BEERY v. THOMSON CONSUMER ELECTRONICS, INC. (S.D.Ohio 2005)

SHARON L. OVINGTON, Magistrate Judge

I. INTRODUCTION

This case is again before the Court upon Motions and Memoranda related to the proper construction of patent claim language set forth in the United States Reissue Patent Number 35,952 ("the '952 patent") for a Television Receiver Having Memory Control For Tune-By-Label Function. The Motions and Memoranda presently at issue are Thomson Consumer Electronics, Inc.'s and Thomson Licensing SA's (collectively "Thomson's") Motion for Partial Reconsideration of the Report and Recommendations of the Magistrate Judge filed on August 20, 2004 (3:00cv00327; Doc. #323), Jack Beery's Memorandum in Opposition (Doc. #326), Thomson's Motion for Leave to File Corrected Motion (Doc. #330), and Thomson's Reply in Support of Motion for Partial Reconsideration (Doc. #331).

Thomson challenges the Report and Recommendation's ("the Report's"; Doc. #318) construction of two phrases used in the '952 patent: "channel select designation" and "scroll sequence." The Report and Recommendations construed these phrases as follows:

The phrase `channel select designation' when combined with the word `operator' refers to a control signal for picking a channel tuning designation which may be programmed into memory by a viewer or by someone else, such as the cable service operator.

The phrase `scroll sequence' does not require a viewer to program it but more broadly refers to one or more channel tuning designations, which are retained in the memory means.

(Doc. #318 at 41-42).

A. Motions to Reconsider

"As a general principle, motions for reconsideration are looked upon with disfavor unless the moving party demonstrates: (1) a manifest error law; (2) newly discovered evidence which was not available previously to the parties; or (3) intervening authority." Meekison v. Ohio Dept. of Rehabilitation and Correction, 181 F.R.D. 571, 572 (S.D. Ohio 1998) (Marbley, J.). In the instant case, Thomson raises numerous arguments concerning the Report's claim construction errors — i.e., errors of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996); see Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998). It is therefore the first category of permissible Motions to Reconsider that is presently at issue.

B. "Channel Select Designation" and "Scroll Sequence"

Thomson has maintained throughout this case that the phrase "channel select designation" must be limited to a television control system that allows the operator, the viewer, to program his or her own selected labels for tuning a television receiver to a television channel by the operator or another viewer. The Report, however, rejected this proposed construction and concluded that the following broader definition of this phrase should be adopted:

The phrase `channel select designation' when combined with the word `operator' refers to a control signal for picking a channel designation which may be programmed into memory by a viewer or by someone else, such as a cable service operator.

(Doc. #318 at 41).

Thomson presently contends that the Report's construction of the phrase "channel select designation" is incomplete because it is based on only two paragraphs of the patent specification without reconciling these two paragraphs with the description of the claim terms in the remainder of the patent specification and claims. Thomson points to the following two sentences in column 13 of the '952 patent's specification:

Of course, it will be readily recognized that some portions of the television controller memory may be available for programming to the cable service provider, while other portions of the memory may be available for programming by the viewer. For example, the cable provider may determine the display code, while the viewer may establish the select codes.

('952 patent, column 13, lines 34-41). Thomson argues that these two sentences must be read together with the preceding two paragraphs of the specification, which the Report relies on at page 24. According to Thomson the preceding two paragraphs "refer to `channel designations' downloaded via cable (or otherwise) that the viewer can change, if he or she desires, in choosing `channel select designations' of his or her preference. This is the only interpretation of these two paragraphs that is both consistent with the remainder of the '952 patent specification and the other claim terms as construed in the Recommendations." (Doc. #323, Memo. at 3).

Thomson's contentions lack merit. The two sentences on which Thomson relies describe possible alternative inventions by using the word "may." These two sentences merely describe another potential way in which the invention can be implemented. This is generally consistent with the overall purpose these paragraphs serve — to describe possible alternatives inventions. This purpose is seen by language following the specification's description of the preferred embodiment beginning in column 12 and continuing through column 13 to include the alternative embodiments relied on by Report (Doc. #318 at 24-25) as well as the further possible alternative described by the two sentences on which Thomson relies. The Report recognized, "The '952 patent describes a broader array of inventions incorporating the tune-by-label function than the '734 patent describes." (Doc. #318 at 24). This recognition immediately preceded the Report's reliance two paragraphs from column 13, suggesting the alternative nature of the inventions described at this point in the '952 patent specification. The Report also previously recognized the alternative nature of column 13's language, stating, "This language describes an example of the invention set forth in claim 53, where the cable service provider is the second person who predetermines the desired channel select designation." (Doc. #318 at 19).

Thomson also contends that the Report's construction of "channel select designation" makes no sense when considered in light of the Report's correct construction of the phrase "select code" — which refers to "the channel designation chosen by the viewer" — and the phrase "display code" — which refers to "a series of alpha/numeric characters chosen by the viewer for subsequent display on the television screen or a display panel as a channel is chosen using the select code." (Doc. # 323, Memo. at 3). This contention lacks merit. The Report recognized that a "select code" by definition refers to "the channel designations chosen by the viewer for subsequent use in selecting a particular channel." (Doc. #318 at 27). By this definition, a "select code" is one type of channel select designation. Nothing in this definition requires all channel select designations to be made by the viewer. This is consistent with the broader use of the phrase "channel select designation" in at least some of the patent claims. Claim 5, for example, describes a method for controlling a television receiver that uses the phrase "channel select designation" without limiting it to only "channel select designations" made by a viewer. In this manner, the claim language of the '952 patent does not equate, as Thomson contends (Doc. #323, Memo. at 4), a "select code" with a "channel select designation." In addition, although the specification at times parenthetically uses the phrase "select code" after the word "designation", e.g. column 5, line 65 to col. 6, ln. 5, or the phrase "channel designations", e.g., col. 7, lns. 37-42, this use does not establish that these phrases have equivalent meanings. Beery correctly argues that finding equivalent meanings in this manner would be like saying that a construction of the phrase "using a vehicle (car) for transport" requires construction of the term "vehicle" as always referring to "car." The parentheticals cited by Thomson do not convince, in light of the specification as a whole, that the phrases "select code" and "channel select designation" must be given equivalent constructions.

Accordingly, Thomson's argument that the Report's recommended definition of the phrase "channel select designation" is inconsistent with the specification's definition of the phrase "select code" lacks merit.

Thomson next argues that the Report's construction of the word "cue" — "the listing in memory of the various programmed entries made by viewer, wherein each select code is stored along with its corresponding channel code and display code" (Doc. #318 at 26) — is used in claims 10, 21, 30, and 45 to mean that channel select designations are stored in cues and must therefore be equated with other items in the cue, namely a "select code," a "channel code," or a "display code." (Doc. #323, Memo. at 7). Thomson explains, "To conclude a `cue' contains a `select code,' but not a `channel select designation,' would render the claim terms (as well as the Recommendations internally) inconsistent and unintelligible." Id. There are, however, claims that do not have the channel select designation stored in any cue such as claims 1 and 2, in which channel select designations appear without being stored in the cue. Thomson contends that this is of no moment because "[t]he direction in claims 10, 21, 30, 45 that the `channel select designations' be stored in `cues' still gives meaning and definition to the term `channel select designation.'" (Doc. # 331 at 11). Thomson's contention lacks merit because it is permissible for claims to use modifiers or other language to narrow or broaden the meanings of language used in different claims of the same patent. Indeed, "[w]here some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad whether to avoid invalidity or to escape infringement." U.S. v. Telectronics, Inc., 857 F.2d 778, 784 (Fed. Cir. 1988) (citations omitted); see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999) (seemingly identical claim terms not interpreted same in light of specification and prosecution history).

Thomson next argues that if the phrase "channel select designation" is not construed to permit the viewer to select his or her own designations, then the object of the '952 patent cannot be accomplished. Thomson's contention lacks merit since, as the Report concluded, "the '952 patent specification describes a broader array of inventions incorporating the tune-by-label function than the '734 patent describes. One such invention involves programming by a cableservice provider." (Doc. #318 at 24). The Report then quotes the specification, part of which is worth repeating here since it describes one possible invention that achieves the '952 patent's objective even though it requires programming by a cable service provider. The specification states:

One cable service provider may wish to provide multiple programmed series, useful for example where a cable provider serves an area covered by newspapers using different designations in their television listings. While this approach can be implemented in a number of ways, one possibility is to reserve a separate cable channel for each channel designation series. This will in fact enable a user to select the series desired, by tuning to the appropriate channel for programming the control unit.

(Doc. #318 at 24). To accept Thomson's objective-of-patent argument would require overlooking this language in the specification. See id.

Thomson next argues that to allow the phrase "channel select designation" to refer to a channel designation chosen by a third party is an affront to the principle of uniformity of claim construction as set forth in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The Report sufficiently describes why this contention lacks merit. (Doc. #318 at 20-25).

Thomson lastly argues that the Report erred by broadening the phrase "scroll sequence." The Report, however, fully considered Thomson's arguments on this point, finding them without merit. (Doc. #318 at 27-30).

Accordingly, for all of the above reasons, Thomson has not demonstrated the presence of a manifest error of law in the Report, and consequently their Motion to Reconsider lacks merit.

1. Thomson Consumer Electronics, Inc.'s and Thomson Licensing SA's Motion to File Corrected Motion (3:00cv00327, Doc. #330; 3:02cv00311, Doc. #172) is GRANTED and the corrected Motion is accepted as filed; and

2. Thomson Consumer Electronics, Inc.'s and Thomson Licensing SA's Motion for Partial Reconsideration of the Report and Recommendations of the Magistrate Judge filed on August 20, 2004 (3:00cv00327, Doc. #323; 3:02cv00311, Doc. #165) is DENIED.