PERSONALIZED MEDIA COMMUNICATIONS v. INTERNATIONAL TRADE COM'N

LOURIE, Circuit Judge.

Personalized Media Communications, LLC ("PMC") appeals from the final determination of the United States International Trade Commission ("the Commission") that claims 6, 7, and 44 of PMC's patent are not infringed and are invalid for indefiniteness. See In re Certain Digital Satellite Sys. (DSS) Receivers & Components Thereof, No. 337-TA-392 (Int'l Trade Comm. Oct. 20, 1997) (Initial Determination), aff'd in part, (Int'l Trade Comm. Dec. 4, 1997) (Final Determination). Because the Commission erred in concluding that the asserted claims are invalid for indefiniteness and that claim 7 was not infringed, but did not err in concluding that claim 6 was not infringed, we affirm-in-part, reverse-in-part, vacate-in-part, and remand. We decline to address PMC's argument concerning infringement of claim 44.

BACKGROUND

A. The Patented Technology

PMC is the assignee of United States Patent 5,335,277, which pertains generally to systems for use in television broadcasting. The '277 patent specification is quite long; it spans 328 columns and 22 drawing sheets, and contains numerous embodiments of the claimed inventions. Only those embodiments that are necessary to understand the claims at issue are described herein.

The system of the '277 patent includes a unique receiver station that detects and manipulates digital control signals that are embedded in a complex broadcast or cablecast transmission. The specification highlights several benefits that result from the detection and use of the control signals. For example, the control signals can be detected by receiver stations and used to select a specific program from a multi-channel programming transmission. See '277 patent, col. 17, l. 63 to col. 18, l. 2. The control signals can alternatively be used to remotely control the operation of peripheral devices such as VCRs. See id., col. 10, ll. 34-39.

As explained in the specification, a given broadcast can contain several control signals which appear at varying "locations" within the broadcast:

Id., col. 9, 1. 61 to col. 10, 1. 16. Because the location of a given control signal can vary within the transmission, a controller within the system can be programmed or "preinformed" with this location information or other information concerning the control signal in order to identify only the relevant control signal while disregarding other signals. This is also explained in the specification, which notes that "the pattern of the composition, timing, and location of embedded signals may vary in such fashions that only receiving apparatus that are [sic] preinformed regarding the patterns that obtain at any given time will be able to process the signals correctly." Id., col. 9, ll. 43-47.

These aspects of the disclosure are addressed in asserted claims 6 and 7 of the '277 patent, which read as follows:

Another aspect of the disclosed system relates to the ability to create a "video overlay." In one example provided in the specification, viewers see a user-customized version of a weekly television program "Wall Street Week" in which the performance of their personal stock portfolios is shown as a video overlay on top of a graph showing the market's overall performance. The details of this procedure are explained as follows:

Id., col. 16, ll. 21-48. Other embodiments disclose the use of a "local input" that may be used by the customer to interact with the programming content in a more flexible manner. See, e.g., id., col. 161, l. 53 et seq.

These aspects of the disclosure are addressed in asserted claim 44, which reads as follows:

B. The Proceedings Before the Commission

PMC filed a complaint with the Commission asserting that the various Intervenors2 herein were importing Digital Satellite Systems (DSSs) that infringed claims 6, 7, and 44 of PMC's '277 patent in violation of 19 U.S.C. § 1337(a) (1994) ("Section 337"). In response, the Commission instituted an investigation on December 18, 1996, see 61 Fed.Reg. 66695-96 (1996), which culminated in a 450-page Initial Determination in which the Administrative Law Judge (ALJ) recommended that the Commission conclude that Section 337 had not been violated. Specifically, the ALJ concluded that: (1) the asserted claims were invalid as indefinite under 35 U.S.C. § 112, ¶ 2; (2) the asserted claims were invalid as not enabled under 35 U.S.C. § 112, ¶ 1; (3) claim 7 is invalid as anticipated under 35 U.S.C. § 102; and (4) no asserted claim was infringed. PMC petitioned the Commission to review the Initial Determination. The Commission determined not to review, and thereby adopted, the ALJ's various claim constructions and his conclusions that the claims were indefinite and not infringed. See Final Determination at 2. However, the Commission took "no position" on the remaining issues addressed in the Initial Determination. See id. Accordingly, only the ALJ's claim construction, indefiniteness, and noninfringement determinations are before this court.3

1. Indefiniteness

The ALJ's indefiniteness determination turned upon his conclusion that the claim limitation "digital detector for ...," a limitation appearing in all of the asserted claims, constituted a means-plus-function limitation to be construed in accordance with 35 U.S.C. § 112, ¶ 6 (1994). The ALJ interpreted this limitation to be "a functional phrase, not limited to particular structure." Initial Determination at 82. The ALJ first consulted dictionary definitions, but found that "dictionary definitions of `detector,' digital,' and `digital circuit' do not resolve the question whether the entire phrase digital detector conveys specific structure to one of ordinary skill in the art." Id. at 67. The ALJ also found that the specification lacked a "specific structure" for a "digital detector," but instead merely described a digital detector in functional terms, i.e., as a device that "acts to detect the digital signal information embedded in [the information which constitutes the video transmission]." Id. at 70 (citing '277 patent, col. 21, ll. 46-47).4 Finally, the ALJ referenced the testimony of various experts to the effect that while one of ordinary skill would understand a "digital detector" to refer to a detector of digital information, the phrase lacked a specific structure and could not be built by those of ordinary skill. See id. at 73-82.

Having concluded that the scope of the term "digital detector" was governed by § 112, ¶ 6, the ALJ consulted the specification to determine whether it contained corresponding structure, but, as already mentioned, found none. Accordingly, and relying on In re Dossel, 115 F.3d 942, 42 USPQ2d 1881 (Fed.Cir.1997),5 the ALJ concluded that the term "digital detector" was indefinite and held the claims invalid.

2. Noninfringement

a. Claims 6 and 7

The ALJ considered two arguments concerning infringement by the accused DSSs. The first turned on PMC's proffered construction of the claim term "location." The ALJ concluded, based in large part on the portion of the specification quoted supra, that the term "location" included "a line, or lines, or portion of a line in the vertical interval of a television video transmission, or a frequency within the audio range of a television transmission." Initial Determination at 88. Accordingly, the ALJ rejected PMC's argument that the term "location" refers to the "carrier wave"6 of the control signal of the claims, and therefore that selection of a given carrier wave in a multichannel transmission is a selection of a control signal based on its location. See id. at 93. The ALJ, inter alia, found PMC's proffered construction to conflict with the requirement of the claims that the control signal appear in a "television program transmission," which the ALJ construed as referring to a single-channel and not a multi-channel transmission. Id. at 89-90.

The second infringement argument concerned the use of Service Channel IDs (SCIDs) in the accused DSSs. The function of a SCID was explained by a witness for one of the intervenors as follows:

Id. at 228. Central to the ALJ's conclusion that the SCID does not constitute the control signal of the claims and thus does not infringe was his conclusion that the SCID is "information of the `composition'7 of a signal, rather than its `location.'" I d. at 228. The ALJ was assisted in this conclusion by the fact that claim 7 draws a distinction between a signal's composition and its location.8 The ALJ thus concluded that the accused DSSs did not identify the SCID at a "specific location" and therefore did not infringe either claim 6 or 7. See id. at 230, 233.

b. Claim 44

PMC's theory concerning infringement of claim 44 was summarized by the ALJ as follows:

Id. at 234. The ALJ found that the accused DSSs did not infringe claim 44 because they did not "have the capacity to generat[e] and output[] information of the video overlay that is related to `said television programming' or `said reaction information' as required by claim 44." Id. at 235 (emphasis in original). More specifically, the ALJ found that

Id. at 235-36.

PMC appealed the judgment to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(6) (1994).

DISCUSSION

We review factual findings of the Commission under the "substantial evidence" standard. See 19 U.S.C. § 1337(c) (1994) (stating that those adversely affected by a Section 337 determination may appeal to this court for review in accordance with chapter 7 of Title 5); 5 U.S.C. § 706(2)(E) (1994) (setting forth the "substantial evidence" standard of review); Intel Corp. v. United States Int'l Trade Comm'n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed.Cir.1991). Under this standard, we will not disturb the Commission's factual findings if they are supported by "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Surface Tech., Inc. v. United States Int'l Trade Comm'n, 801 F.2d 1336, 1340-41, 231 USPQ 192, 196 (Fed.Cir. 1986). We review the Commission's legal determinations de novo. See 5 U.S.C. § 706(2)(A) (1994); YBM Magnex, Inc. v. International Trade Comm'n, 145 F.3d 1317, 1320, 46 USPQ2d 1843, 1845 (Fed.Cir.1998).

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996). The first step, claim construction, is a question of law which we review de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed.Cir. 1998) (en banc). The second step is factual. See North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1574, 28 USPQ2d 1333, 1335 (Fed.Cir.1993). When construing a claim, a court principally consults the evidence intrinsic to the patent, viz., the claims themselves, the written description portion of the specification, and the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83, 39 USPQ2d 1573, 1576-77 (Fed.Cir.1996). Whether certain claim language invokes 35 U.S.C. § 112, ¶ 6 is an exercise in claim construction and is therefore a question of law, reviewable de novo by this court. See Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213-14, 48 USPQ2d 1010, 1016-17 (Fed.Cir.1998) (embarking upon de novo review). Likewise, whether a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is also a question of law, reviewable de novo by this court. See North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1579, 28 USPQ2d 1333, 1339 (Fed.Cir.1993).

A. Applicability of 35 U.S.C. § 112, ¶ 6

PMC argues that the Commission erred in construing the "digital detector" limitation as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6. In support, PMC contends that the term "digital detector" recites sufficiently definite structure to prevent the application of § 112, ¶ 6 under our case law. PMC also points out that our case law makes clear that § 112, ¶ 6 should not be invoked merely because this structure takes its name in accordance with its function. Finally, PMC argues that the lack of the term "means" in this limitation invokes a presumption that § 112, ¶ 6 does not apply. The Commission responds that the evidence of record makes it clear that one of ordinary skill in the electrical arts would not have understood the term "digital detector" to connote a definite structure, and therefore that this limitation is defined entirely by the functional language that follows the language "digital detector for...." Accordingly, they contend that § 112, ¶ 6 is applicable to this limitation.

35 U.S.C. § 112, ¶ 6 (1994) (emphasis added). Thus, § 112, ¶ 6 operates to restrict claim limitations drafted in such functional language to those structures, materials, or acts disclosed in the specification (and their equivalents) that perform the claimed function.

We have had several recent opportunities to assess whether certain claim language has invoked § 112, ¶ 6. In Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 39 USPQ2d 1783 (Fed.Cir.1996), we were presented with the claim language "detent mechanism defining conjoint rotation of said shafts." In deciding that § 112, ¶ 6 was not invoked, we stated

Greenberg, 91 F.3d at 1583, 39 USPQ2d at 1786 (citations omitted). We also made clear that use of the term "means" is central to the analysis: "the use of the term `means' has come to be so closely associated with `means-plus-function' claiming that it is fair to say that the use of the term `means' (particularly as used in the phrase `means for') generally invokes [§ 112, ¶ 6] and that the use of a different formulation generally does not." Id. at 1584, 39 USPQ2d at 1787.

Subsequent cases have clarified that use of the word "means" creates a presumption that § 112, ¶ 6 applies, see York Prods., Inc. v. Central Tractor, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1623 (Fed.Cir.1996) ("In determining whether to apply the statutory procedures of [§ 112, ¶ 6], the use of the word `means' triggers a presumption that the inventor used this term advisedly to invoke the statutory mandates for means-plus-function clauses."),9 and that the failure to use the word "means" creates a presumption that § 112, ¶ 6 does not apply, see Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at 1016. These presumptions can be rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant.10 See, e.g., Cole v. Kimberly-Clark Corp., 102 F.3d at 524, 531, 41 USPQ2d 1001, 1006 (Fed.Cir.1996) (noting that whether § 112, ¶ 6 is invoked involves an analysis of the "patent and the prosecution history," and consulting a dictionary definition of "perforation" to understand if one of skill in the art would understand this term to connote structure). In deciding whether either presumption has been rebutted, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6. See Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28, 44 USPQ2d 1103, 1109 (Fed.Cir.1997) ("[W]here a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format" even if the claim uses the term "means").

Taking these principles into consideration, we agree with PMC that the Commission erred in construing the term "digital detector" as a means-plus-function limitation. The "digital detector" limitation does not use the word "means," and therefore this limitation is presumed not to invoke § 112, ¶ 6. Neither intrinsic nor extrinsic evidence rebuts this presumption because the term "detector" is a sufficient recitation of structure. "Detector" is not a generic structural term such as "means," "element," or "device"; nor is it a coined term lacking a clear meaning, such as "widget" or "ram-a-fram."11 Instead, as noted by the ALJ by reference to dictionary definitions, "detector" had a well-known meaning to those of skill in the electrical arts connotative of structure, including a rectifier or demodulator.12 No other extrinsic evidence, including the expert testimony, and no evidence intrinsic to the patent casts doubt on this conclusion. Moreover, neither the fact that a "detector" is defined in terms of its function, nor the fact that the term "detector" does not connote a precise physical structure in the minds of those of skill in the art detracts from the definiteness of structure. See Greenberg, 91 F.3d at 1583, 39 USPQ2d at 1786 (quoted supra). Even though the term "detector" does not specifically evoke a particular structure, it does convey to one knowledgeable in the art a variety of structures known as "detectors." We therefore conclude that the term "detector" is a sufficiently definite structural term to preclude the application of § 112, ¶ 6.

Much of the ALJ's analysis (and the Commission's arguments to this court) centered around the ambiguity raised by the phrase "digital detector." However, an adjectival qualification ("digital") placed upon otherwise sufficiently definite structure ("detector") does not make the sufficiency of that structure any less sufficient for purposes of § 112, ¶ 6. Instead, it further narrows the scope of those structures covered by the claim and makes the term more definite. The use of the word "digital" in conjunction with the word "detector" merely places an additional functional constraint (extraction of digital information) on a structure (detector) otherwise adequately defined. See, e.g., '277 patent, col. 21, ll. 46-47 (defining "digital detector" as a device that "acts to detect the digital signal information" in other information). Accordingly, we hold that the "digital detector" limitations in asserted claims 6, 7, and 44 recite sufficiently definite structure and therefore do not come within the ambit of § 112, ¶ 6.

B. Indefiniteness

Having decided that § 112, ¶ 6 does not apply to the "digital detector" limitation of the asserted claims, much of the support for the ALJ's rationale for declaring the claims invalid under Donaldson and Dossel disappears. See note 5, supra. However, the Commission still contends that the term "digital detector" is indefinite irrespective of the applicability of § 112, ¶ 6. Specifically, it contends that the evidence of record, particularly the expert testimony relied on by the ALJ, shows that the term "digital detector" has no well-understood meaning in the art and is therefore indefinite. PMC disagrees with the Commission's assessment of the evidence and argues that the term "digital detector" has a well-understood meaning in the art. PMC also contends that the specification clearly apprises one of ordinary skill of the scope of the term.

As mandated by the definiteness requirement of 35 U.S.C. § 112, ¶ 2, a specification shall include claims "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention" (emphasis added). Determining whether a claim is definite requires an analysis of "whether one skilled in the art would understand the bounds of the claim when read in light of the specification.... If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more." Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.Cir.1993). A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims. Cf. North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1579, 28 USPQ2d 1333, 1339 (Fed.Cir.1993) ("[W]hile the parties in the midst of a dispute have disagreed concerning the meaning of the claims, the claims are not so lacking in clarity as to be invalid [as indefinite].").

We agree with PMC and conclude that the Commission erred in holding the asserted claims to be indefinite. Here, the written description of the specification is sufficient to inform one skilled in the art of the meaning of the claim language "digital detector." It explicitly defines a "digital detector" as a device that "acts to detect the digital signal information" in another stream of information.13 See '277 patent, col. 21, ll. 46-47 (detection of digital signal in video transmission); id. at ll. 59-60 (detection of digital signal in audio transmission); id. at ll. 63-65 (detection of digital signal in "any other information portion of said television signal"); see also Beachcombers, Int'l, Inc. v. Wilde-Wood Creative Prods., Inc., 31 F.3d 1154, 1158-59, 31 USPQ2d 1653, 1656-57 (Fed.Cir. 1994) (vacating jury verdict of indefiniteness in light of clear definition of disputed claim limitation in the written description); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1557, 220 USPQ 303, 316 (Fed.Cir. 1983) ("The use of `stretching ... at a rate exceeding about 10% per second' in the claims is not indefinite. Infringement is clearly assessable through the use of a stopwatch.") (deletion in original).

The expert testimony relied upon by the parties does not alter this conclusion. Extrinsic evidence may not be relied upon during claim construction when the intrinsic evidence unambiguously defines the disputed claim language. See Bell & Howell Document Management Prods. Co. v. Altek Sys., 132 F.3d 701, 706, 45 USPQ2d 1033, 1038 (Fed.Cir.1997). Accordingly, because the meaning of the term "digital detector" is unambiguously set forth in the specification, the expert testimony on this issue is irrelevant to the issue of indefiniteness and cannot serve to inject ambiguity where none exists.

The Commission makes much of the fact that the specification is otherwise silent concerning the structure of a "digital detector," and it notes that the "digital detectors" of the circuit diagrams do not reveal circuit elements constituting such a device, but only portray these devices as mere functional blocks. See, e.g., '277 patent, Fig. 2A. Moreover, the Commission relies on expert testimony stating generally that a "digital detector" was not adequately disclosed in the patent and could not be built by those of ordinary skill. See, e.g., Initial determination at 77 (testimony of Ciciora: "there is no clue that any engineer of ordinary skill ... could begin to put pencil to paper and say here is how I would build the contents of [the digital detector] block. It is completely underspecified."); id. at 79 (testimony of Williams: "[The patent] shows a digital detector. It does not go into detail of how it may work....").

We conclude that the evidence relied upon by the Commission does not indicate imprecision of the claims. Instead, it is relevant, if at all, only to the sufficiency of the written description to enable the practice of the invention of the claims, which is a ground of invalidity under § 112, ¶ 1.14 See In re Borkowski, 57 C.C.P.A. 946, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970) (noting that a claim of clear scope that is not adequately supported by an enabling disclosure commensurate with that scope is objectionable under § 112, ¶ 1, not § 112, ¶ 2); In re Ehrreich, 590 F.2d 902, 906, 200 USPQ 504, 508 (CCPA 1979) ("[§ 112, ¶ 2] pertains only to claims.... Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to [§ 112, ¶ 1]; it is irrelevant to compliance with [§ 112, ¶ 2]"); cf. Miles Labs., Inc., v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.Cir.1993) (dismissing the defendant's argument as "irrelevant to definiteness under § 112, ¶ 2. The invention's operability may say nothing about a skilled artisan's understanding of the bounds of the claim. [Defendant's] argument is possibly relevant, however, to the enablement requirement of § 112, ¶ 1, or to utility under § 101."). We are aware that the ALJ held the claims invalid under § 112, ¶ 1 for lack of enablement, specifically focusing on the "digital detector" limitation.15 However, we express no opinion on any theory of invalidity under § 112, ¶ 1 because such a ground of decision is not before us as it was not reviewed by the Commission. See note 3, supra, and accompanying text. In any event, citation of evidence bearing solely on § 112, ¶ 1 infirmities does not aid the Commission in supporting the ALJ's indefiniteness holding under § 112, ¶ 2, and this holding is therefore reversed.

C. Infringement

1. Claims 6 and 7

We understand PMC to make two arguments concerning infringement of claims 6 and 7. PMC's first argument is that the ALJ erred in construing the term "location" to preclude selection of a control signal based on selection of a particular carrier wave in a multi-carrier transmission. After considering the claim language and those portions of the specification cited to us by PMC, we disagree with PMC that the ALJ misconstrued the term "location." Without going into unnecessary detail, we note that the term "location" in claims 6 and 7 refers to the position of a control signal within a "television program transmission," and that the specification uses this phrase to denote a single transmission enveloped within a single carrier wave. The specification does not suggest that a "television program transmission" can be a multi-channel transmission, as PMC contends in support of its claim construction. The ALJ correctly construed the term "location" in accordance with the examples provided in the specification, viz., a line, or lines, or portion of a line in the vertical interval of a television video transmission, or a frequency within the audio range of a television transmission, see '277 patent, col. 9, l. 61 to col. 10, l. 16, examples which involve only single channel transmissions.

PMC's second argument is that the ALJ erred in concluding that the use of SCIDs in the accused DSSs did not infringe claims 6 and 7. We understand this argument not as an attack on the ALJ's claim construction, but rather as an argument that substantial evidence does not support the finding of noninfringement. Specifically, PMC attacks the ALJ's characterization of the SCID as a "composition" and not as having a "location," and asserts that these two characterizations are not mutually exclusive. In other words, PMC contends that even if the SCID constitutes "composition" information, it also has a location within a given channel. The Commission responds that the ALJ's distinction between the terms "composition" and "location" is meaningful and precludes infringement of both claims.

We agree with PMC that substantial evidence does not support the ALJ's conclusion that the accused DSSs do not infringe claim 7, but disagree with PMC as to claim 6. Like PMC, we find the distinction between the terms "composition" and "location" to be irrelevant to the question whether the SCID can constitute the control signal (i.e., the "predetermined signal" of claim 6 or the "specific signal" of claim 7) of the claims. This was the ALJ's only reason for not finding infringement.16 Moreover, the ALJ's rationale that the terms "location" and "composition" should be interpreted differently because of the separate use of those terms in claim 7, if anything, suggests that claim 7 is infringed, because that claim encompasses detection of a control signal that is facilitated by a controller that is "programmed with information of the composition of said signal or with either the varying location or the varying timing pattern of said signal." '277 patent, claim 7 (emphasis added). Once the erroneous distinction between "location" and "composition" is removed from consideration, the ALJ's conclusion that claim 7 is not infringed is left without substantial evidentiary support. However, we are not prepared on this record to conclude that this claim is infringed. Claim 7 contains many limitations whose relevance to the accused devices have not been made clear to us. We therefore conclude that the prudent course is not to reverse the finding of no infringement of claim 7, but rather to vacate that decision and remand it for further consideration by the Commission.17

Claim 6 presents a different set of facts. Unlike claim 7, the controller of claim 6 is more narrowly drawn to a controller "programmed with either the varying locations or the varying timing pattern of said signal." '277 patent, claim 6. As noted earlier, the controllers in the accused DSSs are programmed with the SCIDs, which are compared with the SCIDs of the incoming data streams to locate a match.18 Thus, the controllers are not programmed with the "varying location or timing pattern of said signal"; they are programmed with the signal itself, and therefore do not infringe. We therefore affirm the ALJ's conclusion that claim 6 is not infringed.

2. Claim 44

PMC's last argument is that the ALJ erred in concluding that the accused DSSs did not infringe claim 44. Specifically, PMC takes issue with the ALJ's implicit conclusion that the claimed "mass medium transmission" which creates the video overlay and the claimed "television transmission" are separate and discrete transmissions. PMC contends that the DSS broadcast meets both of these limitations when the DSS system is displaying the video overlay. PMC points out that even though the television is not receiving a traditional television broadcast at the time that the DSS broadcast is being received, the DSS broadcast is modulated at each given receiver. Accordingly, PMC contends that this internally-modulated signal constitutes the "television transmission" of the claim. The Commission responds, inter alia, that PMC cannot make this argument on appeal to this court because it was not included in its petition to the Commission.

We agree with the Commission and decline to consider PMC's "internally-modulated" argument. A review of PMC's petition reveals that its argument to the Commission centered around the following claim limitation: "a television receiver for receiving a selected broadcast or cablecast television transmission and transferring television programming in said transmission to a television display." PMC argued that the claim language following "a television receiver for" merely "defined the qualities (or capabilities) of the television receiver," PMC's Petition for Review at 29, and therefore should not limit the claim. It summarized its argument as follows: "Thus, when [the claim] is read in light of the specification, it's clear that the `for' clauses in the claim should be interpreted as defining capabilities of the preceding structural elements, and not additional structural elements required by this claim." PMC's Petition for Review at 30. Nothing even remotely approaching PMC's "internally-modulated" argument appears in the petition to the Commission. Because this argument was not raised in PMC's petition, we may not consider it on appeal. See Checkpoint Sys., Inc. v. United States Int'l Trade Comm'n, 54 F.3d 756, 760, 35 USPQ2d 1042, 1045-46 (Fed.Cir.1995). PMC is incorrect that by raising the issue of infringement in its petition that it may now assert any argument in support of its position on that issue. See id. at 760, 54 F.3d 756, 35 USPQ2d at 1046 (holding that this court would not address a party's claim construction argument simply because that party had included "other claim construction defects" in its petition for review). Because PMC's "internally-modulated" argument concerning infringement of claim 44 was not "specifically asserted" in its petition for review, see id., we do not consider its merits.

CONCLUSION

The Commission erred in concluding that the "digital detector" limitations in the asserted claims rendered these claims invalid for indefiniteness under § 112, ¶ 2. The Commission also erred in concluding that claim 7 was not infringed, and we vacate this ruling and remand for further consideration of this issue. The Commission, however, did not err in concluding that claim 6 was not infringed. We decline to address PMC's argument in support of infringement of claim 44 because it was not raised below. The decision of the Commission is therefore

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART and REMANDED.