Appeals Court Returns Gemstar Patent Dispute to ITC
A federal appeals court returned to the ITC Gemstar- TV Guide International’s high-profile legal battle with Scientific-Atlanta (S-A). The trade commission’s decision that S-A’s set-top boxes (STB) didn’t infringe parts of electronic program guide (EPG) patents was “based on erroneous [claims] constructions,” the U.S. Appeals Court, Federal Circuit, ruled Thurs.
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ITC’s 2002 decision should be vacated and Gemstar’s claims of infringement and damage to the domestic market reconsidered, the court ruled. Much of the appeals court’s lengthy decision centered on Gemstar’s so-called ‘121 patent, which describes a TV controlled by an EPG that receives program information for “manipulation and display” in a grid guide.
While the appeals court reversed the ITC’s findings on at least 4 sections of the ‘121 patent, it affirmed the trade commission’s ruling that S-A didn’t infringe claims in a separate patent. The ITC found that S-A didn’t violate Gemstar’s ‘268 patent that describes an EPG based on a CPU, video display generator and video switcher. S- A’s products don’t contain video switchers or their equivalents and thus don’t infringe the patent, the appeals court ruled.
But the appeals court also found that the ITC erred in ruling that the description of “visual identification” contained in the patent applied only to the display of program information in “regular intervals of fixed time duration” such as every 30 min. Instead, the term also applies to data displayed at “irregular intervals” within a guide in “varying time durations” such as 30 min. or an hour, the appeals court stated. “There is no express requirement in the claim language that the visual identification must move both within the grid and further relative to the TV screen,” the court wrote.
The ITC also erred in determining that the data processor described in Gemstar’s ‘121 patent strictly was a CPU, the appeals court said. A section of the ‘121 patent described a means for storing program information in a data processor. But the appeals court ruled that patent doesn’t specifically apply to a CPU, but rather any device “capable of retaining data” located within a processor or system.
The appeals court ruling comes after both EchoStar and Pioneer reached settlements with Gemstar this year based on the case pending before the appeals court. Gemstar filed a complaint with the ITC in 2001 against EchoStar, Pioneer and S-A seeking to bar imports of STBs that it claimed infringed its patents. The ITC ruled in 2002 that the companies didn’t infringe Gemstar’s patents, but Pioneer and EchoStar reached settlements calling for payments of $14 million and $190 million, respectively. EchoStar also purchased Gemstar’s Superstar/Netlink C-band business with a goal of converting subscribers to its Dish network.
The ITC’s decision in 2002 came as Gemstar, which had acquired TV Guide in 2000, was preparing to undergo a restructuring in which News Corp. gained a majority stake. The change led to the ouster of Gemstar founder and CEO Henry Yuen and CFO Elsie Leung and a restating of revenue.