CAFC Affirms Non-Infringement Ruling for Hulu Due to Claim’s Requirement of Specific Order of Steps

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday issued a precedential decision affirming a district court decision that Sound View Innovations’ multimedia streaming patent claims were not infringed because Hulu’s “accused products do not perform the claim limitations in the required sequence.” The decision was authored by Judge Chen.

The case had come before the CAFC in 2022, and the U.S. District Court for the Central District of California at that time affirmed in part and vacated in part. It remanded to the district court for further proceedings after the CAFC determined that the term  “buffer” in Claim 16 of Sound View’s U.S. Patent No. 6,708,213 cannot cover “a cache,” and thus vacated the district court’s grant of summary judgment of non-infringement for Hulu. The CAFC explained that “[i]t appears that ‘buffer’ should be given the ordinary meaning proposed by Sound View here and in the district court based on a dictionary definition: ‘temporary storage for data being sent or received.’”

On remand, the district court construed “buffer” to mean “short term storage associated with said requested [Streaming Media] SM object.” It ultimately granted summary judgment of non-infringement for Hulu again. On appeal to the CAFC again, the CAFC found that the district court “(1) erred in its construction of the claimed term ‘buffer,’ but (2) correctly construed claim 16 to require a specific order of operation.” Because the second ground independently supported the summary judgment grant, the CAFC affirmed the decision.

With respect to the first ground on which the district court granted summary judgment, the CAFC rejected the district court’s reasoning that “several embodiments and the prosecution history disclose allocating a buffer associated with the same SM object” and that “this association transforms the claimed buffer into a specialized buffer dedicated to a single SM object.” Since Hulu’s accused products are “general purpose,” the district court found could not be the specialized buffers required by claim. But the CAFC said the intrinsic evidence did not support that reasoning and that “[n]othing in the claim language describes the buffer as a specialized buffer that must be associated with only one SM object.”

As to the second ground, however, the CAFC agreed with the district court that “claim 16 requires a specific sequence for the first two recited steps: first ‘receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers,’ then ‘allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object.”

Neither party disputed that Hulu’s products did not perform the claim limitations in the order required under the district court but disagreed as to whether Claim 16 requires an order of steps. But the CAFC concluded that “both the grammar and logic of claim 16 require the first limitation to be performed before the second.” The opinion noted that “a claim ‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps,” citing Mformation Techs., Inc. v. Rsch. In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014). Here, said the CAFC, pointing to the claim language:

“Grammatically, ‘a request for an SM object’ in the first limitation provides an antecedent basis for ‘said requested SM object” in the second. The past participle—’requested’—acts as an adjective modifying the noun ‘SM object,’ describing a logical relationship: for ‘requested SM object’ to make sense, a request must have occurred before the object can be described as ‘requested.’ Indeed, only after a request is received does the SM object acquire the status of being “requested.”

In other words, “requested” is not only a grammatical descriptor, but also is a status indicator reflecting a completed action—the receiving of a request. Because the second limitation expressly references “said requested SM object,” it necessarily depends on the first limitation having been performed.”

The CAFC rejected Sound View’s arguments that the claim does not recite an order and that the claims could be performed in any order, noting that its caselaw on implicit ordering says that “implicit ordering exists when there are inherent logical dependencies or functional relationships between the recited steps of a method claim.”

The CAFC thus affirmed the district court’s summary judgment of non-infringement.

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