Case: 21-1998 Document: 45 Page: 1 Filed: 05/11/2022
United States Court of Appeals
for the Federal Circuit
______________________
SOUND VIEW INNOVATIONS, LLC,
Plaintiff-Appellant
v.
HULU, LLC,
Defendant-Appellee
______________________
2021-1998
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:17-cv-04146-JAK-
PLA, Judge John A. Kronstadt.
______________________
Decided: May 11, 2022
______________________
ALAN KELLMAN, Desmarais LLP, New York, NY, ar-
gued for plaintiff-appellant. Also represented by
FREDERICK DING; PETER CURTIS MAGIC, San Francisco, CA.
BRETT JOHNSTON WILLIAMSON, O'Melveny & Myers
LLP, Newport Beach, CA, argued for defendant-appellee.
Also represented by BRADLEY M. BERG, JOHN C. KAPPOS, BO
MOON, CAMERON WILLIAM WESTIN; PATRICK NACK-
LEHMAN, Menlo Park, CA.
______________________
Before PROST, MAYER, and TARANTO, Circuit Judges.
Case: 21-1998 Document: 45 Page: 2 Filed: 05/11/2022
2 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
TARANTO, Circuit Judge.
Sound View Innovations, LLC owns now-expired U.S.
Patent No. 6,708,213, titled “Method for Streaming Multi-
media Information over Public Networks.” When Sound
View brought the present case against Hulu, LLC, it al-
leged infringement of six Sound View patents, but only
claim 16 of the ’213 patent remains at issue. Sound View
alleges that Hulu infringed claim 16 by its use of (third
party) edge servers, which sit between a central Hulu con-
tent server and the video-playing devices of end-user cus-
tomers (clients). Most significantly for purposes of the
infringement dispute currently before us, Sound View al-
leges that, under Hulu’s direction, when an edge server re-
ceives a client request for a video not already fully in the
edge server’s possession, and obtains segments of the video
seriatim from the content server (or another edge server),
the edge server transmits to the Hulu client a segment it
has obtained while concurrently retrieving a remaining
segment.
Claim 16 specifies a method, involving a content server
and intermediate servers (helper servers), to use when a
client requests a streaming multimedia (SM) object. One
limitation requires “allocating a buffer” at a helper server
“to cache” at least a portion of the SM object. The next lim-
itation (the “downloading/retrieving limitation”) requires
sending that portion to a requesting client while concur-
rently retrieving a remaining portion of the SM object from
the content server or another helper server. In the first
ruling before us, the district court construed the download-
ing/retrieving limitation not to cover a process in which the
downloading occurs from one buffer in the helper server
and the (concurrent) retrieving places what is retrieved in
another buffer in that server. Rather, the court construed
the limitation to require that the same buffer in the helper
server—the one allocated in the preceding step—host both
the portion sent to the client and a remaining portion re-
trieved concurrently from the content server or other
Case: 21-1998 Document: 45 Page: 3 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 3
helper server. Sound View Innovations, LLC v. Hulu, LLC,
No. LA CV17-04146, 2020 WL 10758103, at *5 (C.D. Cal.
Apr. 13, 2020) (Claim Construction Opinion).
With that claim construction in hand, Hulu sought
summary judgment of non-infringement of claim 16, argu-
ing that it was undisputed that, in the edge servers of its
content delivery networks, no single buffer hosts both the
video portion downloaded to the client and the retrieved
additional portion. Sound View argued, in response, that
there remained a factual dispute about whether “caches” in
the edge servers met the concurrency limitation as con-
strued. The district court held, however, that a “cache”
could not be the “buffer” that its construction of the down-
loading/retrieving limitation required, and on that basis, it
granted summary judgment of non-infringement. Sound
View Innovations, LLC v. Hulu, LLC, No. LA CV17-04146,
2020 WL 6821317, at *6 (C.D. Cal. Oct. 20, 2020) (Sum-
mary Judgment Opinion). A final judgment followed.
Sound View appeals. It challenges the claim construc-
tion and the summary judgment ruling. It also challenges
two interlocutory rulings that excluded, under Federal
Rule of Evidence 702, portions of Sound View’s expert tes-
timony on reasonable-royalty damages. Sound View Inno-
vations, LLC v. Hulu, LLC, No. LA CV17-04146, 2019 WL
9047211, at *9–11 (C.D. Cal. Nov. 18, 2019) (Damages
Opinion I); Order Re Defendant’s Supplemental Motion to
Exclude Testimony of Mr. David Yurkerwich, Sound View
Innovations, LLC v. Hulu, LLC, No. LA CV17-04146 (C.D.
Cal. June 18, 2020), ECF No. 840 (Damages Opinion II).
We affirm the district court’s construction of the down-
loading/retrieving limitation. But we reject the district
court’s determination that “buffer” cannot cover “a cache,”
and we therefore vacate the district court’s grant of sum-
mary judgment and remand for further proceedings. Be-
cause the evidentiary rulings could matter on remand, we
address those rulings—which we affirm.
Case: 21-1998 Document: 45 Page: 4 Filed: 05/11/2022
4 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
I
A
The ’213 patent describes and claims “methods which
improve the caching of streaming multimedia data (e.g.,
audio and video data) from a content provider over a net-
work to a client’s computer.” ’213 patent, col. 1, lines 10–
15. The methods use “helper servers (HS) . . . which oper-
ate as caching and streaming agents.” Id., col. 2, lines 64–
67. Delay in content delivery, server load, and network
load can be reduced by using helper servers to respond to
client requests. Id., col. 5, lines 46–50. In described em-
bodiments, the invention “utilizes ring buffers in the
memory of the HS.” Id., col. 5, lines 55–57. When a helper
server receives a request for a streaming media (SM) ob-
ject, and it does not already have the object, it requests the
object from, e.g., the content server, which starts streaming
it to the HS. Id., col. 6, lines 42–46. The HS “allocates a
ring buffer in memory,” id., col. 6, line 54, which “is filled
with data” from, e.g., the content server, id., col. 6, lines
48–51. “The ring buffers represent a type of short term
storage to service multiple requests for the same object
which occur within a certain time range.” Id., col. 5, lines
57–60. Referring to a ring buffer 57 of Figure 5A, the pa-
tent states that “the ring buffer 57 operates as a type of
short term cache which stores a portion of an SM object for
a fixed time interval,” and, because it is emptied out by
sending data to a client and replenished with more data,
“[i]t is also convenient to view the ring buffer 57 as a sliding
window in the sense that portions of an SM object are ini-
tially cached in the ring buffer 57 and then deleted to store
successive portions of the SM object.” Id., col. 7, lines 20–
26.
Claim 16 of the ’213 patent recites:
16. A method of reducing latency in a network hav-
ing a content server which hosts streaming media
(SM) objects which comprise a plurality of time-
Case: 21-1998 Document: 45 Page: 5 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 5
ordered segments for distribution over said net-
work through a plurality of helpers (HSs) to a plu-
rality of clients, said method comprising:
receiving a request for an SM object from
one of said plurality of clients at one of said
plurality of helper servers;
allocating a buffer at one of said plurality
of HSs to cache at least a portion of said re-
quested SM object;
downloading said portion of said requested
SM object to said requesting client, while
concurrently retrieving a remaining por-
tion of said requested SM object from one of
another HS and said content server; and
adjusting a data transfer rate at said one of
said plurality of HSs for transferring data
from said one of said plurality of helper
servers to said one of said plurality of cli-
ents.
Id., col. 14, lines 31–48.
B
In June 2017, Sound View sued Hulu for infringement
of claims of six patents, based on Hulu’s Streaming Video
on Demand products, which use the edge servers of content
delivery networks, including third parties Akamai and
Level 3, to deliver content to clients. J.A. 203; J.A. 221–37.
As to claim 16 of the ’213 patent, Sound View argued that
Hulu directed or controlled the content delivery networks
to allocate a local buffer at an edge server (the claimed
“helper server”) to cache at least a portion of a Hulu video
and to download that video portion to a client while concur-
rently pre-fetching (i.e., retrieving) another portion of the
video.
Case: 21-1998 Document: 45 Page: 6 Filed: 05/11/2022
6 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
1
The district court initially construed several claim
terms, but the initial constructions are not disputed in this
appeal. As the case proceeded, it became clear that the
parties disputed the meaning of the downloading/retriev-
ing limitation of claim 16. The district court’s resolution of
the dispute is on appeal to us.
Sound View argued that the limitation should be con-
strued according to the ordinary meaning of its words,
which do not include “buffer” and, more particularly, do not
require that the concurrent sending out (downloading) and
receiving (retrieving) involve the same buffer. Hulu ar-
gued that the concurrent-function requirement must in-
volve the same buffer, and it relied centrally (though not
solely) on the prosecution history to support that construc-
tion. During prosecution, the applicants added the entire
downloading/retrieving limitation to original claim 16 to
overcome a rejection over DeMoney (U.S. Patent No.
6,438,630). The district court agreed with Hulu that the
applicants’ statements accompanying the amendment dis-
claimed the full scope of the downloading/retrieving limita-
tion, and that the claim required the concurrent
downloading from and filling of a single buffer. Claim Con-
struction Opinion, 2020 WL 10758103, at *3–4. It thus con-
strued the downloading/retrieving limitation as
“downloading said portion of said requested SM object from
said allocated buffer to said requesting client, while con-
currently retrieving into the same buffer a remaining por-
tion of said requested SM object from one of another HS
and said content server.” Id. at *5 (emphases added).
Sound View subsequently sought reconsideration of that
decision, but the court denied the reconsideration motion.
Sound View Innovations, LLC v. Hulu, LLC, No. LA CV17-
04146, 2020 WL 5356698, at *5 (C.D. Cal. June 18, 2020).
Hulu eventually sought summary judgment of non-in-
fringement, arguing that it could not infringe claim 16
Case: 21-1998 Document: 45 Page: 7 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 7
because it was undisputed that the accused edge servers—
the edge servers Sound View identified as the “helper serv-
ers” for its infringement charge—do not download and re-
trieve subsequent portions of the same SM object in the
same buffer, so there could be no infringement in light of
the court’s “same-buffer” claim-construction decision. J.A.
3583–89. Sound View argued that there was a factual dis-
pute as to whether certain caches in the accused edge serv-
ers satisfied the requirements of claim 16. J.A. 3742–50.
The district court agreed with Hulu and granted it sum-
mary judgment of non-infringement of claim 16. Summary
Judgment Opinion, 2020 WL 6821317, at *6. The court de-
termined that the ’213 patent uses the terms “buffer” and
“cache” to refer to distinct physical components and, there-
fore, a cache could not satisfy the limitation of claim 16 re-
quiring a buffer. Id. at *3–6. It determined that no further
construction of “buffer” was necessary. Id. at *6 n.1.
2
The district court issued two rulings related to dam-
ages that are on appeal along with the claim-construction
and summary-judgment rulings. Sound View proposed to
have David Yurkerwich testify to what amount would con-
stitute a reasonable royalty if infringement were found.
Mr. Yurkerwich sought to show the value of the invention
to a video-streaming provider based on the improved user
experience if the invention were used, including fewer oc-
casions of stalling of the video on the user’s device (“rebuff-
ering events,” J.A. 2288) to await arrival of successive
portions for display.
Mr. Yurkerwich’s first damages opinion, J.A. 2819–25,
relied in part on a study titled “Empirical Evaluation of
HTTP Adaptive Streaming under Vehicular Mobility” by
Yao et al. (the Yao study), which considered (through emu-
lation) the experience of vehicle passengers in Sydney, Aus-
tralia, watching streaming videos received on mobile
devices over a Wireless Wide Area Network connection,
Case: 21-1998 Document: 45 Page: 8 Filed: 05/11/2022
8 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
J.A. 3175–78. According to Mr. Yurkerwich, the Yao study
concluded that so-called “adaptive streaming” reduced the
number of stalling occasions by 80%, and because the ’213
patent teaches adaptive streaming (among other things),
there would be an 80% decrease in stalling occasions if the
patented technology were used. J.A. 2825. 1 Hulu moved
to preclude Mr. Yurkerwich from presenting damages cal-
culations that relied on the Yao study. The district court
granted the motion, explaining that Mr. Yurkerwich did
not present a sufficient basis to rely on the Yao study, as
he did not account for the differences between the adaptive
bit rate streaming that was the subject of the Yao study
and Hulu’s alleged use of adaptive streaming, since many
of Hulu’s U.S. customers use stationary devices and a WiFi
or wired connection. Damages Opinion I, 2019 WL
9047211, at *9–11.
Mr. Yurkerwich subsequently submitted an amended
report, J.A. 4446–4529, which removed references to the
Yao study and instead relied on a press release by a com-
pany called Conviva. But the amended report itself pre-
sented an evidentiary problem. The Conviva press release
1 The Abstract of Yao characterizes “adaptive
streaming” in a way that corresponds, not to the download-
ing/retrieving limitation (as construed to require same-
buffer concurrency), but to the last limitation of claim 16,
which calls for “adjusting a transfer rate.” See J.A. 3175
(“Adaptive streaming is a promising technique for deliver-
ing a high-quality video streaming experience. In this tech-
nique, the streaming bit-rate is constantly adjusted in
accordance with variations in the underlying network
bandwidth conditions.”); see also Sound View’s Opening Br.
at 17 (“[A]daptive bitrate streaming (ABR) [is] a key part
of the infringing feature” (emphasis added)); id. at 53
(“Hulu’s systems use ABR and are designed to change bi-
trates based on available bandwidth.”).
Case: 21-1998 Document: 45 Page: 9 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 9
described a study of 22.6 billion video streams from viewers
in 190 countries and asserted that users with an optimal
streaming experience with startup time, stalling, and bit
rate watched 250% more content. J.A. 3326–28. Mr. Yurk-
erwich noted that a Hulu-commissioned study estimated
that users of streaming systems with adaptive bit rate
technology watched an even greater percentage of addi-
tional content, J.A. 4524, but explained that he used the
lower figure from Conviva in his calculations so that his
estimate would be “conservative[],” id. When Hulu moved
to exclude the amended report, the district court granted
the motion because Mr. Yurkerwich never saw the under-
lying study in the Conviva report and thus could not assess
the methodology or even determine what streaming ser-
vices were studied, and because he did not demonstrate
that all of the identified benefits of the study were attribut-
able to the patented invention or consider whether appor-
tionment was warranted. Damages Opinion II, at 4–5. The
district court struck Mr. Yurkerwich’s amended report and
directed the parties to meet to confer about whether the
aspects of Mr. Yurkerwich’s original report that did not
rely on the Yao study could support a claim for damages.
Damages Opinion II, at 5–6.
3
After the parties stipulated to dismissal of the remain-
ing claims and counterclaims, 2 the district court issued a
final judgment of non-infringement of claim 16 of the ’213
patent. J.A. 2. It also dismissed Hulu’s counterclaim for
invalidity of claim 16 without prejudice. Id. Sound View
2 The asserted claims regarding four of the patents,
along with infringement and invalidity allegations con-
cerning other claims of the ’213 patent, were dismissed at
various points in the litigation. The court held invalid all
asserted claims of another asserted patent, and Sound
View has not appealed that decision.
Case: 21-1998 Document: 45 Page: 10 Filed: 05/11/2022
10 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
timely appealed. We have jurisdiction over the district
court’s final judgment under 28 U.S.C. § 1295(a)(1).
II
We review de novo the claim-construction ruling con-
cerning the downloading/retrieving limitation, as the rul-
ing rests only on intrinsic evidence. Intel Corp. v.
Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021). “We
generally give words of a claim their ordinary meaning in
the context of the claim and the whole patent document;
the specification particularly, but also the prosecution his-
tory, informs the determination of claim meaning in con-
text, including by resolving ambiguities; and even if the
meaning is plain on the face of the claim language, the pa-
tentee can, by acting with sufficient clarity, disclaim such
a plain meaning or prescribe a special definition.” World
Class Technology Corp. v. Ormco Corp., 769 F.3d 1120,
1123 (Fed. Cir. 2014) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), and Thorner
v. Sony Computer Entertainment America LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also Personalized Media
Communications, LLC v. Apple Inc., 952 F.3d 1336, 1340
(Fed. Cir. 2020) (“[A]n applicant’s amendment accompa-
nied by explanatory remarks can define a claim term by
demonstrating what the applicant meant by the amend-
ment.”). Here, we conclude, as the district court did, that
the prosecution history establishes that the download-
ing/retrieving limitation must be construed to require the
downloading and retrieving actions to involve the same
buffer.
Before discussing the prosecution history, we note that
this is not a case in which the other intrinsic evidence—the
claim language and specification—establish a truly plain
meaning contrary to the meaning assertedly established by
the prosecution history. The downloading/retrieving limi-
tation, which does not expressly refer to “buffers,” contains
no words affirmatively making clear that different buffers
Case: 21-1998 Document: 45 Page: 11 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 11
in the helper server may be used for the sending out to cli-
ents of one portion of the SM object and the receiving of a
retrieved remaining portion. In its opening phrase, “down-
loading said portion of said requested SM object to said re-
questing client,” ’213 patent, col. 14, lines 41–42 (emphasis
added), the limitation refers indirectly to “a buffer” via the
preceding limitation’s requirement of “allocating a
buffer . . . to cache at least a portion” of the SM object, id.,
col. 14, lines 39–40. In this claim, in which care is taken to
use “a plurality of” when more than the singular is meant,
“allocating a buffer” reasonably suggests allocating a single
buffer. The next phrase, “while concurrently retrieving a
remaining portion” of the same requested SM object, makes
no mention of a separate buffer. And given the facially in-
tegrated references to the two functions, the language is
susceptible to being understood, in context, as implicitly
calling for use of the same buffer for the storage of what is
retrieved as the one used for the “downloading said por-
tion” function. Proper claim construction “demands inter-
pretation of the entire claim in context, not a single
element in isolation.” Pause Technology, LLC v. TiVo, Inc.,
419 F.3d 1326, 1331 (Fed. Cir. 2005) (citations omitted).
The specification, of central importance to determining
a proper claim construction, is not inconsistent with such a
reading. As Sound View acknowledges, the specification
nowhere says that the invention includes use of separate
buffers for the concurrent downloading and retrieving
functions, and it nowhere illustrates or describes such an
embodiment, in which different buffers are involved in con-
current downloading of one portion and retrieving of a re-
maining portion of the same SM object in response to a
given client’s request. See Sound View’s Opening Br. at 34
n.5. The patent does, however, describe and illustrate an
embodiment with only one buffer of the HS performing
these simultaneous downloading (emptying) and retrieving
(filling) functions. See ’213 patent, col. 8, lines 46–61; Fig.
7B. In addition, when describing embodiments in which
Case: 21-1998 Document: 45 Page: 12 Filed: 05/11/2022
12 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
each HS has multiple buffers, i.e., “ring buffers in the
memory,” id., col. 5, line 57, the specification indicates that
“whenever a ring buffer is allocated” to respond to a client
request, “as the ring buffer is filled, the data is simultane-
ously streamed to the requesting client,” id., col. 7, lines
55–58 (emphasis added).
It is against this background that we consider the pros-
ecution history. During prosecution, the examiner rejected
original claim 16—which was identical to issued claim 16
except that it lacked the downloading/retrieving limitation,
J.A. 4395—as anticipated over DeMoney, J.A. 4415. To
overcome the rejection, the applicants amended the claim
to add the downloading/retrieving limitation to claim 16,
J.A. 4406, and they distinguished DeMoney.
The applicants explained that the added limitation,
which “recite[d] additional features that the applicants
consider as being inventive,” overcame the rejection based
on DeMoney. J.A. 4410. The applicants first block quoted
the Abstract of DeMoney and underlined a portion to high-
light the distinction from the now-claimed invention:
A system for scheduling storage accesses of multi-
ple continuous media streams may include a plu-
rality of media stream clients. Associated with
each media stream client is one of a plurality of me-
dia stream managers. Each media stream man-
ager maintains a ring of buffers configured to
buffer media stream data between its associated
media stream client and one or more storage sys-
tems. A different deadline queue may be associ-
ated with each one of the storage systems. Each
deadline queue may be configured to queue buffer
requests from the media stream managers. Each
buffer request may include a deadline by which the
buffer request must be fulfilled by the correspond-
ing storage system. Each media stream manager
may be configured so that once one of its buffers is
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SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 13
consumed by the associated media stream client,
the media stream manager submits a buffer re-
quest and deadline for that buffer to the appropri-
ate deadline queue. Buffer requests may be
ordered in each deadline queue from the earliest to
latest deadline. Each media stream manager may
be configured to provide a guaranteed maximum
media stream rate to its associated media stream
client.
J.A. 4410–11 (underlining in applicants’ statements). The
applicants then explained:
By contrast, the applicants’ invention allocates a
buffer . . . and downloads the portion of the SM ob-
ject to the requesting client, while concurrently re-
trieving a remaining portion of the requested SM
object from another HS or a content server. That
is, the applicants’ invention concurrently empties
and fills the buffer, while the DeMoney reference
teaches filling the buffer only after the buffer is
empty.
J.A. 4411 (underlining in applicants’ statements) (citing
DeMoney, col. 12, lines 28–40). The cited portion of
DeMoney, at column 12, lines 28–43, which is relevant to
the concept of a “deadline queue” discussed in the abstract,
explains: “As each buffer is consumed by the stream re-
quester, a block request is issued along with a deadline
time to fill the now consumed buffer[]”; the buffers “are ac-
cessed one after another in a circular manner”; and “[t]he
deadline time assures that each buffer is filled before it is
needed by the stream requester.” Id., col. 12, lines 28–30,
36–40. Finally, the applicants explained that support for
the added limitation is found in the applicants’ specifica-
tion, pointing to the portion of the specification that shows
concurrent downloading and retrieval involving a single
buffer, as noted above. J.A. 4412; see ’213 patent, col. 8,
line 51, through col. 9, line 24.
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14 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
Based on the applicants’ statements, we agree with the
district court that the applicants limited claim 16 to using
the same buffer for the required concurrent downloading
and retrieval of portions of a requested SM object. We may
look at the prior art the applicants were discussing to de-
termine what the applicants’ own words about prior art
would mean to a relevant skilled artisan. See Speedtrack,
Inc. v. Amazon.com, 998 F.3d 1373, 1378–80 (Fed. Cir.
2021); see also Technology Properties Ltd. v. Huawei
Techologies Co., 849 F.3d 1349, 1359 (Fed. Cir. 2017) (“The
question is what a person of ordinary skill would under-
stand the patentee to have disclaimed during prosecution,
not what a person of ordinary skill would think the pa-
tentee needed to disclaim during prosecution.”). Here, the
portion of DeMoney cited by the applicants describes a pro-
cess in which a single buffer of DeMoney downloads and
retrieves portions of an SM object only serially, not concur-
rently; once the buffer is “consumed” (emptied by down-
loading to the client), it is placed in a queue with a deadline
by which it must be filled. DeMoney, col. 12, lines 28–30.
The passage describes the group of buffers as a whole per-
forming these functions concurrently; one buffer in the ring
downloads the object to the client, while the others in the
ring are filled in accordance with their deadline queues.
Id., col. 12, lines 36–40.
The applicants in this case must be understood to have
been distinguishing their invention (as newly narrowed by
the added limitation) on the basis of the distinction be-
tween serial and concurrent use of a single buffer. That
distinction is communicated first by the applicants’ under-
lining of the “once one of its buffers is consumed . . .” lan-
guage of the DeMoney Abstract. J.A. 4411. It is then
highlighted by the applicants’ assertion of the “contrast” of
their invention with DeMoney: “That is, the applicants’ in-
vention concurrently empties and fills the buffer, while the
DeMoney reference teaches filling the buffer only after the
buffer is empty,” citing column 12, lines 28–40 of DeMoney.
Case: 21-1998 Document: 45 Page: 15 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 15
J.A. 4411. And it is reinforced by the applicants’ pointing,
for support of the added limitation, to a part of their speci-
fication disclosing use of the same buffer for the concurrent
processes. J.A. 4412.
Sound View suggests that its view of separate-buffer
concurrent actions (downloading and retrieving) would in
fact have distinguished DeMoney because DeMoney does
not disclose concurrent actions at all. But that is not the
legal inquiry, which focuses, rather, on what the applicants
said about the prior art. Sound View relies on a passage in
DeMoney stating that the invention “allows future [stor-
age] requests to be satisfied during lulls” of activity, id., col.
11, lines 28–33, which suggests, according to Sound View,
that the buffers in DeMoney, even considered as a whole,
perform downloading and retrieving serially, not concur-
rently. The applicants, however, did not cite that passage
in overcoming the rejection, and in any event, the passage
cannot establish what Sound View urges. Even if the pas-
sage suggests that that DeMoney “allows” serial download-
ing and retrieving in the ring of buffers, it does not exclude
concurrent downloading and retrieving, and it does not ne-
gate the disclosure of such concurrency in the passage that
the applicants did cite.
For those reasons, we reject Sound View’s challenge to
the district court’s construction of the downloading/retriev-
ing limitation, which we therefore affirm.
III
After the district court adopted its “buffer”-requiring
claim construction of the downloading/retrieving limita-
tion, a construction we have now approved, it granted sum-
mary judgment of non-infringement, concluding that
accused-system components called “caches”—on which
Sound View relied for its allegation of infringement under
the court’s claim construction—could not be the required
“buffers.” We review the district court’s grant of summary
judgment here de novo. See Apple Inc. v. Wi-LAN Inc., 25
Case: 21-1998 Document: 45 Page: 16 Filed: 05/11/2022
16 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
F.4th 960, 969 (Fed. Cir. 2022) (citing Estate of Diaz v. City
of Anaheim, 840 F.3d 592, 604 (9th Cir. 2016)). “Whether
an accused device infringes requires a two-step analysis—
the court first ‘determines the scope and meaning of the
patent claims asserted, and then the properly construed
claims are compared to the allegedly infringing device.’”
CommScope Technologies LLC v. Dali Wireless Inc., 10
F.4th 1289, 1295 (Fed. Cir. 2021) (citations omitted).
The district court relied for its conclusion on the ’213
patent’s references to its described “buffers” and “caches”
as distinct physical components. Summary Judgment
Opinion, 2020 WL 6821317, at *4, *6. The court noted that
the ’213 patent describes buffers and caches in different lo-
cations: The patent defines “cache” as “a region on the com-
puter disk that holds a subset of a larger collection of data,”
’213 patent, col. 4, lines 7–8 (emphasis added); and alt-
hough the patent does not define “buffer,” it describes “ring
buffers” located “in the memory” of the HS, id., col. 5, lines
55–60 (emphasis added). The court also cited other por-
tions of the specification as distinguishing “buffers” and
“caches.” See, e.g., id., col. 14, line 49, through col. 16, line
4 (claim 17) (reciting both “managing available memory in
the form of a buffer pool” and “means for recording data
onto [a] cache”), id., col. 7, lines 55–67 (discussing sources
for servicing client requests such as “the memory ring
buffer,” and “cache on the disk”). The court then concluded
that there could be no infringement because Sound View
identified certain components in the accused edge servers
labeled “caches” as meeting the “buffer” limitations (under
its alternative infringement theory), Summary Judgment
Opinion, 2020 WL 6821317, at *3, and “a cache” cannot sat-
isfy the “buffer” limitations, id. at *6.
To the extent that the district court performed the first
step of an infringement analysis—claim construction—all
it did for the term at issue, “buffer,” was to declare what it
must exclude (a “cache”). The court did not adopt an af-
firmative construction of what constitutes a “buffer” in this
Case: 21-1998 Document: 45 Page: 17 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 17
patent. But “‘[a]lthough there is no per se rule against neg-
ative constructions,’ which in some cases can be enough to
resolve the relevant dispute,” Intel, 21 F.4th at 811 (cita-
tion omitted), the court’s construction here was inadequate
for the second step of an infringement analysis—compari-
son to the accused products or methods.
The district court did not decide, and the record does
not establish, that “cache” is a term of such uniform mean-
ing in the art that its meaning in the ’213 patent must be
relevantly identical to its meaning when used by those who
labeled the pertinent components of the accused edge serv-
ers. In the absence of such a uniformity-of-meaning deter-
mination, the district court’s conclusion that the ’213
patent distinguishes its buffers and caches is insufficient
to support a determination that the accused-component
“caches” are outside the “buffers” of the ’213 patent. What
was needed was an affirmative construction of “buffer”—
which could then be compared to the accused-component
“caches” based on more than a mere name. The district
court did not supply the needed construction.
There is an additional reason a further, affirmative
construction is needed. Even in the ’213 patent, the terms
“buffer” and “cache” do not appear to be mutually exclusive,
but instead seem to have at least some overlap in their cov-
erage. The disputed claim describes “allocating a buffer . . .
to cache” a portion of the SM object, ’213 patent, col. 14,
lines 39–40 (emphasis added), and the specification ex-
plains that “the ring buffer . . . operates as a type of short
term cache” because it is capable of servicing multiple cli-
ent requests within a certain time interval, id., col. 7, lines
20–22 (emphasis added). This intrinsic evidence suggests
the absence of mutual exclusivity in general usage of the
terms.
It 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
Case: 21-1998 Document: 45 Page: 18 Filed: 05/11/2022
18 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
for data being sent or received.” See Sound View’s Opening
Br. at 44; J.A. 3959, 3977. And Sound View set forth fac-
tual evidence that the component of the accused edge serv-
ers called a “cache” meets the requirements of a “buffer”
under its own proposed construction. J.A. 3742–50. Hulu
has not meaningfully advanced a contrary affirmative con-
struction, and there is no definition stated in the ’213 pa-
tent itself. But we do not decide the issue, instead leaving
to the district court the determination whether to conduct
further proceedings on what affirmative construction
should be adopted.
We note that the district court did not find it necessary
to address a separate ground advanced by Hulu to support
summary judgment of non-infringement. Hulu argued
that it was undisputed that, even if the edge servers’ caches
could satisfy the buffer limitations, claim 16 was still not
met because, in the accused systems, those caches are not
“allocated” to store at least a portion of the streaming me-
dia object, as required by the “allocating a buffer” limita-
tion of claim 16. J.A. 3997–98; see also Hulu’s Br. at 51.
We will not address this assertion in the first instance.
We vacate the summary judgment of non-infringement
and remand the case.
IV
Because we are remanding for further proceedings, we
address the district court’s two rulings that excluded cer-
tain damages evidence. We review a district court’s deci-
sion to exclude expert testimony for an abuse of discretion.
See General Electric Co. v. Joiner, 522 U.S. 136, 141 (1997)
(“[A]buse of discretion is the proper standard of review of a
district court’s evidentiary rulings.”); MLC Intellectual
Property, LLC v. Micron Technology, Inc., 10 F.4th 1358,
1367 (Fed. Cir. 2021); Messick v. Novartis Pharmaceuticals
Corp., 747 F.3d 1193, 1196 (9th Cir. 2014). We find no
abuse of discretion in the district court’s application in this
case of the basic evidentiary standards requiring reliability
Case: 21-1998 Document: 45 Page: 19 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 19
and legal relevance of expert testimony—here offered on
the issue of a reasonable royalty for the particular infringe-
ment alleged. See Daubert v. Merrell Dow Pharmaceuti-
cals, 509 U.S. 579, 589 (1993); see also, e.g., MLC
Intellectual Property, 10 F.4th at 1373–75; VirnetX, Inc. v.
Cisco Systems, Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014).
Mr. Yurkerwich’s first damages opinion, as discussed,
relied on a study of adaptive streaming used by mobile de-
vices in vehicles connected to a wireless wide-area network
in Sydney, Australia—the Yao study. Specifically, the
study sought to emulate bandwidth variation on commut-
ing routes in Sydney in order to assess how Hypertext
Transfer Protocol (HTTP) adaptive streaming “perform[s]
under a typical high-speed vehicular environment, wherein
the wireless bandwidth varies significantly and rapidly.”
J.A. 3175. Mr. Yurkerwich adopted the results of that
study to conclude that “adaptive streaming” reduces occa-
sions of stalling on users’ devices by 80%, thus showing a
significant advantage of the patented technology over old
technology. J.A. 2825. He then concluded that, because
the ’213 patent calls for such “adaptive streaming,” Hulu’s
use of adaptive streaming captured that significant ad-
vantage, to be reflected in a royalty. Id.
The district court reasonably determined that Mr.
Yurkerwich did not account for substantial differences be-
tween the circumstances studied by Yao and the circum-
stances of Hulu’s accused streaming services. Specifically,
Hulu’s services are used by many stationary viewers, on
desktop computers or televisions, via WiFi or wired connec-
tions with stable bandwidth, in the United States. Dam-
ages Opinion I, 2019 WL 9047211, at *10. And the Yao
study acknowledges that non-adaptive streaming “is usu-
ally sufficient when the viewer is connected via a wired
connection, which has high and fairly stable bandwidth ca-
pacity,” J.A. 3175, supporting the court’s conclusion that
Mr. Yurkerwich’s failure to account for the streaming be-
havior of Hulu’s customers (including the proportion that
Case: 21-1998 Document: 45 Page: 20 Filed: 05/11/2022
20 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
use stationary devices with wired connections) rendered
his opinion unreliable, Damages Opinion I, 2019 WL
9047211, at *10. For those reasons, and because the testi-
mony of Sound View’s technical expert regarding the Yao
study does not fill the gaps in justifying use of the Yao
study, the district court did not abuse its discretion in rec-
ognizing that Mr. Yurkerwich’s wholesale adoption of the
figures in the Yao study did not pass muster under the
standards for admission of expert testimony. Id. at *9–11.
Mr. Yurkerwich’s amended damages opinion relied on
a 2013 Conviva press release describing a 2012 Viewer Ex-
perience Report. The press release explains that the report
measured over 22 billion video streams from viewers in 190
countries. Mr. Yurkerwich adopted the press release’s ex-
planation that users in the study watched 250% more con-
tent when they had an “optimal experience” with startup
times, buffering stalls, and bit rates; because those are pur-
ported benefits of the claimed invention, he assumed that
the study’s 250% increase in content should be credited to
the claimed invention. J.A. 4523–24.
The district court reasonably found a key reliability
problem in the fact that Mr. Yurkerwich did not himself see
the report underlying the Conviva press release and did not
(and could not) adequately characterize the participants in
the study (including what proportion were U.S. or non-U.S.
companies), or the study’s methodology, in adopting the
250% figure. Damages Opinion II, at 4. The district court
recognized a decisive problem: “[T]he press release does not
include a sufficient, in-depth discussion of the study so that
it can be assessed, and then compared to the accused tech-
nology.” Id. And those deficiencies, the district court rea-
sonably determined, were not made immaterial by the
simple fact that a Hulu internal document reflected an in-
crease even higher than 250% in viewed content due to use
of adaptive bit rate streaming. Damages Opinion II, at 5.
Thus, the court did not abuse its discretion in excluding
this testimony.
Case: 21-1998 Document: 45 Page: 21 Filed: 05/11/2022
SOUND VIEW INNOVATIONS, LLC v. HULU, LLC 21
Although the exclusion stands independently on the
foregoing basis, the district court also reasonably con-
cluded that Mr. Yurkerwich did not have an adequate basis
for treating the results of the Conviva-reported study as
sufficiently tied to the invention as claimed—or, therefore,
for not undertaking apportionment that would exclude
value reflected in the study (and derivatively in Hulu’s ser-
vices) not attributable to the claimed invention. Damages
Opinion II, at 4–5. In terms of claim 16, the invention to
be valued is only the practicing of the entirety of claim 16,
including all limitations. To tie the study results (or Hulu’s
service value) sufficiently to claim 16 would require at least
determining how much of the improvement in user experi-
ence from use of adaptive streaming could still be achieved,
and at what if any increased cost, without practicing the
downloading/retrieving limitation of claim 16, with its re-
quirement of concurrent emptying and filling of the same
buffer (as opposed to using more than one buffer but still
adjusting bit rates). The district court reasonably saw no
adequate consideration of that conceptually central issue.
Sound View has not justified a different conclusion
based on its invocation of Alaska Rent-A-Car, Inc. v. Avis
Budget Group, Inc., 738 F.3d 960, 969–70 (9th Cir. 2013).
There, the Ninth Circuit concluded that the district court
did not abuse its discretion in admitting certain expert tes-
timony, whereas here Sound View seeks to reverse a dis-
trict court’s decision to exclude. The substantive damages
issues were different, too: the case involved lost profits for
breach of contract, not, as here, a reasonable royalty for pa-
tent infringement. Id. at 968. The Ninth Circuit held that
the district court did not abuse its discretion in admitting
testimony where the expert extrapolated market projec-
tions involving similarly situated companies, “gave reasons
for his use of [the] comparisons,” and used a reliable meth-
odology to “calculate damages from the breach, as opposed
to damages from competition.” Id. at 968–69. That ruling
does not show that the district court in the present case
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22 SOUND VIEW INNOVATIONS, LLC v. HULU, LLC
abused its discretion in finding critical deficiencies of reli-
ability and relevance on the different record here.
V
For the foregoing reasons, we affirm the district court’s
claim construction of the downloading/retrieving limitation
and its exclusion of both the original and amended dam-
ages testimony. But we vacate the entry of summary judg-
ment of non-infringement and remand for further
proceedings consistent with this opinion.
The parties shall bear their own costs.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED