Chinta & Fratangelo LLP

No. 2009-1386 (Fed. Cir. 5/26/2010).  Funai owns the ‘974 patent that improves “channel latency,” a delay in digital TV decoders while data is received. Funai brought an action at the ITC alleging that defendants imported infringing TV’s.  The ITC concluded that certain claims of the ‘974 patent were valid and enforceable, and infringed by defendants.

On appeal to the Federal Circuit, the panel (Mayer, Clevenger, and Dyk, opinion by Dyk, dissent in part by Clevenger), the court considered three claim construction issues, and whether the ‘974 was anticipated, obvious, and whether the defendants products infringed.  In view of the claim construction findings, the panel held that the patents were valid and enforceable.  In the obviousness analysis, the asserted combination of references did not disclose all claimed elements.

Regarding infringement, there were two sets of products.  One was the “legacy” products, which defendants conceded infringement. But there was another set of “work-around” products, for which infringement was disputed. The ITC determined that the work-around products infringed, but the Federal Circuit panel disagreed, concluding that several claim elements, as construed by the panel, were not present in the work-around products.

Clevenger’s partial dissent asserts that some of the claim construction issues were reviewed sua sponte by the panel, and that the majority erroneously treated claim 1 as a method claim, rather than an apparatus claim. Clevenger would have left intact the ITC holding that the work-around products were infringing.