Case: 20-1837 Document: 36 Page: 1 Filed: 06/28/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TVNGO LTD. (BVI),
Plaintiff-Appellant
v.
LG ELECTRONICS INC., LG ELECTRONICS USA,
INC.,
Defendants-Appellees
______________________
2020-1837
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 1:18-cv-10238-RMB-KMW,
Judge Renee Marie Bumb.
______________________
Decided: June 28, 2021
______________________
CHARLES CANTINE, Dunlap Bennett & Ludwig PLLC,
New York, NY, argued for plaintiff-appellant.
WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP,
Houston, TX, argued for defendants-appellees. Also repre-
sented by NATALIE A. BENNETT, Washington, DC; ERIC
KRAEUTLER, Philadelphia, PA; JEREMY DEANE PETERSON,
PV Law LLP, Washington, DC.
______________________
Case: 20-1837 Document: 36 Page: 2 Filed: 06/28/2021
2 TVNGO LTD. (BVI) v. LG ELECTRONICS, INC.
Before PROST *, SCHALL, and REYNA, Circuit Judges.
PROST, Circuit Judge.
TVnGO Ltd. (BVI) (“TVnGO”) appeals a final patent-
invalidity judgment by the U.S. District Court for the Dis-
trict of New Jersey. We agree that the patent claims
TVnGO asserts against LG Electronics Inc. and LG Elec-
tronics U.S.A., Inc. (collectively, “LGE”) are indefinite un-
der
35 U.S.C. § 112, paragraph 2. 1 We therefore affirm.
BACKGROUND
I
TVnGO owns U.S. Patent Nos. 8,132,220 (“the ’220 pa-
tent”), 9,124,945 (“the ’945 patent”), 9,392,339 (“the
’339 patent”), 9,407,969 (“the ’969 patent”), and 9,794,621
(“the ’621 patent”), which share a specification and draw-
ings. 2 The patents relate to providing “a TV-Internet Inte-
gration Box having the ability to merge broadcast TV
signals with IP packet data at a customer site.” ’220 patent
col. 2 ll. 20–22. Figure 1, for example, depicts a “TV-
Internet Integration Box” with inputs from a cable box and
the internet, and an output to a television:
* Circuit Judge Sharon Prost vacated the position of
Chief Judge on May 21, 2021.
1 The America Invents Act (AIA), Pub. L. No. 112-29,
125 Stat. 284, effective September 16, 2012, designated
§ 112, paragraph 2 as § 112(b). These patents stem from
an application filed in 2005, so we refer to pre-AIA § 112.
2 For simplicity, all citations to the shared specifica-
tion are to the ’220 patent.
Case: 20-1837 Document: 36 Page: 3 Filed: 06/28/2021
TVNGO LTD. (BVI) v. LG ELECTRONICS, INC. 3
Id. at Fig. 1.
This system can be influenced in various ways. An ad-
vertiser may specify conditions for displaying advertise-
ments, id. at col. 3 ll. 59–66, an IP-content provider may
store “calendar and program data indicating dates, times
and channels in respect of which the IP content is to be
streamed to the customer premises,” id. at col. 4 ll. 9–13,
and a subscriber may select “what kind of IP content” he or
she “wishes to receive and in respect of which program de-
tails, such as icons and/or textual data, are to be dis-
played,” id. at col. 4 ll. 21–24. The specification further
describes a remote control, id. at col. 7 ll. 7–50, that can be
programmed according to the embodiment of Figures 7a–c:
Case: 20-1837 Document: 36 Page: 4 Filed: 06/28/2021
4 TVNGO LTD. (BVI) v. LG ELECTRONICS, INC.
Id. at Fig. 7a–c.
Figure 7a “shows the default situation where a TV
screen 40 displays a conventional TV broadcast in a win-
dow 41 that is sized to occupy the whole area of the TV
screen 40,” as well as “IP icons 42, 43 and 44 each of which
points to a different IP content that is streamed from a re-
spective web site of known address.” Id. at col. 7 ll. 29–35.
In TVnGO’s view, an icon “could take the form of a com-
monly recognized logo, such as the Netflix logo.” TVnGO
Ltd. (BVI) v. LG Elecs., Inc.,
2020 WL 1899781, at *1 n.3
(D.N.J. Apr. 17, 2020). Figure 7b shows that, upon “press-
ing the key on the remote control unit 30 that corresponds
to the icon 42, the IP content corresponding thereto is dis-
played within a small window 45.” ’220 patent col. 7
ll. 35–37. At this point, “[t]he icons 42, 43 and 44 remain
visible so that, if desired, the selected program can be
changed by pressing a different key on the remote control
unit 30.”
Id. at col. 7 ll. 39–42. “On pressing a key a second
time in succession, the IP content is re-sized so that its win-
dow 45 occupies substantially the whole area of the screen,”
as shown in Figure 7c.
Id. at col. 7 ll. 42–44. “On pressing
Case: 20-1837 Document: 36 Page: 5 Filed: 06/28/2021
TVNGO LTD. (BVI) v. LG ELECTRONICS, INC. 5
the key a third time in succession, the situation reverts to
the default.”
Id. at col. 7 ll. 44–46. “Thus, each key oper-
ates as a three-way toggle that switches between three dif-
ferent display modes.”
Id. at col. 7 ll. 48–50.
II
TVnGO alleges that LGE’s “Smart TVs” infringe the
asserted patents, which it describes as generally directed
to “methods and devices that make televisions ‘smart.’”
J.A. 103–04 (Complaint). After a Markman hearing, pre-
and post-hearing briefing, and supplemental briefing, the
district court issued a claim-construction opinion conclud-
ing that the two claim phrases at issue here render the as-
serted claims indefinite under § 112, paragraph 2.
TVnGO,
2020 WL 1899781, at *7. In the district court’s
view, these phrases present “irreconcilable inconsistencies”
within and across the asserted patents (“intra-” and “inter-
patent” inconsistencies, respectively).
Id. at *3. “Try as it
might,” the district court could not “construe the claims
with any confidence.”
Id. at *4. Accordingly, the court held
the asserted claims invalid. J.A. 18. 3 TVnGO appealed.
We have jurisdiction under
28 U.S.C. § 1295(a)(1).
DISCUSSION
“[A] patent must be precise enough to afford clear no-
tice of what is claimed, thereby apprising the public of what
is still open to them.” Nautilus, Inc. v. Biosig Instruments,
Inc.,
572 U.S. 898, 909 (2014) (cleaned up). Accordingly,
“[t]he Patent Act requires that a patent specification ‘con-
clude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant
3 The claims are: ’220 patent claims 1, 9–10, 13, 17,
and 20; ’945 patent claims 1, 4, 8, 9, 12, 15, 19, and 21;
’696 patent claims 1, 9–10, 13, 17, and 20; ’339 patent
claims 1, 4–7, 12–15, and 18; and ’621 patent claims 1, 4,
9, and 11.
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6 TVNGO LTD. (BVI) v. LG ELECTRONICS, INC.
regards as [the] invention.’”
Id. at 901 (second alteration
in original) (quoting
35 U.S.C. § 112, para. 2). Patent
claims are indefinite if they “fail to inform, with reasonable
certainty, those skilled in the art about the scope of the in-
vention.”
Id.
“In the face of an allegation of indefiniteness, general
principles of claim construction apply.” Biosig Instru-
ments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1377 (Fed. Cir.
2015) (quoting Enzo Biochem, Inc. v. Applera Corp.,
599 F.3d 1325, 1332 (Fed. Cir. 2010)). The words of a claim
“are generally given their ordinary and customary mean-
ing,” which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of
the invention.” Phillips v. AWH Corp.,
415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc). “[C]laims are to be read
in light of the patent’s specification and prosecution his-
tory.” Nautilus, 572 U.S. at 908.
Whether a claim is indefinite under
35 U.S.C. § 112 is
ultimately a legal conclusion that we review de novo. Cox
Commc’ns, Inc. v. Sprint Commc’n Co. LP,
838 F.3d 1224,
1228 (Fed. Cir. 2016). “Any fact critical to a holding on in-
definiteness . . . must be proven by the challenger by clear
and convincing evidence.”
Id. (alteration in original) (quot-
ing Intel Corp. v. VIA Techs., Inc.,
319 F.3d 1357, 1366
(Fed. Cir. 2003)). “If indefiniteness can be determined
based solely on intrinsic evidence, our review is de novo.”
Id. Here, the district court relied on “a review of the claim
terms, the specifications, and the prosecution histories”
and declined to rely on TVnGO’s expert testimony because
it had “no support” in the patents. TVnGO,
2020 WL
1899781, at *6–7. Therefore, our review is de novo.
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TVNGO LTD. (BVI) v. LG ELECTRONICS, INC. 7
Two phrases are at issue here: “overlay activation cri-
terion” and “overlay activation signal.” 4 In the claims,
these phrases relate generally to producing overlays (e.g.,
in Figures 7a–c above). TVnGO,
2020 WL 1899781, at *1.
But their precise meanings are not reasonably certain in
view of the intra-patent inconsistencies discussed by the
district court. Before addressing those inconsistencies,
however, we first highlight the lack of intrinsic evidence in
this case as to the meanings of these phrases.
For starters, the parties agree that neither “overlay ac-
tivation criterion” nor “overlay activation signal” has an or-
dinary meaning in the art. Appellees’ Br. 15; Reply Br. 13;
see TVnGO,
2020 WL 1899781, at *3 & n.8. Instead,
TVnGO contends that a skilled artisan would understand
the disputed phrases by stitching together their constitu-
ent words. 5 Reply Br. 2 (“[T]he terms – “overlay,” “activa-
tion,” “criterion,” and “signal” – are each easily understood,
plain English words.”); Oral Arg. at 2:24–46 (arguing that
“overlay has a meaning, criterion has a meaning, signal
has a meaning, activation has a meaning”). 6 Here, we are
unpersuaded that the ordinary meanings of the constituent
words alone are enough in the context of this case to estab-
lish what these phrases mean.
The patent record is also unhelpful. Neither phrase is
mentioned, let alone defined, in the shared specification, as
4 The district court’s analysis as to “overlay activa-
tion signal” applied equally to the phrase “special overlay
activation signal” appearing in the ’945 and ’621 patents.
TVnGO,
2020 WL 1899781, at *2 n.4.
5 At the district court, TVnGO contended that no
construction was necessary and in the alternative proposed
constructions which, LGE notes, expanded in response to
the inconsistencies LGE raised. See Appellees’ Br. 23–28.
6 No. 20-1837, http://www.cafc.uscourts.gov/oral-ar-
gument-recordings.
Case: 20-1837 Document: 36 Page: 8 Filed: 06/28/2021
8 TVNGO LTD. (BVI) v. LG ELECTRONICS, INC.
both were added to the claims during prosecution. And the
“limited information” provided by the prosecution history
isn’t enough to provide reasonable certainty here either.
TVnGO,
2020 WL 1899781, at *6. Like the district court,
we are unconvinced that the disputed phrases “are far from
indefinite” merely because they were “added to the claims,
discussed, understood and considered by the Examiner,
and ultimately allowed.” Appellant’s Br. 10; see Sonix
Tech. Co. v. Publ’ns Int’l, Ltd.,
844 F.3d 1370, 1380
(Fed. Cir. 2017). This dearth of evidence leaves the skilled
artisan unable to resolve the inconsistencies discussed be-
low as to the ’339, ’945, and ’621 patents (discussed in Sec-
tion I), and the ’220 and ’969 patents (discussed in
Section II).
I
We turn now to the intra-patent inconsistency the dis-
trict court relied on in holding indefinite the claims of the
’339, ’934, and ’621 patents: an inconsistency between the
specification and the claims as to the result achieved by an
“overlay activation criterion” or “overlay activation signal.”
Specifically, beyond its failure to mention the disputed
phrases, the specification’s use of the words “activates” and
“activating” injects further uncertainty. While the specifi-
cation uses these words to describe activating an already
overlaid icon to display the IP content it represents, the
claims appear to use the disputed phrases with respect to
displaying an overlay in the first place—creating confusion
as to which reading is correct. On the one hand, the speci-
fication states that “pressing on a specific key activates the
displayed icon,” ’220 patent col. 7 ll. 19–22 (emphasis
added), and references “the appropriate keys or button for
activating each icon,”
id. at col. 7 ll. 24–25 (emphasis
added). The claims, however, point in a different direction.
With respect to the “criterion” term, ’339 patent claims 1
and 15 recite “respond[ing] to an overlay activation crite-
rion to cause the display screen to display the overlays.”
With respect to the “signal” term, ’945 patent claims 1 and
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TVNGO LTD. (BVI) v. LG ELECTRONICS, INC. 9
12 state that the result of processing the “overlay activa-
tion signal” is “generating display drive signals causing the
TV screen to display the overlays,” and ’621 patent claim 1
recites “generating display drive signals that cause the TV
screen to display the one or more overlays.”
TVnGO responds that the disputed terms cover both
displaying an initial overlay and displaying IP material.
E.g., Reply Br. 26. But we are not persuaded that this sug-
gestion clears up the uncertainty, as it could also be the
case that one or the other of these options is right. Even if
it may be possible to “ascribe some meaning” to the dis-
puted limitation, as TVnGO’s reading attempts, more is re-
quired: one of ordinary skill must have reasonable
certainty. Nautilus, 572 U.S. at 911. Here, a person of or-
dinary skill would encounter two claim phrases without an
ordinary meaning in the art. See Teva Pharms. USA, Inc.
v. Sandoz, Inc.,
789 F.3d 1335, 1345 (Fed. Cir. 2015) (indef-
inite term had no “plain meaning to one of skill in the art”).
Upon consulting the specification, he or she would not find
those phrases. See
id. at 1344 (indefinite term not defined
in specification); Infinity Comput. Prods., Inc. v. Oki Data
Ams., Inc.,
987 F.3d 1053, 1056 (Fed. Cir. 2021) (indefinite
term absent from specification). And when attempting to
glean their meaning from the patent’s use of “activates”
and “activating,” he or she would find that “the patents
teach two different results”—i.e., display of IP content as-
sociated with an already displayed overlay versus display
of an overlay in the first place—without reasonable cer-
tainty as to which reading is correct. TVnGO,
2020 WL
1899781, at *3. The asserted ’339, ’945, and ’621 patent
claims are therefore indefinite.
II
We turn next to the intra-patent inconsistency the dis-
trict court relied on in holding indefinite the claims of the
’220 and ’969 patents. This is an inconsistency between the
independent and dependent claims regarding whether an
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10 TVNGO LTD. (BVI) v. LG ELECTRONICS, INC.
“overlay activation criterion” comes from the internet or
from a user’s premises. On the one hand, the independent
claims indicate that an “overlay activation criterion” is a
type of “overlay-enabling digital data” that is provided
“over the Internet” and “transmitted to the user’s prem-
ises.” ’220 patent claims 1, 13; ’969 patent claims 1, 13.
But the dependent claims, on the other hand, state that
“said overlay activation criterion includes . . . a user com-
mand information,” indicating that an “overlay activation
criterion” can come from a user’s premises via the remote
control. ’220 patent claims 9, 20; ’969 patent claims 9, 20.
As the district court explained, “the intrinsic evidence pre-
sents . . . irreconcilably inconsistent information: the ’220
and ’969 [p]atents indicate that ‘overlay activation crite-
rion’ comes from the Internet and simultaneously not from
the Internet—i.e., from the user’s premises.” TVnGO,
2020 WL 1899781, at *3.
For its part, TVnGO asserts that an overlay activation
criterion “comes from the Internet,” Reply Br. 3, arguing
that, although “‘user commands’ . . . come from a user, not
the Internet,” “user command information” comes from the
internet. Appellant’s Br. 20; see also Reply Br. 19 (“There
is no dispute that a ‘user command’ comes from a user.”).
This distinction lacks intrinsic support. Rather, the speci-
fication uses the word “command” only once, and in rela-
tion to the infrared (IR) remote control. ’220 patent col. 7
ll. 2–3 (“An IR receiver 28 is adapted to receive IR com-
mands from a remote control unit.”). And when other de-
pendent claims use “command,” they similarly recite
“receiving a command from a user at said user premises.”
Id. at claims 3, 15; ’969 patent claims 3, 15. Accordingly,
one of ordinary skill would lack reasonable certainty as to
the source of an “overlay activation criterion”—whether the
internet or a user’s premises.
TVnGO argues in the alternative that this alleged in-
consistency is better characterized as an allegation that the
dependent claims are invalid for sweeping more broadly
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TVNGO LTD. (BVI) v. LG ELECTRONICS, INC. 11
than the independent claims. See
35 U.S.C. § 112, para. 4.
TVnGO misses the mark. The issue is not breadth of the
dependent claims but their use of the disputed phrase in a
way that contradicts the independent claims. The depend-
ent claims state that “said overlay activation criterion in-
cludes . . . a user command information,” which conflicts
with the independent claim’s use of this same phrase.
’220 patent claims 9, 20 (emphasis added); ’969 patent
claims 9, 20 (same). That prevents reasonable certainty.
Further, merely dismissing the dependent claims as in-
valid, as TVnGO proposes, ignores that they are one of the
few sources of intrinsic evidence on the meaning of “overlay
activation criterion” in this record. When faced with this
unknown and undefined phrase, a skilled artisan would
look for clarification not only in the specification but also
in “[o]ther claims of the patent in question,” which “can also
be valuable sources of enlightenment as to the meaning of
a claim term.” Phillips, 415 F.3d at 1314. Here, however,
he or she would discover an inconsistency, throwing the
meaning of “overlay activation criterion” into doubt. These
dependent claims are intrinsic evidence. Arguing that they
are invalid does not change that. The asserted ’220 and
’969 patent claims are therefore indefinite.
CONCLUSION
The district court also relied on inter-patent inconsist-
encies. TVnGO,
2020 WL 1899781, at *4–6. We find it un-
necessary to reach those, as the intra-patent grounds
discussed above are sufficient to establish indefiniteness.
We have considered TVnGO’s remaining arguments and
find them unpersuasive. The district court correctly con-
cluded that the asserted claims are invalid for indefinite-
ness. We affirm.
AFFIRMED
