view of the specification, of which they are a part.”

Phillips, 415 F.3d at 1315 (quoting Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)

(en banc)). “That claims are interpreted in light of the

specification does not mean that everything expressed in

the specification must be read into all the claims.” Ray-

theon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir.

1983). Rather, “our focus must be on the claims.” Tele-

flex, 299 F.3d at 1326.

In this case, the district court erred in construing the

term “head end system” to require a TV system that

“necessarily utilizes” a conventional television set or set-

top box. First, the claims themselves nowhere indicate

that a “head end system” is limited to a TV system. To

the contrary, independent claims 55 and 56 specifically

add a TV limitation, reciting “a method for targeting TV

advertisements from a head end system.” ’393 patent

col. 19 ll. 29, 58. The district court’s construction thus

introduces avoidable redundancy into the language of the

claims. We have repeatedly emphasized that a “claim

construction that gives meaning to all the terms of the

claim is preferred over one that does not do so.” Merck &

Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372

(Fed. Cir. 2005).

We next note, as did the district court, that the term

“head end system” is not defined or recited in the specifi-

cation. J.A. 23. “When the intrinsic evidence is silent as

to the plain [or ordinary] meaning of a term, it is entirely

appropriate for the district court to look to dictionaries or

HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC. 7

other extrinsic sources for context—to aid in arriving at

the plain meaning of a claim term.” Helmsderfer v. Bo-

brick Washroom Equip., Inc., 527 F.3d 1379, 1382

(Fed. Cir. 2008). We thus look outside the specification of

the ’393 patent to discern the meaning of “head end

system” to a person of ordinary skill in the art at the time

of the invention. Contemporaneous technical dictionaries

demonstrate that, at the time of the invention, “head end”

was broadly understood as the origination point in a

communication system and was not limited to a conven-

tional TV or cable system. For example, a 1995 technical

dictionary defines “head end” as “[t]he originating point in

a communications system.” J.A. 923, The Computer

Glossary 177 (7th ed. 1995). It describes that in cable TV,

“the head end is where the cable company has its satellite

dish and TV antenna for receiving incoming program-

ming.” Id. It further states, though, that in the context of

“online services, the head end is the service company’s

computer system and databases.” Id. Another 1995

technical dictionary describes “headend” as a term that is

“becoming a general purpose term for describing source

nodes in the architecture of the information superhighway

that are responsible for storing and serving up the various

elements of content that users of the highway want.”

J.A. 928, Multimedia Technology from A to Z 77 (1995).

The dictionary continues, stating that “[a]s the super-

highway takes greater shape, headends will provide mass

storage of multimedia content . . . .” Id. Other contempo-

raneous dictionaries demonstrate that a cable head end is

just one example of a head end system. See, e.g., J.A. 941,

Novell’s Complete Encyclopedia of Networking 437 (1995)

(“Head end: In a broadband network, the starting point

for transmissions to end users. For example, cable net-

work’s broadcast station is a head end.”). At the time of

the patent’s filing, the ordinary meaning of “head end

system,” therefore, was not restricted to delivery over a

conventional TV or cable system.

8 HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC.

Appellees argue that the specification focuses on con-

ventional TV delivery systems, and therefore, the term

“head end system” should be so limited. While the speci-

fication discloses and the figures depict a preferred em-

bodiment in which the invention is used in a conventional

TV system, the specification does not disclaim or disavow

the use of a “head end system” with the internet as a

video-content delivery system. In this respect, the specifi-

cation does no more than describe preferred embodiments,

and we have repeatedly “cautioned against limiting the

claimed invention to preferred embodiments or specific

examples in the specification.” Williamson v. Citrix

Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015)

(quoting Teleflex, 299 F.3d at 1328). As such, the specifi-

cation should not be used to limit the term “head end

system.” The district court thus erred in restricting the

construction of “head end system” to a conventional TV

system.

Having determined that “head end system” requires a

broader construction still leaves open, however, the issue

ultimately at the center of the parties’ dispute: the scope

of the invention. Here, the parties and the district court

have taken the construction of a singular term that does

not appear in the specification and used that to drive the

determination of how broadly the invention applies, i.e.

whether it is limited to conventional TV or could also be

applied to contexts such as internet video. In this case,

the dispute regarding the scope of the invention cannot be

captured in the construed term. Accordingly, while we do

not construe the term “head end system” to be limited to a

conventional TV system, this does not necessarily mean

that the overall scope of the invention should be broader

in application. Based on the claims, specification, and

contemporaneous extrinsic evidence, the term “head end

system” is properly construed as “the origination point in

a communication system.” We do not address whether

the claims as properly construed are invalid under the

HBAC MATCHMAKER MEDIA, INC. v. GOOGLE INC. 9

written description or enablement requirements of 35

U.S.C. § 112. Instead, we leave these issues for the

parties to properly raise and develop and for the district

court to decide in the first instance.

CONCLUSION

For the foregoing reasons, we conclude that the dis-

trict court incorrectly construed the term “head end

system.” We therefore vacate the stipulated judgments of

noninfringement of the ’393 patent and remand the case

for proceedings consistent with this opinion.

VACATED AND REMANDED.