Tvngo Ltd. (Bvi) v. Lg Electronics, Inc.
20-1837
| Fed. Cir. | Jun 28, 2021Background
- TVnGO owns five related patents (including the ’220, ’945, ’339, ’969, and ’621) directed to a "TV‑Internet Integration Box" that merges broadcast TV and IP content and displays overlays/icons on a TV screen.
- The specification describes overlay behavior (Figures 7a–7c): icons that can be selected with a remote to display IP content in a small window, then resized to full screen by repeated key presses.
- During prosecution, TVnGO added claim phrases "overlay activation criterion" and "overlay activation signal," but the shared specification does not define those phrases.
- TVnGO sued LG for infringement; after Markman proceedings the District of New Jersey found the asserted claims indefinite under pre‑AIA 35 U.S.C. § 112, para. 2, and entered judgment of invalidity.
- The district court relied on intrinsic evidence showing intra‑patent inconsistencies: (1) the specification uses "activate/activating" to mean selecting an already‑displayed icon to show IP content, while claims suggest the phrases cause an overlay to be displayed in the first instance; and (2) some claims indicate the activation criterion comes from the Internet, while dependent claims recite it as user command information from the premises.
- The Federal Circuit reviewed indefiniteness de novo, found the intrinsic record inadequate to supply reasonable certainty for the disputed phrases, and affirmed invalidity on the intra‑patent grounds (no need to reach inter‑patent issues).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "overlay activation criterion" and "overlay activation signal" are definite | TVnGO: ordinary English components give meaning; terms were added and considered during prosecution, and can cover both displaying an initial overlay and displaying associated IP content | LGE: terms lack ordinary meaning and the intrinsic record is inconsistent and undefined, leaving scope uncertain | Held indefinite — terms lack reasonable certainty to a person of ordinary skill |
| Whether "overlay activation criterion" must originate from the Internet or can be user command information from premises | TVnGO: "user command information" can be supplied via the Internet; dependent‑claim language does not create contradiction | LGE: dependent claims state the criterion is user‑originated, conflicting with independent claims that say it is Internet‑supplied | Held indefinite — intra‑claim conflict creates irreconcilable uncertainty about source of the criterion |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) (a patent must inform with reasonable certainty the scope of the invention)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims read in light of specification and prosecution history; ordinary meaning to a skilled artisan)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (role of skilled‑artisan understanding and factual findings in claim construction)
- Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017) (allowance during prosecution does not preclude indefiniteness if intrinsic record is unclear)
- Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224 (Fed. Cir. 2016) (indefiniteness reviewed de novo; challenger bears clear and convincing burden)