Vizio, Inc., et al. v. International Trade Commission and Funai Elec. Co., Ltd., No. 2009-1386 (Fed. Cir. May 26, 2010).
The patent-in-suit related to technology intended to decrease the time needed to decode digital television transmissions. The patentee filed a complaint with the International Trade Commission (“ITC”). After an evidentiary hearing, the Administrative Law Judge (“ALJ”) held that the language of the patent’s claims did not require actual use of the information once created—the receipt and storage of the information was sufficient. Accordingly, certain televisions, called “work-around products,” which used chips that left portions of the information encoded, nonetheless infringed the patent. The ITC affirmed the ALJ’s findings of infringement and validity and accepted the ALJ’s recommendations of a limited exclusion order and cease-and-desist orders. The accused infringers appealed, and the Federal Circuit affirmed-in-part and reversed-in-part.
The Federal Circuit reversed the ITC as to the work-around products, holding instead that the patent’s claims were narrower than the ITC’s interpretation. To infringe the patent, the court held that an apparatus or method must be capable of utilizing the various elements of the decoded information, not merely receiving or storing it. In reaching this conclusion, the court relied in part on claim-limiting language in the patent’s preamble. “[A] preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim,” but is not so limiting when “a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”
Here, because the language of the preamble related to “the essence or a fundamental characteristic of the claimed invention,” it did not simply add an intended use, but instead “state[d] an essential limitation to the claims.” Because the work-around products did not convert all of the decoded information into a usable format, the work-around products did not infringe.
A copy of the opinion can be found here.