Sony prevails in Infringement Lawsuit as Judge kills Trans Video Electronics' Patent

Figure 1 from the '801 patent

Trans Video Electronics is a company based in Washington, DC which somehow obtained U.S. Patent No. 5,991,801 from a pair of inventors in Indiana.  The '801 patent covers a global digital video news distribution system and a figure is shown to the right.

Trans Video argues that Sony has infringed the patent and Sony has responded that the patent is invalid for failing to have an enabling disclosure as required by 35 U.S.C. § 112.

While Trans Video has tried to amend its complaint, the current complaint only alleges infringement of claim three which reads:

3. An information distribution system for a network, comprising: 

a plurality of video clip storage units that each store data related to a particular subject matter; 

a master communications unit coupled to the digital network that establishes communications with the network in order to receive a synchronous digital signal corresponding to the data related to said particular subject matter stored in a respective one of said plurality of video clip storage units; 

a plurality of distribution amplifier units coupled to said master communications unit, wherein each of the plurality of distribution amplifier units has an input that receives said synchronous digital signal corresponding to the data from a respective one of said plurality of video clip storage units and at least one output that divides said synchronous digital signal corresponding to the data from said respective one of said plurality of video clip units into a plurality of synchronous signals; 

a plurality of communications units, each of said communications units being coupled to one of said plurality of distribution amplifier units to respectively establish communications between respective ones of said plurality of distribution amplifier units and a plurality of receiving stations in the digital network to receive and output corresponding ones of said plurality of synchronous signals to the plurality of receiving stations; 

a master controller unit coupled to said plurality of communications units to control said plurality of communications units from a central location; 

and a menu storing unit accessible from the digital network that stores information indicating the subject matter associated with each of said plurality of video clip storage units and information as to how to access each of said video clip storage units.

The disputed Figure 5

The parties dispute whether the drawings and written description explain how to make the device described in the third claim in particular the language in italics above.  Sony argues that it doesn't.

In its motion, Sony argued that there is a lack of written description for the invention claimed in claim 3 because, based on the specification, the only possible description for the invention is Figure 5 and it does not include a description of the synchronous digital signal – a command signal, and not video – being split up into a plurality of synchronous signals. See, e.g., Mot. at 12. At the hearing on the motion, Sony expanded on this argument, noting that Figure 5 cannot describe the invention claimed in claim 3 because claim 3 requires that the same synchronous digital signal be received by the master communications unit and passed on to the distribution amplifier units but Figure 5 describes a command signal (i.e., not video) being received by the master communications unit (516) and a video clip being sent on to the distribution amplifier units (531A-H).

Trans Video takes the unique position that Figure 5 does not explain the claim, but rather, when read in conjunction with figure 1B a person of ordinary skill in the art would be able to but everything together and get the invention in claim 3.

Judge Edward M. Chen dismisses this argument out of hand, and probably gets the law wrong in the process.

Trans Video’s argument, however, runs counter to Federal Circuit case law. In evaluating whether the written description requirement has been satisfied, a court does not simply look to see whether the specification contains descriptions of the individual elements of the claim. Rather, a court must look to see whether there is a written description for the entirety of the claimed invention – i.e., the combination of elements.

He synthesizes the issue as such:

whether the written description requirement may be met where the combination of elements comprising the invention is not described at all and instead requires a person of ordinary skill in the art to synthesize elements from different embodiments to come up with the claimed invention.

And finds that the law does not allow for this.  The unargued elephant in the room is that the claims are part of the written description which disclose the invention as it can be found in several figures.  The person of ordinary skill in the art receives instruction to synthesize from the claim itself.  Further, a person of reasonable skill in the art can experiment in order to make a combination work.  See In re Wands (Fed. Cir. 1988).

Judge Chen granted summary judgment to Sony and the opinion is here.