NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIRGINIA INNOVATION SCIENCES, INC.,
Plaintiff-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC,
Defendants-Appellees
______________________
2014-1477
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in Nos. 2:12-cv-00548-MSD-
TEM, 2:13-cv-00332-MSD-TEM, Judge Mark S. Davis.
______________________
Decided: June 9, 2015
______________________
TIMOTHY EDWARD GROCHOCINSKI, Nelson Bumgard-
ner, P.C., Orlando Park, IL, argued for appellant. Also
represented by JOSEPH P. OLDAKER; EDWARD R. NELSON,
III, Fort Worth, TX.
GEORGE ALFRED RILEY, O’Melveny & Myers LLP, San
Francisco, CA, argued for defendants-appellees. Also
represented by BRETT JOHNSTON WILLIAMSON, CAMERON
2 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
WILLIAM WESTIN, Newport Beach, CA; BRIAN BERLINER,
Los Angeles, CA.
______________________
Before WALLACH, TARANTO, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Plaintiff and appellant Virginia Information Sciences,
Inc. (VIS) appeals from stipulated final judgments of non-
infringement and invalidity entered in favor of Samsung
Electronics, Co., Ltd., Samsung Electronics America, Inc.,
and Samsung Telecommunications America LLC (collec-
tively, Samsung) by the United States District Court for
the Eastern District of Virginia in two consolidated patent
infringement actions. Because (1) the intrinsic evidence
before us does not support the district court’s construction
of a claim term central to the parties’ dispute, (2) the
specification of the patents-in-suit suggests that the term
has an established understanding in the art, and (3) the
parties have not sufficiently developed the record with
regard to that established understanding, we vacate and
remand for further proceedings.
BACKGROUND
The patents-in-suit are directed to a device that con-
verts compressed video content received by a mobile
phone from a wireless network into a video signal format
ready for display on a larger external display such as a
television. At issue here are U.S. Patent Nos. 7,899,492
(the ’492 patent), 8,050,711 (the ’711 patent), and
8,145,268 (the ’268 patent). The ’711 and ’268 patents are
continuations of, and share a common specification with,
the ’492 patent. According to the specification, the
claimed invention addresses the problem of diminished
enjoyment of received video content displayed on a mobile
phone’s small screen by converting the received video
content to a format that can be displayed on a larger
screen. Id. at 2:1–15.
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 3
The common specification explains that in the pre-
ferred embodiment of the invention illustrated in Figure
3, a mobile phone (“mobile terminal”) receives a multime-
dia data stream, or “video signal,” from a mobile or wire-
less network. See id. at 3:14–18. This video signal is
typically provided in a compressed format because of the
high bandwidth and data throughput rates needed to
stream real-time video and audio in an uncompressed
format. Id. at 6:7–9, 6:21–25. Examples of compression
formats include those provided by the MPEG standards
(e.g., MPEG-4). Id. at 6:9–11.
After being received by the mobile phone, the com-
pressed video signal is sent to a “signal conversion mod-
ule,” which employs an appropriate compression/
decompression (CODEC) algorithm to convert the com-
pressed video signal into a decompressed video signal. Id.
at 6:11–14. This decompressed video signal is sent to
either a “Digital/Analog Video Encoder” (DAVE) or a
“Digital/Digital Video Encoder” (DDVE) component within
the signal conversion module that converts the decom-
pressed video signal to a format and signal power level
that can be displayed on an analog or digital display
screen that is larger than the mobile phone’s screen. Id.
at 6:26–36. The specification identifies a number of
examples of such formats, including S-video (analog video)
and HDMI (digital video). Id. at 6:37–40.
Each claim of the patents-in-suit recites a device with
three general components: (1) an interface that receives a
compressed video signal, (2) a processing module that
converts the received compressed video signal to a “dis-
play format” for display on a different screen, and (3) an
interface for outputting the converted video signal to that
different screen. Claim 23 of the ’492 patent is repre-
sentative of the asserted claims and recites:
4 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
23. An apparatus for processing signals to accom-
modate reproduction by an alternative display
terminal, the apparatus comprising:
an interface module, which receives a video signal
appropriate for displaying a video content on a
mobile terminal, the video signal being received
from a cellular network communication that is
sent to the mobile terminal and then received by
the interface module;
a signal conversion module, in operative commu-
nication with the interface module, which pro-
cesses the video signal to produce a converted
signal for use by the alternative display terminal,
wherein processing by the signal conversion mod-
ule includes converting the video signal from a
compression format appropriate for the mobile
terminal to a display format for the alternative
display terminal that is different from the com-
pression format, such that the converted video
signal comprises a display format and a power
level appropriate for driving the alternative dis-
play terminal; and
a device interface module, in operative communi-
cation with the signal conversion module, which
provides the converted video signal to the alterna-
tive display terminal to accommodate displaying
the video content by the alternative display ter-
minal.
’492 patent, 10:6–29 (emphases added).
VIS filed two patent infringement actions against
Samsung, both of which alleged that various Samsung
mobile phones, tablets, and other devices that included a
Mobile High-Definition Link (MHL) interface infringed
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 5
the ’492, ’711, and ’268 patents. 1 The district court con-
ducted a Markman hearing in the first action, and then
consolidated the two cases for trial. See Va. Innovation
Scis., Inc. v. Samsung Elecs. Co., Ltd., 983 F. Supp. 2d
713, 721–22 (E.D. Va. 2014) (VIS SJ I). Samsung moved
for summary judgment of invalidity of the patents-in-suit,
contending that U.S. Patent No. 7,580,005 (Palin) antici-
pated the asserted claims of those patents. The district
court granted Samsung’s motion for claims 21, 22, 25, 28,
and 29 of the ’268 patent, and denied it for all the assert-
ed claims of the ’492 and ’711 patents. Id. at 749. Sam-
sung then moved for, and the district court granted,
summary judgment of noninfringement of the remaining
asserted claims of the patents-in-suit. Va. Innovation
Scis., Inc. v. Samsung Elecs. Co., Ltd., No. 2:13cv332,
2014 WL 1685932, *1 (E.D. Va., Apr. 11, 2014) (VIS SJ
II). After denying VIS’s motion for reconsideration, the
district court entered stipulated final judgments of nonin-
fringement. J.A. 234–40, 241–47. VIS appealed, and we
have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
The district court’s summary judgment determina-
tions were based in part on the court’s construction of two
terms used in the asserted patent claims: “display format”
and “converted video signal.” On appeal, VIS challenges
the district court’s (1) construction of “display format,” (2)
conclusion that Samsung’s accused MHL-enabled devices
do not infringe the “display format” limitation, and (3)
invalidity determination as to claims 21, 22, 25, 28, and
29 of the ’268 patent. After careful review, we vacate the
district court’s construction of “display format,” as well as
a term closely linked to “display format”—“converted
1 VIS also accused Samsung in each action of in-
fringing U.S. Patent Nos. 8,135,398 and 8,224,381.
Neither of these patents is at issue in this appeal.
6 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
video signal.” We also vacate the summary judgment
determinations based on these constructions.
We turn first to the district court’s construction of
“display format.” The ultimate question of claim con-
struction is a matter of law that may rely on subsidiary
factual findings. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 838 (2015). While we review this ultimate
question of claim construction without deference, we
review underlying factual findings supporting the con-
struction for clear error. Id. at 841.
I
A
During Markman proceedings, the parties did not ask
the district court to construe “display format,” seemingly
agreeing that the term should be understood according to
its ordinary meaning. To resolve Samsung’s motion for
summary judgment of noninfringement, however, the
district court construed “display format” to be a video
signal in an uncompressed or decompressed video format
“ready for use” by the alternative display. VIS SJ II, 2014
WL 1685932, at *10. The district court further explained
that for the signal to be “ready for use,” no “deconstruc-
tion and reassembly” could occur after transmission of the
signal from the claimed apparatus to the external screen.
Id. For its interpretation of “ready for use,” the district
court relied on the patentee’s insistence during prosecu-
tion of the ’492 patent that its “claimed invention deal[t]
not only with mere decoding of a compressed video signal,
but a conversion from a mobile terminal format to a
different display format for the alternative display termi-
nal.” J.A. 5304, 5328–29, 5354. The district court charac-
terized these statements as “arguing against an
interpretation of ‘display format’ as merely involving
decompression.” VIS SJ II, 2014 WL 1685932, at *10.
Samsung embraced this additional level of interpretation
of “display format” and argued that the MHL signal
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 7
transmitted by its accused products did not meet this
limitation because that signal was not ready for use—i.e.,
an external display was required to first “reassemble” the
underlying video data from the received MHL signal
before it could display the video.
VIS argues that the district court’s construction can-
not be correct because it necessarily excludes High-
Definition Multimedia Interface (HDMI), a preferred
“display format” expressly identified in the specification.
See ’492 patent, 6:37–40. According to VIS, HDMI signals
require deconstruction and reassembly after being re-
ceived by standard monitors, and thus would be excluded
by the district court’s construction of “display format.”
Appellant’s Br. 28. VIS also argues that the district court
erred in finding that statements made during prosecution
of the ’492 patent narrowed the scope of the patent claims
so as to exclude “display formats” such as HDMI; rather,
these statements merely emphasized that the claimed
“display format” must be “different” from the compressed
video signal originally received by the mobile phone. VIS
concludes that the ordinary meaning of a “display format”
is simply a decompressed encoded video signal in a format
different from the format originally received by the mobile
phone.
Samsung contends that the district court’s construc-
tion is consistent with the ordinary meaning of “display
format.” Samsung explains that the district court’s
construction actually adopted an argument VIS made in
opposing Samsung’s summary judgment motion on inva-
lidity—that conversion to a “display format” occurs at the
mobile phone, and not at the alternative display. In
Samsung’s view, VIS advocated a construction of “display
format” for validity purposes that excluded signals requir-
ing “decompression” or “reassembly” of underlying video
content. Samsung also contests VIS’s characterization of
the HDMI format, arguing that none of the video signals
in a “display format” listed in the specification requires
8 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
further decompression, deconstruction, or reassembly—
the claimed “conver[sion]”—before they can be displayed
by a standard monitor.
Samsung further argues that VIS’s proposed con-
struction would render the “display” in “display format”
meaningless, because any uncompressed video signal
would satisfy the term, even signals that could not be
“displayed.” Samsung contends that the specification
does not support such a broad reading of that the term,
instead disclosing that the uncompressed video signal is
further “convert[ed] . . . to format(s) and signal power
level(s) required for the terminals to which [those signals]
interface.” ’492 patent, 6:26–36. Specifically, because the
specification explains that the uncom-
pressed/decompressed video signal is “converted” by a
video encoder (the DAVE or DDVE), Samsung argues that
an uncompressed/decompressed video signal must under-
go further processing to become a video signal in a “dis-
play format.”
B
To begin, we agree that a video signal that is decom-
pressed/uncompressed is a necessary feature of a “display
format.” 2 As discussed above, the specification explains
that the “Video Compress Decoder” component of the
claimed apparatus “is configured to include the appropri-
ate compression/decompression (CODEC) module to
accommodate decompression of the received multimedia
signal.” Id. at 6:11–14. The specification explains that
this “Video Compress Decoder [] outputs a decompressed
digital multimedia signal” that is converted to a “format[]
and signal power level[] required for the terminal to
2 Neither party contends that the disputed terms
should be construed differently in any asserted claim of
the patents-in-suit at issue in this appeal.
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 9
which [it] interfaces” by the analog or digital video encod-
er (DAVE or DDVE). Id. at 6:26–36. Thus, the specifica-
tion makes clear that a “display format” entails a video
signal that is uncompressed.
The extrinsic evidence is consistent with the intrinsic
evidence. In deciding Samsung’s summary judgment
motion on invalidity, the district court gave weight to
declarations from the parties’ experts and disclosures
from relevant treatises available at the time of the
claimed invention to conclude that (1) video signals must
be decompressed before they can be displayed, and (2)
when decoding video signals, CODECs and decoders
“convert compressed video signals into raw, uncompressed
video signals.” VIS SJ I, 983 F. Supp. 2d at 728. The
district court found this to be “compelling evidence” that a
“video [signal] in a display format must be uncom-
pressed.” Id. As a result, the district court concluded
that conversion to a “display format” requires decompres-
sion of the compressed video signal to an uncompressed
video signal. Id. We find no error with this part of the
district court’s analysis.
While briefing its summary judgment motion for non-
infringement, Samsung successfully petitioned the dis-
trict court to further narrow the construction of “display
format” in two ways. Here, VIS challenges the district
court’s construction, arguing that the district court should
not have departed from the understanding of “display
format” it used when ruling on Samsung’s summary
judgment motion on invalidity—that a “display format” is
simply an uncompressed video signal. We address each
subsequent narrowing of the district court’s construction
of “display format” in turn.
First, Samsung argued that during prosecution, VIS
had repeatedly characterized its invention as “deal[ing]
not only with mere decoding of a compressed video sig-
nal.” Samsung contended that these statements mandat-
10 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
ed a construction of “display format” involving something
more than an uncompressed video signal. VIS SJ II, 2014
WL 1685932 at *10. The district court agreed with Sam-
sung. Id. So do we.
The limitations of the asserted claims suggest that a
“display format” is more than an uncompressed video
signal. In particular, the wording of “display format”
itself suggests that a “display format” is not just any
uncompressed video signal, but a signal in a format
that—per the claims—“accommodate[s]” the display of
video content on an external monitor. Further, the claims
recite that a “signal conversion module” not only decom-
presses the received compressed video signal, but also
converts that signal to a specific video signal comprising
“a display format for the [external monitor]” and a power
level appropriate for driving the [external monitor].” See
’492 patent, 10:9–24. VIS’s desired construction would
essentially read the word “display” out of the term and is
inconsistent with the surrounding limitations of the
asserted claims.
The specification also reinforces the conclusion that
conversion to a “display format” involves additional
processing beyond simply decompressing a compressed
video signal. As we have long held, the “specification is
always highly relevant to the claim construction analy-
sis,” and often “the single best guide to the meaning of a
disputed term.” Phillips v. AWH Corp., 415 F.3d 1303,
1315 (Fed. Cir. 2005) (en banc). Here, the specification
explains that the decompressed video signal output by the
Video Decompress Decoder is passed to an analog or
digital video encoder (DAVE or DDVE), which then fur-
ther converts that uncompressed signal to formats such as
“S-video, RGBHV, RGBS, and EIA770.3” (analog), or
“DVI, DVI-D, HDMI, and IEEE1394” (digital). ’492
patent, 6:26–40; see also id. at 6:33–36 (“The [video en-
coders] receive the decompressed multimedia signal and
convert the signals to the format(s) and signal power
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 11
level(s) required for the [external monitors] to which they
interface.”). Thus, the specification underscores that a
“display format” is more than a decompressed video
signal, because further “conver[sion]” of the uncompressed
video signal is necessary for the signal to be in a format
“required for the [external monitor].” Id.
Second, in briefing its motion on noninfringement,
Samsung characterized the district court’s partial denial
of its summary judgment motion on invalidity as a deter-
mination that a video signal in a “display format” needed
no further “decoding” and “reassembl[y]” by the external
monitor. J.A. 4349. Samsung used this position as a
springboard to argue that the MHL video signal transmit-
ted by its accused products was not in the claimed “dis-
play format” because external monitors must first decode
and reassemble the content within that MHL signal
before it can be displayed. J.A. 4351–52. The district
court adopted Samsung’s reasoning, narrowing its con-
struction of “display format” to exclude signals in formats
that required further deconstruction or reassembly at the
external monitor in order to be displayed by the monitor.
VIS SJ II, 2014 WL 1685932 at *10.
This was error. Nothing in the specification men-
tions—much less prohibits—the “deconstruction” or
“reassembly” of video signals at the external display, key
components of the district court’s ultimate construction of
the term “display format.” Nor do the parties identify
anything in the prosecution history suggesting that the
meaning of “display format” is tied to the absence of any
“deconstruction,” “decoding,” “reassembly,” or other
processing of the converted video signal by the external
monitor. Indeed, these terms appear to have been intro-
duced by VIS when analogizing a pre-assembled nursery
crib to compressed video signals in its summary judgment
briefs. J.A. 2813, 4919–20.
12 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
Nor does the extrinsic evidence in the record resolve
the question of whether a signal is in a “display format” if
it must undergo further decoding or reassembly at the
external monitor. The parties’ expert declarations sub-
mitted for summary judgment focus on whether HDMI
and MHL video signals were “decoded” 3 and “reassem-
bled” in accordance with the district court’s construction,
rather than on what “display format” means to one of skill
in the art. See J.A. 4345, 4349–52 (Samsung); J.A. 4919–
27, 4930–31, 4954–60 (VIS). For example, Samsung’s
expert testified that before an external monitor can
display an MHL signal, it must be decoded, rearranged,
and reassembled into an HDMI signal—a “display format”
that is “ready for use” by a monitor. See J.A. 4345, 4352.
VIS’s expert did not dispute that MHL signals must be
translated into HDMI signals before they can be dis-
played. J.A. 4957–58; see also J.A. 4930–31. Instead,
VIS’s expert suggested that HDMI signals—like MHL
signals—must also be “decoded” and “reassembled” by the
external monitor in order to be displayed. J.A. 4955–56,
4958. In particular, VIS’s expert declared that to trans-
late the video content in an HDMI signal to the pixels on
a monitor, the HDMI signal must be processed through a
Low Voltage Differential Signaling (LVDS) interface to an
LCD controller, components commonly incorporated into
digital televisions. J.A. 4956. Relying on this declaration,
VIS argued that the district court could not have been
correct in concluding that a “display format” would not be
“decoded” or “reassembled” by an external monitor, be-
cause HDMI signals—which both parties agreed were
encompassed by the claimed “display format”—were also
3 While the parties’ described the “decoding” of vid-
eo signals in their briefing, the district court referred to
this decoding step as a “deconstruction” of the video
signal. VIS SJ II, 2014 WL 1685932, at *10. We express
no opinion on whether these terms are interchangeable.
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 13
“decoded” and “reassembled” by the LVDS interface and
LCD controller within many external monitors. See J.A.
4919–27. But beyond conclusory statements that “MHL is
[or is not] a display format,” see J.A. 4958, 4352, none of
this testimony before us offers insight into the relevant
inquiry: whether one of ordinary skill in the art would
understand the claimed “display format,” which encom-
passes standard formats such as HDMI and S-video, to
necessarily exclude decoding/deconstruction and reassem-
bly of that signal by the external monitor before display-
ing the signal’s underlying video content.
In short, although the intrinsic evidence strongly sug-
gests that the claimed “display format” must be a video
signal that is “ready for use” by a conventional external
monitor, the intrinsic evidence before us does not provide
a complete understanding of the term. Thus, while re-
view of the intrinsic evidence is commonly dispositive in
understanding the ordinary meaning of a claim, such is
not the case in this particular instance. For example, the
specification does not provide an explanation of what
separates a video signal that is “ready for use” by an
external monitor from a video signal that is not. Nor does
the specification explain what type of additional pro-
cessing an external monitor may perform on a signal in a
“display format” in order to display the video content
within that signal. Instead, the specification lists exam-
ples of standard “display formats” without elaborating on
the term’s meaning, suggesting that those of skill in the
art would understand the term’s meaning simply by
reference to the listed examples and standards. See ’492
patent, 6:39–40 (listing examples of “display formats” to
include “standards such as DVI, DVI-D, HDMI, and
IEEE1394”). As a result, our review of the record sug-
gests that one of skill in the art understood a “display
format” to have particular technical characteristics de-
scribing its compatibility and operational interaction with
14 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
an external monitor. What those characteristics are,
however, has not been established in the record on appeal.
VIS’s expert testified that even a signal in a “display
format” that is “ready for use” by the monitor might
require further processing to translate the video content
in the signal to physical pixel locations on the monitor.
This testimony appears to be consistent with the specifi-
cation, which cites a digital RGB signal as an example of
a “display format” that is transmitted to an external
cathode-ray-tube (CRT) monitor and then further pro-
cessed to “drive a set of electron guns” in order to “pro-
duce a controlled stream of electrons to display red, green
and blue light respectively on a CRT screen.” ’492 patent,
6:50–58. While Samsung disputes the relevance and
significance of any such additional processing at the
external monitor, it does not persuasively explain with
supporting evidence how such processing differs from the
precluded “deconstruction” and “reassembly” of the video
signal in the district court’s construction.
Thus, extrinsic evidence in this instance must be con-
sulted concerning “the meaning of technical terms, and
the state of the art.” Phillips, 415 F.3d at 1314. The
parties did not ask the district court to construe the term
during Markman proceedings, and Samsung did not offer
its proposed construction until briefing for its summary
judgment motion on noninfringement. As a result, the
record before us is not sufficiently developed to discern
the skilled artisan’s understanding of the relevant aspect
of a video signal in a “display format.” To the extent the
district court’s construction relied on the parties’ argu-
ments introducing the notion of signal deconstruction and
reassembly at the external monitor, attorney arguments
are not relevant intrinsic or extrinsic evidence. We there-
fore remand to the district court with instructions to
further develop the record and to determine the meaning
of the “display format” to one of skill in the art at the
effective filing date of the patents-in-suit, whether by
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 15
further examination of the prosecution history, evaluation
of direct and cross-examination testimony from experts
showing and explaining usage in the field, or consultation
of other relevant sources as set forth in Phillips.
II
We turn next to VIS’s challenge to the grant of Sam-
sung’s summary judgment motion of noninfringement. In
determining that Samsung’s accused products do not
infringe the asserted claims of the ’492, ’711, and ’268
patents, the district court relied on the now-vacated
construction of “display format.” VIS SJ II, 2014 WL
1685932 at *10–11. Therefore, we also vacate the district
court’s summary judgment grant of noninfringement.
III
We turn last to VIS’s challenge to the district court’s
grant of summary judgment of invalidity of claims 21, 22,
25, 28, and 29 of the ’268 patent. Because “display for-
mat” appears in each of the asserted claims of the ’268
patent, we also vacate the district court’s finding that
Palin anticipates those claims and its corresponding grant
of summary judgment of invalidity.
We also note that VIS challenges the district court’s
determination that Palin discloses a “converted video
signal,” a term closely linked to “display format” in each of
the asserted claims of the patents-in-suit. For example,
claim 21 of the ’268 patent recites that the claimed appa-
ratus “convert[s] a signal format appropriate for the
mobile terminal to a display format for the alternative
display terminal that is different from the signal format”
and that the “converted video signal produced by the
processing unit comprises [a] high definition digital
format.” ’268 patent, 10:18–24. Similarly, claim 23 of the
’492 patent recites that the claimed apparatus “convert[s]
the video signal from a compression format appropriate
for the mobile terminal to a display format for the alter-
16 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
native display terminal” and that the “converted video
signal comprises a display format and a power level
appropriate for driving the alternative display terminal.”
’492 patent, 10:18–24. Thus, the claim language itself
makes clear that these terms cannot be understood in
isolation—the meaning of one term affects and informs
the meaning of the other.
During Markman proceedings, the district court con-
strued “converted video signal” to require only a “change
to the video signal” received from the mobile network and
not a change to “the underlying video content” carried by
the signal. Va. Innovation Scis., Inc. v. Samsung Elecs.
Co., Ltd., 976 F. Supp. 2d 794, 814–15 (E.D. Va. 2013)
(VIS Markman). In other words, a “conver[sion]” to the
video signal could encompass any alteration to the video
signal, such as a change to an informational data packet
accompanying the actual video content contained in the
signal. See id. at 815.
VIS argues that Palin discloses only the conversion of
a file transport protocol, not the conversion of the under-
lying video signal format contained within that file
transport protocol. VIS thus contends that Palin does not
disclose a “converted video signal” and therefore does not
anticipate the asserted claims of the ’268 patent. VIS
attempts to bolster its argument by asserting the United
States Patent and Trademark Office (Patent Office)
“reached th[e] same conclusion” in rejecting a petition for
inter partes review of the ’492 patent. Appellant’s Br. 33;
J.A. 5516–17 (IPR2013-00572). VIS fails to mention,
however, that the Patent Office found the broadest rea-
sonable interpretation of the term “convert” in “converted
video signal” to be “to change the representation of data
from one form to another.” J.A. 5516. As the Patent
Office explained, this was how the IEEE dictionary de-
fined “convert” at the time of the claimed invention. Id.
(citing Institute of Electrical and Electronics Engineers,
The Authoritative Dictionary of IEEE Standard Terms
VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD. 17
238 (7th Ed., IEEE Press 2000)). The Patent Office found
the treatise definition consistent with the specification,
which it found to “differentiate[] repeatedly between
converting signal formats and routing via a communica-
tions protocol.” J.A. 5516.
Although the district court stated that its construction
for “converted video signal” was based on the term’s “use
in the claim terms themselves and [in] the specification,”
VIS Markman, 976 F. Supp. 2d at 819, it did not explain
how the claims or specification provided a clear under-
standing of “converted,” either as it was intended to be
understood in context of the patent or as it was under-
stood in the art. Id. at 813–19. Nor do we see anything in
the intrinsic evidence before us that provides guidance on
what appears to be a term with an established technical
meaning in the art. While we emphasize that the district
court is not bound by determinations of the Patent Office,
our review of the record suggests that the Patent Office’s
approach to rely on relevant treatises and other extrinsic
evidence may be more illuminating than the specification
in this particular instance.
Because the claim limitations make clear “that con-
verted video signal” and “display format” must be evalu-
ated together, the district court’s seemingly erroneous
construction of “converted video signal” may bear on the
construction of “display format.” Therefore, as with
“display format,” we vacate the district court’s construc-
tion of “converted video signal” and remand with instruc-
tions to evaluate the term in context of the surrounding
claim limitations, and in particular its relationship to
“display format,” and to further develop the record as to
the meaning of the term to those of skill in the art at the
relevant timeframe. Cf. Frans Nooren Afdichtings-
systemen B.V. v. Stopaq Amcorr Inc., 744 F.3d 715, 725
(Fed. Cir. 2014) (“In enumerating problems relevant to
arriving at a proper construction, we do not mean to be
exhaustive or to suggest the absence of solutions. . . .
18 VA. INNOVATION SCIENCES v. SAMSUNG ELECS. CO., LTD.
Rather, we are identifying at least some of the problems
that require attention in a more focused and systematic
claim-construction analysis than the parties and the
record currently supply.”).
***
We have considered the parties’ remaining arguments
and find them unpersuasive.
CONCLUSION
The record does not shed sufficient light on the mean-
ing of the claim terms central to the dispute on appeal.
We therefore vacate the district court’s construction of
“display format” and “converted video signal” and remand
to the district court to construe these terms after further
developing the record as to their meaning to those of skill
in the art at the relevant timeframe. Because the district
court’s grant of summary judgment of noninfringement of
the asserted claims of the ’492, ’711, and ’268 patents and
its grant of summary judgment of invalidity of claims 21,
22, 25, 28, and 29 of the ’268 patent are based on its now-
vacated construction of these terms, we also vacate these
two grants of summary judgment.
VACATED AND REMANDED
COSTS
No costs.