Petition for Writ of Certiorari — Comcast Cable Communications, LLC, Petitioner v. WhereverTV, Inc.
Supreme Court briefJan 8, 2026
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No. _____
In the Supreme Court of the United States
COMCAST CABLE COMMUNICATIONS, LLC, PETITIONER
v.
WHEREVERTV, INC., RESPONDENT
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
ASHOK RAMANI
DAVID J. LISSON
SERGE A. VORONOV
DAVIS POLK &
WARDWELL LLP
1600 El Camino Real
Menlo Park, CA 94025
ROBERT B. NILES-WEED
Counsel of Record
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
(212) 310-8000
robert.niles-weed@weil.com
MARK A. PERRY
WEIL, GOTSHAL & MANGES LLP
2001 M Street NW
Washington, DC 20036
QUESTION PRESENTED
Whether a court of appeals may override the principle of party presentation by deciding sua sponte a nonjurisdictional issue that a party deliberately waived.
(i)
RULE 29.6 STATEMENT
Pursuant to this Court’s Rule 29.6, petitioner states
that Comcast Cable Communications, LLC, is a wholly
owned, indirect subsidiary of Comcast Corporation and
no other publicly held corporation owns 10% or more of
the stock of petitioner.
(ii)
RELATED PROCEEDINGS
Patent Trial and Appeal Board:
Comcast Cable Commc’ns, LLC v. WhereverTV, Inc.,
No. 19-01482 (Mar. 3, 2020).
Comcast Cable Commc’ns, LLC v. WhereverTV, Inc.,
No. 19-01483 (Mar. 3, 2020).
United States District Court for the Middle District of
Florida:
WhereverTV, Inc. v. Comcast Cable Commc’ns, LLC,
No. 18-cv-529 (June 5, 2023).
United States Court of Appeals for the Federal Circuit:
WhereverTV, Inc. v. Comcast Cable Commc’ns, LLC,
No. 23-cv-2098 (July 28, 2025).
(iii)
TABLE OF CONTENTS
Opinions below.................................................................. 1
Jurisdiction ....................................................................... 1
Introduction ...................................................................... 2
Statement .......................................................................... 3
Reasons for granting the petition ................................. 10
I. There is a deep and entrenched circuit split ...... 10
II. The decision below warrants review.................... 17
III. The question presented is important and
merits review in this case. .................................... 25
Conclusion ....................................................................... 30
Appendix A — Court of appeals opinion (Jul. 28,
2025) ..................................................................... 1a
Appendix B — District court opinion and order
(Jun. 5, 2023)...................................................... 23a
Appendix C — District court oral ruling (Apr.
26, 2023) ............................................................. 44a
Appendix D — District court order on claim
construction (Nov. 13, 2020) .............................. 47a
Appendix E — Court of appeals denial of
rehearing (Oct. 10, 2025) .................................. 59a
(iv)
TABLE OF AUTHORITIES
Cases
Page(s)
AG Acceptance Corp. v. Veigel,
564 F.3d 695 (5th Cir. 2009) ................................ 15
Akamai Techs., Inc. v. MediaPointe, Inc.,
159 F.4th 1370 (Fed. Cir. 2025) ............................. 5
Amgen Inc. v. Sanofi,
598 U.S. 594 (2023) .............................................. 21
Bannister v. Knox Cnty. Bd. of Educ.,
49 F.4th 1000 (6th Cir. 2022) .............................. 12
Barna v. Bd. of Sch. Dirs. of Panther Valley
Sch. Dist., 877 F.3d 136 (3d Cir. 2017) ............... 11
Billard v. Charlotte Cath. High Sch.,
101 F.4th 316 (4th Cir. 2024) .............................. 13
Brown v. Arizona,
82 F.4th 863 (9th Cir. 2023) ................................ 16
Certain Underwriters at Lloyds London v.
Perraud, 623 F. App’x 628 (5th Cir. 2015) .......... 20
Ciena Corp. v. Oyster Optics, LLC,
958 F.3d 1157 (Fed. Cir. 2020) ........................ 2, 13
Clark v. Sweeney,
No. 25-52, 2025 WL 3260170 (U.S. Nov. 24,
2025) ............................................. 14, 17, 18, 25, 29
Comm’r v. McCoy,
484 U.S. 3 (1987) .................................................. 28
Commodity Futures Trading Comm’n v. Schor,
478 U.S. 833 (1986) ........................................ 23, 29
Day v. McDonough,
547 U.S. 198 (2006) .................................. 18, 19, 21
Egenera, Inc. v. Cisco Sys., Inc.,
972 F.3d 1367 (Fed. Cir. 2020) ............................ 13
Ericsson Inc. v. TCL Commc’n Tech. Holdings
Ltd., 955 F.3d 1317 (Fed. Cir. 2020) ................... 12
(v)
Eriline Co. v. Johnson,
440 F.3d 648 (4th Cir. 2006) ................................ 13
Flast v. Cohen,
392 U.S. 83 (1968) ................................................ 21
George v. Youngstown State Univ.,
966 F.3d 446 (6th Cir. 2020) ................................ 12
Glass v. Paxton,
900 F.3d 233 (5th Cir. 2018) ................................ 16
Hamer v. Neighborhood Hous. Servs. of Chi.,
583 U.S. 17 (2017) ................................................ 23
Hollingsworth v. Perry,
558 U.S. 183 (2010) .............................................. 27
Kaufman v. Microsoft Corp.,
34 F.4th 1360 (Fed. Cir. 2022) ............................. 24
Lankford v. Idaho,
500 U.S. 110 (1991) .............................................. 22
Mackey v. Montrym,
443 U.S. 1 (1979) .................................................. 25
Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) ...................................... 4, 6, 23
McNeil v. Wisconsin,
501 U.S. 171 (1991) .............................................. 19
Microsoft Corp. v. Baker,
582 U.S. 23 (2017) ................................................ 20
Muskrat v. United States,
219 U.S. 346 (1911) .............................................. 22
Nat’l Ass’n of Immigr. Judges v. Owen,
160 F.4th 100 (4th Cir. 2025) .............................. 14
N. Alamo Water Supply Corp. v. City of San
Juan, 90 F.3d 910 (5th Cir. 1996) ....................... 15
N. Bottling Co. v. Pepsico, Inc.,
5 F.4th 917 (8th Cir. 2021) .................................. 16
(vi)
Nelson v. Adams USA, Inc.,
529 U.S. 460 (2000) .............................................. 22
O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351 (Fed. Cir. 2008) ................. 5, 24
Robinson v. First State Cmty. Action Agency,
920 F.3d 182 (3d Cir. 2019) ................................. 11
Royal Canin U.S.A., Inc. v. Wullschleger,
604 U.S. 22 (2025) ................................................ 19
Saxon v. Sw. Airlines Co.,
993 F.3d 492 (7th Cir. 2021) ................................ 16
SIMO Holdings Inc. v. H.K. uCloudlink
Network Tech. Ltd.,
983 F.3d 1367 (Fed. Cir. 2021) .............................. 4
Sindi v. El-Moslimany,
896 F.3d 1 (1st Cir. 2018) .................................... 14
Sweeney v. Graham,
No. 22-6513, 2025 WL 800452 (4th Cir. Mar.
13, 2025) ............................................................... 14
Teva Pharms. USA, Inc. v. Sandoz, Inc.,
574 U.S. 318 (2015) .......................................... 5, 29
Trump v. Illinois,
No. 25-443, 2025 WL 3715211 (U.S. Dec. 23,
2025) ................................................................. 3, 22
U.S. Nat’l Bank v. Indep. Ins. Agents of Am.,
Inc., 508 U.S. 439 (1993) ...................................... 29
United States v. Bombardier Corp.,
380 F.3d 488 (D.C. Cir. 2004) .............................. 17
United States v. Campbell,
26 F.4th 860 (11th Cir. 2022) ........ 2, 11, 19, 21, 22
........................................................................ 23, 28
United States v. Lopez,
4 F.4th 706 (9th Cir. 2021) .................................. 16
(vii)
United States v. Sineneng-Smith,
590 U.S. 371 (2020) .................. 2, 17, 20, 21, 25, 27
Virgilio v. City of New York,
407 F.3d 105 (2d Cir. 2005) ................................. 18
Wood v. Milyard,
566 U.S. 463 (2012) .............................. 3, 18, 13, 25
Wyo-Ben Inc. v. Haaland,
63 F.4th 857 (10th Cir. 2023) .............................. 12
Other Authorities
Jeffrey M. Anderson, The Principle of Party
Presentation, 70 Buff. L. Rev. 1029 (2022).......... 27
Scott Dodson, Party Subordinance in Federal
Litigation, 83 Geo. Wash. L. Rev. 1 (2014) ......... 10
Claire Fahy, Disney Backs Down from Effort to
Use Disney+ Agreement to Block Lawsuit,
N.Y. Times (Aug. 20, 2024) .................................. 21
Amanda Frost, The Limits of Advocacy, 59
Duke L.J. 447 (2009) ............................................ 28
Rory Little, Party Presentation: A Mysterious
New Rule?, SCOTUSblog (Dec. 17, 2025) ........... 27
Robert J. Martineau, Considering New Issues
on Appeal: The General Rule and the Gorilla
Rule, 40 Vand. L. Rev. 1023 (1987) ..................... 10
Judith Resnik, Managerial Judges, 96 Harv. L.
Rev. 374 (1982) ..................................................... 21
Timothy A. Richard, The Timing of Claim Construction: An Analysis of Claim Construction
Procedure and a Proposed Rule to Ensure
Cost Effective and Timely Relief in Patent Infringement Cases, 33 Cath. U. J. L. & Tech
85 (2025) ............................................................... 26
(viii)
Owen B. Smitherman, Grounding the Party
Presentation Principle, 101 Notre Dame L.
Rev. (forthcoming 2026) ....................................... 27
Joan E. Steinman, Appellate Courts as First Responders: The Constitutionality and Propriety of Appellate Courts’ Resolving Issues in
the First Instance, 87 Notre Dame L. Rev.
1521 (2012) ..................................................... 27, 28
(ix)
In the Supreme Court of the United States
NO. _____
COMCAST CABLE COMMUNICATIONS, LLC, PETITIONER
v.
WHEREVERTV, INC., RESPONDENT
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
OPINIONS BELOW
The opinion of the Court of Appeals for the Federal
Circuit (App. 1a-22a) is unpublished but is reported at
2025 WL 2101946. The bench ruling and written order
of the District Court for the Middle District of Florida
(App. 23a-43a; App. 44a-46a) are unpublished, but the
written order is reported at 2023 WL 3819123.
JURISDICTION
The judgment of the court of appeals was entered on
July 28, 2025. App. 1a. The court of appeals denied a
timely petition for rehearing on October 10, 2025. App.
59a-60a. The jurisdiction of this Court is invoked under
28 U.S.C. 1254(1).
(1)
2
INTRODUCTION
This case presents a square conflict over an important question of appellate procedure: Whether a
court of appeals may override the principle of party
presentation by deciding sua sponte a non-jurisdictional
issue that a party deliberately waived.
In the decision below, the Federal Circuit—which,
along with one other circuit, holds that “it is a discretionary decision to forgive waivers of non-jurisdictional
challenges,” Ciena Corp. v. Oyster Optics, LLC, 958 F.3d
1157, 1161 (Fed. Cir. 2020)—sua sponte raised and resolved the appeal on an issue that neither party presented or briefed and that respondent WhereverTV, Inc.
deliberately and repeatedly waived. App. 1a-22a. The
court went so far as to hold that the district court “legally erred” by not addressing the waived issue. App.
12a. Had this appeal arisen in the Eleventh Circuit or
one of three others holding that “courts must respect”
when “a party affirmatively and intentionally relinquishes an issue,” it would have come out the other way.
United States v. Campbell, 26 F.4th 860, 872
(11th Cir. 2022) (en banc). The same is likely true had
this appeal arisen in the remaining seven circuits, although they apply different standards to override waiver
in limited circumstances: WhereverTV’s deliberate
waiver would have been respected and petitioner Comcast Cable Communications, LLC would have prevailed.
The Federal Circuit’s approach to waiver cannot be
reconciled with this Court’s precedents and the party
presentation principle. “[W]e rely on the parties to
frame the issues for decision and assign to courts the
role of neutral arbiter of matters the parties present.”
United States v. Sineneng-Smith, 590 U.S. 371, 375
3
(2020) (quoting Greenlaw v. United States, 554 U.S. 237,
243 (2008)). “If a party passes up what seems to us a
promising argument, we do not assume the role of advocate.” Trump v. Illinois, No. 25-443, 2025 WL 3715211,
*1 (U.S. Dec. 23, 2025) (Alito, J., dissenting). Where a
party deliberately chooses to withdraw an issue from
the court’s cognizance, the court “abuse[s] its discretion”
by addressing it. Wood v. Milyard, 566 U.S. 463, 466
(2012).
The Federal Circuit’s drastic departure from the
party presentation principle and the courts of appeals’
divergent approaches to the question presented call for
this Court’s review.
STATEMENT OF THE CASE
1. Petitioner Comcast Cable Communications, LLC
is one of the nation’s largest providers of broadband,
wireless, video, and voice services. App. 24a. Under the
Xfinity banner, Comcast’s X1 entertainment system
provides users with a cloud-based interactive program
guide that allows them to access and watch media made
available by Comcast. Ibid.
Respondent WhereverTV, Inc. is a largely defunct
television company that owns U.S. Patent No.
8,656,431, titled “Global Interactive Program Guide Application and Device.” App. 2a. Aiming to free customers
from a “content middleman,” like Comcast, “who limits
or controls what content is available,” WhereverTV’s patented device allows users to “add, delete programming
channels in ‘real-time’ that might not be available
through subscribed to” cable companies. Resp. C.A. Br.
6-7 (quoting ’431 patent col. 2, 41-43); see App. 18a.
Through a fully “portable set top box,” it allows users to
do so “anywhere in the world”—hence the name
4
WhereverTV. See Pet. C.A. Br. 50 (quoting ’431 patent
col. 7, 29-30); App. 2a.
The key features of the invention are required by
claim 1 of WhereverTV’s patent (the sole claim at issue).
Claim 1 covers a “content manager device comprising,”
among other limitations, “an interactive program guide
application installed on the device that provides a userconfigurable interactive program guide (IPG)”—the socalled “installed on the device” limitation—that “allows
for the IPG to be configured by a user with respect to
adding or deleting channels”—the so-called “adding or
deleting” limitation. App. 4a-5a (quoting ’431 patent col.
16 ll. 32-54).
2. WhereverTV sued Comcast for infringement, alleging that Comcast’s X1 entertainment system infringed WhereverTV’s patent. App. 5a. Because WhereverTV alleged literal infringement, it had to show that
the “accused device contains each and every limitation
of the asserted claims.” SIMO Holdings Inc. v. H.K.
uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1380
(Fed. Cir. 2021) (quoting Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014)). WhereverTV thus had to prove that Comcast’s X1 system satisfied both of the two limitations relevant to this petition: Namely, that the X1 system had “an interactive
program guide application installed on the device,”—
i.e., on the X1 system’s set-top box—that provides an interactive program guide, and that the X1 guide could be
“configured by a user with respect to adding or deleting
channels.” App. 9a.
There are “two elements of a simple patent case, construing the patent and determining whether infringement occurred.” Markman v. Westview Instruments,
Inc., 517 U.S. 370, 384 (1996). The first element—called
5
“claim construction”—can involve a “mongrel practice”
where the parties call on a court to resolve disputes
about the meaning of the patent claim’s terms. Id. at
378. If called upon, the court may, for example, “consult
extrinsic evidence in order to understand … 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., 574 U.S. 318, 331 (2015). Often, however, the parties or the court will determine
that no claim construction is needed. See O2 Micro Int’l
Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and
should not be) required to construe every limitation present in a patent’s asserted claims.”).
The construction (or not) of the claims, in turn, “dictates how the court will instruct the jury regarding a
claim’s scope.” Id. at 1359. The second element of a patent case—the determination of whether the accused device meets the patent’s limitations—is based on the patent’s claims as construed (or not) by the court. Markman, 517 U.S. at 384.
In this case, WhereverTV deliberately declined to
seek construction of the patent’s two relevant limitations. See App. 30a, 47a-58a. WhereverTV knowingly,
deliberately, and repeatedly urged the district court not
to construe those claim limitations and instead to use
the language of the patent itself to set the standard by
which infringement would be assessed. See generally
Akamai Techs., Inc. v. MediaPointe, Inc., 159 F.4th
1370, 1380 (Fed. Cir. 2025) (“When a claim limitation[]
… is not expressly construed, a jury is entitled to give
that limitation any reasonable meaning in determining,
as a factual matter, what comes within its scope.”).
6
WhereverTV never proposed a construction of either
limitation and insisted that claim construction was not
needed. At the Markman stage, WhereverTV advocated
that the language of both limitations should be read to
the jury as is. App. 51a-53a & n.4; see Resp. C.A. Br.
17-19. WhereverTV did so in the face of local rules requiring parties to exchange “proposed interpretation[s]”
and to submit a joint statement to the court identifying
any “disputed claim term[s]” for judicial resolution. See
M. D. Fla. Case Management Order for Patent Cases.
Neither party proposed a construction of the “installed
on the device” limitation—thus agreeing that the patent’s text could be used as the standard for determining
infringement without elaboration from the court. App.
47a-58a; Resp. C.A. Br. 18. And WhereverTV opposed
Comcast’s proposal for construction of the “adding or deleting” limitation. App. 56a. After briefing and a hearing, which included expert testimony, the district court
adopted WhereverTV’s position and did not construe either of the two relevant limitations. App. 56a; see Resp.
C.A. Br. 18-19 (The district court “correctly decided that
[the ‘adding or deleting’] limitation does not need construction.”).
The parties accordingly proceeded to a weeklong trial
on the second element of a patent case, “determining
whether infringement occurred.” Markman, 517 U.S. at
384. Because the district court—at WhereverTV’s insistence—did not construe either limitation, the text of
WhereverTV’s patent provided the standard by which
infringement would be judged.
After the close of evidence, the district court granted
judgment as a matter of law to Comcast. App. 44a-46a.
The court applied the plain text of the “installed on the
device” and “adding or deleting” limitations and held
7
there was insufficient evidence for a jury to find infringement of either limitation. The court’s reasoning—
initially provided from the bench, App. 44a-46a, and
later reduced to a written order, App. 23a-43a—was
straightforward. As to the “installed on the device” limitation, the court recounted evidence showing that Comcast’s interactive program guide application “is installed
and runs ‘on servers in the cloud,’” and thus “is not installed on the device (the set-top box).” App. 40a. As for
the “adding or deleting” limitation, the court described
evidence “regarding the rigidity of [Comcast’s] X1’s
[guide] display and the immutability of the channel listings provided by Comcast,” which inhibits “a user’s ability to add or delete channels.” App. 36a-37a; see ibid.
(Comcast’s X1 system is “in no way identical to the …
invention described in the [] Patent specification”).
The district court, in its written decision, made clear
that it had not engaged in claim construction and emphasized that WhereverTV had waived the issue. See
App. 30a (“WTV stated that the Court should use the
plain and ordinary meaning of ‘adding or deleting.’”);
App. 38a (“WTV suggested that this term [IPG] should
have a ‘plain and ordinary meaning’”). It observed that
“[o]n two separate occasions” before trial WhereverTV
“had the opportunity to move the Court to construe” the
claim terms, yet “did not do so on either occasion.” App.
30a; see App. 47a-58a (order on claim construction).
“Nor did either party move to have the [limitations] construed during trial.” App. 30a-31a. Indeed, WhereverTV, in opposing Comcast’s motion for judgment as a
matter of law, asked for the jury to weigh the evidence
against the plain language of the claim and argued that
Comcast improperly sought claim construction. App.
33a, 38a. For its part, Comcast agreed that claim
8
construction was unnecessary and inappropriate at that
stage. App. 30a-31a. As Comcast saw it, WhereverTV
could not avoid judgment as a matter of law on the patent’s plain language; the only way that the case could
be properly submitted to the jury was if the claims
meant something else entirely. App. 31a n.3. The district court honored WhereverTV’s deliberate waiver and
ruled on the only question before it, finding the evidence
insufficient to prove infringement.
3. On appeal to the Federal Circuit, WhereverTV
challenged only the district court’s determination that
the evidence did not suffice to show that Comcast’s X1
system infringed the two limitations as written.1
WhereverTV stressed that it never sought claim construction of either limitation and argued that the district court erred by improperly engaging in claim construction. Resp. C.A. Br. 31-32; see Resp. C.A. Br. 31
(“Neither party proposed a construction for IPG application because none was needed.”); Resp. C.A. Br. 47 (“No
construction was needed because adding channels is familiar to anyone who has subscribed to cable television”). Comcast agreed with WhereverTV that the sole
question presented to the court of appeals was whether
the evidence sufficed to prove infringement applying the
plain text of the relevant limitations without further
construction. Pet. C.A. Br. 42-46, 52-56.
The Federal Circuit vacated and remanded. App.
22a. But the panel did not address the issue presented
1 Comcast asserted an alternative ground for affirmance relating
to a different claim limitation and cross-appealed on an issue regarding the patent’s validity. Pet. C.A. Br. 58-70. The Federal Circuit rejected both of Comcast’s arguments, App. 18a-22a, and Comcast does not seek review of those independent issues.
9
by the parties: Whether the evidence sufficed to show
infringement of the patent as written. Nor did the Federal Circuit accept WhereverTV’s argument that the
district court erred by engaging in claim construction in
its judgment as a matter of law decision. Instead, the
Federal Circuit addressed an issue neither party raised
or briefed and that WhereverTV had repeatedly argued
against—whether claim construction was needed—and
held that “[t]he district court legally erred by not construing th[e] limitation[s].” App. 12a.
The Federal Circuit then engaged in partial claim
construction itself—without proposed constructions or
briefing from the parties, or a decision on the issue from
the district court. App. 15a-18a. First, the panel held
that the claim language “interactive program guide application installed on the device” “does not require that
all the functionality of the IPG must reside in the
claimed IPG application” on the device; “it is sufficient
that the IPG application provide an IPG in coordination
with [a] server.” App. 15a. Second, the panel held that
“adding or deleting channels” can be accomplished by
“subscribing and … unsubscribing” to channels in the
program guide, even though such channels appear in
the guide before they are “added” and remain there after
they are “deleted.” App. 17a-18a. The Federal Circuit
did so notwithstanding the fact that WhereverTV never
proposed these—or any other—constructions of either
limitation and instead successfully urged the district
court to not engage in claim construction and apply the
plain language of WhereverTV’s own patent.
Comcast petitioned for panel and en banc rehearing,
arguing that the panel erred by engaging in sua sponte
consideration of an issue that neither party raised and
10
that WhereverTV had deliberately waived. C.A. Pet. for
Reh’g 11. Rehearing was denied. App. 59a-60a.
REASONS FOR GRANTING THE PETITION
I. There is a Deep and Entrenched Circuit Split
The circuits are divided over whether they may address deliberately waived non-jurisdictional issues.
Four circuits hold that they lack the authority to address waived issues. All of the remaining circuits hold
that they may address waived issues—with two circuits,
including the Federal Circuit, holding that their discretion to do so is unbounded, and the remaining seven
holding that they may exercise discretion to address
waived issues only in limited circumstances.
The split is entrenched and widely acknowledged,
with one academic commentator describing the state of
the law as “a woefully undertheorized default presumption of party dominance, pockmarked by similarly undertheorized exceptions.” Scott Dodson, Party Subordinance in Federal Litigation, 83 Geo. Wash. L. Rev. 1, 5-6
(2014); see also, e.g., Robert J. Martineau, Considering
New Issues on Appeal: The General Rule and the Gorilla
Rule, 40 Vand. L. Rev. 1023, 1061 (1987) (“The only consistent feature of the current system is its inconsistency.”).
To be clear: All circuits will sometimes honor a
party’s deliberate waiver and decline to address a
waived issue. The question presented here, on which the
circuits are deeply divided, is whether and when courts
of appeals may choose to override a party’s waiver to decide an issue that the party itself abandoned.
1. The Third, Sixth, Tenth, and Eleventh Circuits
hold that they lack authority to address deliberately
waived issues.
11
The en banc Eleventh Circuit’s decision in United
States v. Campbell, 26 F.4th 860 (2022), exemplifies the
side of the split in which courts must give effect to a
party’s waiver. While the court divided over whether the
issue in that case had been deliberately waived or unintentionally forfeited, it was unanimous about the import
of that distinction: “Waiver directly implicates the
power of the parties to control the course of the litigation; if a party affirmatively and intentionally relinquishes an issue, then courts must respect that decision.” Id. at 872 (majority op.); see id. at 901 (Newsom,
J., and Jordan, J., dissenting) (“[T]here seems to be raging consensus about the governing principles here: If the
government waived the … issue by opting not to pursue
it … then it’s off the table.”).
In a thorough joint opinion, Judges Newsom and Jordan (joined by three other judges) explained that respect
for deliberate waiver derives from “the first principle of
first principles: In this country, we have an adversarial
justice system.” Id. at 893. This principle “has deep historical roots that predate this country’s founding.” Ibid.
“Adversarialism and the party-presentation principle
aren’t just deeply historical,” the joint opinion continued, “they’re also instrumental to—and protective of—
other core values of the Anglo-American judicial tradition,” including, among others, “fundamental fairness”
and the “separation of powers.” Id. at 895-97.
Three other circuits likewise hold that they lack authority to address deliberately waived issues.
In the Third Circuit, “[w]aived claims may not be
resurrected on appeal.” Barna v. Bd. of Sch. Dirs. of
Panther Valley Sch. Dist., 877 F.3d 136, 146 n.7 (3d Cir.
2017); see also, e.g., Robinson v. First State Cmty. Action
Agency, 920 F.3d 182, 187 (3d Cir. 2019) (similar).
12
The Sixth Circuit similarly holds that “[a] waiver
occurs when a party intentionally abandons a known
right” and “refuse[s] to consider this type of intentionally jettisoned argument.” Bannister v. Knox Cnty. Bd.
of Educ., 49 F.4th 1000, 1011-12 (6th Cir. 2022). The
Sixth Circuit’s language, however, is sometimes less
than crystal clear and may reserve some limited and undefined discretion to address waived issues. See, e.g.,
George v. Youngstown State Univ., 966 F.3d 446, 469
(6th Cir. 2020) (A party’s “intentional surrender typically precludes judicial consideration of a defense.” (emphasis added)).
Finally, in the Tenth Circuit “it is well-established
that we do not consider arguments an appellant intentionally disclaimed or abandoned.” Wyo-Ben Inc. v. Haaland, 63 F.4th 857, 870 (10th Cir. 2023). The Tenth Circuit’s respect for party presentation extends even to enforcing a limitations period against a party that waived
the issue, notwithstanding a “more-than-colorable question concerning whether [the limitations period] applies
at all.” Id. at 868; see id. at 869-70 (“Stated otherwise,
the parties’ litigation posture regarding the applicability of [the] limitations period to [the] claim provides the
conceptual baseline from which our analysis proceeds ….”).
2. In stark contrast, both the Federal Circuit and the
Fourth Circuit find no limit to their discretion to address deliberately waived issues.
As illustrated by the decision below, the Federal
Circuit holds that it “always possess[es] ‘the discretion
to decide when to deviate from th[e] general rule of
waiver.’” Ericsson Inc. v. TCL Commc’n Tech. Holdings
Ltd., 955 F.3d 1317, 1322 (Fed. Cir. 2020) (second alteration in original) (quoting Interactive Gift Express, Inc.
13
v. Compuserve, Inc., 256 F.3d 1323, 1344
(Fed. Cir. 2001)); see also, e.g., Ciena Corp., 958 F.3d at
1161 (“[I]t is a discretionary decision to forgive waivers
of non-jurisdictional challenges ….”).
The disregard for party presentation in the decision
below is emblematic of the Federal Circuit’s general approach. See, e.g., Egenera, Inc. v. Cisco Sys., Inc., 972
F.3d 1367, 1378 n.6 (Fed. Cir. 2020) (“[Appellee] contends that [appellant] waived any argument [on an issue]. Regardless, whether to apply the waiver rule is
discretionary. … To apply waiver would not serve judicial economy or promote fairness, and so we address the
merits.”). Despite Comcast raising this issue in its petition for en banc rehearing, the Federal Circuit is unwilling to reconsider its approach. App. 59a-60a.
The Fourth Circuit holds that, where an issue “‘implicate[s] important institutional interests of the court,’
[the court] retain[s] discretion to raise and consider it
sua sponte – even if waived.” Billard v. Charlotte Cath.
High Sch., 101 F.4th 316, 325 (4th Cir. 2024) (quoting
Eriline Co. v. Johnson, 440 F.3d 648, 654-55 (4th Cir.
2006)). But the Fourth Circuit has taken an expansive
approach to defining such “institutional interests.” It
has blessed sua sponte consideration of, for example,
waived res judicata arguments and various other arguments in habeas and in forma pauperis cases. See Eriline, 440 F.3d at 656 (“[B]oth habeas corpus and in
forma pauperis proceedings, like failure to prosecute,
abuse of process, and res judicata, implicate important
judicial and public concerns ….”). Whether the Fourth
Circuit’s claimed discretion to address waived issues is
just as broad as the Federal Circuit’s, or perhaps
slightly narrower, only underscores the confusion and
division among the circuits.
14
Judge Quattlebaum’s dissent from the panel opinion
in Sweeney v. Graham—a ruling this Court recently
summarily reversed—describes the Fourth Circuit’s approach to party presentation. No. 22-6513, 2025 WL
800452 (4th Cir. Mar. 13, 2025) (Quattlebaum, J., dissenting), rev’d sub nom. Clark v. Sweeney, No. 25-52,
2025 WL 3260170 (Nov. 24, 2025) (per curiam). Per
Judge Quattlebaum, “the majority’s special circumstances principle” for overriding party presentation “is
unworkably squishy”; “[t]he total absence of standards … is concerning” and “could be used to avoid the
settled requirements of the law and permit reaching
preferred outcomes.” Id. at *39. “This is no way to run a
railroad,” as “[a]ppellate review is not a game of moving
target.” Id. at *40. See also, e.g., Nat’l Ass’n of Immigr.
Judges v. Owen, 160 F.4th 100, 118 (4th Cir. 2025)
(Quattlebaum, J., dissenting from denial of reh’g en
banc) (“[T]he panel opinion shirks party presentation
principles—taking off its black robes to argue a case different from the one the [party] advanced.”), petition for
cert. pending sub nom. Margolin v. Nat’l Ass’n of Immigr. Judges, No. 25-767 (filed Dec. 23, 2025).
3. The remaining circuits articulate diverse standards (sometimes applied inconsistently) to describe the
limited circumstances in which they will address
waived issues.
The First Circuit does not appear to recognize a
strict distinction between deliberate waiver and inadvertent forfeiture and instead holds that “an appellate
court may, under exceptional circumstances, elect to
reach unpreserved issues in order to forestall a miscarriage of justice.” Sindi v. El-Moslimany, 896 F.3d 1, 28
(1st Cir. 2018). Among the “considerations” the court assesses in deciding whether to address unpreserved
15
issues are “whether the inadequately preserved arguments are purely legal, are amenable to resolution without additional factfinding, are susceptible to resolution
without causing undue prejudice, are highly convincing,
are capable of repetition, and implicate matters of significant public concern,” and “whether the failure to advance an argument was deliberate or inadvertent.” Ibid.
(citing Nat’l Ass’n of Soc. Workers v. Harwood, 69 F.3d
622, 627-28 (1st Cir. 1995)).
The Second Circuit claims “broad discretion to consider” waived issues on the ground that “waiver rules
are prudential and not jurisdictional.” Virgilio v. City of
New York, 407 F.3d 105, 116 (2d Cir. 2005). The court
‘“may rule on issues not raised in the district
court ... when the issues are solely legal ones not requiring additional factfinding.”’ Ibid. (quoting Westinghouse
Credit Corp. v. D’Urso, 371 F.3d 96, 103 (2d Cir. 2004)).
“[T]hat discretion may extend to factual determinations,” too, though the court is “‘seldom inclined to exercise this discretion’ when unresolved factual determinations exist.” Okor v. Ginsberg, 692 F. App’x 642, 643
(2d Cir. 2017) (quoting Paese v. Hartford Life & Accident
Ins. Co., 449 F.3d 435, 446 (2d Cir. 2006)).
The Fifth Circuit does not consistently distinguish
between waiver and forfeiture. To address either a
waived or forfeited issue, the court generally requires
“extraordinary circumstances,” which ‘“exist when the
issue involved is a pure question of law and a miscarriage of justice would result from [a] failure to consider
it.”’ AG Acceptance Corp. v. Veigel, 564 F.3d 695, 700
(5th Cir. 2009) (quoting N. Alamo Water Supply Corp. v.
City of San Juan, 90 F.3d 910, 916 (5th Cir. 1996)). The
court also sometimes reaches waived issues that “present purely legal questions that were briefed to the
16
district court … [i]n stewardship of judicial resources.”
Glass v. Paxton, 900 F.3d 233, 243 (5th Cir. 2018).
The Seventh Circuit holds that it “may, in [its] discretion, forgive waiver or forfeiture in a case that presents a pure question of statutory interpretation that
the parties have fully briefed on appeal.” Saxon v. Sw.
Airlines Co., 993 F.3d 492, 496 (7th Cir. 2021), aff’d, 596
U.S. 450 (2022). While the court noted that it “exercise[s] such discretion sparingly,” it has elected to do so
to address, for example, an “important and recurring
question of statutory interpretation.” Ibid.
The Eighth Circuit requires “exceptional circumstances” to address a waived issue. N. Bottling Co. v.
PepsiCo, Inc., 5 F.4th 917, 922 (8th Cir. 2021) (quoting
Platte Valley Bank v. Tetra Fin. Grp., LLC, 682 F.3d
1078, 1086 (8th Cir. 2012)). But, contrary to the courts
of appeals willing to address waived issues that are
purely legal, the Eighth Circuit has held that no such
exceptional circumstances exist to address a purely legal choice-of-law question that a party waived in the district court. See id. at 922-23.
The Ninth Circuit has—at times—recognized that
waiver of an issue “entirely precludes appellate review.”
United States v. Lopez, 4 F.4th 706, 719 n.3 (9th Cir.
2021). Yet—at other times, including en banc—the
court has addressed deliberately waived issues on the
grounds that it has “the authority and discretion to decide questions first raised in a petition for rehearing en
banc,” clarifying that “it is claims that are deemed
waived or forfeited, not arguments.” Brown v. Arizona,
82 F.4th 863, 873 (9th Cir. 2023) (en banc) (citations
omitted), cert. denied, 144 S. Ct. 1346 (2024); but see id.
at 898 (R. Nelson, J., dissenting) (“The majority and concurrence cite no case in which we have adopted an
17
argument that was affirmatively disclaimed by a party.
There is no precedent supporting what the majority is
actually doing here.”).
Finally, the D.C. Circuit claims “authority to remedy errors sua sponte in ‘exceptional circumstances’—
when they ‘seriously affect the fairness, integrity, or
public reputation of judicial proceedings.’” United States
v. Bombardier Corp., 380 F.3d 488, 497 (D.C. Cir. 2004)
(quoting United States v. TDC Mgmt. Corp., 288 F.3d
421, 425 (D.C. Cir. 2002)).
II. The Decision Below Warrants Review
1. “In our adversarial system of adjudication, we follow the principle of party presentation.” SinenengSmith, 590 U.S. at 375. “[W]e rely on the parties to
frame the issues for decision and assign to courts the
role of neutral arbiter of matters the parties present.”
Ibid. (quoting Greenlaw, 554 U.S. at 243). “[C]ourts are
essentially passive instruments of government”; they
“do not, or should not, sally forth each day looking for
wrongs to right.” Id. at 376 (quoting United States v.
Samuels, 808 F.2d 1298, 1301 (8th Cir. 1987) (Arnold,
J., concurring in denial of reh’g en banc)). “To put it
plainly, courts ‘call balls and strikes’: they don’t get a
turn at bat.” Clark, 2025 WL 3260170, at *1 (quoting
Lomax v. Ortiz-Marquez, 590 U.S. 595, 599 (2020)).
This Court has twice in the past six years held that
courts of appeals commit reversible error when they “depart [] drastically from the principle of party presentation.” Sineneng-Smith, 590 U.S. at 375. In SinenengSmith, this Court reversed the Ninth Circuit where it
“[e]lect[ed] not to address the party-presented controversy,” sua sponte sought amicus curiae briefing, and resolved the case on an issue that had not been raised by
18
the parties. Id. at 379-80. And in Clark v. Sweeney,
“[t]he Fourth Circuit transgressed the party-presentation principle by granting relief on a claim that [respondent] never asserted and [petitioner] never had the
chance to address.” 2025 WL 3260170, at *2. The party
“asserted ‘one, and only one,’ claim,” but “[i]nstead of
ruling on that claim, the Fourth Circuit devised a new
one.” Ibid. (citation omitted).
The party presentation principle applies with particular force in cases of deliberate waiver. In Day v.
McDonough, 547 U.S. 198 (2006), this Court held that a
district court has discretion to sua sponte raise a statute
of limitations defense to a habeas corpus petition that a
State had inadvertently forfeited. Id. at 209. But, in doing so, the Court noted that “we would count it an abuse
of discretion to override a State’s deliberate waiver of a
limitations defense.” Id. at 202; see also id. at 210 n.11
(“[S]hould a State intelligently choose to waive a statute
of limitations defense, a district court would not be at
liberty to disregard that choice.”).
In Wood v. Milyard, 566 U.S. 463 (2012), this Court
addressed deliberate waiver head on, again in the context of the timeliness of a habeas petition. There, “the
State twice informed the District Court that it ‘will not
challenge, but [is] not conceding’ the timeliness” issue.
Id. at 474. The district court accepted that waiver and
decided the case on the merits, but the Tenth Circuit
overrode the State’s waiver and found the petition time
barred. Id. at 467-68.
This Court reversed. The Court was clear that the
State’s “decision not to contest the timeliness of [the] petition did not stem from an ‘inadvertent error,’” as in
Day. Id. at 474. Rather, the State “express[ed] its clear
and accurate understanding of the timeliness issue” but
19
“deliberately steered the District Court away from the
question.” Ibid. Emphasizing the need for “[d]ue regard
for the trial court’s processes and time investment,” and
with concern that “the appellate court act[ed] not as a
court of review but as one of first view,” the Court held
that the court of appeals “abused its discretion when it
dismissed [the] petition as untimely.” Id. at 473-74. “[A]
federal court does not have carte blanche to depart from
the principle of party presentation basic to our adversary system.” Id. at 472.
There is no good reason to limit Day and Wood to the
habeas corpus or statute-of-limitations contexts: Courts
of appeals lack authority to override a party’s deliberate
waiver of any non-jurisdictional issue in all but the rarest of circumstances.
Requiring courts of appeals to respect deliberate
waiver emanates from “the first principle of first principles: In this country, we have an adversarial justice system.” Campbell, 26 F.4th at 893 (Newsom, J., and Jordan, J., dissenting). As Justice Scalia put it: “What
makes a system adversarial rather than inquisitorial is
… the presence of a judge who does not (as an inquisitor
does) conduct the factual and legal investigation himself, but instead decides on the basis of facts and arguments pro and con adduced by the parties.” McNeil v.
Wisconsin, 501 U.S. 171, 181 n.2 (1991).
A party’s decision to put an issue before a court is the
source of the court’s power to resolve it. It is the plaintiff—not the court—who “is ‘the master of the complaint,’” and who “gets to determine which substantive
claims to bring against which defendants.” Royal Canin
U.S.A., Inc. v. Wullschleger, 604 U.S. 22, 35 (2025)
(quoting Caterpillar Inc. v. Williams, 482 U.S. 386, 39899 (1987)). “[O]ur system ‘is designed around the
20
premise that [parties represented by competent counsel] know what is best for them, and are responsible for
advancing the facts and argument entitling them to relief.” Sineneng-Smith, 590 U.S. at 375-76 (second alteration in original) (quoting Castro v. United States, 540
U.S. 375, 386 (2003) (Scalia, J., concurring in part and
concurring in judgment)).
A party’s decision to intentionally withdraw an issue
from a court of appeals’ cognizance in turn should deprive the court of authority to address it. When a party
deliberately waives an issue, they eliminate adversity
with respect to that issue. Just as when parties seek voluntary dismissal, “they consent[] to the judgment
against them and disavow[] any right to relief” on that
ground. Microsoft Corp. v. Baker, 582 U.S. 23, 44 (2017)
(Thomas, J., concurring in judgment). “The parties thus
[a]re no longer adverse to each other” with respect to the
waived issue “and the Court of Appeals could not ‘affect
the[ir] rights’ in any legally cognizable manner.” Id. at
44-45 (quoting Lewis v. Cont’l Bank Corp., 494 U.S. 472,
477 (1990)). The court, as a “passive instrument[] of government,” has no ability to revive adversarial presentation sua sponte, and thus cannot override a party’s decision to waive an issue. Sineneng-Smith, 590 U.S. at 376
(citation omitted).
It is particularly inappropriate for a court to substitute its view of the party’s best interests for the party’s
own. There are many reasons why parties may waive
winning issues, reasons which may be—and often
should be—unknown to the court. Parties may seek to
invite (or avoid) precedent on specific issues of broader
significance. See, e.g., Certain Underwriters at Lloyds
London v. Perraud, 623 F. App’x 628, 635 (5th Cir. 2015)
(King, J., dissenting) (hypothesizing that a party’s
21
waiver sought “to force a ruling ... which will undoubtedly impact … future cases”). They may need to balance
multiple competing issues in a single case—as often
happens in patent cases, where securing broad claim
constructions may increase the risk that a patent will be
found invalid. Cf. Amgen Inc. v. Sanofi, 598 U.S. 594,
613 (2023) (“[T]he more a party claims, … the more it
must enable.”). They may fear that success in the courtroom will harm their standing with customers or the
public. See Claire Fahy, Disney Backs Down from Effort
to Use Disney+ Agreement to Block Lawsuit, N.Y. Times
(Aug. 20, 2024). Or they may simply think it is the right
thing to do. See Day, 547 U.S. at 217-18 (Scalia, J., dissenting) (“There are many reasons why the State may
wish to disregard the statute of limitations, including
the simple belief that it would be unfair to impose the
limitations defense on a particular defendant.”). Whatever the reason, what matters is this: It is for the parties
and not the court to decide which issues to raise and
which to waive. Courts in our adversarial system must
respect that decision.
Respect for a party’s deliberate waiver finds support
in the history and constitutional structure of our judicial
system. As Judges Newsom and Jordan noted, “[a]dversarialism has deep historical roots that predate this
country’s founding.” Campbell, 26 F.4th at 893 (Newsom, J., and Jordan, J., dissenting). The “limits placed
on federal judges by the adversarial system comported
with the views of those who drafted the Constitution.”
Ibid. (quoting Judith Resnik, Managerial Judges, 96
Harv. L. Rev. 374, 381 (1982)).
Consistent with this history, Article III limits the
power of the federal courts “to questions presented in an
adversary context.” Flast v. Cohen, 392 U.S. 83, 95
22
(1968); see Muskrat v. United States, 219 U.S. 346, 357
(1911) (Article III “implies the existence of present or
possible adverse parties, whose contentions are submitted to the court for adjudication.” (citation omitted)).
“[A]llowing unelected and unaccountable federal judges
‘to transgress the limits of the parties’ arguments gives
them the power to set their own agendas—a power normally reserved for the political branches.’” Campbell, 26
F.4th at 895-96 (Newsom, J., and Jordan, J., dissenting)
(quoting Amanda Frost, The Limits of Advocacy, 59
Duke L.J. 447, 481 (2009)).
Moreover, the “opportunity to respond” is “fundamental to due process.” Nelson v. Adams USA, Inc., 529
U.S. 460, 465-68 (2000). A court of appeals’ sua sponte
decision to override a party’s deliberate waiver may
deny the parties “adequate notice of the critical issue
that the judge was actually debating.” Lankford v.
Idaho, 500 U.S. 110, 120 (1991).
Respect for deliberate waiver also advances “other
core values of the Anglo-American judicial tradition.”
Campbell, 26 F.4th at 895 (Newsom, J., and Jordan, J.,
dissenting). “[O]ur legal tradition regards the adversary
process as the best means of ascertaining truth and
minimizing the risk of error.” Ibid. (quoting Mackey v.
Montrym, 443 U.S. 1, 13 (1979)); see also Trump v. Illinois, 2025 WL 3715211, at *9 (Gorsuch, J., dissenting)
(disregarding waiver deprives questions of “the full airing they so clearly deserve”). “If a court engages in what
may be perceived as the bidding of one party by raising
claims or defenses on its behalf,” or disregarding its decision to waive issues, “the court may cease to appear as
a neutral arbiter.” Campbell, 26 F.4th at 896 (Newsom,
J., and Jordan, J., dissenting) (quoting Burgess v.
United States, 874 F.3d 1292, 1300 (11th Cir. 2017)).
23
Respecting deliberate waiver also ensures “[d]ue regard
for the trial court’s processes and time investment.”
Wood, 566 U.S. at 473. “Finally, adherence to the adversarial method and the party-presentation principle ‘promotes litigant and societal acceptance of decisions rendered by the courts.’” Campbell, 26 F.4th at 896 (Newsom, J., and Jordan, J., dissenting) (citation omitted).
To be sure, there may be a narrow set of issues or
circumstances where a court of appeals does not err by
overriding a party’s deliberate waiver. For example, issues implicating subject-matter jurisdiction generally
are “not subject to waiver.” Hamer v. Neighborhood
Hous. Servs. of Chi., 583 U.S. 17, 20 (2017). There could
be unusual situations in which honoring a party’s deliberate waiver would compromise inviolable constitutional commands. Cf. Commodity Futures Trading
Comm’n v. Schor, 478 U.S. 833, 851 (1986) (“When these
Article III limitations are at issue, notions of consent
and waiver cannot be dispositive ….”). And courts may
in appropriate circumstances consider issues that were
inadvertently forfeited, not deliberately waived. But the
possibility of such exceptions does not detract from the
general principle of party presentation—i.e., that the
courts of appeals lack authority to address a non-jurisdictional issue that a party deliberately waives.
2. A straightforward application of this rule compels
reversal of the Federal Circuit’s decision in this case.
In the decision subject to this appeal, the parties disputed and asked the district court to address only one of
the “two elements of a simple patent case”: “whether infringement occurred.” Markman, 517 U.S. at 384.
WhereverTV repeatedly and deliberately waived the
other element—claim construction—by telling both the
district court and the court of appeals not to construe
24
the relevant claim language and to measure infringement by the plain text of WhereverTV’s own patent. See
pp. 5-8, supra. Had the Federal Circuit addressed the
sole question WhereverTV put before it—whether the
district court erred in ruling that the evidence did not
suffice to show infringement—Comcast would have prevailed and the case would have been over.
Instead, the Federal Circuit—consistent with circuit
precedent allowing it to freely consider waived issues—
overrode WhereverTV’s repeated and deliberate waiver
of claim construction. The court went so far as to hold
that “[t]he district court legally erred” by not overriding
WhereverTV’s waiver and addressing only the partypresented controversy. App. 12a.
The panel suggested that O2 Micro, 521 F.3d at 1351,
requires district courts to resolve latent claim construction disputes, even when no party asks for claim construction and the issue has been deliberately waived.
App. 12a. But that cannot be for the simple reason that
the Federal Circuit cannot unilaterally abrogate the
party presentation principle for claim construction—or
any other issue. Indeed, the Federal Circuit has elsewhere made clear that claim construction, just like any
other issue, can be waived. See Kaufman v. Microsoft
Corp., 34 F.4th 1360, 1369 (Fed. Cir. 2022) (“‘[A] party
must ‘sufficiently request further construction of the relevant limitation’ to ‘raise an actual dispute.’” (quoting
LifeNetHealth v. LifeCell Corp., 837 F.3d 1316, 1322
(Fed. Cir. 2016))). The problem, however, is that the
court believes it may override such a waiver in any particular case for any reason (or none at all)—as it did
here.
Worse still, the Federal Circuit went on to decide the
waived issue itself. Unsurprisingly, the panel’s sua
25
sponte claim constructions make little sense. According
to the Federal Circuit, channels can be “added” to the
program guide even if they already appear in the guide
beforehand and can be “deleted” from the guide even if
they continue to remain in the guide afterwards. App.
17a-18a. And, again according to the Federal Circuit, an
“interactive program guide application installed on the
device that provides a user-configurable interactive program guide” “need not provide all the functionality for
operation of the [interactive program guide].” App. 14a15a.
Had the Federal Circuit applied the plain language
of WhereverTV’s patent—as both parties urged—it
would have had no choice but to affirm the district court.
As the district court correctly recognized, the evidence
showed that Comcast’s X1 system prohibited adding or
deleting channels and lacked an interactive program
guide application installed on the set-top box that provided an interactive program guide. App. 36a, 40a. Instead, the parties must now proceed to a potential second trial on remand. The decision below illustrates exactly why “the adversary process”—not sua sponte consideration of waived issues—“[i]s the best means of ascertaining truth and minimizing the risk of error.”
Mackey, 443 U.S. at 13.
III. The Question Presented is Important and Merits Review
in this Case
1. The question of whether a court of appeals may
override a party’s deliberate waiver of non-jurisdictional
issues or must instead respect party presentation is of
obvious legal and practical significance. Cf. Clark, 2025
WL 3260170, at *1; Sineneng-Smith, 590 U.S. at 371;
Wood, 566 U.S. at 463. Under the Federal Circuit’s
26
regime—and in any of the nine courts of appeals where
the court may override a waiver—the court may decide,
if it so chooses, issues the parties have deliberately
taken off the table. Parties must accept the possibility
that the court of appeals will transform their appeals
sua sponte, perhaps without notice or opportunity to respond, as occurred here. And district courts risk reversal when they address and correctly resolve only the
party-presented controversy.
The Federal Circuit’s approach, as illustrated by the
decision below, alone merits this Court’s attention. In
arrogating to itself the right to override party presentation—and by holding that district courts sometimes
must override a party’s deliberate waiver of claim construction—the Federal Circuit injected profound uncertainty into every patent case where a patentee asks that
infringement be measured by the plain language of its
own patent.2 District courts must now sally forth to
identify and resolve claim construction issues not presented by the parties on pain of reversal. The waste of
court and party resources the decision below invites in
patent cases nationwide alone justifies this Court’s intervention.
But the significance of the question presented extends far beyond patent cases. Any waived non-jurisdictional issue is always up for grabs on appeal in two
2 Patentees frequently forego claim construction entirely, relying
on the patent as written, or else seek constructions of only a subset
of claim terms—indeed, some courts impose limits on the number
of claims that may be construed. See generally Timothy A. Richard,
The Timing of Claim Construction: An Analysis of Claim Construction Procedure and a Proposed Rule to Ensure Cost Effective and
Timely Relief in Patent Infringement Cases, 33 Cath. U. J. L. & Tech
85, 104-11 (2025).
27
circuits, and sometimes up for grabs in seven more. The
question presented, moreover, raises significant structural and constitutional concerns. “This Court … has a
significant interest in supervising the administration of
the judicial system” particularly in matters “relate[d] to
the integrity of judicial processes.” Hollingsworth v.
Perry, 558 U.S. 183, 196 (2010). Our adversarial system
and Article III limit the federal courts to addressing
genuine disputes selected and presented by the parties.
The decision below flouts those limits, and the vast circuit split creates different systems of judicial review
across the geographic circuits—and still another for patent cases.
There is no reason to await further percolation.
Every court of appeals has addressed this issue. The
courts of appeals have long been deeply divided and remain so after Sineneng-Smith. The Federal Circuit confirmed that its extreme position—directly at odds with
at least the en banc Eleventh Circuit’s and several others’—is here to stay by denying Comcast’s petition for
rehearing en banc. Numerous scholars have identified
this issue and called for this Court’s review.3 This
Court’s intervention is needed now.
See, e.g., Rory Little, Party Presentation: A Mysterious New
Rule?, SCOTUSblog (Dec. 17, 2025) (“I hope and expect the justices
to say more, and I’ll wager not unanimously, on the topic soon.”);
Owen B. Smitherman, Grounding the Party Presentation Principle,
101 Notre Dame L. Rev. (forthcoming 2026), at 6 (identifying “the
ongoing conflict over party presentation in the lower courts”),
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4804849; Jeffrey M. Anderson, The Principle of Party Presentation, 70 Buff. L.
Rev. 1029, 1109 (2022) (“For decades commentators have agreed
that there are no clear rules guiding courts considering whether to
raise new issues sua sponte.”); Joan E. Steinman, Appellate Courts
3
28
2. This case is an ideal vehicle for deciding the question presented.
There is no concern about preservation or presentation. The Federal Circuit, in its unpublished opinion,4
sua sponte raised and resolved an issue neither party
had presented and WhereverTV had deliberately
waived. Had WhereverTV’s waiver been respected, the
court would have affirmed the district court’s ruling of
non-infringement and affirmed its judgment. Comcast
raised this issue at the first available juncture, in a petition for rehearing and rehearing en banc, which was
denied. See C.A. Pet. for Reh’g 11; App. 59a-60a.
WhereverTV’s waiver was explicit, deliberate, and
repeated. There can be no possible argument that this
case involves inadvertent forfeiture. Cf. Campbell, 26
F.4th at 877 (finding an issue forfeited rather than
waived). WhereverTV repeatedly disclaimed any need
for construction of the disputed claim terms and insisted
on proceeding with the claim’s plain language. The district court acknowledged and respected that waiver. The
Federal Circuit did not.
as First Responders: The Constitutionality and Propriety of Appellate Courts’ Resolving Issues in the First Instance, 87 Notre Dame
L. Rev. 1521, 1619 (2012) (“[T]he Supreme Court can and should do
better than it has done in … guiding federal [appellate courts] in
their exercises of discretion to hear or not to hear new issues.”);
Frost, The Limits of Advocacy, supra, 59 Duke L.J. at 463 (“[J]udges
have not articulated a clear set of conditions that lead them to deviate from their typical practice of letting the parties frame the dispute.”).
4 “[T]he fact that the Court of Appeals’ order under challenge here
is unpublished carries no weight in our decision to review the case.”
Comm’r v. McCoy, 484 U.S. 3, 7 (1987).
29
Although this petition arises from a patent case, it
provides the Court with a clean vehicle to address a pure
procedural question of broad significance. And it avoids
any potential complexities that might result from a
party’s waiver of questions of constitutional or statutory
interpretation. See Schor, 478 U.S. at 851 (addressing
waiver of constitutional issues); U.S. Nat’l Bank v. Indep. Ins. Agents of Am., Inc., 508 U.S. 439, 448 (1993)
(“We need not decide whether the Court of Appeals had,
as it concluded, a ‘duty’ to address the status of” a relevant statute); cf. Teva, 574 U.S. at 331 (“[T]his Court
has never previously compared patent claim construction in any here relevant way to statutory construction.”).
Nor is the case’s interlocutory posture any reason to
deny review of a dispositive issue. Had the Federal Circuit properly respected party presentation and honored
WhereverTV’s deliberate waiver, it would have affirmed
the district court, and this case would have been over.
Instead, the Federal Circuit’s decision means that the
parties must proceed towards a costly and burdensome
potential retrial on remand—and must do so under the
Federal Circuit’s improper and misguided sua sponte
claim constructions. That is a reason to grant rather
than deny review. Cf. Clark, 2025 WL 3260170, at *1
(reviewing the court of appeals’ grant of a new trial).
The decision below conflicts with this Court’s recent
and repeated admonitions to courts of appeals directing
them to respect rather than override party presentation.
It deepens an acknowledged split among the courts of
appeals on an important issue. And it imposes a rule
that disrupts trial and appellate practice nationwide.
The Court should grant the petition.
30
CONCLUSION
The petition for a writ of certiorari should be granted.
The Court may wish to consider summary reversal.
Respectfully submitted.
ASHOK RAMANI
DAVID J. LISSON
SERGE A. VORONOV
DAVIS POLK &
WARDWELL LLP
1600 El Camino Real
Menlo Park, CA 94025
JANUARY 2026
ROBERT B. NILES-WEED
Counsel of Record
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
(212) 310-8000
robert.niles-weed@weil.com
MARK A. PERRY
WEIL, GOTSHAL & MANGES LLP
2001 M Street NW
Washington, DC 20036
APPENDIX
APPENDIX TABLE OF CONTENTS
Page
Appendix A — Court of appeals opinion
(Jul. 28, 2025) ................................................. 1a
Appendix B — District court opinion and order
(Jun. 5, 2023) ................................................ 23a
Appendix C — District court oral ruling
(Apr. 26, 2023) .............................................. 44a
Appendix D — District court order on claim
construction (Nov. 13, 2020)......................... 47a
Appendix E — Court of appeals denial of
rehearing (Oct. 10, 2025) ............................. 59a
1a
APPENDIX A
NOTE: This disposition is nonprecedential.
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
————
2023-2098, 2023-2150
————
WHEREVERTV, INC.,
Plaintiff-Appellant
v.
COMCAST CABLE COMMUNICATIONS, LLC,
Defendant-Cross-Appellant
————
Appeals from the United States District Court for
the Middle District of Florida in No. 2:18-cv-00529WFJ-NPM, Judge William F. Jung.
————
Decided: July 28, 2025
————
ADAM COOPER SANDERSON, Reese Marketos LLP,
Dallas, TX, argued for plaintiff-appellant. Also
represented by BRETT ROSENTHAL.
ROBERT NILES-WEED, Weil, Gotshal & Manges LLP,
New York, NY, argued for defendant-cross-appellant.
Also represented by MARK ANDREW PERRY,
Washington, DC; DAVID LISSON, ASHOK RAMANI, Davis
Polk & Wardwell LLC, Menlo Park, CA.
————
2a
Before TARANTO, STOLL, and STARK, Circuit Judges.
STOLL, Circuit Judge.
WhereverTV, Inc. sued Comcast Cable Communications, LLC for patent infringement in the United
States District Court for the Middle District of Florida,
and the case proceeded to a jury trial on infringement
of claim 1 of U.S. Patent No. 8,656,431. After the
close of evidence but prior to a jury verdict, however,
the district court granted Comcast’s motion for judgment of noninfringement as a matter of law under
Rule 50(a) of the Federal Rules of Civil Procedure.
WhereverTV appeals the district court’s JMOL, alleging
that it rests on erroneous constructions of two terms
in claim 1. As an alternative ground for affirmance,
Comcast argues that it is entitled to JMOL based on
what it asserts is the correct interpretation of a
separate claim term, and it cross-appeals the district
court’s determination that claim 1 is not indefinite
under 35 U.S.C. § 112. Because we agree with
WhereverTV that the district court erred in its claim
construction, and we reject Comcast’s alternative
grounds for affirmance as well as its argument that
claim 1 is indefinite, we vacate the district court’s
JMOL of noninfringement and remand for proceedings
consistent with this opinion.
BACKGROUND
The ’431 patent discloses “[a] system and device . . .
that employs a global interactive program guide [(‘IPG’)]
to receive, access, manage, and view digital entertainment services such as live television, television on
demand, and pre-recorded video and audio programming from one or more content sources, via an
internet-enabled device, anywhere in the world.” U.S.
Patent No. 8,656,431 Abstract. The content sources
3a
include not only cable operators but also independent
content providers. The ’431 patent states that its “goal
is to shift the control of content availability,
organization, and access from MSO’s [(i.e., multisystem operators)], which is today’s cable television
model, to a new user-centric model where the user can
choose whether or not to purchase content from a
content consolidator or directly from independent
content providers.” Id. at col. 6 ll. 39–44. The specification explains that, at the time of the invention, there
was “no application or interface that [would] allow[] a
user to manage multiple subscriptions from multiple
content owners in an easy to use format.” Id. at col. 2
ll. 36–38.
As explained below, the district court relied on
patent Figures 4 and 8 in construing claim 1 at JMOL.
Figure 4 (reproduced below) is a graphical representation of the functions of an IPG that is “comprised of
eight Core Application Functions 300 and fifteen Core
Application Features 320, which may be used in whole,
or in parts, to present content to the user.” Id. at col. 11
ll. 17–21; see also id. at col. 11 l. 22–col. 13 l. 7. Figure
8 is a flow chart that illustrates the logic undertaken
by a user to add new content to the IPG. See id. at col.
15 l. 13–col. 16 l. 7.
4a
Id. Fig. 4.
The sole asserted claim, independent claim 1, reads:
1. A content manager device comprising:
a server resident on a network containing
descriptive program data about video content
available from one or more multiple cable
system operators (MSOs) and one or more
non-MSOs;
a device capable of establishing and maintaining a connection with the network via a
communications link; and
an interactive program guide application
installed on the device that provides userconfigurable interactive program guide (IPG)
listing at least one channel of video content
5a
available from each of the one or more MSOs
and each of the one or more nonMSOs and
descriptive program data from the server for
the video content available on each of the
channels, wherein each of the channels is
selectable for receiving only or virtually
entirely streaming video programming from
its respective MSO or non-MSO source via
the communications link and the network;
wherein the server is distinct from at least one
of the one or more MSOs and one or more nonMSOs, and wherein the application allows for
the IPG to be configured by a user with respect
to adding or deleting channels from any of
the one or more MSOs or the one or more
non-MSOs.
Id. at col. 16 ll. 32–54 (emphases added to emphasize
limitations at issue).
WhereverTV accused Comcast’s entertainment platform known as the Xfinity X1, which allows users to
access video content from both their cable provider and
streaming providers through a cloud-based system, of
infringing claim 1 of the ’431 patent. The X1 system
includes the XRE receiver, which is an application
located on the X1 set-top box (or “STB”) device, and the
cloud-based XRE server. Comcast’s documentation
illustrates the division of its system:
6a
J.A. 15921. The same document describes the division
of the XRE receiver and server:
XRE Receiver running on device is thin
client
Is a light weight renderer
Accepts and forwards user input
Application logic does not execute here
Does not have to be updated to update
user experience and features
XRE Server runs in the cloud
Integrates with the back end services
Interprets user input (as passed from
XRE Receiver)
Executes all of the application business
logic
Generates rendering instructions for
the XRE Receiver
J.A. 15922.
7a
At the claim construction stage before the district
court, the parties disputed seven terms: (1) “multiple
cable system operators (MSOs)”; (2) “non-MSOs”;
(3) “wherein the server is distinct from at least one of
the one or more MSOs and one or more non-MSOs”;
(4) “only or virtually entirely streaming video programming”; (5) “wherein each of the channels is
selectable for receiving only or virtually entirely
streaming video programming”; (6) “interactive program guide”; and (7) “adding or deleting channels from
any of the one or more MSOs or the one or more
nonMSOs.” See WhereverTV, Inc. v. Comcast Cable
Commc’ns, LLC, No. 2:18-cv-529-FTM-NPM, 2020 WL
13823257, at *3 (M.D. Fla. Nov. 13, 2020) (“Claim
Construction Order”). The district court construed
“multiple cable system operators (MSOs)” to mean “a
cable, satellite, or Internet television content consolidator that receives and then broadcasts channels of
video content,” and “non-MSOs” to mean “a video
content provider that does not act like an MSO
because it does not receive and then broadcast
channels of video content.” Id. As for the remainder of
the disputed terms, the district court determined that
“[n]o further construction is necessary.” Id.
Comcast also contended that the term “only or
virtually entirely streaming video programming” was
indefinite under 35 U.S.C. § 112. But the district court
determined that “these words can be understood by
those skilled in the art, particularly since Comcast
itself was able to propose a construction for [‘wherein
each of the channels is selectable for receiving only or
virtually entirely streaming video programming,’]
which contains the same language.” Id. Specifically,
Comcast proposed interpreting “wherein each of the
channels is selectable for receiving only or virtually
entirely streaming video programming” as: “wherein
8a
each of the channels is configured such that, in
immediate response to selection of its assigned channel
number, and without further searching, video programming is only or virtually entirely transmitted
over the Internet . . . and made available for viewing
while the transmission is occurring.” Id. The district
court thus determined that Comcast had not met its
burden to show that the term was indefinite by clear
and convincing evidence.
At the summary judgment stage, the district court
recognized that the parties still disputed the scope
of the limitation “wherein the server is distinct from
at least one of the one or more MSOs and one or
more non-MSOs.” The district court explained that
“[WhereverTV] conceptualize[d] such distinctness in
terms of the tasks and processes of the server and the
MSO and non-MSO, while Comcast conceptualize[d]
the distinctness in terms of a business entity’s ownership or control of the MSO and server.” J.A. 11460.
To resolve this dispute, the district court ordered a
supplementary evidentiary hearing that included
the presentation of exhibits and expert testimony
concerning the construction of the limitation.
After considering intrinsic and extrinsic evidence,
the district court determined that “the meaning of
‘distinct from,’ in context, is best read to pertain to
functional differences between the server and the
MSO(s) and nonMSO(s), rather than differences
with respect to control.” J.A. 11467–68. Based on this
determination, the court construed the term to mean
“wherein the server is functionally distinct from at
least one of the one or more MSOs and one or more
non-MSOs.” J.A. 11468.
The case proceeded to a jury trial. At the close
of WhereverTV’s case-in-chief, Comcast moved for a
9a
directed verdict of noninfringement on the “adding or
deleting” limitation (“wherein the application allows
for the IPG to be configured by a user with respect to
adding or deleting channels from any of the one or
more MSOs or the one or more non-MSOs”), as well as
the “IPG application” limitation (“an interactive
program guide application installed on the device that
provides user-configurable interactive program guide
(IPG)”). The district court granted JMOL after the
close of evidence.
In its written order, the district court first addressed
the adding or deleting limitation and reaffirmed its
plain and ordinary meaning construction of this term.
The district court then determined that “[a]t no point
during trial did [WhereverTV] introduce evidence that
an X1 user could subscribe to a channel that was not
already offered on the accused X1’s IPG, thereby
increasing the number of channels offered on the IPG.”
WhereverTV, Inc. v. Comcast Cable Commc’ns, LLC,
No. 2:18-cv-529-WFJ-NPM, 2023 WL 3819123, at *5
(M.D. Fla. June 5, 2023) (“JMOL Order”). “Nor did
[WhereverTV] introduce any evidence that a user who
unsubscribed from a particular app—such as Netflix—
could remove that app from the X1’s IPG entirely such
that . . . the app would not be displayed on the IPG.”
Id. The district court faulted WhereverTV for “encouraging the jury to accept that subscribing is adding and
unsubscribing is deleting,” which the court viewed as
“a departure from the plain and ordinary meaning
of these terms.” Id. The district court held that
“[WhereverTV] may not assert literal infringement
based on the theory that unsubscribing from an
app . . . is conceptually similar to deleting that app
simply because both actions create impediments for
the user who wants to watch content offered by the
app.” Id. at *6. The district court further explained that
10a
“the rigidity of the X1’s IPG display and the
immutability of the channel listings provided by
Comcast,” as testified to by both parties’ witnesses, “is
in no way identical to the customizable and restrictionfree invention described in the [’]431 Patent’s specification.” Id. at *7. The district court also determined
that, “[w]hile the [’]431 Patent allows users to increase
the number of channels available to them—true to
the plain and ordinary meaning of ‘adding’—the X1
only allows users to log in and out of channels that
Comcast, and only Comcast, chose irrevocably to
emplace on the IPG.” Id.
The district court next addressed the IPG application limitation, again noting that it was maintaining
a plain and ordinary meaning construction despite
recognizing that the “term’s plain and ordinary
meaning is not readily apparent.” Id. The district court
then held that there was “uncontested evidence” that
the IPG application is not installed on the accused
device because the XRE guide application is on the
server and not the STB. Id. at *8. The district court
also found that the XRE guide application provides the
“brains” for the IPG. Id. The district court further
determined that it was “undisputed that the cloudbased XRE server, and not the XRE receiver, provides
‘the data necessary for the . . . IPG.’” Id. at *9 (omission
in original) (emphasis removed) (citation omitted). As
to WhereverTV’s argument that the XRE receiver on
the STB is the IPG application, the district court
determined that “the [’]431 Patent’s specification
does not support this conclusion,” in view of Figures 4
and 8. Id. at *8. The district court, in considering
WhereverTV’s expert testimony that the XRE receiver
is a “thin client” capable of rendering and signaling,
found that this did not show that an IPG application
11a
was installed on the STB. Id. at *8–9 (citation
omitted).
WhereverTV appeals and Comcast cross-appeals.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, WhereverTV primarily argues that the
district court’s JMOL rests on erroneous constructions
of both the “IPG application” and “adding or deleting”
limitations. For its part, Comcast presents two issues.
First, Comcast introduces an alternative ground to
affirm the district court’s JMOL, contending that the
district court misconstrued the limitation “wherein the
server is distinct from at least one of the one or more
MSOs and one or more nonMSOs.” Finally, Comcast
cross-appeals the district court’s determination that
the limitation “selectable for receiving only or virtually
entirely streaming video programming” is not indefinite.
We review a district court’s grant of JMOL under the
standard of the regional circuit, Cyntec Co., Ltd. v.
Chilisin Elecs. Corp., 84 F.4th 979, 984 (Fed. Cir. 2023),
here the Eleventh Circuit, which reviews the grant of
JMOL de novo. Pickett v. Tyson Fresh Meats, Inc., 420
F.3d 1272, 1278 (11th Cir. 2005). Substantive patent
law issues are reviewed under the law of our own
circuit. Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013). We
review claim construction based on intrinsic evidence
de novo and review factual findings about extrinsic
evidence for clear error. SpeedTrack, Inc. v. Amazon.com,
998 F.3d 1373, 1378 (Fed. Cir. 2021) (citing Teva
Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
331–32 (2015)). “Whether a claim complies with the
definiteness requirement . . . is a matter of claim
12a
construction.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1311 (Fed. Cir. 2012).
We review in turn each issue raised by the parties.
I
WhereverTV contends that the district court erred
in holding, as a matter of law, that Comcast’s accused
product does not satisfy claim 1’s IPG application
limitation—an “interactive program guide application
installed on the device that provides user-configurable
interactive program guide (IPG).” We agree.
The district court legally erred by not construing this
limitation using the claim construction framework set
forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005). While the district court held that the plain and
ordinary meaning of the limitation applies, it also
stated that the plain and ordinary meaning is “not
readily apparent” and never clarified what it viewed as
the plain and ordinary meaning. JMOL Order, at *7.
Moreover, the parties clearly disputed the scope of
this term. In O2 Micro International Ltd. v. Beyond
Innovation Technology Co., we held that where the
parties dispute the scope of a claim limitation, the
district court is to construe the claims at least to
the extent necessary to resolve the dispute. 521 F.3d
1351, 1360 (Fed. Cir. 2008); see also id. at 1361
(“A determination that a claim term . . . has [a] ‘plain
and ordinary meaning’ may be inadequate . . . when
reliance on a term’s ‘ordinary’ meaning does not
resolve the parties’ dispute,” in which case “claim
construction requires the court to determine what
claim scope is appropriate in the context of the
patents-in-suit.”). We have also held that a district
court should not construe claims in light of an accused
product and should instead analyze the claim lan-
13a
guage, specification, and prosecution history, if relevant. See Wilson Sporting Goods Co. v. Hillerich &
Bradsby Co., 442 F.3d 1322, 1330 (Fed. Cir. 2006)
(“[C]laims may not be construed with reference to the
accused device.” (citation omitted)).
The district court’s JMOL cannot stand under
the proper construction of this limitation. We begin
with the claim language: “interactive program guide
application installed on the device that provides userconfigurable interactive program guide (IPG).” See
Phillips, 415 F.3d at 1314 (emphasizing importance of
claim language). The parties primarily dispute what it
means for the IPG application to “provide” a userconfigurable IPG. Comcast asserts that the limitation’s use of the word “provides” means that the
claimed IPG application alone must provide the
functionality of the user-configurable IPG. See CrossAppellant’s Br. 45–46, 56. But the term “provides” is
commonly understood to have a broader meaning,1 and
neither party suggests that it is a technical term with
a more limited meaning in the relevant field of art.
Used alone, “provides” does not require that the IPG
application do all the work to make the IPG operable.
This understanding of “provides” is also consistent
with the entire claim limitation, which requires an
“interactive program guide application installed on
the device that provides user-configurable interactive
program guide (IPG) listing at least one channel of
video content available from each of the one or more
MSOs and each of the one or more non-MSOs and
descriptive program data from the server.” Claim 1
itself contemplates that the server provides descrip1
For example, I can provide dinner for my kids whether I am
cooking a meal from scratch or ordering a pizza for delivery.
14a
tive program data. The claim is also open-ended, using
the transitional phrase “comprising,” which allows for
the use of an additional IPG application in the server.
AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239,
1244–45 (Fed. Cir. 2001) (“When a claim uses an
‘open’ transition phrase, its scope may cover devices
that employ additional, unrecited elements. We have
consistently held that the word ‘comprising’ is an open
transition phrase.” (citation omitted)). In addition, as
discussed in more detail below, claim 1 recites that the
IPG application “allows for the IPG to be configured by
a user with respect to adding or deleting channels.”
The broad language “allows for” is consistent with the
view that the IPG application need not provide all the
functionality for operation of the IPG.
Turning to the specification, we conclude that the
district court improperly read additional requirements
into claim 1 based on the embodiments shown in
Figures 4 and 8 of the ’431 patent, including that
the IPG application “‘procures digital rights via
stored profile,’ ‘locates and authenticates’ new content
sources, and ‘downloads and synchronizes content
metadata from new content sources.’” JMOL Order, at
*8 (citation omitted). In particular, the district court
held that the accused device’s XRE receiver is not an
IPG application as required by the claims because it
does not “offer[] any of the functions or features
illustrated in Figures 4 or 8.” Id. But none of these
functions or features are recited in claim 1, let alone
recited as being performed by the IPG application.
Moreover, the specification does not define an IPG
application as limited to the embodiments in Figures
4 and 8. Nor does it disclaim placing some of the
functionality in Figures 4 and 8 in a server and other
functionality in a receiver. We are not inclined to read
the functionality from Figures 4 and 8 into the claim
15a
in such a limiting manner absent lexicography or
express disclaimer. See GE Lighting Sols., LLC v.
AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014)
(“[C]laim terms must be construed in light of the
specification and prosecution history . . . . However, the
specification and prosecution history only compel
departure from the plain meaning in two instances:
lexicography and disavowal. . . . [Here,] while the
specification[] only disclose[s] a single embodiment of
[the claimed term] in Figure 6, [it] do[es] not disavow
or disclaim the plain meaning of [the term] or otherwise limit it to that embodiment.” (citation omitted)).
Based on the claim language and the specification,2
we agree with WhereverTV’s interpretation that
the language “interactive program guide application
installed on the device that provides user-configurable
interactive program guide (IPG)” does not require that
all the functionality of the IPG must reside in the
claimed IPG application. In other words, it is sufficient
that the IPG application provide an IPG in coordination with the server.
II
The parties also disputed the meaning of claim 1’s
adding or deleting channels limitation—i.e., “wherein
the application allows for the IPG to be configured by
a user with respect to adding or deleting channels.”
WhereverTV asserts that channels can be added by
2
On appeal, neither party relies on the prosecution history of
the ’431 patent for this term, and the only extrinsic evidence cited
that is unconnected to a comparison between the claim language
and the accused product is the uncontested definition of
“application” from WhereverTV: a “program designed to assist in
the performance of a specific task, such as word processing,
accounting, or inventory management.” Appellant’s Br. 20 (citing
J.A. 15665).
16a
subscribing and deleted by unsubscribing, whereas
Comcast asserts that adding a channel is limited to
making the channel appear on the IPG user interface
and deleting a channel is limited to making the
channel no longer appear on the IPG user interface.
The district court purported to use the plain and
ordinary meaning of the limitation,3 which in its view
excluded the broader understanding that WhereverTV
asserted. See JMOL Order, at *4–5. We adopt
WhereverTV’s broader construction.
Again, we begin with the claim language. Claim 1
requires listing at least one MSO channel and at least
one non-MSO channel, wherein “each of the channels
is selectable” and “the application allows for the IPG
to be configured by a user with respect to adding or
deleting channels from any of the one or more MSOs
or the one or more non-MSOs.” The claim language
does not say “adding or deleting channels” to or from
the IPG user interface.4 Rather the claim recites
adding or deleting channels from the MSOs or nonMSOs. In addition, the claim focuses on channels that
3
The district court’s plain and ordinary meaning analysis
focused on dictionary definitions, but extrinsic evidence cannot
take precedence over the intrinsic record in a court’s claim
construction analysis. See Phillips, 415 F.3d at 1317 (“[W]hile
extrinsic evidence can shed useful light on the relevant art, we
have explained that it is less significant than the intrinsic record
in determining the legally operative meaning of claim language.”
(quotation marks and citation omitted)).
4
Comcast’s vague contention that WhereverTV should be
estopped from making this argument on appeal is underdeveloped and unpersuasive. Accordingly, we do not address this
contention further. See, e.g., In re Killian, 45 F.4th 1373, 1386
(Fed. Cir. 2022) (explaining appellants “forfeit[] any argument on
appeal . . . by failing to present anything more than a conclusory,
skeletal argument”).
17a
are “selectable for receiving,” suggesting that adding
or deleting could relate to making channels selectable
or non-selectable. In light of the overall language of the
claim, we understand “adding or deleting channels” as
including adding a channel either by adding it to the
user interface or making it selectable and deleting a
channel either by removing it from the user interface
or by making it non-selectable. Indeed, the claims do
not specify what is meant by adding or deleting, and
the language is broad enough to encompass either
changing the ability to select the channel or changing
the user interface. Had the patentee intended to limit
the claims to modifying the display to include a new
channel not previously displayed, it could have
included language in the claims to that effect.5
Turning next to the specification, it appears that
the specification treats subscribing to channels interchangeably with adding channels in at least one
embodiment of the patented invention, despite
Comcast’s arguments to the contrary. In describing
Figure 8, the specification states at one point that the
figure is “a flow chart of the method for subscribing
to new content using the global IPG of the instant
invention.” ’431 patent col. 8 ll. 58–59 (emphasis
added). The specification goes on to also describe
5
Comcast’s arguments on claim differentiation are unpersuasive. Comcast points to various dependent claims, none of which
use the term “subscribing,” but instead claim a “digital rights
management module that obtains viewing rights for at least one
of the channels” (claim 3), an IPG that further “assists the user in
managing rights to receive the streaming video programming”
(claim 15), or “automatically authenticat[es] the user to one
or more of the MSO or non-MSO sources” (claim 26). CrossAppellant’s Br. 25 (citation omitted). These terms can all be fairly
interpreted as adding further limitations to an independent
limitation, even if that limitation encompasses subscribing.
18a
Figure 8 as “a flow chart that illustrates the logic
undertaken by a user to add a new content source at
Step 800.” Id. at col. 15 ll. 13–14 (emphasis added).
Figure 8 and the specification’s description of it thus
lend support to WhereverTV’s broader reading of the
adding or deleting channels limitation. Moreover,
Comcast does not point to anything in the specification
that explicitly limits the step of adding or deleting
channels to exclude subscribing and unsubscribing.
Based on the claim language and the specification,
we agree with WhereverTV’s interpretation that
“wherein the application allows for the IPG to be
configured by a user with respect to adding or deleting
channels” encompasses making the channel selectable
and non-selectable on the IPG through subscribing
and unsubscribing.
III
We have also considered Comcast’s assertion that
the district court erred in its construction of the
limitation “wherein the server is distinct from at least
one of the one or more MSOs and one or more nonMSOs” in claim 1. We disagree and adopt the district
court’s construction.
Comcast proposes that this limitation “reflects the
invention’s goal of freeing users from the ‘traditional
cable-television, content aggregation model where the
MSO, rather than the user, is in control of what
content is available,’” Cross-Appellant’s Br. 58 (quoting
’431 patent col. 2 ll. 41–43), and should be construed to
mean that the limitation requires a server that is
“distinct from” Comcast itself. Id. at 58–59. But this
proposal improperly imports unclaimed limitations
into the term. Comcast seeks to import the overarching goal of the patented invention into the term
19a
“distinct from.” But if the patentee had wanted to
claim a server that was not controlled by a cable
company, the patentee could have used language to
that effect. Comcast further seeks to import into this
limitation that MSO means a cable company as a
business entity.6 Comcast makes this argument
despite (1) Comcast not explicitly disputing on appeal
the district court’s separate construction of MSO that
defines the term in a functional sense—i.e., as “a cable,
satellite, or Internet television content consolidator
that receives and then broadcasts channels of video
content,” Claim Construction Order, at *3 (emphasis
added); and (2) the specification also referencing MSOs
with respect to functionality, see, e.g., ’431 patent col. 7
ll. 46–51; see also J.A. 11464. We agree with the district
court that, in the context of the ’431 patent, “[t]o say
that an MSO is a cable company simply because an
MSO is a part of a cable company appears to be an
invalid syllogism distorting the plain meaning of the
terms in question.” J.A. 11464. We are thus unpersuaded that the district court erred in reaching its
underlying factual findings and ultimate construction
of the “distinct from” term based on the language in
the claims, the prior constructions by the district court
6
As the district court acknowledged, importing into the term
that the claimed MSO is Comcast would be to import not just
Comcast’s ability to consolidate and broadcast video content, but
its entire business, including its “billing, accounting, legal, HR,
and IT departments” and any other services it provides, like
“internet and phone services.” J.A. 11463. As WhereverTV
crystalized on appeal, to say that a server is distinct from a
corporation like this would create a claim term that falls outside
the understanding of a person of ordinary skill and would instead
concern legal questions over who controls said server. See
Appellant’s Reply Br. 31–32. We see no reason in either the
intrinsic or extrinsic record here to read in such a meaning to this
claim limitation.
20a
that Comcast has not challenged, the specification,
and the extrinsic evidence in the form of dictionary
definitions and expert testimony.
IV
Finally, we reject Comcast’s indefiniteness argument raised on cross-appeal. Comcast asserts that
the phrase “only or virtually entirely” in the limitation
“wherein each of the channels is selectable for
receiving only or virtually entirely streaming video
programming” is indefinite. We agree with the district
court and WhereverTV that this limitation “can be
understood by those skilled in the art.” Claim Construction Order, at *3.
Reading the limitation in the context of claim 1 as a
whole supports our holding. The limitation recites:
“wherein each of the channels is selectable for
receiving only or virtually entirely streaming video
programming from its respective MSO or non-MSO
source via the communications link and the network.”
Comcast itself proposed that the limitation be interpreted as “wherein each of the channels is configured
such that, in immediate response to selection of its
assigned channel number, and without further searching, video programming is only or virtually entirely
transmitted over the Internet . . . and made available
for viewing while the transmission is occurring.” Id.
Thus, the parties appear to agree that streaming
means transmission over the Internet. See Appellant’s
Reply Br. 45; Construction Order, at *3. And despite its
arguments on appeal, Comcast also appeared to agree
at claim construction that “only or virtually entirely”
modifies streaming of video programming, such that
the claim requires “only or virtually entirely” steaming
video programming. See Construction Order, at *3. In
this context, we agree with the district court that the
21a
limitation is not indefinite. In the context of this claim,
the term “virtually”—similar to terms like substantially, about, and nearly—is simply a term of degree
that modifies entirely. It does not render the claim
indefinite. See One-E-Way, Inc. v. Int’l Trade Comm’n,
859 F.3d 1059, 1067 (Fed. Cir. 2017) (“While we note
that ‘virtually’ is a term of degree, one that slightly
expands the scope of the term . . . ,[] the inclusion of
‘virtually’ in these claims does not render them
indefinite.” (citation omitted)).
Comcast agrees that “virtually” is a term of
degree, but suggests that the patent fails to provide
any “standard for measuring that degree.” CrossAppellant’s Br. 66–67 (citation omitted). But our case
law does not foreclose the use of terms of degree
in claims, and as discussed, here the inclusion of
“virtually” slightly expanded the scope of the claim
from receiving only streaming video programming
data to also include receiving effectively or almost
entirely streaming video programming data, the bounds
of which a skilled artisan would be informed of.
* * *
In light of the proper construction of claim 1’s IPG
application limitation and adding or deleting channels
limitation, as well as our decisions on Comcast’s alternative arguments, we remand WhereverTV’s infringement allegations to the district court for trial to
determine infringement based on the correct construction of the claim terms. See Rambus Inc. v. Infineon
Techs. Ag, 318 F.3d 1081, 1095 (Fed. Cir. 2003) (“In
sum, the district court erred in its construction of each
of the disputed terms. In light of the revised claim
construction, this court vacates the grant of JMOL of
noninfringement and remands for the district court to
reconsider infringement.”).
22a
CONCLUSION
We have considered Comcast’s remaining arguments and find them unpersuasive. For the foregoing
reasons, we vacate the district court’s JMOL of noninfringement and remand for further proceedings
consistent with this opinion.7
VACATED AND REMANDED
COSTS
Costs to Appellant.
7
At oral argument, Comcast represented that there was
another validity defense apart from the indefiniteness challenge
resolved in this appeal that is still live and will need to be
resolved on remand based on the correct construction of the claim
terms. See Oral Arg. at 31:50–32:07, https://oralarguments.cafc.us
courts.gov/default.aspx?fl=23-2098_02042025.mp3.
23a
APPENDIX B
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
————
Case No: 2:18-cv-529-WFJ-NPM
————
WHEREVERTV, INC.,
v.
Plaintiff,
COMCAST CABLE COMMUNICATIONS, LLC,
Defendant.
————
ORDER
On April 26, 2023, following the parties’ presentation of evidence during a six-day jury trial, the Court
granted Defendant Comcast Cable Communications,
LLC’s (“Comcast”) Rule 50(a) Motion for Judgment as
a Matter of Law, Dkt. 409. See Dkt. 414. At the Court’s
invitation, Plaintiff WhereverTV, Inc. (“WTV”) and
Comcast filed supplemental briefs on the Court’s
ruling. Dkts. 428 & 429. Both parties also submitted
rebuttal briefs. Dkts. 430 & 431. Upon careful consideration and in accordance with its earlier ruling,
the Court directs final judgment to be entered in favor
of Comcast and against WTV.
BACKGROUND
Founded in 2006, WTV is a “television service
provider that offers live-streaming video content to
subscribing customers around the world and through
a wide range of internet enabled devices.” Dkt. 30 ¶ 11.
24a
WTV is the assignee and owner of the ‘431 Patent,
which was issued by the United States Patent and
Trademark Office (“USPTO”) in February 2014. Dkt.
418-1. The ‘431 Patent discloses “[a] system and
device . . . that employs a global interactive program
guide [‘IPG’] to receive, access, manage, and view
digital entertainment services such as live television,
television on demand, and pre-recorded video and
audio programming from one or more content sources,
via an internet-enabled device, anywhere in the
world.” Id. at 1. The ‘431 Patent states that “[t]he goal
is to shift control of content availability, organization,
and access from MSO’s [multi system operators],
which is today’s cable television model, to a new usercentric model where the user can choose whether or
not to purchase content from a content consolidator or
directly from independent content providers.” Id. at 15.
In 2009, cable television and internet provider
Comcast began developing an entertainment platform
known as the Xfinity X1 (the “X1”). Dkt. 30 ¶ 24; Dkt.
420 at 122. The X1 allows users to access video content
from their cable provider and streaming providers
through a “cloud-based system.” See, e.g., Dkt. 420
at 118−20, 136. Among other components, the X1 is
comprised of the XRE1 receiver, which is located on
the X1 set-top box, and the cloud-based XRE server.
See Dkt. 417-3 at 9.
In 2018, WTV filed the instant action against
Comcast, claiming that Comcast “directly infringed
and continues to directly infringe all the claims of the
‘431 Patent . . . by making, using, offering for sale, and
1
The acronym “XRE” stands for Xcalibur rendered engineering, with “Xcalibur” being Comcast’s initial internal name for the
Xfinity project. See Dkt. 420 at 121, 129.
25a
selling the Xfinity X1 Platform.” Dkt. 30 ¶¶ 47–48.
Claim 1, the independent claim that remains the sole
issue in the case, reads in full:
1. a content manager device comprising:
a server resident on a network containing
descriptive program data about video content
available from one or more multiple cable
system operators (MSOs) and one or more
non-MSOs;
a device capable of establishing and maintaining a connection with the network via
communications link; and
an interactive program guide application
installed on the device that provides userconfigurable interactive program guide
(IPG) listing at least one channel of video
content available from each of the one or
more MSOs and descriptive program data
from the server for the video content
available on each of the channels, wherein
each of the channels is selectable for
receiving only or virtually entirely streaming
video programming from its respective
MSO or non-MSO source via the communications link and the network; wherein
the server is distinct from at least one of
the one or more MSOs and one or more
non-MSOs, and wherein the application
allows for the IPG to be configured by a
user with respect to adding or deleting
channels from any of the one or more
MSOs or the one or more non-MSOs.
Dkt. 418-1 at 20.
26a
Following a Markman hearing in 2020, Chief Judge
Timothy Corrigan issued a claim construction order on
seven disputed terms within Claim 1 and other
dependent claims. Dkt. 172. Finding further construction necessary for only two of those seven terms, Judge
Corrigan construed “multiple cable system operators
(MSOs)” to mean “a cable, satellite, or Internet television content consolidator that receives and then
broadcasts channels of video content” and “non-MSOs”
to mean “a video content provider that does not act like
an MSO because it does not receive and then broadcast
channels of video content.” Id. at 5. Relevant to this
Order, Judge Corrigan declined to construe the terms
“independent program guide” and “adding or deleting
channels from any of the one of more MSOs or the
one or more non-MSOs.” Id. at 8−9. The case was
thereafter transferred to Judge Badalamenti, who
held a second Markman hearing and adopted Judge
Corrigan’s pertinent constructions. Dkt. 302 at 15.
After several amendments to the parties’ case management and scheduling order, the case was set for a
March 2023 jury trial. See Dkt. 326.
One week before the scheduled trial, the trial was
continued, Dkt. 365, and the case was transferred to
the undersigned, Dkt. 374. A jury trial before the
undersigned subsequently commenced on April 19,
2023. By that time, the parties had narrowed the case
to the WTV’s claim of literal infringement of Claim 1
of the ‘431 Patent. At the close of WTV’s case, Comcast
moved for judgment as a matter of law under Federal
Rule of Civil Procedure 50(a), asserting a lack of
sufficient evidence showing that the X1 meets
Claim 1’s “adding or deleting channels” limitation or
“interactive program guide application installed on
the device” limitation. Dkt. 409. The Court took oral
argument on Comcast’s motion outside the presence of
27a
the jury following the parties’ closing arguments on
the sixth day of trial. Dkt. 424 at 127−55. Finding that
no reasonable jury could find direct infringement of
the “adding or deleting channels” or the “interactive
program guide application installed on the device”
limitations, the Court granted Comcast judgment as a
matter of law. Id. at 155−56. This final Order follows.
LEGAL STANDARD
Pursuant to Federal Rule of Civil Procedure 50(a), a
“district court should grant judgment as a matter of
law when the plaintiff presents no legally sufficient
evidentiary basis for a reasonable jury to find for
[plaintiff] on a material element of [plaintiff ’s] cause
of action.” Pickett v. Tyson Fresh Meats, Inc., 420
F.3d 1272, 1278 (11th Cir. 2005) (citations omitted).
Accordingly, a court should grant a Rule 50(a) motion
“only if the evidence is so overwhelmingly in favor of
the moving party that a reasonable jury could not
arrive at a contrary verdict.” Middlebrooks v. Hillcrest
Foods, Inc., 256 F.3d 1241, 1246 (11th Cir. 2001). In
deciding a Rule 50(a) motion, a court must view all
evidence and draw all reasonable inferences in the
non-moving party’s favor. Walker v. NationsBank of
Fla., N.A., 53 F.3d 1548, 1555 (11th Cir. 1995).
ANALYSIS
In moving for judgment as a matter of law, Comcast
asserts that WTV failed to present sufficient evidence
for a reasonable jury to conclude that the X1 meets
each and every limitation of Claim 1. Specifically,
Comcast avers that no reasonable jury could find that
the X1 meets either the “adding or deleting channels”
limitation or the “interactive program guide application installed on the device” limitation.
28a
Because WTV is arguing that the X1 “literally
infringed” the ‘431 Patent, WTV has the burden of
proving by a preponderance of the evidence that the
X1 literally embodies every limitation of Claim 1. See
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563
F.3d 1358, 1369 (Fed. Cir. 2009); Biovail Corp. Int’l v.
Andrx Pharms., Inc., 239 F.3d 1297, 1302 (Fed. Cir.
2001) (“Literal infringement requires a patentee to
prove by a preponderance of the evidence that every
limitation of the asserted claim is literally met.”). “If
any claim limitation is absent from the accused device,
there is no literal infringement as a matter of law.”
Bayer AG v. Elan Pharm. Research Corp., 212 F.3d at
1247.
The Court notes that literal infringement is distinct
from infringement under the doctrine of equivalents,
which “requires that the accused product contain each
limitation of the claim or its equivalent.” See Cortland
Line Co. v. Orvis Co., 203 F.3d 1351, 1359 (Fed. Cir.
2000) (emphasis added). Unlike the doctrine of
equivalents, which dictates that infringement can be
found so long as the differences between the accused
product and a claim element are “insubstantial” to one
of ordinary skill in the art, see Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997), literal
infringement requires more exactitude, see Southwall
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.
Cir. 1995) (“To establish literal infringement, every
limitation set forth in a claim must be found in an
accused product, exactly.”).
A literal infringement analysis involves two steps.
“First, the asserted claims must be interpreted by the
court as a matter of law to determine their meaning
and scope. In the second step, the trier of fact
determines whether the claims as thus construed read
29a
on the accused product.” Id. (internal citations omitted).
The Court considers the sufficiency of WTV’s evidence2
with respect to the two disputed limitations in turn.
I. “Adding or Deleting Channels” Limitation
Relevant to the “adding or deleting channels”
limitation, Claim 1 states that “the application allows
for the IPG to be configured by a user with respect to
adding or deleting channels from any of the one or
more MSOs or the one or more non-MSOs.” Dkt. 30-1
at 19. WTV’s infringement argument hinges on its
understanding of “adding or deleting.”
At trial, WTV argued that an X1 user who subscribes (or unsubscribes) to a particular channel
offered by Comcast on X1 has added (or deleted) that
channel within the meaning of those terms as used in
Claim 1. See, e.g., Dkt. 419 at 198. For example, WTV
explained in its opening argument that, with the X1,
“[y]ou can add and delete channels. You can manage
subscriptions right there through the X1 guide. . . .
If you want to add the Starz channel, Showtime
channel, Cinemax channel, Movie channel, Netflix
channel, you can add any of them.” Id. Thus, WTV
contends that the X1 infringes Claim 1 because a user
managing subscriptions to channels is akin to a user
adding or deleting channels.
However, because WTV abandoned its infringement
claims under the doctrine of equivalents, WTV cannot
prevail merely by showing that “subscribing” to a
2
The evidence was closed on April 27, 2023, at the conclusion
of trial. In connection with its supplemental, post-trial brief
on this matter, WTV filed fourteen exhibits—including a new
declaration from its expert—on the docket eighteen days after the
close of evidence and this Court’s ruling. See Dkt. 428 (exhibits).
Untimely evidence will not be considered.
30a
channel is substantially the same as, or similar to,
adding a channel to the IPG. WTV must instead show
by a preponderance of the evidence that subscribing is
literally “adding” and that unsubscribing is literally
“deleting.” This means that the X1 cannot be said to
literally infringe the “adding or deleting channels”
limitation unless a user can, in fact, add or delete a
channel from the IPG.
After reviewing the evidence presented at trial, the
Court finds that WTV did not meet its burden of proof
as to this literal infringement argument. Specifically,
WTV did not introduce sufficient evidence at trial for
a reasonable juror to conclude that the X1’s IPG can
“be configured by a user with respect to adding or
deleting channels.” Thus, as the Court explains below,
WTV has failed to establish literal infringement.
A. Because the Court declined to construe the
“adding or deleting” channels limitation, the
Court interprets the term according to its
plain and ordinary meaning.
The Court twice engaged in claim construction in
this case, and both times it declined to construe the
adding or deleting channels limitation. Dkt. 172 at
8-9; Dkt. 302 at 15. WTV stated that the Court should
use the plain and ordinary meaning of “adding or
deleting.” See Dkt. 172 at 8−9. On two separate
occasions WTV had the opportunity to move the Court
to construe “adding or deleting channels” in a manner
that would explicitly accommodate “subscribing and
unsubscribing.” Id.; see also Dkt. 302 at 15. WTV did
not do so on either occasion. Nor did either party move
31a
to have the “adding or deleting channels limitation”
construed during trial.3
The Federal Circuit has repeatedly held that a
district court is not obligated to construe terms
with ordinary meanings. See, e.g., Biotec Biologische
Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error
in non-construction of “melting”); Mentor H/S, Inc. v.
Med. Device All., Inc., 244 F.3d 1365, 1380 (Fed. Cir.
2001) (finding no error in court’s refusal to construe
“irrigating” and “frictional heat”). Generally, there is a
“heavy presumption in favor of the ordinary meaning
of claim language.” See Johnson Worldwide Assocs. v.
Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). And
where a district court determines that a claim term
does not require further construction, that term
receives its plain and ordinary meaning as understood
by a person of skill in the art. See Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). “In some
cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be
readily apparent even to lay judges, and claim
construction in such cases involves little more than the
application of the widely accepted meaning of commonly
understood words.” Id.; see also Brown v. 3M, 265 F.3d
1349, 1352 (Fed. Cir. 2001) (“We agree with this
construction of the claim, for it is the plain reading of
the claim text. These are not technical terms of art,
and do not require elaborate interpretation.”).
3
The Court notes that Comcast orally requested after the close
of evidence that “if the Court is inclined to submit the issue to the
jury, as we’re aware courts often do, we object to the failure to
construct and request that the term be construed.” Dkt. 424 at 134.
32a
Here, “adding” and “deleting” are not used idiosyncratically and do not have discrete, technical
meanings within the field of art, as WTV noted. See
Dkt. 172 at 8−9. The prior judges’ decisions to not
further construe “adding or deleting” was therefore in
accord with the significance of these terms and the role
that these terms play within the context of Claim 1 of
the ‘431 Patent. As such, these terms will receive their
plain and ordinary meaning. See Phillips, 415 F.3d
at 1312 (“Because the patentee is required to define
precisely what his invention is . . . it is unjust to the
public, as well as an evasion of the law, to construe it
in a manner different from the plain import of its terms.”).
To determine the plain and ordinary meaning of a
claim term, courts may look to general purpose
dictionaries. See id. at 1314. Merriam-Webster’s
Dictionary defines “add” as “to join or unite so as to
bring about an increase or improvement” and “delete”
as “to eliminate especially by blotting out, cutting out,
or erasing.” Add, Merriam-Webster Dictionary, https://
www.merriam-webster.com/dictionary/add (last visited
May 31, 2023); Delete, Merriam-Webster Dictionary,
https://www.merriam-webster.com/dictionary/delete (last
visited May 31, 2023). The Oxford English Dictionary
defines “add” as “[t]o join (something) to something
else so as to increase the amount, size, importance,
etc.; to put in as an additional element or ingredient”
and “delete” as, among other things, “[t]o remove (a
character, a selection of text or string of characters, or
piece of other data) from an electronic document or a
program’s interface” or “[t]o remove (a file) from the
memory of a computer or (in later use) electronic
device, computer network, etc. Also: to uninstall
(a program or application).” Add, Oxford English
Dictionary, https://www.oed.com/view/Entry/2155?rsk
ey=hrC8Nv&result=2#eid (last visited May 31, 2023);
33a
Delete, Oxford English Dictionary, https://www.oed.
com/view/Entry/49325?rskey=cQCvpb&result=2&isA
dvanced=false#eid (last visited May 31, 2023).
While dictionary definitions alone are not controlling as to the plain and ordinary meaning of a
particular claim term, they are “useful to assist in
understanding the commonly understood meaning of
words” where, as here, there is no competing artspecific evidence of meaning. See Phillips, 415 F.3d
at 1322. The Court therefore reiterates the earlier
claim construction order determining that “adding or
deleting channels” is afforded its plain meaning. No
further claim construction is required as commonsense, ordinary understandings of “adding” and “deleting”
are confirmed by the above referenced dictionary
definitions, and the parties have introduced no evidence
tending to yield more than one “ordinary” meaning for
these terms. Nor did WTV request the same.
B. Channels cannot be added or deleted on the X1
under the plain meaning of “add” and “delete,”
meaning the X1 does not literally infringe
Claim 1.
The second step in the literal infringement analysis
asks, “whether the claims as thus construed read on
the accused product.” Southwall Techs., 54 F.3d at
1575. As explained below, WTV did not introduce any
evidence at trial that X1 users can add or delete
channels in a manner that accords with the plain and
ordinary meaning of those terms. WTV therefore failed
to show by a preponderance of the evidence that the
X1 literally infringes the “adding or deleting channels”
limitation of Claim 1.
WTV premised its infringement argument on its
contention that a user “managing subscriptions” is the
34a
same as that user “adding or deleting channels.” Dkt.
419 at 198. WTV first made this argument in its
claim construction briefing asserting that “[a]dding a
channel refers to ‘integrating’ the channel into the
IPG. One way to add a channel to the IPG is to
subscribe to the channel.” Dkt. 96 at 25. At the first
Markman hearing, however, the previously assigned
judge expressed skepticism as to this syllogism,
asking, “Why would you add to the guide something
that’s already there, and why would you delete from
the guide something that’s going to be there after you
delete it? I don’t get it.” Dkt. 165 at 132. That concern
highlights the issue with respect to WTV’s infringement argument on this particular limitation.
To begin, in attempting to elide plain English and
get the jury to adopt its narrow and idiosyncratic
reading of “adding or deleting,” WTV improperly
contorted the Court’s instruction as to the scope of the
limitation. At no point during trial did WTV introduce
evidence that an X1 user could subscribe to a channel
that was not already offered on the accused X1’s IPG,
thereby increasing the number of channels offered on
the IPG. Nor did WTV introduce any evidence that a
user who unsubscribed from a particular app—such as
Netflix—could remove that app from the X1’s IPG
entirely such that search results for content contained
in that app would not appear or that the app would not
be displayed on the IPG. Thus, by encouraging the jury
to accept that subscribing is adding and unsubscribing
is deleting, WTV encouraged a departure from the
plain and ordinary meaning of these terms.
Even if WTV could argue that subscribing is like
adding, under the plain and ordinary meaning of
adding, mere equivalence is not enough to satisfy
literal infringement. Again, to argue literal infringe-
35a
ment, WTV must state that subscribing is adding and
unsubscribing is deleting. WTV may not assert literal
infringement based on the theory that unsubscribing
from an app—so as to restrict that app’s content by
“graying it out” or placing it behind a paywall or a
request for credentials—is conceptually similar to
deleting that app simply because both actions create
impediments for the user who wants to watch content
offered by the app. WTV must show that an X1 user
can actually delete the app from the IPG. WTV,
however, has introduced no evidence that this is
possible, and in fact, its witnesses confirmed just the
opposite. One cannot delete a channel from the X1. Nor
can one add a channel that Comcast did not deign to
include. WTV’s case in chief failed to prove that the X1
user can add or delete channels.
In its case in chief, WTV called Jessica Sant, who
leads the team that builds the X1 user interface at
Comcast, to testify. Dkt. 421 at 79. When asked how a
user can add or delete apps from the IPG on the X1,
Ms. Sant stated, “[i]t’s not possible. All the apps that
are available to a customer are listed here. There’s no
way for a customer to add an app or remove it.” Id. at
80. Ms. Sant elaborated that a user could not add or
delete an app because “[t]hat’s simply not how the
system was designed. All the channels that are
available to a customer are present in the guide, in the
IPG, whether or not they are subscribed to them.” Id.
In sum, Ms. Sant testified that subscribing to or
authenticating a channel cannot be “adding” that
channel to the X1 IPG because, irrespective of the
user’s actions, the channel—including its content and
metadata—will be present on the IPG. That is, “[t]he
rows that exist are all there[.] There’s no way to add or
remove them.” Id.
36a
WTV’s technology expert, Dr. William C. Easttom II,
confirmed this fact. Dr. Easttom testified that new
channels cannot be added to the X1 IPG because when
a user searches for content on the X1 system, the
system will “show you every place you can watch it”
and provide “a listing of all of them in one single IPG.”
Dkt. 420 at 148. Thus, when a user searches for
particular content on the X1, the results yielded by the
X1 will include every channel containing that content,
irrespective of whether the user is subscribed to the
channel. Id. As Dr. Easttom testified, even if a user did
not want the Netflix app on her X1’s IPG and had no
intention of ever subscribing to Netflix, the Netflix app
would still appear, and the user would not be able to
delete it. Id. at 277. In this regard, Dr. Easttom
essentially conceded that the user cannot “configure
the IPG with respect to adding or deleting channels,”
as Claim 1 requires given that, irrespective of the
user’s personal preferences as to what channels
appear on the IPG, all channels offered by Comcast
would still be displayed on the IPG. See id.
Ms. Sant and Dr. Easttom’s testimony regarding the
rigidity of the X1’s IPG display and the immutability
of the channel listings provided by Comcast is in no
way identical to the customizable and restriction-free
invention described in the ‘431 Patent’s specification.
That specification explains in relevant part:
The present invention allows a user to move
from location to location and easily acquire,
organize and view digital entertainment content from one or more independent content
sources (including channel listings, programming information, and saved content) via a
“follow me” personalized global IPG that is
available on any device that is connected to
37a
the Public Internet. The goal is to shift the
control of content availability, organization,
and access from MSO’s, which is today’s cable
television model, to a new user-centric model
where the user can choose whether or not to
purchase content from a content consolidator
or directly from independent content providers.
Dkt. 30-1 at 14. Users of the X1 cannot “easily acquire
. . . content,” and they have no “control of content
availability” because, as Ms. Sant testified, the X1 does
not allow users to pick and choose whatever channels
they want on their devices. See Dkt. 421 at 92
(Ms. Sant explaining, “One of the reasons that we
designed it that way is so that Comcast can really
control what content is available to our customers so
we can provide a really high-quality experience so
there’s not any rogue content on the system.”). Simply
put, the role that “adding or deleting channels” plays
in the ‘431 Patent’s efforts to permit users to pick and
choose what content is available to them, wherever
they are in the world, is totally dissimilar to the role
that “managing subscriptions” plays on the X1. While
the ‘431 Patent allows users to increase the number of
channels available to them—true to the plain and
ordinary meaning of “adding”—the X1 only allows
users to log in and out of channels that Comcast, and
only Comcast, chose irrevocably to emplace on the IPG.
In sum, WTV has not shown that a user’s ability to
manage subscriptions on the X1 literally embodies a
user’s ability to add or delete channels as described in
Claim 1. Instead, the evidence introduced by WTV at
trial highlights the marked dissimilarities between
the ‘431 Patent and the X1, particularly vis-à-vis what
the inventor described as the “goal” of the invention—
to allow a user to exercise full, unrestricted dominion
38a
over the content available to her on the IPG. See Dkt.
30-1 at 14. For these reasons, the Court finds that no
reasonable juror could find that WTV has shown by a
preponderance of the evidence that the X1 literally
infringes the “adding or deleting channels” limitation
of Claim 1.
II. “Interactive Program Guide Application
Installed on the Device” Limitation
Turning to the second disputed limitation, Claim 1
also calls for an “interactive program guide application
installed on the device[.]” Dkt. 418-1 at 20. At trial,
WTV maintained that the X1 meets this limitation
because the XRE receiver, which the parties agree is
installed on the X1 set-top box (i.e., “the device”), is an
IPG application. However, no reasonable jury could
make this finding based upon the evidence presented
at trial. As set forth below, there is insufficient
evidence to support a finding of literal infringement.
A. Because the Court declined to construe
the “interactive program guide application
installed on the device” limitation, the term
is afforded its plain and ordinary meaning.
As with the “adding or deleting channels” term, the
Court previously declined to further construe “interactive program guide” or “interactive program guide
application” during either claim construction. Dkt. 172
at 8; Dkt. 302. WTV suggested that this term should
have a “plain and ordinary meaning, namely a
program guide that enables user interaction.” Dkt. 172
at 8. Accordingly, the term “interactive program guide
application” receives its plain and ordinary meaning
as understood by a person of ordinary skill in the art
in question at the time of the invention. Phillips, 415
F.3d at 1312−13. Notably, “the person of ordinary skill
39a
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[.]” Id. at 1313.
Where, as here, a term’s plain and ordinary meaning
is not readily apparent, courts look to “those sources
available to the public that show what a person of skill
in the art would have understood the disputed claim
language to mean,” including “the words of the claims
themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical
terms, and the state of the art.” Id. at 1314 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)); see also
Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319
(Fed. Cir. 2005) (“We cannot look at the ordinary
meaning of the term . . . in a vacuum.”). It is with this
understanding that the Court considers whether WTV
offered sufficient evidence to show literal infringement
of the “interactive program guide application installed
on the device” limitation.
B. The X1 does not literally infringe Claim 1
because the X1 does not have an “interactive
guide application program installed on the
device.”
When considering the meaning of an “interactive
program guide application” as understood by a person
of ordinary skill in the art, it is apparent that WTV
failed to present sufficient evidence to show that the
X1 has an “interactive program guide application
installed on the device.” WTV therefore failed to carry
its burden to show that the X1 literally infringed this
limitation.
40a
Turning first to the claim language, Claim 1
requires “an interactive program guide application
installed on the device that provides user-configurable
interactive program guide (IPG) listing at least one
channel of video content . . . and descriptive program
data from the server for the video content available on
each of the channels.” Dkt. 418-1 at 20 (emphasis
added). This language plainly describes a client-server
architecture in which the interactive program guide
application is installed on the device, i.e., the set-top
box, and descriptive program data resides on a server.
Though Dr. Easttom asserted that the X1 utilizes this
architecture, see Dkt. 420 at 135−36, it is undisputed
that the X1 has an “XRE guide” application that exists
and runs not on the X1 set-top box. Rather, the XRE
guide is installed and runs “on servers in the cloud”—
namely, the XRE server. Id. at 284. Dr. Easttom
acknowledged that it is this XRE guide application
that “directs the set-top box as to what to display” and
“generates rendering instruction for the XRE receiver”
with respect to the IPG. Id. at 284. Therefore, the
uncontested evidence shows that the interactive
program guide application is not installed on the
device (the set-top box).
Despite the undisputed existence that the “XRE
guide application” in the cloud provides all the data
assembly and “brains” necessary for the interactive
program guide, WTV maintained throughout trial that
the XRE receiver on the set-top box is the X1’s IPG
application. However, the ‘431 Patent’s specification
does not support this conclusion. Figure 84 in the ‘431
Patent depicts an IPG application that, among other
4
WTV specifically directed the Court to Figures 7 and 8 of
the ‘431 Patent in arguing its opposition to the instant motion.
Dkt. 424 at 139−40, 150−52.
41a
things, “procures digital rights via stored profile,”
“locates and authenticates” new content sources, and
“downloads and synchronizes content metadata from
new content sources.” Dkt. 418-1 at 12. Indeed, counsel
for WTV conceded that Figure 8 is, “in a sense,” a
helpful illustration to understand the functions of an
interactive program guide application. Dkt. 424 at 153.
Moreover, Figure 4 within the ‘431 Patent serves as “a
conceptual architectural diagram of the global IPG
application.” Dkt. 418-1 at 16. Figure 4 depicts the
invention’s IPG application as having “Core Application
Features” such as data integration, user authentication, and customization and personalization of the
IPG, as well as “Core Application Functions” like
content subscription management, content organization management, and user profile management. Id.
at 8, 18.
WTV presented no evidence that the XRE receiver
in the X1 set-top box “device” offers any of the
functions or features illustrated in Figures 4 or 8.
Instead, Dr. Easttom testified that the XRE receiver is
a “thin client”5 capable of performing only two major
functions: “draw[ing] what you see on the screen pixel
by pixel” and sending “whatever input you give it
through the remote control” to the cloud-based XRE
server, “which may send data back.” Dkt. 420 at 189,
285. In other words, at best WTV proved the accused
device (the X1 set-top box) is a thin client, signaling
device, and WTV never showed that the interactive
program guide application was installed therein. This
was confirmed by WTV’s counsel, who described the
XRE receiver as a “graphics program.” Dkt. 424 at
5
In computing parlance, a “thin client” is a system with limited
processing power, whereas a “fat client” is a system with greater
processing power. See Dkt. 420 at 284−85; Dkt. 423 at 58.
42a
148−49. How a “graphics program” constitutes an
“interactive program guide application” was never
made clear.
Moreover, both parties’ experts agreed that Comcast
intentionally designed the X1 set-top boxes to work as
thin clients that do not execute application logic.6
Dkt. 423 at 58 (Dr. Terveen); Dkt. 420 at 201−02, 285
(Dr. Easttom). Dr. Terveen explained that, while
placing IPG applications on set-top boxes “was really
the way things worked in the industry” at the time of
the ‘431 Patent application in 2006, Comcast chose to
depart from “the old way of doing things” by placing
the X1’s IPG application on a cloud-based server that
executes all application logic. Dkt. 423 at 45−46, 58.
Dr. Terveen testified without contradiction that
Comcast made this decision because a server has “a lot
more computational power than a set-top box,” and
Comcast could update the IPG application on the
server instead of requiring customers to download
updated versions onto their set-top boxes. Id. at 47;
see also Dkt. 420 at 202, 283−84 (Dr. Easttom similarly
testifying that Comcast does not “have to change the
receiver every single time something changes in [the]
back end” because the application logic is executed
on the XRE server). Due to this design choice, it is
undisputed that the cloud-based XRE server, and
not the XRE receiver, provides “the data necessary for
the . . . IPG.” Dkt. 420 at 189 (Dr. Easttom).
Ultimately, while the XRE receiver in the X1 set-top
box may be an “application installed on the device,”
WTV failed to sufficiently demonstrate that the XRE
6
The parties’ experts described this “application logic” as how
the IPG application processes user inputs, such as remote key
presses, “behind the front end.” See Dkt. 420 at 201; Dkt. 423 at 58.
43a
receiver constitutes an “interactive program guide
application installed on the device” as understood by a
person of ordinary skill in the art. This is particularly
evident in light of the language of Claim 1, the ‘431
Patent specification, and relevant proof at trial.
With insufficient evidence for a reasonable jury to find
that the X1 meets the “interactive program guide
application installed on the device” limitation, WTV
cannot show the X1’s literal infringement of Claim 1 of
the ‘431 Patent.
CONCLUSION
Based on the foregoing, Comcast is entitled to
judgment as a matter of law. The Clerk is directed to
enter final judgment in favor of Comcast and against
WTV and close this case.
DONE AND ORDERED at Tampa, Florida, on
June 5, 2023.
/s/ William F. Jung
WILLIAM F. JUNG
UNITED STATES DISTRICT JUDGE
COPIES FURNISHED TO:
Counsel of Record
44a
APPENDIX C
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
————
Case No. 2:18-cv-529
April 26, 2023
————
WHEREVERTV INC.
vs.
COMCAST CABLE COMMUNICATIONS LLC
————
JURY TRIAL - DAY 6
Heard in Courtroom 15B
Sam M. Gibbons United States Courthouse
801 N. Florida Avenue
Tampa, FL
April 26, 2023
————
BEFORE THE HONORABLE WILLIAM F. JUNG
UNITED STATES DISTRICT JUDGE
————
Official Court Reporter:
Tana J. Hess, CRR, FCRR, RMR
U.S. District Court Reporter
Middle District of Florida
Tampa Division
801 N. Florida Avenue
Tampa, FL 33602
813.301.5207
tana_hess@flmd.uscourts.gov
45a
[155]
THE COURT: All right. Notwithstanding the
forensic -- substantial forensic skills shown by the
plaintiff, I’m granting the motion. I find that this is
literal infringement. There’s no legally -- legally appropriate evidence for a reasonable jury in a light
viewed most favorable to the plaintiff, including its
inferences, to find infringement for the two reasons
that we’ve discussed.
I’ve evaluated all the evidence and find that the
Rule 50 standard applies. so the motion is granted. I
rule against the plaintiff and for the movant.
I’m going to put a final order out on this -not a
final order -- final order out on this June 2nd. If
anybody wants to do substantive briefing, that date -deadline is may 14th. And the -- and the -- any
rebuttal pleadings, if you wish, is may 24th. I’ll issue
the order June 7th.
I find that the two terms that we’ve discussed,
the interactive program guide installed on a device
and also the adding and deleting portions of Claim 1,
are not net by the plaintiff.
Anything else, plaintiff?
[156]
Hearing nothing.
Anything else -- yes?
MR. ROSENTHAL: Your Honor, I’d just move to
reconsider that the -- you cannot as a matter of law -the Federal circuit has been very clear. You cannot
import limitations to the claim from a specification.
THE COURT: All right. well, I’ve taken argument
on that, and I’ve ruled as I’ve ruled today.
46a
So thank you. Any substantive -- the case is over.
I’ve granted the JMOL under Rule 50.
Anything else from the defense?
MR. RAMANI: Nothing else from the defense, Your
Honor. Thank you.
THE COURT: Again, June 2nd -- this is not a final
order. June 2nd is my final order. May 14th if anyone
has supplemental pleadings, and May 24th for any
rebuttal thereto.
Thank you, counsel. I’m going to go talk to the
(End of proceedings.)
47a
APPENDIX D
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
————
Case No. 2:18-cv-529-FtM-32NPM
————
WHEREVERTV, INC.,
v.
Plaintiff,
COMCAST CABLE COMMUNICATIONS, LLC,
————
Defendant.
ORDER
In this patent infringement action, WhereverTV, Inc.
alleges that Comcast Cable Communications, LLC’s
Xfinity X1 Platform infringes on a patent owned by
WhereverTV, U.S. Patent No. 8,656,431 B2, titled
Global Interactive Program Guide Application and
Device (the ’431 Patent) (Doc. 30-1). This matter is
before the Court for patent claim construction, as
described in Markman v. Westview Invs., Inc., 52 F.3d
967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996). The Court has considered the submissions of
the parties, including the memoranda, exhibits, and
expert declarations (Docs. 95, 95-1, 96, 96-1, 107, 108,
108-1, 109, 109-1, 161, 162), and the argument of
counsel at the June 12, 2020 Markman hearing about
seven disputed claim terms 1 (Doc. 165, transcript).
There were twelve disputed claim terms but to narrow the
scope of disputed issues, Comcast agreed to withdraw its request
1
48a
The record of that hearing is incorporated here by
reference. Following the hearing, the Court made
tentative indications on the record about the parties’
arguments and proposed constructions (Doc. 165 at
140-42) and allowed the parties time to consider
settlement, but they did not settle. (Docs. 168, 169).
I. CLAIM CONSTRUCTION STANDARDS
“The proper construction of a patent’s claims is an
issue of Federal Circuit Law.” Powell v. The Home
Depot U.S.A., Inc., 663 F.3d 1221, 1228 (Fed. Cir. 2011).
“[T]here is no magic formula or catechism for conducting claim construction.” Phillips v. AWH Corp., 415
F.3d 1303, 1324 (Fed. Cir. 2005). Claim construction
begins with the words of the claims themselves.
Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370,
1374 (Fed. Cir. 2019); Phillips, 415 F.3d at 1312. “[T]he
words of a claim ‘are generally given their ordinary
and customary meaning.’” Phillips, 415 F.3d at 1312
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)). Such ordinary meaning “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.” Id. at 1313. “Furthermore, a claim term
should be construed consistently with its appearance
in other places in the same claim or in other claims of
the same patent.” Rexnord Corp. v. Laitram Corp., 274
F.3d 1336, 1342 (Fed. Cir. 2001). Accordingly, “the
specification is always highly relevant to the claim
construction analysis.” Phillips, 415 F.3d at 1315
(quotation marks omitted). This is true because a
as to five disputed terms: “the device,” “digital rights management
module,” “filtering module,” “voice recognition module,” and “relay
module.” For this litigation only, Comcast accepts WhereverTV’s
proposed constructions for those five terms. (Doc. 160).
49a
patentee may define his own terms, give a claim term
a different meaning than the term would otherwise
possess, or disclaim or disavow the claim scope. Id. at
1316.
“[W]hile claims are to be interpreted in light of the
specification and with a view to ascertaining the
invention, it does not follow that limitations from the
specification may be read into the claims.” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186
(Fed. Cir. 1998) (quoting Sjolund v. Musland, 847 F.2d
1573, 1581 (Fed. Cir. 1988)). Importing limitations
from the specification therefore “should be avoided
unless the patentee clearly ‘intends for the claims and
the embodiments in the specification to be strictly
coextensive.’” Pfizer, Inc. v. Ranbaxy Laboratories Ltd.,
457 F.3d 1284, 1290 (Fed. Cir. 2006) (quoting Phillips,
415 F.3d at 1323). “In addition to consulting the specification, ... a court should also consider the patent’s
prosecution history, if it is in evidence 2.... Like the
specification, the prosecution history provides evidence
of how the [Patent and Trademark Office (‘PTO’)] and the
inventor understood the patent.” Phillips, 415 F.3d at
1317 (quotations and citations omitted).
Although intrinsic evidence is preferred, courts may
also rely on extrinsic evidence, which is “all evidence
external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises.” Markman, 52 F.3d at 980.
II. THE PATENT
The ’431 Patent discloses novel methods and systems
for receiving, accessing, managing and viewing digital
The ’431 Patent’s prosecution history is attached as Exhibit B
to Doc. 94.
2
50a
entertainment services such as live television, television on demand, and pre-recorded video and audio
programming from one or more content sources via
an Internet-enabled device. To access the video content, the user uses an interactive programming guide
application. The ’431 Patent states that “[t]he goal is
to shift control of content availability, organization,
and access from MSO’s, [multi system operators],
which is today’s cable television model, to a new usercentric model where the user can choose whether or
not to purchase content from a content consolidator or
directly from independent content providers.” (Doc.
30-1 at 6:39-44).
The text of Claim 1, the asserted independent claim,
reads in full:
1. a content manager device comprising:
a server resident on a network containing
descriptive program data about video content
available from one or more multiple cable
system operators (MSOs) and one or more
non-MSOs;
a device capable of establishing and maintaining a connection with the network via a
communications link; and
an interactive program guide application
installed on the device that provides userconfigurable interactive program guide (IPG)
listing at least one channel of video content
available from each of the one or more MSOs
and descriptive program data from the server
for the video content available on each of
the channels, wherein each of the channels is
selectable for receiving only or virtually
entirely streaming video programming from
51a
its respective MSO or non-MSO source via
the communications link and the network;
wherein the server is distinct from at least
one of the one or more MSOs and one or
more non-MSOs, and wherein the application
allows for the IPG to be configured by a user
with respect to adding or deleting channels
from any of the one or more MSOs or the one
or more non-MSOs.
(Doc. 30-1 at 16:32-54).
III. CLAIM CONSTRUCTION
The claims for the Markman hearing are seven
disputed terms recited in independent Claim 1 and
dependent Claims 8, 9 of the ’431 Patent. Dependent
claims include all the limitations of the independent
claim (Claim 1), plus the added limitation described in
the dependent claim. “A claim in dependent form shall
be construed to incorporate by reference all the
limitations of the claim to which it refers.” 35 U.S.C. §
112(4). 3
Considering the parties’ submissions, the arguments at the Markman hearing, and given the above
standards, the Court makes these constructions:
Because the ’431 Patent was filed before the adoption of the
Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 4(e), the
previous version of § 112 governs. See AbbVie Deutschland GmbH
& Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1290, n.3 (Fed. Cir.
2014).
3
52a
1. “multiple cable system operators (MSOs)”
(Claims 1, 9)
WhereverTV’s
Comcast’s
Court’s
Proposed
Proposed
Construction
Construction
Construction
a traditional cable an aggregator of a cable, satellite,
or Internet televi- video content that or Internet telesion content con- provides user access vision content
solidator that re- to the video con- consolidator that
tent in more than receives and then
ceives and
rebroadcasts
one community and broadcasts
channels of video that exercises
channels of video
content
control over what content
video content is
made available to
the user
2. “non-MSOs” (Claims 1, 9)
WhereverTV’s
Comcast’s
Proposed
Proposed
Construction
Construction
“non-MSO” should a non-aggregator
receive its plain
of video content
that distributes
and ordinary
meaning in light
its own content
of the definition of
MSO
Court’s
Construction
a video content
provider that does
not act like an
MSO because it
does not receive
and then
broadcast
channels of
video content
53a
3. “wherein the server is distinct from at least
one of the one or more MSOs and one or more
non-MSOs” (Claim 1)
WhereverTV’s
Proposed
Construction
the server does
not stream digital
television content
from at least one
of the MSOs and
does not stream
digital television
content from at
least one of the
non-MSOs
Comcast’s
Court’s
Proposed
Construction
Construction
wherein the server The Court does
is not controlled
not adopt either
by the one or
parties’
construction.
more MSOs and
No further
is not controlled
construction is
by the one or
necessary.
more non-MSOs
4. “only or virtually entirely streaming video
programming” (Claim 1)
WhereverTV’s
Comcast’s
Proposed
Proposed
Construction
Construction
plain and ordinary indefinite
meaning, which the
jury understands
to mean exclusively or almost
exclusively video
programming4
Court’s
Construction
No further
construction is
necessary. See
below.
The Court asked Plaintiff ’s counsel at the hearing why
WhereverTV asserts plain and ordinary meaning and also
proposes what the jury understands. (Doc. 165 at 39:9-40:19).
Counsel explained that if the term is given its plain and ordinary
meaning no jury instruction is needed. (Doc. 165 at 112:14-18).
The Court makes no determination at this time how the jury will
be instructed.
4
54a
To promote clarity, a patent specification must
“conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.”
35 U.S.C. § 112(2). This “definiteness” requirement
mandates that “a patent’s claims, viewed in light of the
specification and prosecution history, [must] inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898, 910 (2014). “If a claim
employs a term of degree, the intrinsic record must
provide those skilled in the art with ‘objective
boundaries’ with which to assess the term’s scope.” In
re Walter, 693 F. App’x 1022, 1026 (Fed. Cir. 2017)
(quoting Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (addressing indefiniteness
in claim construction)). Terms of degree are not inherently indefinite. Interval Licensing, 766 F.3d at 1370.
Patents are presumed valid under 35 U.S.C. § 282,
so “[a]ny fact critical to a holding of indefiniteness . . .
must be proven by the challenger by clear and
convincing evidence.” Cox Commc’ns, Inc. v. Sprint
Commc’n Co. LP, 838 F.3d 1224, 1228 (Fed. Cir. 2016)
(quoting Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357,
1366 (Fed. Cir. 2003)).
It is admittedly a close question whether the term
“only or virtually entirely streaming video programming” fails for indefiniteness. The claim term was
added during the patent prosecution (Doc. 94-5), but at
the oral argument WhereverTV offered no clear
indication what issue the claim term was intended to
resolve. Even so, the Court believes these words can be
understood by those skilled in the art, particularly
since Comcast itself was able to propose a construction
for term 5, which contains the same language. Thus, at
55a
this stage, the Court finds that Comcast has not met
its burden to show by clear and convincing evidence
that the term fails for indefiniteness under 35 U.S.C.
§ 112.
5. “wherein each of the channels is selectable
for receiving only or virtually entirely
streaming video programming” (Claim 1)
WhereverTV’s
Comcast’s
Proposed
Proposed
Construction
Construction
plain and ordinary wherein each of
meaning, which
the channels
the jury will
is configured
understand to
such that, in
mean that each of immediate
the channels,
response to
when selected,
selection of its
provides only or
assigned channel
virtually entirely number, and
streaming video
without further
programming
searching, video
programming is
only or virtually
entirely
transmitted over
the Internet (or
other network
implementing the
Internet Protocol)
and made
available for
viewing while the
transmission is
occurring
Court’s
Construction
No further
construction is
necessary. The
Court does not
adopt
WhereverTV’s
position on what
the jury will
“understand.”
56a
6. “interactive program guide” (Claims 1, 8, 9)
WhereverTV’s
Comcast’s
Court’s
Proposed
Proposed
Construction
Construction
Construction
plain and ordinary a listing of chan- No further
meaning, namely nels that includes, construction is
a program guide
for each channel, necessary.
that enables user a selectable
interaction
channel number
and associated
descriptive
program data
7. “adding or deleting channels from any of the
one or more MSOs or the one or more nonMSOs” (Claim 1)
WhereverTV’s
Comcast’s
Proposed
Proposed
Construction
Construction
plain and ordinary adding channels
meaning, which
to the IPG that,
the jury will
absent such
understand is
adding, are
“adding or
not otherwise
deleting from the displayed in the
IPG at least one
IPG, or deleting
of the MSO
channels from the
channels or at
IPG such
least one of the
that, after
non-MSO
deletion, the
channels.”
channel is no
longer displayed
in the IPG
Court’s
Construction
The Court does
not adopt
either parties’
construction or
what the jury will
“understand.”
No further
construction
is necessary.
57a
IV. SUPPLEMENT THE RECORD
WhereverTV requests that the Court consider
arguments made in its Motion to Supplement the
Record (Doc. 133) and supplement the claim construction record with a supplemental appendix containing the parties’ briefing before the Patent Trial &
Appeal Board (PTAB) and the PTAB’s two decisions
(Doc. 133-1). Comcast does not object to admitting
the supplemental appendix but does object to the
procedural and substantive arguments in Plaintiff’s
Motion to Supplement. (Doc. 160 ¶ 5). Without
objection, the Court will supplement the claim
construction record with the supplemental appendix
(Doc. 133-1).
V. CONCLUSION
As stated in a previous Order (Doc. 164, n.1), the
Court will reestablish discovery and other deadlines
and will take up consideration of the Motion to Compel
(Doc. 137) and the Motion to Quash (Doc. 148). (Doc.
164). Although the Court’s Markman rulings could
affect the parties’ positions on deadlines and the
pending discovery motions, the Court will let the
assigned Magistrate Judge address those issues.
Accordingly, it is hereby ORDERED:
1. Absent further order, further proceedings will
be consistent with this Order.
2. Plaintiff’s Motion for Leave to Supplement the
Claim Construction Record Based on New Evidence
(Doc. 133) is GRANTED to the extent the Court admits
the supplemental appendix (Doc. 133-1) into the claim
construction record.
3. Based on this Order and the status report
(Doc. 169) filed by the parties the assigned Magistrate
58a
Judge will set a schedule for remaining case events.
Now that Judge Badalamenti has assumed the Fort
Myers docket, this case will be transferred to him for
all future proceedings. Once the record is more fully
developed, Judge Badalamenti is free to revisit any of
these rulings as he sees fit.
4.
The Clerk is directed to re-open the case.
DONE AND ORDERED in Jacksonville, Florida, the
13th day of November, 2020.
/s/ Timothy J. Corrigan
TIMOTHY J. CORRIGAN
United States District Judge
Copies:
Honorable John L. Badalamenti
United States District Judge
Honorable Nicholas P. Mizell
United States Magistrate Judge
Counsel of Record
59a
APPENDIX E
NOTE: This order is nonprecedential.
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
————
2023-2098, 2023-2150
————
WHEREVERTV, INC.,
Plaintiff-Appellant
v.
COMCAST CABLE COMMUNICATIONS, LLC,
Defendant-Cross-Appellant
————
Appeals from the United States District Court for
the Middle District of Florida in No. 2:18-cv-00529WFJ-NPM, Judge William F. Jung.
————
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
————
Before MOORE, Chief Judge, LOURIE, DYK, PROST,
REYNA, TARANTO, CHEN, HUGHES, STOLL,
CUNNINGHAM, and STARK, Circuit Judges. 1
————
PER CURIAM.
1
Circuit Judge Newman did not participate.
60a
ORDER
Comcast Cable Communications, LLC filed a combined petition for panel rehearing and rehearing
en banc. The petition was first referred to the panel
that heard the appeal, and thereafter the petition was
referred to the circuit judges who are in regular active
service.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
FOR THE COURT
[SEAL UNITED STATES
COURT OF APPEALS FOR
THE FEDERAL CIRCUIT]
/s/ Frances M. McNulty
Frances M. McNulty
Chief Deputy Clerk of Court
October 10, 2025
Date
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.