Activevideo Networks, Inc. v. Verizon Communications, Inc.
694 F.3d 1312
| Fed. Cir. | 2012Background
- ActiveVideo sued Verizon for patent infringement of four ActiveVideo patents; Verizon counterclaimed against ActiveVideo's patents.
- Jury found mutual infringement and awarded monetary damages to both sides; district court entered a permanent injunction against Verizon with a six-month sunset royalty.
- District court granted/denied various JMOL and summary judgment motions on infringement, validity, and damages; invalidity defenses largely resolved in ActiveVideo's favor.
- Key asserted patents concern interactive television systems, including headend, home interface controllers, and methods for delivering VoD and interactive services.
- Issues on appeal include infringement findings, validity defenses, damages methodology, and the propriety of the permanent injunction and sunset royalty.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether FiOS-TV infringes the asserted claims under information service | ActiveVideo contends FiOS-TV supplies an information service meeting the claimed interface. | Verizon argues FiOS-TV lacks a headend-generated information service interface and uses STBs, not headend-generated interface. | Yes; substantial evidence supports infringement of the information service limitation. |
| Whether FiOS-TV infringes the television communication and signal-type limitations of the ’578 patent | ActiveVideo asserts MPEG signals qualify as television information signals and satisfy television communication. | Verizon argues CCP/RAID2 formats are non-MPEG and not television signals. | Yes; CCP/RAID2 MPEG content constitutes television communication and satisfies the limitation. |
| Whether FiOS-TV infringes the independently assignable processors limitation of the ’582 patent | ActiveVideo argues FiOS-TV processors are capable of one-to-one assignment to STBs. | Verizon contends processors are shared and not assigned one-to-one. | No; district court erred in denying JMOL; FiOS-TV processors are not assigned one-to-one. |
| Whether ActiveVideo's ’214 and ’542 patent claims were properly deemed non-anticipated | ActiveVideo asserts certain references anticipate the claims. | Verizon argues prior art discloses features in those claims. | Yes; district court properly granted JMOL of no invalidity for those references. |
| Whether the permanent injunction and sunset royalty were appropriate | ActiveVideo seeks injunction to enforce patent rights and justify royalties. | Verizon contends no irreparable harm and injunction not warranted; sunset royalty should be different. | Permanent injunction is vacated; sunset royalty affirmed; remand for ongoing royalty or new terms. |
Key Cases Cited
- i4i Ltd. P'Ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (post-verdict JMOL reviewed de novo; clear and convincing standard for validity)
- eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (injunction factors and public policy in patent cases)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (motivation to combine prior art; common-sense approach to obviousness)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (framework for analyzing obviousness)
- Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) (reasonable factual questions in obviousness analysis; hindsight concerns)
- American Medical Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523 (Fed. Cir. 1993) (notice and marking considerations in multifaceted patents)
- Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir. 2009) (marking related to mixed apparatus/method claim scopes)
- Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062 (Fed. Cir. 1987) (notice/marking considerations in method claims)