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Overbreadth is in the Eye of the Beholder – The Federal Court’s Overbreadth Analysis in Rovi #2

As reported in our recent post here, the Federal Court invalidated the claims of four patents asserted by Rovi Guides, Inc. and Tivo Solutions Inc. against Bell and Telus on the basis of anticipation or obviousness. This follow-up post focuses on the Defendants’ overbreadth challenges to two patents, which failed in both instances due to their characterization of the “invention”.

For the 870 Patent, the Defendants limited the “invention made” to the priority application (the “807 Application”). More specifically, they submitted the asserted claims were overbroad because “what the inventors claimed in the 870 Patent is significantly broader than the 807 Application.”

The Defendants asserted that one of the inventors “admitted that the invention he made in July 1998 was limited to that which he described in the 807 Application.” Their expert opined that “[t]here is limited, if any, overlap between the subject matter disclosed in the 807 Application and the subject matter claimed in the Asserted Claims of the 870 Patent,” and he was not cross-examined on this point.

However, the Court agreed with Rovi that the “invention made” for the purposes of overbreadth is determined as of the filing date, not the priority date. The Court found “[t]he Defendants have failed to rebut the presumption that the invention made is determined by the patent itself,” and “reject[ed] the argument that the 870 Claims are overbroad.”

For the 482 Patent, the Defendants based the “invention disclosed” on a claim construction that the Court did not accept. In particular, the Defendants argued the asserted claims would be overbroad if they were found to cover “manual only retrieval”, because the 482 Patent did not disclose “manual only retrieval”. The Court agreed, but it found the point moot.

The essential elements of the 482 Asserted Claims included “automatically retrieving the second set of on-demand media data”. When construing these claims, the Court found “[i]f the second set of on-demand media data is downloaded only in response to a user indication, then this is ‘manual only retrieval,’ not ‘automatic retrieval’ and is not covered by the 482 Asserted Claims.”

Nevertheless, the Court conducted an overbreadth analysis and confirmed the 482 Asserted Claims “require[d] ‘automatically retrieving’ at least some of the on-demand media data without a user indication to access it because ‘manual only retrieving’ the on-demand media data causes the very undesirable consequences that the 482 Patent seeks to avoid.” The Court agreed with the Defendants’ expert that “there is no disclosure in the 482 Patent about manually retrieving on-demand media data,” and “to the extent such a claim is made in the 482 Patent [which the Court found it was not], the claim is broader than any invention disclosed.”

A copy of the decision can be found here.