Sony Electronics, Inc. v. Guardian Media Technologies, Ltd.

Citations: 658 F. Supp. 2d 1208; 93 U.S.P.Q. 2d (BNA) 1372; 2009 U.S. Dist. LEXIS 79716; 2009 WL 2781803Docket: Case Nos. 05cv1777-IEG-AJB, 05cv1796-IEG-AJB, 05cv1613-IEG-AJB. Related Case No. 08cv1859-IEG-AJB

Court: District Court, S.D. California; August 31, 2009; Federal District Court

SummaryOriginalCytator Case TreatmentBackward CitatorAnalysis

EnglishEspañolSimplified EnglishEspañol Fácil

The case involves multiple consolidated actions concerning a patent dispute between various consumer electronics manufacturers (referred to as the "Non-Guardian Parties") and Guardian Media Technologies, Ltd. The primary focus is on U.S. Patent No. 4,930,158, known as the '158 Patent, which pertains to a "Selective Video Playing System" intended to manage objectionable content in video programming. This patent, issued in 1988, includes two main aspects: one prevents the play of entire videos classified as objectionable, while the other allows video playback but replaces objectionable segments with alternative content. The claims in contention relate solely to the second aspect, which involves a system where video programs are flagged for certain content types. The Non-Guardian Parties sought summary judgment to assert non-infringement of the '158 Patent. After reviewing the submissions from both parties, the Court granted the motion for summary judgment, concluding that the Non-Guardian Parties did not infringe upon the '158 Patent.

The video program utilizes a code-detection mechanism where, upon identifying a specific code, the video player pauses playback and sends a signal to an "auxiliary device" (definition disputed). This auxiliary device then plays substitute content to replace any violent or explicit scenes, allowing the video player to skip the objectionable portions. Claims 8 and 19 of the '158 patent outline this process, detailing a method and a player that includes functionalities for receiving video signals, detecting codes, comparing them to a set of selected codes, and managing playback interruptions based on the comparison results. Both claims emphasize the necessity of sending a signal to the auxiliary device to suspend playback and resuming it upon receiving a resumption signal.

Guardian alleges that the NG Parties manufacture DVD players with infringing parental-control features. To investigate these features, tests were conducted using a Sony DVD player. Three scenarios were examined: (1) playing a DVD with parental control off, (2) with parental control on, and (3) with parental control on but bypassed using an unlock code. In the first test, with parental control disabled, the DVD began playback normally. In the second test, with parental control enabled, the screen went blank before showing a parental control menu, prompting the user to set or continue playback, which ceased when "Stop" was selected.

During the third test of a parental control function, Counsel activated the feature while using a Star Wars DVD, causing the screen to initially go blank before displaying a parental control menu. After confirming the setting and entering a password, the title sequence of the DVD was accessible. Counsel also tested other products from the NG Parties, which performed similarly in all tests. 

The procedural background reveals that after obtaining a patent in 1988, inventor Peter Vogel sought licensing agreements with the NG Parties unsuccessfully. In November 2003, he assigned the patents to Guardian, which also attempted to negotiate licenses. Following failed negotiations in September 2005, the NG Parties filed a lawsuit to declare Guardian's patents invalid, unenforceable, and not infringed. The court consolidated these actions, and the NG Parties subsequently requested re-examination of the patents from the PTO, which found substantial questions regarding patentability. On November 4, 2008, the PTO affirmed the patentability of certain claims of the '158 patent while canceling others.

On June 12, 2009, the NG Parties moved for summary judgment on non-infringement of the '158 patent. The court held a status conference on August 7 and heard oral arguments on August 19, 2009. The legal standards for summary judgment indicate it is appropriate when there are no genuine issues of material fact, allowing the moving party to secure judgment as a matter of law, with specific responsibilities outlined for both moving and non-moving parties.

To oppose a motion for summary judgment, the non-movant must demonstrate genuine factual disputes that can only be resolved at trial, as established in Reese v. Jefferson School Dist. No. 14J. The nonmoving party cannot rely solely on pleadings and must present specific facts to create a genuine issue of material fact. Inferences should favor the opposing party, but mere conclusory allegations are insufficient to counter summary judgment. Courts are not obligated to search records for genuine issues but may limit their review to submitted documents and referenced parts of the record.

In patent infringement cases, a two-step analysis is required. First, the court determines the legal scope of the patent claims, followed by a factual comparison of the claims to the accused device or process. The intrinsic evidence, particularly the claim language, is prioritized in claim construction, while extrinsic evidence is only considered if ambiguity remains after examining intrinsic evidence. The second step assesses whether the accused products infringe literally or under the doctrine of equivalents, with literal infringement requiring all claim elements to be present in the accused device.

The NG Parties argue that their accused DVD players do not infringe the '158 patent for three reasons: they lack an "auxiliary device," they do not "compare the detected code to a set of selected codes," and a "video program" is not considered "suspended" or "resumed" during playback. The court must first construe the disputed terms before making a determination on infringement.

The document addresses the claim construction for the term "auxiliary device" in a patent context. The Non-Guardian (NG) Parties propose that "auxiliary device" means a playback device, like another VCR, that is physically separate from the video player and serves as a source of substitute material. They argue that the language "sending a signal to an auxiliary device" implies that the device must be external. Conversely, Guardian contends that "auxiliary device" refers to a substitute source of video material that may include advertisements and that their definition aligns with the Patent and Trademark Office's (PTO) reexamination findings, which rejected the NG Parties' definition.

The Court's analysis focuses on whether the auxiliary device must be external to the video player. It notes that both claims 8 and 19 use the phrase "sending a signal to an auxiliary device," indicating that the components must be distinct; however, this does not necessitate that they be housed separately. The claims do not specify physical separation, allowing for both components to potentially exist within the same enclosure. The specification does not support a "physically separate" requirement either, as it describes the auxiliary device's function without insisting on external placement. Consequently, the Court concludes that the NG Parties' interpretation misinterprets the requirement by conflating an example with a definitive condition.

The specification identifies two examples of the "auxiliary device," both of which are defined as external devices, including a VCR that plays recordings such as advertisements or messages. However, the presence of these examples does not mandate that the auxiliary device must be external. The court clarifies that it will not impose limitations from the specification onto the claims, which undermines the NG Parties' argument. 

The specification focuses on the auxiliary device as providing "substitute video material," emphasizing its function in replacing unwanted programming with material from another source. Guardian’s interpretation incorrectly suggests that the auxiliary device serves as a substitute source rather than a source of substitute material, which would contradict the patent's aim. Consequently, the Court determines that the auxiliary device is defined as "the source of substitute video material."

Regarding the term "video material," the specification indicates that it may encompass messages, information, advertisements, or other video programs. Nonetheless, the Court decides not to limit "video material" strictly to these categories, allowing for broader interpretation. Thus, the term is constructed as "video material, where such material may include messages, information, advertisements, or other video programs."

In terms of literal infringement, Guardian claims the accused devices contain an auxiliary device, asserting that a parental control warning and override message displayed during DVD playback interruptions is generated from flash or one-time programmable (OTP) memory in the devices. Guardian's expert supports this assertion, while the NG Parties argue their DVD players lack an external auxiliary device.

The NG Parties assert that flash or OTP memories do not serve as replacement material and argue that these internal components, being explicitly mentioned in the patent, cannot be classified as auxiliary devices. The primary legal issue is whether the parental-control-menu qualifies as "substitute video material," which includes messages, information, advertisements, or other video programs. It is established that the parental-control-menu originates from the flash or OTP memory. A jury could find that the parental-control-menu constitutes video material; however, the core dispute is whether it is "substitute video material."

Demonstrative tests conducted using the Star Wars II DVD revealed that when parental-control settings were off, the player displayed the title sequence, while enabling the settings only delayed the title sequence without replacing any content. Once the parental-control pin was entered, the title sequence resumed without interruption. Thus, the parental-control-menu does not qualify as substitute video material, leading to the conclusion that the flash or OTP memories are not auxiliary devices. Therefore, the accused DVD players do not literally infringe the '158 patent, resulting in a finding of no literal infringement.

Regarding the doctrine of equivalents, the NG Parties argue that internal flash or OTP memory cannot be considered equivalent to an external device, and that the '158 patent does not classify this memory as an auxiliary device. Guardian contends that the accused devices fulfill the "auxiliary device" limitation under the doctrine of equivalents by applying the "function, way, result" test. However, the Court concludes that the DVD players do not infringe under this doctrine either, as the patent necessitates the existence of an auxiliary device that serves as a source of substitute video material, which the parental-control-menu does not provide.

The Court determined that DVD players do not infringe the '158 patent under the doctrine of equivalents because flash or OTP memory does not serve as substitute video material. Consequently, summary judgment for non-infringement was granted. Regarding the claim construction, the Court analyzed the term "to a set of selected codes" as it appears in claims 8, 9, 19, and 20. The Non-Guardian (NG) Parties argued that "set of selected codes" should be defined as "more than one code," based on the plural nature of "set of codes." Guardian contended that it means "one or more user selected codes," citing dictionary definitions and case law that interpret "set" as inclusive of singular instances. Guardian also noted that NG Parties previously represented to the PTO that "set" encompassed "one or more" during reexamination, which the PTO accepted. The Court's analysis favored the NG Parties' interpretation, concluding that the plural "codes" indicated the intent for multiple selected codes. Thus, the Court found that the claim language supported the NG Parties' proposed construction.

The claim language surrounding the disputed term indicates a clear distinction between "detected code" (singular) and "set of selected codes" (plural), supporting the NG Parties' proposed definition. The patent specification consistently exemplifies "set of codes" as multiple codes, as seen in an embodiment describing three classifications: Violent, Sexually explicit, and Adult only. This reinforces the claim's plain meaning rather than imposing additional limitations. The "duty of candor and good faith" does not prevent the NG Parties from asserting their definition, as this duty pertains solely to the disclosure of information during reexamination, not to the arguments made. Guardian's argument regarding withheld materials is unsubstantiated. Although Guardian presented an expert declaration asserting that "set of selected codes" could mean "one or more," the opinion lacked sufficient explanation and was deemed conclusory. Consequently, the Court construes "comparing the detected code to a set of selected codes" as "comparing a detected program classification code to more than one code, each of which has been assigned a value by the user." The NG Parties contend their products do not perform this comparison, as the MPAA system only allows for a single code comparison, contrasting it with the U.S. TV Parental Guidelines, which utilize multiple independent content labels. Guardian, however, maintains that the DVD players compare the detected MPAA rating code to preselected codes.

Guardian contends that, regardless of the NG Parties' definition, a user can designate both a rating code and a country code, with the latter solely utilized in the parental control system. The user-selected code is converted into a 16-bit bit-field format. The accused DVD players are factory-set to recognize specific rating codes aligned with the MPAA rating system. Users can establish parental controls via the "Custom Parental Control" menu, allowing selection of a restriction level from 1 (most restrictive) to 8 (least restrictive). 

Upon inserting a DVD, the player detects its rating code (e.g., PG for Star Wars II) and compares it against the user-defined code. In a demonstrative test, with the user selecting code 1, the player blocked playback after comparing the PG rating to the user-selected G rating. The player makes a singular comparison rather than assessing multiple codes. 

The country code, which can also be set through the "Custom Parental Control" menu, influences the interpretation of the parental control levels based on the user's selected country. This translation occurs before the DVD plays, meaning that the player compares the DVD’s rating to the translated code only during playback. Therefore, the claim's requirements are not met, as the player does not compare the detected code against a set of selected codes. Guardian's assertion regarding the 16-bit bit-field is irrelevant, as the patent emphasizes user actions in code selection, not how the codes are processed by the device.

The Court finds no literal infringement of the patent due to the absence of an "auxiliary device" and because the accused DVD players do not "compare a detected code to a set of codes." Guardian's argument that selecting "PG" as a rating code constitutes infringement under the doctrine of equivalents is rejected. The Court cites Moore U.S.A. Inc. v. Standard Register Co. to emphasize that a single code cannot be equated to a broader category, as it would undermine the claim's requirements. The Court concludes by granting summary judgment of non-infringement regarding the '158 patent, while declining to address the issue of whether the accused devices "cause playing of the video program to be suspended," due to unresolved material facts concerning parental coding differences between specific DVDs. The Court will not consider collateral estoppel related to the term "video program," as it was introduced late in the proceedings.