Addressing the issues of claim construction, the U.S. Court of Appeals for the Federal Circuit upheld a summary judgment of non-infringement against Tivo Inc. based on limitations to a claim element imposed by the claim considered as a whole. Pause Technology LLC v. TiVo Inc., Case No. 04-1263 (Fed. Cir. Aug. 16, 2005) (Linn, J.).
Pause sued TiVo for infringement of its U.S. Reissue Patent No. 36,801 directed to digital video records. Following the district court’s construction of the disputed claim term "circular storage buffer," TiVo filed a motion for summary judgment of non-infringement. The district court granted the motion, finding no infringement based on its interpretation of the disputed claim language and entered judgment in favor of TiVo. Pause Technology appealed.
As noted in the March 2005 issue of IP Update (Vo. 8, No. 3), that appeal was dismissed by the Federal Circuit for lack of jurisdiction since TiVo’s counterclaim for declaratory judgment of invalidity was still pending. Now (after a district court finding of no invalidity), the Federal Circuit addressed the interpretation of the claim terms "circular storage buffer" and "time interval of predetermined duration."
Pause argued the district court improperly limited the "circular storage buffer" element by the "write over" language that appeared later in the claim, noting that "[r]egardless of what claim language appears in a later portion of the claim, that language should not be read into the interpretation of a separate claim element." The Federal Circuit rejected this argument, quoting Hockerson-Halberstadt, Inc. v. Converse Inc., the principle that the appropriate claim interpretation is based on the "entire claim in context, not a single element in isolation" and its en banc Phillips decision. ("[T]he context in which a claim term is used in the asserted claim can be highly instructive.") The Federal Circuit interpreted the "write over" (and other) language appearing later in the claim as limiting the "circular storage buffer" element by how the circular storage buffer was addressed. In essence, the Federal Circuit found Pause’s interpretation conflicted with the plain meaning of the term, which required the circular storage buffer to operate by writing over old data with new data.
Pause also argued the district court’s claim construction improperly contained language ("physical address," "same repeating" and "last address/next address") that did not appear in the claim itself. The Federal Circuit rejected this argument, noting courts are free to use words that do not appear in a claim so long as these words "stayed true" to the claim language used in the claim itself (also noting, in this case, it was consistent with the prosecution history and written description
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