Presented by Netflix Grammar Police an Exercise in Claim Construction

Written by: Ari Feinstein and Eric R. Blosser

NETFLIX, INC. V. DIVX, LLC

Before Moore, Dyk, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: Common principles of English grammar may be used to identify the presumptively correct interpretation of a disputed claim term.

Netflix, Inc. petitioned the Patent Trial and Appeal Board (Board) to institute inter partes review (IPR) of all claims of U.S. Patent No. 10,225,588 (“the ’588 patent”), a patent owned by DivX, LLC. The ’588 patent claimed systems and methods for streaming partly encrypted media content. The Board instituted the IPR and, during the proceedings, the parties disputed the construction of the following claim limitation: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video[.]”  DivX argued that this limitation required “that the encryption information is located within the requested portions of the selected stream of protected video.” In contrast, Netflix argued that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected stream of protected video.” Ultimately, the Board issued a final written decision in which it adopted DivX’s proposed construction and rejected Netflix’s obviousness challenge.

On appeal, the Federal Circuit noted that both parties’ interpretations were semantically plausible but found that application of principles of English grammar “clearly favored” Netflix’s construction. Specifically, the principle that “the modifier is presumptively understood to be tied to the nearest available semantically plausible modificand” favored Netflix’s construction. Though that principle only “establishes a presumptive interpretation,” nothing in the intrinsic record indicated that that presumption had been overcome.

Thus, the Federal Circuit reversed the Board’s construction, “conclud[ing] that it is the ‘encrypted portions’ of frames and video, and not the ‘encryption information,’ that must be ‘located within the requested portions of the selected stream of protected video.” The Federal Circuit further held that the limitation at issue, so construed, was taught by the asserted prior art. Thus, the Federal Circuit vacated the Board’s decision and remanded for further proceedings.

Editor: Sean Murray