Federal Circuit Upholds JMOL of Noninfringement for DISH in ClearPlay Patent Dispute

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in ClearPlay, Inc. v. DISH Network L.L.C., affirming the United States District Court for the District of Utah’s grant of judgment as a matter of law (JMOL) of noninfringement in favor of DISH Network L.L.C. and EchoStar Technologies LLC. The ruling held that the trial evidence, even viewed in the light most favorable to ClearPlay, was insufficient to sustain the jury’s infringement verdict on either of the asserted patents.

The Honorable Allison D. Burroughs, District Judge, United States District Court for the District of Massachusetts, sitting by designation, authored the opinion.

ClearPlay owns U.S. Patent Nos. 7,577,970 and 6,898,799 which are both directed to methods for filtering multimedia content. The patents generally describe a system in which media is divided into discrete units called “navigation objects,” each of which carries information defining a start position, a stop position, and a specific filtering action. In March 2014, ClearPlay filed a complaint in the District of Utah accusing DISH’s AutoHop commercial-skipping feature of infringing both patents, along with other claims that were resolved before trial. After the district court issued a claim construction order in August 2019, the case proceeded to a jury trial.

At trial, a jury found that AutoHop infringed both the ‘970 and ‘799 Patents and awarded damages to ClearPlay. Following the verdict, the district court granted DISH’s previously filed JMOL motion, setting aside the jury’s findings. ClearPlay appealed to the Federal Circuit on two grounds, arguing that the district court applied different claim constructions in the JMOL order than those given to the jury and that the court applied the wrong standard when evaluating the trial record.

The Federal Circuit found no meaningful difference between the jury instructions and the JMOL order language for either patent. With respect to the ‘970 Patent, the jury was instructed that AutoHop had to “directly disable” a navigation object so that its filtering action is ignored, rather than disabling something else that incidentally causes that result. The JMOL order elaborated that the claim did not cover acting on some upstream component that indirectly affects the navigation object’s behavior. The CAFC concluded this was a restatement of the same distinction, not a new construction.

Regarding the ‘799 Patent, the jury instructions required each navigation object to contain its own start, stop, and filter elements within a single object, file, or data structure, and further required a configuration identifier to be housed within that same navigation object. The JMOL order’s use of phrases such as “its own” and “single-object approach” was found to reflect the same operative construction. The CAFC dismissed these as superficial differences in word choice that did not alter the underlying claim’s meaning.

The CAFC applied Tenth Circuit law, under which JMOL “is appropriate only if the evidence points but one way and is susceptible to no reasonable inferences which may support the nonmoving party’s position.” Even with all inferences in ClearPlay’s favor, the court still concluded the evidence fell short on both patents.

For the ‘970 Patent, the key issue was whether AutoHop directly disabled individual navigation objects. The trial record showed that AutoHop operates through two global conditions encoded in separate variables in the source code, specifically whether the user has enabled commercial skipping at all and whether the playback device is currently in play mode rather than fast-forward or rewind. When AutoHop encounters a segment boundary, it checks those categorical conditions rather than inspecting or acting on any individual navigation object. The CAFC concluded that “those background conditions, rather than the direct disablement of particular segments, determine AutoHop’s behavior,” and that AutoHop therefore did not satisfy the disabling limitation as construed.

The central dispute for the ‘799 Patent concerned whether the AutoHop announcement files constituted a qualifying “object store.” ClearPlay’s expert, Nicholas Feamster, acknowledged that each announcement file contained a single configuration identifier matched to the relevant set-top box, and that the identifier was not re-checked each time a new segment boundary was encountered. Feamster further explained that repeating the same configuration identifier and filtering action within each individual segment bookmark pair would be inefficient, and that developers would naturally avoid that redundancy. The CAFC found, however, that even crediting that testimony, it could not support infringement because the operative claim construction required each navigation object to individually contain a filtering action and a configuration identifier.

Although Feamster testified that assigning each segment bookmark pair its own configuration identifier would be “ridiculous,” the court explained that engineering practicality does not determine equivalence. The inquiry instead asks whether the accused method “performs ‘substantially the same function in substantially the same way to obtain the same result’” as the claimed structure. ClearPlay offered no particularized testimony or linking analysis addressing the substantiality of the structural and functional differences between the two approaches. The ‘799 Patent itself treated the distinction between a single-object design and one that shares elements across objects as a difference in kind, not merely degree, which further foreclosed the equivalents theory.

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Author: billperry