Digest of Va. Innovation Scis., Inc. v. Samsung Elecs. Co., No. 2014-1477 (Fed. Cir. June 9, 2015) (non-precedential). On appeal from E.D. Va. Before Wallach, Taranto, and Chen.
Procedural Posture: Patentee appeals the final judgments of non-infringement and invalidity. The Federal Circuit vacated and remanded the district court’s construction of “display format” and “converted video signal,” and the summary judgment determinations based on these constructions.
- Claim Construction: The district court did not err when it consulted declarations from parties’ experts and disclosures from the relevant treatises in deciding Samsung’s motion for summary judgment of invalidity to conclude that (1) video signals must be decompressed before they can be displayed, and (2) when decoding video signals, CODECs and decoders “convert compressed video signals into raw, uncompressed video signals.”
- Claim Construction / Prosecution History: The Federal Circuit agreed with the District Court in holding that VIS’s repeated characterization of its invention as “dealing not only with mere decoding of a compressed video signal” during prosecution mandated that that the construction of “display format” had to involve something more than an uncompressed video signal.
- Claim Construction: The limitations of the asserted claims may limit the construction of a claim term. Here, the Federal Circuit held that “display format” was more than an uncompressed video signal because the wording of “display format” itself suggests that it is a signal in a format that accommodates the display of video content on an external monitor. Further, a “signal conversion module” in the asserted claims, which not only decompresses the received compressed video signal, but also converts that signal to a specific video signal, suggests that reading the word “display” out of the term is inconsistent with the surrounding limitations of the asserted claims.
- Claim Construction: The district court erred in narrowing its construction of “display format” to exclude signals in formats that required further deconstruction or reassembly at the external monitor in order to be displayed by the monitor, as nothing in the specification so restricts the term, and the extrinsic evidence in the record does not resolve the question of whether a signal is in a “display format” if it must undergo further decoding or reassembly at the external monitor.
- Claim Construction: Because the term “display format” was not presented for construction during Markman proceedings, the record was not sufficiently developed, and the Federal Circuit remanded with instructions to further develop the record and to determine the meaning of the “display format” to one of skill in the art by further examining the prosecution history, evaluating direct and cross-examination testimony from experts, or consulting other relevant sources set forth inPhillips.
- Infringement: The Federal Circuit vacated the grant of summary judgment of non-infringement because the district court relied on the vacated construction of “display format” for its non-infringement determination.
- Claim Construction / Prior Art Invalidity: The plaintiff argued that the invalidating prior art does not anticipate because it does not disclose a “converted video signal.” Finding that the district court failed to explain how the claims or specification provided a clear understanding of “converted” to those of skill in the art, the Federal Circuit determined that “converted video signal” and “display format” must be evaluated together and vacated and remanded the district court’s construction of “converted video signal,” and the corresponding grant of summary judgment of invalidity.
Note: Special thanks to Na Kyung Lee, a 2015 Kenyon summer law clerk.